DCT

1:22-cv-00003

Vti LLC v. ZOSKE'S Sales Services Inc

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:22-cv-00003, N.D. Iowa, 01/10/2022
  • Venue Allegations: The complaint does not contain a specific venue section, but alleges that all defendant entities are Iowa corporations located in Iowa Falls, Iowa, and the individual defendants are residents of Iowa.
  • Core Dispute: Plaintiff alleges that Defendants are infringing three patents related to agricultural slurry applicators by manufacturing and selling a product that was previously the subject of a patent license agreement between the parties, for which royalty payments have ceased.
  • Technical Context: The technology concerns agricultural equipment designed to inject liquid manure (slurry) into the ground, a method intended to improve fertilization efficiency and reduce odor and environmental runoff compared to surface spreading.
  • Key Procedural History: The complaint alleges that Plaintiff VTI previously sued the Zoske defendants for patent infringement in 2014, a suit that was dismissed with prejudice following a settlement and license agreement. VTI alleges the Zoske defendants, and later their purported assignees (Pearce/Ag Premier), initially paid royalties under the license but subsequently stopped. VTI asserts that the prior litigation and license agreement estop the defendants from challenging the validity of the patents-in-suit.

Case Timeline

Date Event
2010-12-15 Priority Date for ’019, ’640, and ’980 Patents
2013-10-08 U.S. Patent No. 8,550,019 Issues
2014-02-12 VTI files first patent infringement lawsuit against Zoske
2014-11-04 U.S. Patent No. 8,875,640 Issues
2014-12-18 VTI and Zoske enter into Settlement Agreement
2014-12-22 Prior lawsuit dismissed with prejudice
2017-09-26 U.S. Patent No. 9,769,980 Issues
2018-04-05 Ag Premier, Inc. files Articles of Incorporation
2019-Q2 Pearce/Ag Premier begins paying royalties per complaint
2020-Q4 Pearce/Ag Premier ceases royalty payments per complaint
2021-08-27 VTI sends Audit Notice to Defendants
2022-01-10 Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 8,550,019 - SLURRY APPLICATOR FOR AN AGRICULTURE MACHINE, Issued October 8, 2013

The Invention Explained

  • Problem Addressed: The patent describes historical methods of applying livestock waste fertilizer, such as surface spreading, as creating odor and environmental runoff hazards. It further characterizes prior subsoil injection methods that "require dragging a knife through the soil" as inefficient, slow, and fuel-intensive ('019 Patent, col. 1:15-39).
  • The Patented Solution: The invention proposes a method using a rotating coulter blade, rather than a fixed knife, to cut a trough in the ground. This rotating member has flutes that displace soil "upwardly and airborne." While the soil is suspended, a hose deposits slurry into the open trough, and then containment wheels redirect the ejected soil back down to cover the slurry ('019 Patent, Abstract; col. 2:42-58).
  • Technical Importance: This approach is described as allowing the applicator to travel at significantly higher speeds (three to fifteen miles per hour) than conventional knife-based systems, increasing operational efficiency ('019 Patent, col. 2:65-col. 3:2).

Key Claims at a Glance

  • The complaint does not identify specific claims asserted against the Defendants (Compl. ¶29). Independent claim 1 is the broadest method claim.
  • Essential elements of Independent Claim 1 include:
    • cutting a trough in the ground surface soil with a rotating member;
    • displacing a majority the soil from the trough upwardly and airborne with respect to the ground surface and rearwardly with respect to a direction of travel of the rotating member;
    • depositing the slurry in the trough while the soil is in an upward and airborne position with respect to the ground surface; and
    • directing the soil downward into the trough after the slurry has been deposited therein to cover the slurry with the soil.
  • The complaint does not explicitly reserve the right to assert dependent claims, but this is standard practice.

U.S. Patent No. 8,875,640 - SLURRY APPLICATOR FOR AN AGRICULTURAL MACHINE, Issued November 4, 2014

The Invention Explained

  • Problem Addressed: As a divisional of the '019 Patent, the '640 Patent addresses the same technical problems of odor, runoff, and inefficiency associated with prior art fertilizer application methods ('640 Patent, col. 1:12-39).
  • The Patented Solution: The '640 Patent describes the same technical solution as the '019 Patent, centered on the use of a rotating coulter to create a trough for slurry injection, as described in Section II above ('640 Patent, Abstract; col. 2:43-58).
  • Technical Importance: The invention's stated importance is its ability to operate at higher speeds and with less drag than systems using a fixed knife, thereby improving farming efficiency ('640 Patent, col. 3:1-8).

Key Claims at a Glance

  • The complaint does not identify specific claims asserted against the Defendants (Compl. ¶29). The '640 patent includes several independent method claims, with Claim 1 being the first listed.
  • Essential elements of Independent Claim 1 are substantively identical to Claim 1 of the '019 Patent, including the steps of cutting with a rotating member, displacing soil upwardly and airborne, depositing slurry, and directing the soil back to cover the trough.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 9,769,980 - SLURRY APPLICATOR FOR AN AGRICULTURAL MACHINE, Issued September 26, 2017

Technology Synopsis

  • The '980 patent, a continuation of the same patent family, is directed to the apparatus for performing the slurry injection method. It claims a fertilizer slurry applicator comprising a rotating member to open a trough, a hose positioned behind the rotating member to deposit slurry, and a pair of containment members to direct the displaced soil back into the trough ('980 Patent, Abstract; Claim 1).

Asserted Claims

  • The complaint does not specify which claims are asserted, but Independent Claim 1 covers the core apparatus (Compl. ¶29).

Accused Features

  • The complaint alleges that the "Infringing Machine," identified as the Cyclone Injector, infringes the '980 patent (Compl. ¶11, ¶28, ¶29).

III. The Accused Instrumentality

Product Identification

  • The accused product is the "Cyclone Injector No-till manure injector," which the complaint refers to as the "Infringing Machine" (Compl. ¶11).

Functionality and Market Context

  • The complaint alleges this was the same machine that was the subject of the 2014 lawsuit and subsequent license agreement (Compl. ¶11, ¶16). It further alleges that the Defendants have made "no changes to the Infringing Machine that would avoid infringing VTI's Patents" (Compl. ¶28). The complaint does not provide sufficient detail for an independent analysis of the accused product's specific design or technical operation. No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint does not provide specific infringement allegations that map elements of any asserted claim to features of the accused instrumentality. The infringement theory is not based on a technical breakdown but on a legal and historical argument: that the Defendants are manufacturing and selling the same "Infringing Machine" that was subject to the 2014 license agreement, a machine that the agreement implicitly covered under the patents-in-suit (Compl. ¶11, ¶28). The complaint's primary assertion is that the product previously licensed now infringes because the license is no longer being honored through royalty payments (Compl. ¶19, ¶25, ¶29). Without specific factual allegations regarding the product's functionality, a detailed claim chart analysis is not possible based on the complaint alone.

Identified Points of Contention

  • Legal Question (Estoppel): The central dispute suggested by the complaint is not technical but legal. A primary question will be whether the doctrines of licensee and assignor estoppel, arising from the 2014 settlement and license, preclude the Defendants from challenging the validity of the patents or whether the accused product infringes those patents (Compl. ¶32, ¶33).
  • Factual Question (Product Identity): A key factual question will be whether the product currently sold by the Defendants is, as the complaint alleges, the same machine or a "colorable imitation" of the one licensed in 2014 (Compl. ¶28). The applicability of any estoppel may depend on the answer to this question.

V. Key Claim Terms for Construction

While the complaint does not raise any specific claim construction disputes, an analysis of the asserted patents suggests certain terms may become critical if the case proceeds to a merits-based infringement analysis.

"rotating member"

(from Claim 1 of the '019 and '640 patents)

  • Context and Importance: The distinction between the claimed "rotating member" and a prior art "knife" that is "dragged" through the soil is fundamental to the patents' novelty argument. Practitioners may focus on this term because its scope determines whether the claims cover any rotating disc or are limited to the specific structures disclosed.
  • Intrinsic Evidence for a Broader Interpretation: The claim language itself is broad. The specification states the rotating member "may be a coulter blade," which suggests other forms of rotating members are possible ('019 Patent, col. 2:51-52).
  • Intrinsic Evidence for a Narrower Interpretation: The specification heavily details a specific embodiment: a "wave-shaped disc" with "angled flutes" designed to "eject soil upward to create trough 109" ('019 Patent, col. 3:50-54, col. 3:63-65). A party could argue the term should be limited to structures capable of performing this specific soil ejection function.

"displacing a majority the soil from the trough upwardly and airborne"

(from Claim 1 of the '019 Patent)

  • Context and Importance: This functional limitation defines how the rotating member must operate. Infringement requires proof that the accused device achieves this specific result. Practitioners may focus on this term because proving that a "majority" of soil becomes "airborne" presents a significant evidentiary challenge and is open to interpretation.
  • Intrinsic Evidence for a Broader Interpretation: The term could be interpreted to mean simply lifting most of the soil out of the immediate path of the blade, without requiring it to be suspended in the air for a specific duration.
  • Intrinsic Evidence for a Narrower Interpretation: The specification describes a specific action of ejecting "large chunks of soil 130 to eject upward out of trough 109" so that slurry can be deposited into the resulting "void" ('019 Patent, col. 3:63-66). This could support an interpretation requiring a clear, temporary void created by suspended soil.

VI. Other Allegations

Indirect Infringement

  • The complaint does not plead counts for indirect infringement (inducement or contributory infringement). The allegations are directed at Defendants' own acts of "manufacturing, selling and offering for sale" the accused product (Compl. ¶28).

Willful Infringement

  • The complaint alleges that Defendants are infringing "with knowledge of the Settlement Agreement and the License Agreement and in willful disregard for the rights of VTI" (Compl. ¶31). This allegation of willfulness is based on pre-suit knowledge stemming from the prior litigation and license.

VII. Analyst’s Conclusion: Key Questions for the Case

This case appears poised to turn less on technical minutiae and more on the legal consequences of the parties' prior history. The central questions for the court are likely to be:

  1. A foundational issue will be one of legal preclusion: To what extent do the doctrines of licensee and assignor estoppel prevent the Zoske defendants and their alleged assignees, Pearce/Ag Premier, from challenging the patents' validity or infringement by the product that was the subject of their 2014 license agreement?
  2. A critical evidentiary issue will be one of product identity: Can the plaintiff demonstrate that the "Cyclone Injector" currently being sold by the defendants is the same machine, or a mere "colorable imitation" of the one licensed in 2014, thereby bringing its sale within the scope of the prior agreements and potential estoppel?
  3. Should estoppel not be dispositive, a key technical question will be one of functional infringement: Does the accused machine's rotating blade actually achieve the claimed method step of displacing a "majority" of soil into an "upwardly and airborne" state before slurry is deposited, as required by the patents' core claims?