3:23-cv-00653
Unverferth Mfg Co Inc v. Par Kan Co LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Unverferth Mfg. Co., Inc. (Ohio)
- Defendant: Par-Kan Co., LLC (Indiana)
- Plaintiff’s Counsel: May Oberfell Lorber; Rothwell, Figg, Ernst & Manbeck, P.C.
- Case Identification: 3:23-cv-00653, N.D. Ind., 07/11/2023
- Venue Allegations: Venue is alleged based on Defendant having a regular and established place of business in Silver Lake, Indiana, where it allegedly manufactures and sells the accused products.
- Core Dispute: Plaintiff alleges that Defendant’s "SeedWeigh" line of load-unload seed tender products infringes two patents related to versatile, pivoting conveyor systems for agricultural equipment.
- Technical Context: The technology at issue addresses agricultural seed tenders, which are used to transport seed and fill planters, by employing a single, multi-axis conveyor system capable of both loading a main hopper and unloading it.
- Key Procedural History: The complaint alleges a litigation history between the parties, including a 2013 lawsuit over a related parent patent. It further alleges that Defendant received subpoenas in other infringement cases involving the patents-in-suit and that Plaintiff sent an explicit notice letter to Defendant on April 28, 2023, facts which are cited to support allegations of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2007-02-15 | Earliest Priority Date for '940 and '123 Patents |
| 2013-01-01 | Alleged start of infringing sales ("since 2013") |
| 2015-03-03 | U.S. Patent No. 8,967,940 Issues |
| 2017-08-29 | U.S. Patent No. 9,745,123 Issues |
| 2023-04-28 | Plaintiff sends notice letter to Defendant |
| 2023-07-11 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,967,940 - Seed Carrier With Pivoting Conveyor
Issued: March 3, 2015
The Invention Explained
- Problem Addressed: The patent’s background section states that conventional belt-driven conveyors used on seed carriers often lack a full range of motion and are typically implemented only for unloading, not for loading the carrier's main hopper from an external source (’940 Patent, col. 1:31-39).
- The Patented Solution: The invention is a seed carrier featuring a conveyor mounted on a pivoting support arm. This mechanism allows the conveyor to rotate between an "unloading position," where its hopper is positioned under the main hopper’s discharge, and a "loading position," where the conveyor is pivoted to discharge material back into the main hopper (’940 Patent, col. 2:46-59; Fig. 2-3). To facilitate this movement, the conveyor is coupled to the support arm at a point "near or at the center of gravity," permitting rotation with "minimal effort" (’940 Patent, col. 2:4-7).
- Technical Importance: This dual-function design provides enhanced operational versatility, enabling a single piece of equipment to perform both loading and unloading tasks, thereby improving efficiency in agricultural operations (’940 Patent, col. 1:40-45).
Key Claims at a Glance
- The complaint asserts independent claim 16 (Compl. ¶21).
- The essential elements of independent claim 16 include:
- A main hopper with a discharge.
- A base positioned below the main hopper.
- A support arm with first and second ends.
- A first coupling connecting the support arm to the base, which is rotatable about both a first vertical axis and a first horizontal axis.
- A conveyor with a hopper at its first end and a discharge at its second end.
- A second coupling connecting the support arm to the conveyor at an "approximate center of gravity," which defines a "first conveyor axis of rotation" that is not parallel to the conveyor's longitudinal axis, allowing the conveyor to rotate between an unloading position and a loading position.
U.S. Patent No. 9,745,123 - Seed Carrier With Pivoting Conveyor
Issued: August 29, 2017
The Invention Explained
- Problem Addressed: Similar to its parent, this patent addresses the limitations of conventional seed tender conveyors, which are described as having an insufficient range of motion and being designed primarily for unloading (’123 Patent, col. 1:34-42).
- The Patented Solution: The ’123 Patent claims a seed tender with a support arm that is pivotable about multiple axes to move between an "operating position" and a folded "storage position," as well as to adjust its elevation (’123 Patent, col. 6:22-34). The conveyor itself is coupled to this support arm and is also rotatable about a third axis to switch between loading and unloading functions. A key feature recited in the asserted claim is an "internal elevator for moving seed or grain from said conveyor hopper to said conveyor discharge" (’123 Patent, col. 6:35-39).
- Technical Importance: The claimed configuration seeks to provide a high degree of positioning flexibility for operational use while also allowing the entire conveyor assembly to be secured in a compact orientation for transport (’123 Patent, col. 2:12-18).
Key Claims at a Glance
- The complaint asserts independent claim 10 (Compl. ¶26).
- The essential elements of independent claim 10 include:
- A main hopper with an upper intake and a lower discharge.
- A support arm pivotable about a first axis to move between an "operating position" and a "storage position."
- The support arm is also pivotable about a second axis to adjust the elevation of its second end.
- A conveyor with a hopper, a discharge, and an "internal elevator."
- The conveyor is coupled to the support arm and is rotatable about a third axis to move between an unloading position and a loading position.
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are Defendant's load-unload seed tender products, including the EF275 SeedWeigh, EF375 SeedWeigh, 2 Pack SeedWeigh, and 4 Pack SeedWeigh models (Compl. ¶1, 15).
Functionality and Market Context
The complaint alleges the Accused Products are "seed or grain tender[s]" that include a frame, a main hopper, and a conveyor mounted on a support arm (Compl. ¶16-17). The system is alleged to provide multiple degrees of freedom: the conveyor assembly can rotate about a vertical axis at its base, the support arm can rotate about a horizontal axis, and the conveyor itself can rotate between an unloading and a loading position (Compl. ¶18-19). The complaint alleges these products have been sold since 2013 (Compl. ¶15). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’940 Patent Infringement Allegations
| Claim Element (from Independent Claim 16) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a main hopper mounted on said frame and having a main hopper discharge | The Accused Products are seed tenders with a frame and a main hopper that has a discharge. | ¶16 | col. 6:1-2 |
| a base positioned below said main hopper | The Accused Products include a base located below the main hopper. | ¶18 | col. 6:3 |
| a support arm having first and second ends | The Accused Products include a support arm with a first and second end. | ¶17 | col. 6:4 |
| a first coupling connecting said first end of said support arm with said base, said first coupling being rotatable about a first vertical axis of rotation, and said first end of said support arm being rotatable about a first horizontal axis of rotation | The Accused Products have a first coupling that connects the support arm to the base and is rotatable about a vertical axis, and the first end of the support arm is rotatable about a horizontal axis. | ¶18-19 | col. 6:5-11 |
| a conveyor having a longitudinal axis and first and second ends, a conveyor hopper at said first end, and a conveyor discharge at said second end | The Accused Products include a conveyor with a conveyor hopper on one end and a conveyor discharge on the other. | ¶17 | col. 6:12-14 |
| a second coupling connecting said second end of said support arm with said conveyor at an approximate center of gravity of said conveyor ... said conveyor being rotatable ... between an unloading position ... and a loading position | The Accused Products have a second coupling that connects the support arm to the conveyor, which enables the conveyor to rotate between an unloading and a loading position. | ¶17, 19 | col. 6:15-26 |
Identified Points of Contention
- Scope Questions: The complaint alleges a coupling that connects the support arm to the conveyor (Compl. ¶17), but a central question for the court may be a factual one: is this connection located at the "approximate center of gravity" as required by the claim? The definition of "approximate" could become a focus of claim construction.
’123 Patent Infringement Allegations
| Claim Element (from Independent Claim 10) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a main hopper having an upper portion with a main hopper intake opening and a lower portion with a main hopper discharge | The Accused Products are seed tenders with a main hopper and a main hopper discharge. | ¶16 | col. 6:15-18 |
| a support arm ... pivotable about a first axis of rotation ... to be movable between an operating position ... and a storage position..., said support arm further being pivotable about a second axis of rotation ... to cause an elevation ... to be adjustable | The Accused Products' support arm pivots about vertical and horizontal axes, allowing it to be positioned for operation and for its height to be adjusted. | ¶18-19 | col. 6:22-34 |
| a conveyor having a longitudinal axis and first and second ends, a conveyor hopper at said first end, a conveyor discharge at said second end, and an internal elevator for moving seed or grain | The Accused Products include a conveyor with a hopper and a discharge. | ¶17 | col. 6:35-39 |
| said second end of said support arm being coupled with said conveyor ... said conveyor being rotatable about a third axis of rotation ... between an unloading position ... and a loading position | The Accused Products' conveyor is connected to the support arm and is rotatable between an unloading and loading position. | ¶17, 19 | col. 6:40-50 |
Identified Points of Contention
- Technical Questions: The complaint does not provide sufficient detail for analysis of two claim elements. It does not allege that the Accused Products have an "internal elevator" or that the support arm moves into a specific "storage position." The absence of allegations on these limitations raises the question of whether the complaint has stated a plausible claim for infringement of this patent.
V. Key Claim Terms for Construction
"approximate center of gravity"
Source: ’940 Patent, Claim 16
Context and Importance
This term is central to the infringement analysis for the ’940 Patent. Its construction will determine how close the conveyor's coupling point must be to its geometric or weight-based center. The patent links this location to the functional benefit of allowing the conveyor to be rotated with "minimal effort" (’940 Patent, col. 2:6-7). Practitioners may focus on this term because the factual location of the coupling on the accused device will be a dispositive fact.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The specification uses the phrase "near or at the center of gravity" (’940 Patent, col. 3:2-4), which may support a construction that does not require precise co-location.
- Evidence for a Narrower Interpretation: The stated purpose of this feature is that "little effort is required to rotate the conveyor" (’940 Patent, col. 3:10-11). This functional language could be used to argue for a narrower definition, limited to a location that achieves this specific result.
"storage position"
Source: ’123 Patent, Claim 10
Context and Importance
Infringement of claim 10 requires the support arm to be movable into a "storage position." The complaint alleges general maneuverability but is silent on this specific feature. The definition of this term will be critical to determining if the normal transport orientation of the accused product meets this limitation.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: A party could argue that any position in which the conveyor is secured for transport, as distinct from active loading or unloading, constitutes a "storage position."
- Evidence for a Narrower Interpretation: The specification describes and illustrates "forward or rearward transport position[s]" where the conveyor is held by dedicated "support members" (’123 Patent, col. 4:10-16; Fig. 6). This may support an argument that "storage position" requires a specific, secured configuration for transport, rather than any non-operational orientation.
VI. Other Allegations
Indirect Infringement
The complaint alleges that Defendant induces infringement by its "distributors, resellers, dealers and customers" who use and sell the Accused Products (Compl. ¶22, 27). The allegations do not point to specific instructional materials but are based on the act of selling the products for their intended infringing purpose.
Willful Infringement
The complaint asserts willfulness for both patents, alleging that Defendant acted despite an objectively high likelihood of infringement (Compl. ¶23, 28). The claim is based on alleged pre-suit knowledge stemming from (1) a 2013 lawsuit between the parties on a parent patent, (2) Defendant’s receipt of subpoenas in other litigation involving the asserted patents, and (3) a notice letter sent by Plaintiff on April 28, 2023 (Compl. ¶14).
VII. Analyst’s Conclusion: Key Questions for the Case
A central issue will be one of factual correspondence: does the physical construction of the accused SeedWeigh products meet specific technical limitations recited in the claims? This will likely require expert testimony on whether the conveyor is coupled at the "approximate center of gravity" (’940 Patent) and whether the products incorporate an "internal elevator" or a distinct "storage position" (’123 Patent).
A second key issue will be willfulness and intent. Given the detailed allegations of prior litigation history and direct notice, the court will have to determine whether Defendant’s alleged infringement, if any, was willful. This determination will be critical to the scope of potential remedies, including the possibility of treble damages.
The case may also turn on a question of claim scope: can the term "storage position" be construed broadly to cover any transport orientation of the accused device, or does the patent’s specification limit it to a more specific, folded, and secured configuration? The answer could be dispositive for the infringement analysis of the ’123 Patent.