DCT
2:24-cv-02194
Wake 10 LLC v. Swell Ventures LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Wake 10, LLC (Kansas)
- Defendant: Swell Ventures LLC d.b.a. Swell Wakesurf (Minnesota)
- Plaintiff’s Counsel: Law Office of Mark Brown, LLC
- Case Identification: 2:24-cv-02194, D. Kan., 05/03/2024
- Venue Allegations: Plaintiff Wake 10 asserts that venue is proper in the District of Kansas under the general venue statute for declaratory judgment actions, based on Defendant Swell's business transactions and advertising within the district. The complaint also notes that should Swell file a counterclaim for infringement, Kansas would be the only proper venue for such a claim against Wake 10.
- Core Dispute: Plaintiff Wake 10 seeks a declaratory judgment that its "Wakesurf Creator X4 Pro" product does not infringe U.S. Patent No. 11,840,317, owned by Defendant Swell, and that the patent is invalid.
- Technical Context: The dispute concerns aftermarket devices that removably attach to a boat's hull to modify the flow of water, thereby enhancing the size and shape of the boat's wake for the sport of wakesurfing.
- Key Procedural History: This lawsuit was filed after Swell initiated an Amazon Patent Evaluation Express (APEX) Procedure accusing Wake 10's product of infringement. The complaint notes that prior to the '317 patent's issuance, Wake 10 filed a third-party submission with the USPTO, asserting that its own "X4 Pro" product constituted prior art to the pending application.
Case Timeline
| Date | Event |
|---|---|
| 2019-06-25 | Wake 10 first offers its "Wakesurf Creator" product for sale. |
| 2020-02-01 | "Nauticurl Flex" product, alleged prior art, appears to have been offered for sale. |
| 2020-03-13 | Priority Date of '317 Patent (based on parent application filing). |
| 2020-10-23 | Wake 10 begins designing the accused "Wakesurf Creator X4 Pro" product. |
| 2021-05-17 | Wake 10 begins selling the accused "X4 Pro" product. |
| 2022-01-17 | Application that matured into the '317 Patent is filed. |
| 2023-06-16 | Wake 10 files a third-party prior art submission against the '317 patent application. |
| 2023-12-12 | U.S. Patent No. 11,840,317 is issued. |
| 2024-04-08 | Swell sends a letter to Wake 10 accusing the "X4 Pro" of infringement. |
| 2024-04-15 | Wake 10 receives notice of an APEX Procedure initiated by Swell. |
| 2024-05-03 | Complaint for Declaratory Judgment is filed. |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,840,317 - “Water Flow Deflection Device for a Watercraft and Methods of Use”
The Invention Explained
- Problem Addressed: The patent addresses the need for an aftermarket device to adapt conventional water ski boats, which are designed to minimize wakes, for the sport of wakesurfing, which requires a large, surfable wake. Specialized surfboats are often cost-prohibitive for many consumers (’317 Patent, col. 1:21-44).
- The Patented Solution: The invention is a removable device that attaches to the side of a watercraft's hull. It comprises an elongated base, a deflector plate mounted at an angle to redirect water flow, and a specific configuration of suction cups for attachment. A key aspect of the described solution is the asymmetric placement of these suction cups, with a greater number located forward of the deflector's leading edge to counteract the hydrodynamic forces on the device (’317 Patent, Abstract; col. 2:17-25).
- Technical Importance: The technology provides an adjustable, non-permanent method for consumers to enhance the wake of various existing watercraft without permanent modifications or the expense of a specialized boat (’317 Patent, col. 1:45-51).
Key Claims at a Glance
- The complaint seeks a declaratory judgment of non-infringement and invalidity with respect to independent claims 1, 21, and 37 (Compl. ¶ 47).
- Independent Claim 1 requires:
- An elongated base configured to be aligned along the side of a watercraft.
- A deflector attached to the base at an "off-center position," with the deflector face having a width greater than the base width.
- At least three suction cup assemblies attached to the base, "wherein two or more suction cup assemblies... [are] attached to the elongated base between the first end and the leading end of the deflector, such that a greater number of the at least three suction cup assemblies" are located forward of the deflector's leading edge than rearward of it.
- The complaint does not explicitly reserve the right to address dependent claims but focuses its arguments on the independent claims.
III. The Accused Instrumentality
Product Identification
The accused instrumentality is the "Wakesurf Creator X4 Pro" product sold by Plaintiff Wake 10 (Compl. ¶ 35).
Functionality and Market Context
The complaint describes the X4 Pro as a product for enhancing a watercraft's wake (Compl. ¶ 35). It does not provide a detailed technical description of the product's operation. Instead, it asserts that the X4 Pro lacks the specific structural configuration required by the asserted claims of the ’317 patent (Compl. ¶ 48). The complaint alleges that Wake 10 began selling the X4 Pro on or about May 17, 2021, which is prior to the issuance of the '317 Patent (Compl. ¶ 30). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement. The following table summarizes Wake 10’s stated basis for its non-infringement position as applied to the elements of claim 1.
'317 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a deflector attached to the elongated base between the first and second ends of the elongated base at an off-center position relative to the first and second ends, ... | The complaint alleges the X4 Pro does not have a deflector attached at an "off-center position" as required by the claim. | ¶48 | col. 2:65-67 |
| at least three suction cup assemblies attached to the elongated base... such that a greater number of the at least three suction cup assemblies being attached between the first end and the leading end of the deflector than between the second end and the leading end of the deflector... | The complaint alleges the X4 Pro does not have the claimed distribution of suction cup assemblies, specifically denying that at least two of at least three suction cups are attached forward of the deflector's leading edge to create the required imbalance. | ¶48 | col. 2:17-25 |
Identified Points of Contention
- Scope Questions: A primary dispute will be the proper construction of "off-center position." The case may explore whether this term has a specific structural meaning tied to the location of the suction cups or a more general geometric meaning.
- Technical Questions: A key factual question will be whether the accused X4 Pro product's structure, particularly the number and placement of its suction cups relative to its deflector, falls within the scope of the claims as construed by the court. The complaint's denial of this structural arrangement places the physical configuration of the X4 Pro at the center of the infringement analysis (Compl. ¶ 48).
V. Key Claim Terms for Construction
"off-center position"
- Context and Importance: This term is critical because Wake 10 explicitly denies that its X4 Pro product includes this feature, making its definition a central point of the non-infringement argument (Compl. ¶ 48). The construction will determine whether the location of the deflector on the X4 Pro's base meets this limitation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself, "relative to the first and second ends," could suggest any position that is not the geometric center of the base.
- Evidence for a Narrower Interpretation: The specification links the position of the deflector to the distribution of suction cups, stating the deflector is connected "at a location such that a greater number of suction cup assemblies are located between the first end (bow end) and a location that the deflector is operably connected to the base plate" (’317 Patent, col. 2:67-col. 3:5). This may support an argument that "off-center" is not merely geometric but is functionally defined by the asymmetric attachment points needed to resist hydrodynamic forces.
"a greater number of the at least three suction cup assemblies being attached between the first end and the leading end of the deflector than between the second end and the leading end of the deflector"
- Context and Importance: This limitation defines the specific asymmetric attachment structure that appears to be a core technical aspect of the invention. Wake 10's denial that its product meets this limitation makes its construction essential to the infringement analysis (Compl. ¶ 48).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The language of claim 1 requires only a simple majority of cups to be placed forward of the deflector (e.g., two forward, one aft).
- Evidence for a Narrower Interpretation: While claim 1 is broad, other claims and embodiments describe more specific ratios, such as claim 9 which recites "three suction cup assemblies being attached... between the first end and the leading end... and one suction cup assembly being attached... between the second end and the leading end." Parties may argue these more specific disclosures inform the meaning of the broader term, or conversely, that the choice of broader language in claim 1 was intentional.
VI. Other Allegations
The complaint raises alternative arguments for invalidity should the '317 patent be found to cover the X4 Pro's functionality.
- Invalidity under 35 U.S.C. §112: The complaint alleges that if the claims are construed broadly enough to read on the X4 Pro, they would be invalid for lacking adequate written description in the specification (Compl. ¶ 54).
- Invalidity under 35 U.S.C. §103: The complaint alleges the asserted claims are invalid as obvious over prior art, including the "Nauticurl Flex" product and Wake 10's own X4 Pro, both of which were allegedly "published and publicly available for sale" prior to the '317 patent's priority date or filing date (Compl. ¶ 55).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of structural infringement: Does the accused "X4 Pro" product, as a matter of fact, incorporate the specific asymmetric configuration of an "off-center" deflector and a "greater number" of forward-mounted suction cups as required by a proper construction of the asserted claims?
- A key question for validity will be one of prior art timing and scope: Can Swell's '317 patent, with its March 2020 priority date, withstand an obviousness challenge based on the "Nauticurl Flex" product (allegedly sold starting in February 2020) and the plaintiff's own "X4 Pro" product (allegedly sold starting in May 2021, before the patent application was filed in January 2022)?
- An overarching legal tension will be the interplay between infringement and validity: The plaintiff has framed the case such that if the claims are interpreted broadly enough to cover the X4 Pro, they may then become invalid for lacking sufficient written description in the patent's specification.