DCT

3:03-cv-00580

Huntwise Inc v. Expedite Internation

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:03-cv-00580, M.D. La., 07/29/2003
  • Venue Allegations: Plaintiff alleges venue is proper under 28 U.S.C. § 1391(b) and (c) and § 1400(b).
  • Core Dispute: Plaintiff alleges that Defendant’s "LUCKY DUCK" line of spinning wing decoys infringes three patents related to motorized decoy technology.
  • Technical Context: The technology concerns animated hunting decoys designed to attract waterfowl by simulating the motion of a landing duck through motorized, rotating wings.
  • Key Procedural History: The complaint notes that Plaintiff sent Defendant two pre-suit demand letters on February 4, 2003, and May 23, 2003, placing Defendant on notice of the alleged infringement prior to the lawsuit's filing.

Case Timeline

Date Event
1999-03-22 Priority Date for ’559 and '152 Patents
2000-01-26 Priority Date for ’028 Patent
2001-01-01 Alleged Launch of Accused "LUCKY DUCK" Product
2002-06-25 Issue Date of U.S. Patent No. 6,408,559
2003-01-21 Issue Date of U.S. Patent No. 6,508,028
2003-01-21 Issue Date of U.S. Design Patent No. D469,152
2003-02-04 Plaintiff sends first demand letter to Defendant
2003-05-23 Plaintiff sends second demand letter to Defendant
2003-07-29 Complaint Filed

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

U.S. Patent No. 6,508,028 - "GAME DECOY WITH HIGH-SPEED, ROTATING 'STROBE' WINGS AND IN-LINE MOTOR DRIVE"

  • Patent Identification: U.S. Patent No. 6,508,028, "GAME DECOY WITH HIGH-SPEED, ROTATING 'STROBE' WINGS AND IN-LINE MOTOR DRIVE," issued January 21, 2003.

The Invention Explained

  • Problem Addressed: The patent asserts that prior art animated decoys were ineffective because they were either static, which experienced ducks learn to ignore, or their motion was unrealistic (’028 Patent, col. 1:21-28). Specifically, it identifies a prior art decoy (the "FATAL DE DUCKTION") as having a relatively slow wing rotation speed (~400 rpm) and a complex, belt-driven mechanical drive that was unreliable in harsh conditions (’028 Patent, col. 2:28-68).
  • The Patented Solution: The invention is a decoy with specially shaped, flat wings that are rotated at a high speed—at least 600 revolutions per minute (rpm)—by a powerful, direct-drive electric motor housed inside the decoy body (’028 Patent, Abstract; col. 3:30-46). This combination of high speed and wing design is intended to produce a visually distinct "strobe" like effect, rather than a simple flutter, to enhance visibility and attraction for waterfowl (’028 Patent, col. 2:58-62). The patent's Figure 3 illustrates the "in-line, direct connection" of the motor to the wings, a key element of the solution (Compl. Ex. A, p. 13).
  • Technical Importance: The invention's asserted contribution was moving beyond simple "flapping" or "fluttering" motion to a high-speed rotational "strobe" effect, which the patent contends is a difference "of kind, resulting in the present invention's 'strobe' like effect, substantially adding to the attractive powers and high visibility of the decoy" (’028 Patent, col. 2:58-62).

Key Claims at a Glance

  • The complaint asserts infringement of one or more claims, with independent claim 1 being representative of the core invention (Compl. ¶9).
  • Essential elements of independent claim 1 include:
    • A basic body simulating a winged animal.
    • A pair of longitudinally extended, "substantially flat" rotatable wings.
    • The wings are devoid of any supporting restraint at their distal tips.
    • A "double shaft, direct drive, DC, electric motor" located in the body.
    • Each motor drive shaft is "inserted directly into a respective said wing shaft."
    • The wings are "solely supported by said motor onto said body."
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 6,408,559 - "ANIMATED WATERFOWL DECOY APPARATUS"

  • Patent Identification: U.S. Patent No. 6,408,559 B2, "ANIMATED WATERFOWL DECOY APPARATUS," issued June 25, 2002.

The Invention Explained

  • Problem Addressed: Traditional decoys float on the water, which can appear unnatural to waterfowl, and the mechanisms can be damaged by water (’559 Patent, col. 1:12-25; col. 2:1-4).
  • The Patented Solution: The patent describes a decoy apparatus that is positioned above the surface of the water on an "elongated support stand." (’559 Patent, Abstract; col. 2:30-35). This stand is anchored in the ground beneath the water, supporting a decoy body with motorized rotating wings. This configuration is intended to better simulate a bird landing, protect the mechanism from water damage, and allow the wings' rotation to agitate the water surface for added realism (’559 Patent, col. 2:1-8, 35-38). Figure 1 of the patent shows the decoy positioned on its stand above the water (Compl. Ex. C, p. 33).
  • Technical Importance: The use of a support stand to elevate the decoy above the water represented a different approach to simulating a landing bird, separating the decoy from prior art that floated directly on the water and offering potential advantages in visibility and durability.

Key Claims at a Glance

  • The complaint asserts infringement of one or more claims, with independent claim 1 being representative (Compl. ¶9).
  • Essential elements of independent claim 1 include:
    • A housing with the configuration of a bird's body.
    • A pair of rotatable bird wing members.
    • An electric motor and transmission means inside the housing to rotate the wings.
    • A "means for supporting said housing above and out of direct contact with a body of water," which is the elongated support stand.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Design Patent No. D469,152 - "DUCK DECOY"

  • Patent Identification: U.S. Design Patent No. D469,152, "DUCK DECOY," issued January 21, 2003.

Technology Synopsis

This design patent protects the unique, non-functional, ornamental appearance of a duck decoy. The claim covers the overall visual impression created by the combination of the decoy's body shape, wing shape, and their arrangement as depicted in the patent's drawings.

Asserted Claims

Design patents contain a single claim: "The ornamental design for a duck decoy, as shown and described."

Accused Features

The complaint alleges that the "LUCKY DUCK" decoy's overall appearance is substantially similar to the design claimed in the ’152 Patent, thereby infringing on the patent's ornamental design (Compl. ¶9).

III. The Accused Instrumentality

Product Identification

The "SUPER LUCKY DUCK" and/or "LUCKY DUCK" spinning wing decoys (Compl. ¶9).

Functionality and Market Context

The complaint describes the accused product as a "spinning wing decoy" (Compl. ¶1). It alleges that the LUCKY DUCK is "nearly identical" to Plaintiff's own MOJO DECOYS™, which embody the technologies of the patents-in-suit (Compl. ¶16). Based on these allegations and the asserted patents, the accused product is understood to be a duck-shaped decoy with motorized, rotating wings. The complaint alleges Defendant has manufactured and sold the product since 2001 in competition with Plaintiff (Compl. ¶¶1, 10).

IV. Analysis of Infringement Allegations

The complaint does not provide a detailed, element-by-element breakdown of its infringement allegations or include claim charts. Instead, it makes a general allegation that the accused "LUCKY DUCK" products infringe "one or more claims of the ’028, ’559, and ’152 Patents" by "employing the invention disclosed and claimed" therein (Compl. ¶9). The infringement theory rests on the allegation that the accused products are "nearly identical" to Plaintiff's commercial embodiments of the patents (Compl. ¶16).

  • ’028 Patent Infringement Theory: The central allegation is that the LUCKY DUCK decoy utilizes a direct-drive motor to rotate its wings at a high speed, thereby creating the patented "strobe" effect.
  • ’559 Patent Infringement Theory: The allegation is that the LUCKY DUCK decoy is sold with and used on a support stand that positions the decoy above the water, as claimed in the patent.
  • ’152 Patent Infringement Theory: The allegation is that the overall ornamental design of the LUCKY DUCK is substantially the same as the design shown in the figures of the design patent, from the perspective of an ordinary observer.

No probative visual evidence provided in complaint.

V. Key Claim Terms for Construction

  • Term: "direct drive" (’028 Patent, Claim 1)

    • Context and Importance: This term is critical for distinguishing the invention from prior art that used complex intermediate mechanisms like belts and pulleys. The infringement analysis for the ’028 Patent may depend on whether the accused product's motor-to-wing connection qualifies as a "direct drive."
    • Intrinsic Evidence for a Broader Interpretation: The specification describes the motor shafts as being "directly connected or coupled to the wing shafts," which could be interpreted to mean any connection that is not indirect, such as one without belts, pulleys, or complex gearing (col. 3:25-28).
    • Intrinsic Evidence for a Narrower Interpretation: The patent emphasizes the avoidance of "any intermediate, relatively moveable, mechanical, interconnection means (e.g. pulleys, belts, cog wheels, moveable pins, etc.)" (col. 4:40-43). This language could support a narrower construction requiring a specific, rigid, in-line shaft-to-shaft connection.

  • Term: "means for supporting said housing above and out of direct contact with a body of water" (’559 Patent, Claim 1)

    • Context and Importance: This is a means-plus-function limitation under 35 U.S.C. § 112, ¶ 6 (pre-AIA). Its scope is not the literal words but is limited to the specific structure disclosed in the specification for performing the function, and its equivalents. The dispute will center on whether the support structure of the LUCKY DUCK is the same as or structurally equivalent to what is disclosed in the patent.
    • Intrinsic Evidence for Interpretation: The specification discloses the corresponding structure as an "elongated support stand 24" that may be made of metal or plastic and can be of a telescoping design to adjust its length (’559 Patent, col. 3:35-47). The infringement analysis will require a comparison of the accused product's stand to this disclosed structure.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that Defendant "induces others to use these decoys in an infringing manner" (Compl. ¶1). While specific facts supporting inducement (e.g., user manuals, advertisements) are not detailed, this allegation preserves the claim for discovery.
  • Willful Infringement: The complaint explicitly alleges that Defendant's infringement "was and is willful and deliberate" (Compl. ¶12). This allegation is supported by claims that Defendant had knowledge of the patents through at least two pre-suit demand letters sent on February 4, 2003, and May 23, 2003, and continued its allegedly infringing activities despite these warnings (Compl. ¶¶10-11; Exs. E & F).

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

  • A core issue will be one of technical and functional scope: Does the accused "LUCKY DUCK" decoy operate with a "direct drive" motor and at a sufficiently high rotational speed to produce the claimed "strobe" like effect of the ’028 patent, or does its performance align more closely with the "fluttering" motion of the prior art?
  • A second key question will be structural equivalence: Does the accused product employ a support stand that is structurally equivalent to the "elongated support stand" disclosed in the ’559 patent for the purpose of positioning the decoy above the water?
  • A third issue will be one of visual identity: From the perspective of an ordinary observer, is the overall ornamental appearance of the "LUCKY DUCK" substantially the same as the specific aesthetic protected by the ’152 design patent, or are the differences sufficient to avoid infringement?