DCT
0:17-cv-00517
Aylsworth v. Apex Machine Sales Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Steven L. Aylsworth (Minnesota)
- Defendant: Apex Machine Sales, Inc. (Minnesota), Apex Machine Works LLC (Minnesota), and Steven R. Weinschenk (Minnesota)
- Plaintiff’s Counsel: Robins Kaplan LLP
- Case Identification: 0:17-cv-00517, D. Minn., 02/20/2017
- Venue Allegations: Venue is alleged to be proper in the District of Minnesota because all defendants reside in the district and have engaged in in acts of patent infringement within the district.
- Core Dispute: Plaintiff alleges that Defendants' "Wood Runner AirPick" automated lumber retrieval system infringes a patent directed to methods for organizing, retrieving, and delivering lumber for industrial applications.
- Technical Context: The technology relates to automated material handling systems used in the construction industry to improve the efficiency of fabricating building components, such as wooden trusses.
- Key Procedural History: The complaint alleges a notable history between the parties: Defendant Steven R. Weinschenk is a co-inventor of the patent-in-suit and a former employee of Plaintiff's company. Plaintiff alleges that Weinschenk assigned his entire interest in the patent to the Plaintiff before founding the defendant companies and commercializing the accused products. This history is the foundation for the willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 2010-09-02 | '244 Patent Priority Date |
| 2011-10-13 | Defendant Weinschenk assigns patent rights to Plaintiff |
| 2015-02-24 | '244 Patent Issue Date |
| 2017-02-20 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,960,244 - "Automated Lumber Retrieval and Delivery"
- Issued: February 24, 2015
The Invention Explained
- Problem Addressed: The patent addresses the need for efficiently and automatically retrieving individual pieces of lumber from various stacks and feeding them to a processing station, such as a saw for making prefabricated trusses and panels (’244 Patent, col. 1:20-31).
- The Patented Solution: The invention proposes a method and system that organizes lumber handling into distinct zones: a "work area" where an automated "board picker" operates, and a "service area" for replenishing lumber supplies. Lumber of different sizes is segregated onto movable supports (e.g., wheeled carts), which are shuttled individually between the service area and the work area along defined paths. This allows for continuous operation of the board picker in the work area while lumber is restocked in the separate service area, improving overall system throughput (’244 Patent, col. 7:7-43; Fig. 7).
- Technical Importance: The described method aims to streamline the supply chain for automated construction equipment by creating a more flexible and continuous flow of raw materials (’244 Patent, col. 1:28-31).
Key Claims at a Glance
- The complaint asserts independent method claim 7 (’244 Patent, col. 11:7-col. 12:48; Compl. ¶24).
- The essential elements of independent claim 7 include:
- Defining a work area and a laterally offset service area.
- Segregating lumber by size onto a plurality of lumber stacks on a corresponding plurality of lumber supports.
- Defining shuttle paths between the work and service areas.
- Selectively translating the lumber supports individually between the work and service areas via the shuttle paths.
- A board picker repeatedly translating over the work area to transport boards individually from the lumber stacks to a delivered position.
- A material handling vehicle replenishing a chosen lumber support, which involves moving the support to the service area, delivering new boards, and returning the support to the work area.
III. The Accused Instrumentality
Product Identification
- The "Wood Runner AirPick," described as an automated lumber retrieval system (Compl. ¶4).
Functionality and Market Context
- The complaint alleges that Defendants manufacture, use, and sell the Wood Runner AirPick, and that the use of this system constitutes an infringing "automated lumber retrieval process" (Compl. ¶4, ¶24). It is alleged to be sold in direct competition with the products of Plaintiff's company, Acer Inc. (Compl. ¶22). The complaint does not provide specific technical details on the design, layout, or operational steps of the Wood Runner AirPick system.
IV. Analysis of Infringement Allegations
The complaint alleges that the use of the Wood Runner AirPick system infringes at least claim 7 of the '244 patent, but does not contain a detailed element-by-element mapping of the accused process to the claim limitations. No probative visual evidence provided in complaint.
'244 Patent Infringement Allegations
| Claim Element (from Independent Claim 7) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A lumber handling method involving... a board picker movable horizontally along a board retrieval direction... a plurality of lumber supports movable horizontally in a lateral direction... a material handling vehicle... | Defendants are alleged to use, manufacture, and sell automated lumber retrieval systems, including the Wood Runner AirPick, which practice the claimed method. | ¶4, ¶11, ¶24 | col. 11:7-14 |
| defining a work area; defining a service area laterally offset to the work area; | The complaint asserts that using the Wood Runner AirPick infringes the method of claim 7, which requires these steps, but does not specify how the accused system defines these areas. | ¶24 | col. 11:15-17 |
| segregating the lumber by board size to create a plurality of lumber stacks... loading the plurality of lumber stacks on the plurality of lumber supports... | The complaint's general allegation that the use of the Wood Runner AirPick infringes claim 7 encompasses these material organization steps. | ¶24 | col. 11:18-24 |
| selectively translating the plurality of lumber supports individually between the work area and the service area; | The complaint's infringement theory relies on the accused process performing this step, though no specific facts are provided. | ¶24 | col. 11:25-29 |
| the board picker repeatedly translating... thereby transporting a plurality of boards individually from the plurality of lumber stacks in the work area to the delivered position; | The complaint asserts infringement of the method claim containing this board transportation step. | ¶24 | col. 11:30-36 |
| the material handling vehicle replenishing a chosen lumber support... by: a) moving one lumber support... to the service area... b) the material handling vehicle... deliver an additional set of boards... c) moving the one lumber support... back to the work area... | The infringement allegation broadly covers this multi-part replenishment process. | ¶24 | col. 11:37-48 |
Identified Points of Contention
- Factual Question: The primary point of contention will be evidentiary. The complaint makes a general allegation of infringement without pleading specific facts as to how the accused Wood Runner AirPick system performs each step of the method of claim 7. A central question for the court will be what evidence Plaintiff can produce to show that the accused system actually operates using distinct, laterally offset "work" and "service" areas connected by "shuttle paths" as claimed.
- Scope Questions: The dispute may turn on the scope of the method steps. For instance, does the claim term "selectively translating the plurality of lumber supports individually" require fully independent, automated movement of each support as shown in the patent's figures, or could it read on a system with a different, possibly manual or semi-automated, method for repositioning lumber stacks?
V. Key Claim Terms for Construction
The Term: "service area laterally offset to the work area"
- Context and Importance: This phrase is fundamental to the claimed method's spatial organization. Its construction will determine the required physical layout of an infringing system—specifically, whether it must contain two distinct, parallel zones for operation and replenishment, or if a more integrated configuration could fall within the claim's scope.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself does not specify a minimum distance, physical barrier, or degree of separation, which may support a construction where the areas are simply adjacent and functionally distinct.
- Evidence for a Narrower Interpretation: The specification and Figure 7 consistently depict the "work area" (228) and "service area" (230) as physically separate and non-overlapping regions, connected by "shuttle paths" (238) that traverse the "lateral direction" (224). This could support a narrower construction requiring two demonstrably separate zones.
The Term: "material handling vehicle"
- Context and Importance: The final limitation of claim 7 requires that a "material handling vehicle" perform the lumber replenishment steps. The definition of this term is critical to determining what kind of equipment and what process satisfies this element.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification provides an explicit and broad definition: "The term, 'material handling vehicle,' means any lumber transporter. Examples... include, but are not limited to, a forklift truck, manual forklift, pallet truck, pallet jack, dolly, cart, stacker, walkie stacker, etc." (’244 Patent, col. 7:18-24). This language suggests the term should be given a broad, non-limiting meaning.
- Evidence for a Narrower Interpretation: A party might argue that, read in the context of the entire claim, the "material handling vehicle" must be a component capable of performing the specific sequence of replenishment steps (moving a support to the service area, delivering boards, and returning it). This could be used to argue that a generic cart or dolly that is not used in this specific, claimed sequence does not meet the limitation as claimed.
VI. Other Allegations
Indirect Infringement
- The complaint alleges both induced and contributory infringement. Inducement is based on allegations that Defendants provide customers with "detailed customer protocols and instructions" and "on-site technical assistance" to encourage use of the infringing method (Compl. ¶30). Contributory infringement is based on allegations that the Wood Runner AirPick is "especially made or especially adapted" for infringement and is not a staple article of commerce with substantial non-infringing uses (Compl. ¶27-28).
Willful Infringement
- The complaint alleges willful infringement based on Defendants' alleged "actual knowledge" of the ’244 Patent (Compl. ¶31). This allegation is supported by the factual assertion that Defendant Weinschenk is a co-inventor of the patent who previously assigned his rights to the Plaintiff (Compl. ¶20-21, ¶31).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of evidentiary sufficiency: The complaint provides a narrative of wrongdoing but is sparse on technical facts linking the accused product to the patent claims. The case will likely depend on whether Plaintiff can produce discovery evidence that the "Wood Runner AirPick" system, as commercially implemented, practices the specific, multi-step method of claim 7, particularly the spatial organization of distinct "work" and "service" areas and the claimed replenishment cycle.
- The case also presents a significant question of infringer's knowledge and intent: The allegation that the lead defendant is a co-inventor of the asserted patent who assigned away his rights creates a powerful narrative for willfulness. A key question will be how this unique fact influences the entire litigation, from claim construction disputes, where the inventor's understanding may be referenced, to the ultimate determination of whether any infringement was "willful, deliberate, and intentional."