Smarte Jack Inc v. Beach King Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Smarte Jack, Inc. (Minnesota)
  • Defendant: Beach King, Inc. (Minnesota); Dan Schultz (Minnesota); Boats, Inc. dba J&K Marine (Minnesota)
  • Plaintiff’s Counsel: Westman, Champlin & Koehler, P.A.
• Case Identification: 0:17-cv-01480, D. Minn., 05/04/2017
• Venue Allegations: Venue is alleged to be proper in the District of Minnesota because the Defendants are Minnesota residents or corporations that transact business in the state and have allegedly committed acts of infringement within the district.
• Core Dispute: Plaintiff alleges that Defendants' wheel jack products for boat lifts infringe a patent related to a method for leveling a boat lift using retractable wheel assemblies.
• Technical Context: The technology concerns retractable wheel systems for large structures like boat lifts, which are designed to simplify the seasonal process of installing, leveling, and removing these heavy items from bodies of water.
• Key Procedural History: The complaint alleges that Plaintiff provided written notice of the patent-in-suit to Defendants Beach King and Dan Schultz on January 31, 2014, over three years prior to the filing of the lawsuit. This pre-suit notice is cited as a basis for willfulness.

Case Timeline

Date	Event
2009-01-21	U.S. Patent No. 8,596,906 Priority Date
2013-12-03	U.S. Patent No. 8,596,906 Issue Date
2014-01-31	Plaintiff provides written notice of '906 patent to Defendants
2014-03-01	Plaintiff obtains copy of Defendant's brochure (approx. date)
2016-09-23	Alleged sale of accused "DANS WHL JACK" product
2017-04-19	Alleged sale of accused "WHEEL JACKS ONE PAIR W" product
2017-05-04	Complaint Filing Date

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

U.S. Patent No. 8,596,906 - "Retractable Wheel for Boat Lift and Other Structures," issued December 3, 2013

The Invention Explained

• Problem Addressed: The patent's background section describes the difficulty of installing and removing heavy, freestanding boat lifts, a task often required in northern climates where water freezes. (’906 Patent, col. 1:36-43). The patent notes that using wheels can be problematic if the lakebed is sloped, and chocking the wheels to prevent movement can be an "unpleasant" task requiring a user to go underwater. (’906 Patent, col. 1:51-58).
• The Patented Solution: The invention is a retractable wheel assembly that can be attached to a boat lift. The core of the solution is a mechanism, typically a threaded rod, that allows a user to adjust the vertical position of the wheels by turning the rod's head with a tool from above the water. (’906 Patent, col. 4:41-47). This mechanism enables a user to easily roll the lift into position, level it by independently adjusting the wheels on each side, and then retract the wheels upward so the lift rests securely on its own support legs. (’906 Patent, col. 4:29-41).
• Technical Importance: The described invention offers a method to manage heavy boat lifts that avoids underwater work and the need for brute force, allowing an individual to perform installation, leveling, and removal. (’906 Patent, col. 4:34-41).

Key Claims at a Glance

• The complaint asserts "at least claim 10" of the ’906 patent (Compl. ¶35). Claim 10 is an independent method claim.
• The essential elements of independent claim 10 are:
  • A method of leveling a boat lift, comprising:
  • placing a socket tool onto a head of a first threaded rod;
  • rotating the head of the first threaded rod in a substantially horizontal plane with the tool to cause substantially vertical movement of a first portion of the boat lift;
  • placing the socket tool onto a head of a second threaded rod;
  • rotating the head of the second threaded rod in a substantially horizontal plane with the tool to cause substantially vertical movement of a second portion of the boat lift;
  • each threaded rod being attached to a wheel assembly of the lift;
  • causing vertical movements of the first and second portions until the boat lift is horizontally level; and
  • retracting the wheel assemblies upwardly.
• The complaint’s reference to "one or more claims, including at least claim 10" suggests the possibility that dependent claims may be asserted later in the litigation (Compl. ¶35).

III. The Accused Instrumentality

Product Identification

The accused products are identified by names such as "DANS WHL JACK" and "WHEEL JACKS ONE PAIR W," which are sold by Defendants (Compl. ¶36).

Functionality and Market Context

• The accused products are wheel jacks sold as a pair for attachment to boat lifts (Compl. ¶38). They are alleged to include two threaded rods, each with a head that can be rotated to raise or lower a wheel mount (Compl. ¶41; p. 11). This functionality allows a user to adjust the height of different parts of the boat lift (Compl. p. 11). The complaint includes a photograph of the accused product, which shows two elongated metal housings with mounting plates and externally accessible heads for rotation. (Compl. p. 11).
• The complaint alleges that the accused products are sold as direct substitutes for the Plaintiff's own "SMARTE JACK®" product and that Defendants have used Plaintiff's branding to confuse customers and facilitate a "bait and switch" (Compl. ¶¶ 45, 71, 80).

IV. Analysis of Infringement Allegations

'906 Patent Infringement Allegations

Claim Element (from Independent Claim 10)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
placing a socket tool onto a head of a first threaded rod;	The accused product is alleged to include two threaded rods, each having a head that can be engaged to be rotated. The complaint references a brochure allegedly illustrating this use.	¶¶41, 42	col. 6:31-33
rotating the head of the first threaded rod in a substantially horizontal plane with the tool to thereby cause substantially vertical movement of a first portion of the boat lift;	It is alleged that engaging and rotating each head of the accused product's threaded rods causes the wheel mount to raise or lower, resulting in vertical movement of a portion of the boat lift.	¶37; p. 11	col. 6:33-37
placing the socket tool onto a head of a second threaded rod; and	The accused product is alleged to be sold as a pair containing a second threaded rod with a head, intended for similar use as the first.	¶¶38, 41	col. 6:38-39
rotating the head of the second threaded rod in a substantially horizontal plane with the tool to thereby cause substantially vertical movement of a second portion of the boat lift;	This functionality is alleged to be identical to that of the first threaded rod. A photograph in the complaint displays two such mechanisms with callouts identifying the heads of both rods. (Compl. p. 11).	¶37	col. 6:40-44
each threaded rod being attached to a wheel assembly of the lift;	The complaint alleges that the accused products include equipment for mounting the threaded rods to wheel assemblies, which are in turn mounted to a boat lift.	¶39	col. 6:45-46
thereby causing substantially vertical movements of the first and second portions of the boat lift until the boat lift is horizontally level; and	The complaint asserts that the accused product, when installed, is used to level a boat lift by causing "substantially vertical movements of the first and second portions of the boat lift until the boat lift is horizontally level."	¶37	col. 6:47-50
retracting the wheel assemblies upwardly.	The complaint alleges that the infringing method includes this final step. A photograph illustrates arrows indicating the direction of retraction of the wheel assembly. (Compl. p. 11).	¶37	col. 6:51-52

Identified Points of Contention

• Scope Questions: The asserted claim is for a "method of leveling a boat lift." A threshold question is whether the preamble is limiting. If so, infringement will require proof that the accused products are not only capable of this function but are actually used for the complete, multi-step process of "leveling" as defined by the claim body.
• Technical Questions: Since Claim 10 is a method claim, a central issue is how the Plaintiff will prove direct infringement by the Defendants, who are alleged to be manufacturers and sellers. The complaint alleges both direct and indirect infringement (Compl. ¶35), but proving that the Defendants themselves performed all steps of the method presents a high evidentiary bar. This suggests the case may depend heavily on the indirect infringement allegations, which require proof that Defendants' actions, such as providing instructional brochures, induced end-users to perform the claimed method.

V. Key Claim Terms for Construction

The Term: "substantially vertical movement"

• Context and Importance: This term appears twice in Claim 10 to describe the result of rotating the threaded rods. The infringement analysis will depend on whether the movement caused by the accused device qualifies as "substantially vertical." Practitioners may focus on this term because any significant deviation from pure vertical motion in the accused device could be a basis for a non-infringement argument.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent does not appear to provide an explicit definition. A party might argue that in the context of a large, complex structure like a boat lift, any predominantly upward or downward motion resulting from the adjustment mechanism meets the "substantially vertical" requirement.
  • Evidence for a Narrower Interpretation: The figures, such as Figure 2, depict an inner support (26) sliding within an outer support (24) in a strictly linear fashion along arrow 30. ('906 Patent, Fig. 2; col. 3:9-14). A party could argue this embodiment limits the term to purely linear vertical travel, excluding any rotational or arc-like motion.

The Term: "retracting the wheel assemblies upwardly"

• Context and Importance: This is the final step of the claimed method. Its definition is critical because infringement requires this action to be performed or induced. The dispute will likely center on how much upward movement is required to constitute "retracting."
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim language itself does not specify a degree of retraction. One could argue that any upward movement of the wheels after the leveling step is complete would meet the literal language of the claim.
  • Evidence for a Narrower Interpretation: The specification suggests a specific purpose for retraction: to disengage the wheels from the ground so the boat lift "engages the ground" and "stands on its own four legs." (’906 Patent, Abstract; col. 4:45-47). This context may support a narrower construction requiring retraction sufficient to transfer the structure's weight off the wheels and onto its primary supports.

VI. Other Allegations

• Indirect Infringement: The complaint alleges facts to support both induced and contributory infringement. For inducement, it alleges Defendants had pre-suit knowledge of the patent and provided customers with a brochure that "illustrates that the wheel jack as should be used" in a manner that allegedly tracks the limitations of claim 10 (Compl. ¶¶ 34, 42, 44, 49). For contributory infringement, it alleges the accused products are a "material part" of the patented invention, are "not staples or commodities of commerce," and have "no substantial uses that do not infringe" (Compl. ¶¶ 53, 55).
• Willful Infringement: The complaint alleges willful infringement based on Defendants' alleged continuation of infringing activities after receiving written notice of the ’906 patent on January 31, 2014 (Compl. ¶¶ 34, 56). The continued conduct is characterized as being in "objective and subjective reckless disregard" of the patent (Compl. ¶57).

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

• A core issue will be one of infringement theory: Given that the asserted patent claim is a method claim, the case will likely turn on whether Plaintiff can prove its allegations of indirect infringement. This will require evidence that Defendants' instructions and marketing materials actively encouraged and enabled end-users to perform the complete, multi-step method recited in Claim 10.
• A key evidentiary question will be one of proof of the infringing act: Can the Plaintiff produce sufficient evidence, beyond the Defendants' instructional materials, that end-users actually perform the entire claimed method, including both the "leveling" and final "retracting" steps? The strength of the inducement claim will depend on the clarity and completeness of the instructions allegedly provided by Defendants.
• The case may also hinge on a question of claim scope: The construction of the term "retracting the wheel assemblies upwardly" will be critical. The central question for the court will be whether this term requires a full disengagement of the wheels, as suggested by the patent's description of its purpose, or if any degree of upward movement after leveling is sufficient to meet the claim limitation.