Herrick Tackle LLC v. Outdoor Performance Gear LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Herrick Tackle LLC (Minnesota)
  • Defendant: Outdoor Performance Gear, LLC, d/b/a Tundra Tackle Co. (Minnesota) and Cannon Tackle Supply, Inc. (Minnesota)
  • Plaintiff’s Counsel: Larkin Hoffman Daly & Lindgren Ltd.; Panitch Schwarze Belisario & Nadel LLP
• Case Identification: 0:18-cv-03276, D. Minn., 11/29/2018
• Venue Allegations: Venue is alleged to be proper in the District of Minnesota because both defendants are organized or incorporated in Minnesota and maintain a regular and established place of business in the district.
• Core Dispute: Plaintiff alleges that Defendants’ light-emitting fishing lure infringes a patent related to a "potted" fishing jig with sealed, water-activated electronics.
• Technical Context: The technology concerns electronic fishing lures that use light to attract fish, a niche within the broader recreational fishing equipment market.
• Key Procedural History: The complaint alleges that the plaintiff provided the defendant with notice of the patent on August 21, 2018, approximately three months before filing suit. The inventor assigned the patent to the plaintiff entity on November 20, 2018, with the assignment made effective nunc pro tunc to the patent application's original filing date, a measure intended to secure standing to sue for past damages.

Case Timeline

Date	Event
2005-02-21	'075 Patent Priority Date
2011-11-22	'075 Patent Issue Date
2018-08-21	Plaintiff allegedly notifies Defendant OPG of infringement
2018-11-20	Inventor assigns '075 Patent to Plaintiff Herrick Tackle LLC
2018-11-29	Complaint Filing Date

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

U.S. Patent No. 8,061,075 - Potted Fishing Jig

• Issued: November 22, 2011

The Invention Explained

• Problem Addressed: The patent addresses the need for a durable, reliable, and effective electronic fishing lure. Conventional lures with electronic components may be susceptible to water damage or mechanical failure if dropped, and their battery life can be limited if not managed efficiently (’075 Patent, col. 2:60-65).
• The Patented Solution: The invention is a fishing jig where the electronic components—a battery, a light source, and the connecting circuitry—are "potted," or fully encapsulated, within a solid plastic body (’075 Patent, Abstract). This potting process seals the components from water and protects them from physical shock. The design features exposed electrical leads that act as a water-activated switch, completing the circuit to power the light only when the lure is submerged, thereby conserving battery life (’075 Patent, col. 5:50-col. 6:28). The light source is strategically placed near the hook's barb to entice fish to strike at the functional end of the lure (’075 Patent, col. 2:36-44).
• Technical Importance: The use of potting and a water-activated switch aims to create a more robust and longer-lasting electronic lure compared to designs that might use less durable seals or manual switches (’075 Patent, col. 2:57-65).

Key Claims at a Glance

• The complaint asserts independent claim 17 and dependent claim 18 (’Compl. ¶23).
• The essential elements of independent claim 17 include:
  • A plastic body.
  • Hardware located within the plastic body, comprising a battery, a light source, and an electrical lead arrangement.
  • The electrical lead arrangement has exposed portions extending outside the plastic body, which complete a circuit when in water to activate the light source.
  • The plastic body is "over and around and solid up to the surfaces of the hardware" and is "one-piece and integral."
• The complaint states infringement of "at least" these claims, preserving the option to assert others.

III. The Accused Instrumentality

Product Identification

The "FireFly potted fishing lure" ("Accused Product") (’Compl. ¶17).

Functionality and Market Context

The complaint describes the Accused Product simply as a "potted fishing lure" that Defendants make, use, sell, or import into the United States (’Compl. ¶17, ¶23). The complaint alleges that the Accused Product has no substantial noninfringing uses (’Compl. ¶20). No further technical details regarding the operation or construction of the Accused Product are provided in the complaint.

IV. Analysis of Infringement Allegations

The complaint alleges that the Accused Product infringes claims 17 and 18 of the ’075 patent, referencing an attached claim chart (Exhibit C) that was not included with the public filing (’Compl. ¶23). The narrative theory is that the "FireFly potted fishing lure" embodies the elements of the asserted claims. This includes possessing a plastic body that encapsulates a battery, a light source, and an electrical lead arrangement with exposed contacts for water activation, with the plastic body being a solid, one-piece structure (’Compl. ¶17, ¶23; ’075 Patent, Claim 17). The infringement is alleged to be either literal or under the doctrine of equivalents (’Compl. ¶23).

No probative visual evidence provided in complaint.

• Identified Points of Contention:
  • Scope Questions: The dispute may center on the construction of the term "potted in said plastic body." The patent emphasizes a specific construction where the plastic is "solid up to the surfaces of the hardware" and contains "no voids" (’075 Patent, col. 14:8-12). A key question for the court will be whether the Accused Product's construction meets this specific structural limitation, or if it utilizes a different assembly method (e.g., placing components within a hollow, sealed body).
  • Technical Questions: A primary evidentiary question will be establishing the internal structure of the Accused Product. What evidence will demonstrate that the FireFly lure contains a "one-piece and integral" plastic body formed around the hardware, as opposed to a multi-part assembly? The method of manufacture for the Accused Product will likely be a central factual issue.

V. Key Claim Terms for Construction

"potted in said plastic body"

• Context and Importance: This term appears in the patent’s title and is fundamental to the claimed invention's durability and structure. Practitioners may focus on this term because its construction will determine whether infringement requires a specific manufacturing process (e.g., injection molding around components) or if it can read on other methods of sealing electronics within a lure.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification frequently uses the phrase "at least partially potted" when describing embodiments, which could support an argument that complete, void-free encapsulation of every sub-component is not strictly required (’075 Patent, col. 1:44-47).
  • Evidence for a Narrower Interpretation: The patent’s summary and claims repeatedly describe the plastic body as being "solid," including "solid up to the surfaces of hardware" and containing "no voids" (’075 Patent, col. 2:30-34, col. 14:11-12). This language suggests a narrow definition requiring a monolithic structure with intimate contact between the plastic and the embedded hardware.

"solid up to the surfaces of the hardware"

• Context and Importance: This phrase, found in claim 17, specifies the nature of the "potting." Its interpretation is critical for distinguishing the invention from a lure that simply encloses components within a hollow cavity.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party could argue the term does not mandate perfect microscopic adhesion, but rather the general filling of all macroscopic space around the hardware components, as the patent does not specify a test for "voids."
  • Evidence for a Narrower Interpretation: The patent contrasts the invention by stating the "plastic of the plastic body includes no voids" and is "solid from end to end, from side to side, and from front to back" (’075 Patent, col. 2:33-34). This language may support a very restrictive construction requiring a void-free, solid-state encapsulation achieved through a specific molding process.

VI. Other Allegations

• Indirect Infringement: The complaint does not contain specific allegations of inducement or contributory infringement beyond stating that the Accused Product has "no substantial noninfringing uses" (’Compl. ¶20), a factual predicate often associated with such claims.
• Willful Infringement: The complaint alleges willful infringement based on pre-suit knowledge. It explicitly pleads that Defendant OPG was aware of the ’075 Patent "since at least August 21, 2018, when Plaintiff Herrick wrote to Defendant OPG to notify" it of the alleged infringement (’Compl. ¶19, ¶24).

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

• A core issue will be one of definitional scope and technical reality: Does the term "potted," as defined by the patent's requirement for a "solid" body with "no voids," read on the actual physical construction of the accused "FireFly" lure? The outcome may depend on whether the accused product is found to be a truly molded, solid-state unit or merely components placed within a sealed, hollow shell.
• A key evidentiary question will be one of proof of internal structure: Lacking detailed technical allegations in the complaint, the case will turn on evidence developed during discovery, such as product teardowns and analysis of the defendants' manufacturing processes, to determine if the accused lure's internal configuration meets every limitation of the asserted claims.