DCT
1:21-cv-08158
Miller Industries Towing Equipment Inc v. NRC Industries
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Miller Industries Towing Equipment Inc. (Delaware)
- Defendant: NRC Industries (Canada)
- Plaintiff’s Counsel: Walsh Pizzi Oreilly Falanga LLP
- Case Identification: 1:21-cv-08158, D.N.J., 04/05/2021
- Venue Allegations: Venue in the District of New Jersey is alleged based on Defendant’s distribution of accused products through a New Jersey dealer, advertising in trade publications disseminated in New Jersey, marketing at New Jersey trade shows, and a prior acknowledgement of jurisdiction in the state during a related, dismissed litigation.
- Core Dispute: Plaintiff alleges that Defendant’s rotating wrecker models infringe a patent related to an extendable and retractable control panel designed to improve operator ergonomics and safety.
- Technical Context: The technology concerns control systems for heavy-duty wrecker vehicles used in the recovery of large roadway obstructions, such as overturned semi-trailers.
- Key Procedural History: The complaint notes a prior patent infringement lawsuit between the parties in the Eastern District of Tennessee involving the same patent and products, which was dismissed for lack of personal jurisdiction. It also alleges that Defendant cited the patent-in-suit as "principal" prior art during the prosecution of its own patent, a fact which may be relevant to the claim for willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2014-04-07 | U.S. Patent No. 9,440,577 ('577 Patent) Priority Date |
| 2016-09-13 | '577 Patent Issue Date |
| 2017-09-20 | Alleged date of NRC's knowledge of '577 Patent via its own patent application |
| 2018-09-01 | Approximate date Plaintiff observed alleged infringement (Fall 2018) |
| 2021-04-05 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,440,577, “Vehicle Wrecker With Improved Controls,” Issued September 13, 2016
The Invention Explained
- Problem Addressed: The patent’s background section describes that conventional controls for heavy wreckers are often located inside a toolbox mounted on the vehicle’s side. This arrangement can be uncomfortable for an operator, who must bend over to access the controls, and it may also obstruct the operator's sightlines to the boom and the recovery scene ('577 Patent, col. 1:31-41).
- The Patented Solution: The invention proposes moving the wrecker controls onto a panel that can be moved from a stored position inside a vehicle compartment to an operable position outside and away from the vehicle body. As described in the detailed description and illustrated in Figure 2, this is preferably achieved by mounting the control console on a hinged, outwardly-opening door of a toolbox, allowing the operator to stand upright with a clearer view during operation ('577 Patent, col. 2:4-12, col. 4:13-24).
- Technical Importance: This design aims to improve operator safety and efficiency by providing a more ergonomic control station and enhancing the operator’s ability to visually monitor the complex and potentially dangerous movements of the wrecker's boom and winch systems ('577 Patent, col. 2:45-52).
Key Claims at a Glance
- The complaint asserts independent claims 1 (apparatus) and 16 (method).
- Independent Claim 1 recites a wrecker-type recovery vehicle with essential elements including:
- A vehicle frame, body, and an extensible/retractable boom.
- Manually-manipulable wrecker controls on a control panel stored within an interior compartment.
- The control panel is moveable from a first, storage position (where it closes off the compartment) to a second, operable position displaced from and outside the compartment.
- In the second position, the control panel provides an open compartment, is downwardly-angled relative to the ground, and remains supported by the vehicle body.
- The displacement creates a "strategic location" for the controls, providing an "ergonomically-enhanced work surface."
- Independent Claim 16 recites a method of controlling a wrecker with essential steps including:
- Providing a wrecker with a frame, body, and boom.
- Providing manually-manipulable wrecker controls on a control panel that is part of an outwardly-opening door of an interior compartment.
- Moving the control panel from a first, storage position to a second, operable position outside the vehicle exterior.
- This movement provides an operator with "substantially expanded sightlines" and an "ergonomically-enhanced work surface."
- The complaint also asserts dependent Claims 2, 3, 6, 11, 20, and 21, and reserves the right to assert others (Compl. ¶¶ 12-15, 17-18, 25).
III. The Accused Instrumentality
- Product Identification: The accused instrumentalities are Defendant’s rotating wrecker models, specifically the NRC CSR 50, 65, and 85, which are equipped with what the complaint terms the "Infringing Controls" (Compl. ¶9).
- Functionality and Market Context: The complaint alleges these wreckers are sold with a "Retractable main control station with fully proportional paddle style controls" as standard equipment (Compl. ¶9). The functionality at issue is this extendable control system. The complaint alleges that these wreckers are sophisticated, expensive machines, typically retailing for "one-half million dollars or more," and that NRC is a direct competitor to Miller in a "relatively exclusive" market (Compl. ¶¶ 7, 9, 10). The complaint further alleges at least two sales of the accused products into New Jersey (Compl. ¶10).
IV. Analysis of Infringement Allegations
The complaint alleges that NRC's rotating wreckers directly infringe the '577 patent. For example, the complaint references "photos of NRC exhibiting the infringing products at the 2019 Atlantic City, NJ (Atlantic Co., NJ) tow show," which purport to show the accused control station (Compl. ¶5).
'577 Patent Infringement Allegations (Claim 1)
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a) a vehicle frame extending along a longitudinal axis, the vehicle frame supporting a vehicle body that carries an extensible and retractable boom; | The accused NRC products are alleged to be wrecker-type recovery vehicles with a frame, body, and boom (Compl. ¶11). | ¶11(a) | col. 8:31-34 |
| b) manually-manipulable wrecker controls located on and supported by a control panel stored within an interior compartment of the wrecker, which is supported by the vehicle body; | The accused products allegedly have wrecker controls on a control panel stored in an interior compartment (Compl. ¶11). | ¶11(b) | col. 8:35-39 |
| c) wrecker controls designed to manipulate movement of wrecker components useful in vehicle recovery... | The accused controls are alleged to manipulate wrecker components for vehicle recovery (Compl. ¶11). | ¶11(c) | col. 8:39-43 |
| d) the control panel can be moved from a first, storage position within the interior compartment of the vehicle body... to a second, operable position displaced from and outside the compartment and remote from the vehicle exterior... | The accused control panel is allegedly moveable from a storage position to an operable position outside the compartment, with the complaint asserting that since the panel is part of the compartment door, it closes off the compartment (Compl. ¶11). | ¶11(d) | col. 8:44-53 |
| e) the control panel in the second position provides an open interior compartment in which the wrecker controls are located... the control panel is downwardly-angled relative to the ground such that the distal end is located remote from the vehicle body... | When in the second position, the accused control panel is allegedly downwardly-angled (Compl. ¶11). | ¶11(e) | col. 8:54-60 |
| f) the control panel is supported by the vehicle body while in the second position, and the displacement... providing an operator with an ergonomically-enhanced work surface. | The displacement of the accused control panel allegedly provides an ergonomically-enhanced work surface (Compl. ¶11). | ¶11(f) | col. 8:60-62 |
'577 Patent Infringement Allegations (Claim 16)
| Claim Element (from Independent Claim 16) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a) providing a wrecker vehicle frame extending along a longitudinal axis, the vehicle frame including a vehicle body with side surfaces, and the vehicle frame carrying an extensible and retractable boom; | The accused products are alleged to be wrecker-type vehicles with these features (Compl. ¶16). | ¶16(a) | col. 10:21-26 |
| b) providing manually-manipulable wrecker controls located on and supported by a control panel... stored within an interior compartment of the vehicle body; | The accused products are alleged to have controls on a panel stored within a compartment (Compl. ¶16). | ¶16(b) | col. 10:27-31 |
| c) a control panel that includes an outwardly-opening door associated with the interior compartment... such that when the door is closed, a closed interior compartment is formed... | The accused products allegedly have a control panel on an outwardly-opening door that forms a closed compartment (Compl. ¶16). | ¶16(c) | col. 10:31-38 |
| d) when the control panel door is opened, the control panel is moveable from a first, storage position... to a second, operable position in which the control panel is displaced from and outside the interior compartment... | The accused control panel is alleged to be moveable from a storage to an operable position outside the vehicle body (Compl. ¶16). | ¶16(d) | col. 10:39-49 |
| e) the wrecker controls can be manipulated when in the second position, such that an operator... has substantially expanded sightlines... providing an operator with an ergonomically-enhanced work surface. | The use of the accused control station allegedly provides the operator with expanded sightlines and an ergonomic work surface compared to when the panel is in the retracted position (Compl. ¶16). | ¶16(e) | col. 10:50-57 |
- Identified Points of Contention:
- Scope Questions: The claims recite a control panel "stored within an interior compartment" that "closes off the interior compartment" in its first position. A central question may be whether the accused control panel, which the complaint describes as being "part of, the compartment door" (Compl. ¶11(d)), meets the specific structural and spatial requirements of being "stored within" the compartment, or whether it is merely mounted to the exterior of the door.
- Technical Questions: Claim 1 requires the panel in its second position to be "downwardly-angled relative to ground." The litigation will require factual evidence demonstrating the precise orientation of the accused product's control station when deployed to determine if it meets this geometric limitation. Similarly, the functional language "ergonomically-enhanced work surface" and "substantially expanded sightlines" will require evidence comparing the accused product's performance to the state of the art described in the patent.
V. Key Claim Terms for Construction
The Term: "stored within an interior compartment"
- Context and Importance: This term is critical for defining the starting position of the claimed control panel. The infringement analysis for both asserted independent claims depends on whether the accused product's control station is considered "stored within" a compartment before being moved to its operable position.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification discusses locating controls "on an outwardly-opening door associated with a compartment" ('577 Patent, col. 2:5-7), which a party might argue covers a control panel that is integral to the door itself, rather than being a separate component placed inside a box.
- Evidence for a Narrower Interpretation: Figure 4 depicts the outline of the control console (30) as being contained "within the compartment of tool box 24" when the door is closed. This figure, along with the plain meaning of "within," could support an interpretation that the panel must physically reside inside the spatial boundaries of the compartment in its stored state.
The Term: "downwardly-angled relative to ground"
- Context and Importance: This term appears in apparatus claim 1 and method claim 21 (which is asserted), adding a specific geometric constraint. Infringement of these claims will turn on whether the accused product's deployed control station exhibits this orientation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue that any angle below horizontal qualifies as "downwardly-angled," requiring a simple geometric assessment.
- Evidence for a Narrower Interpretation: The specification links this orientation to function, stating the angle is chosen "to create an ergonomic-oriented work station" ('577 Patent, col. 2:10-12) and to place it "in about the same plane as the arms of an operator" ('577 Patent, col. 4:21-24). This context could be used to argue that the term requires an angle that actually achieves a demonstrable ergonomic benefit, not just any non-zero downward angle.
VI. Other Allegations
- Indirect Infringement: The complaint does not contain a separate count for indirect infringement, focusing instead on allegations of direct infringement by Defendant through its "manufacture, marketing, distribution and sale" of the accused products (Compl. ¶24).
- Willful Infringement: The complaint alleges that NRC had pre-suit knowledge of the '577 Patent since at least September 20, 2017. The basis for this allegation is that NRC cited the '577 Patent during the prosecution of its own patent application, and the USPTO examiner characterized the '577 Patent as the "principal" reference against NRC's application (Compl. ¶19). The complaint also alleges knowledge from a prior lawsuit between the parties over the same patent and products (Compl. ¶19).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction and scope: can the phrase "stored within an interior compartment," as used in the claims, be construed to read on a control station that is integrated into the structure of a compartment door, or does it require the panel to be located physically inside the compartment's confines when stored?
- A key evidentiary question will be one of factual correspondence: does the accused NRC control station, when in its operable position, meet the specific geometric and functional limitations of the asserted claims, particularly the requirements that it be "downwardly-angled relative to ground" and provide an "ergonomically-enhanced work surface"?
- The claim for willfulness will likely be a significant focus of the litigation. The court will need to assess the evidence of Defendant’s alleged pre-suit knowledge, particularly the prosecution history of its own patent where it cited the patent-in-suit, to determine if any infringement was "willful."