DCT

2:24-cv-06379

JB Custom Offshore Rigging Fishing Tackle Inc v. Sterling Tackle LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:24-cv-06379, D.N.J., 06/25/2024
  • Venue Allegations: Venue is alleged to be proper in the District of New Jersey because the Defendant is a New Jersey company with its principal place of business in the district, and because a substantial part of the events giving rise to the claim allegedly occurred in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s trolling-type fishing lures infringe two patents related to a "sidetracker" technology that allows a lure to be steered laterally in the water.
  • Technical Context: The technology involves hydrodynamic guides for fishing lures used in trolling, which enable anglers to spread multiple fishing lines across a wider area behind a boat, increasing the chances of a catch.
  • Key Procedural History: The complaint alleges that Plaintiff sent Defendant a notice letter with detailed infringement claim charts on April 15, 2024, putting Defendant on notice of the alleged infringement prior to the filing of the lawsuit. This event is cited as a basis for the willfulness allegations.

Case Timeline

Date Event
2018-03-18 Earliest Priority Date for ’824 and ’771 Patents
2021-08-17 U.S. Patent No. 11,089,771 Issued
2022-01-01 Alleged Infringing Activity by Defendant Begins "at least" by this year
2023-11-28 U.S. Patent No. 11,825,824 Issued
2024-04-15 Plaintiff sends notice letter to Defendant
2024-06-25 Complaint Filed

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

U.S. Patent No. 11,825,824 - "Sidetracker"

  • Patent Identification: U.S. Patent No. 11,825,824, "Sidetracker", issued November 28, 2023.

The Invention Explained

  • Problem Addressed: The patent addresses the challenge in offshore sportfishing of effectively deploying lures. The background describes angling methods, including trolling with artificial lures to mimic prey and entice large fish (e.g., marlin, tuna) to strike a hook (’824 Patent, col. 1:22-48). The implicit technical problem is maximizing the area covered by trolled lures.
  • The Patented Solution: The invention is a "directional guide" or "sidetracker" for a fishing lure system. It comprises a main body, often torpedo-shaped, with fins to control its vertical position in the water. The core innovation is a rotatable "keel" (also referred to as a "wing" or "rudder") that can be secured in one of several grooves on the body's underside. By selecting a specific groove, the user can set the keel at different angles, causing the lure to track straight behind the boat, or to port (left), or to starboard (right), thereby creating a wider spread of lures (’824 Patent, Abstract; col. 7:1-12).
  • Technical Importance: This adjustable tracking capability allows anglers to manage multiple fishing lines simultaneously without tangling and to present lures over a much larger swath of water than would be possible if all lures tracked directly behind the boat (’824 Patent, col. 7:13-21).

Key Claims at a Glance

  • The complaint does not specify which claims are asserted but reserves the right to identify them later. For illustrative purposes, independent claim 1 is representative.
  • Independent Claim 1 of the ’824 Patent includes these essential elements:
    • A body with a first fin and a second fin configured to control vertical position.
    • At least one groove formed in the bottom surface of the body.
    • A keel rotatably coupled with the bottom surface of the body.
    • The groove is configured to guide a rotational position of the keel.
    • At least one screw extending through the keel, allowing the keel to be rotated between positions while remaining connected to the body.

U.S. Patent No. 11,089,771 - "Sidetracker"

  • Patent Identification: U.S. Patent No. 11,089,771, "Sidetracker", issued August 17, 2021.

The Invention Explained

  • Problem Addressed: As a parent patent in the same family, the ’771 Patent addresses the same technical problem of controlling the lateral spread of trolled fishing lures (’771 Patent, col. 1:12-44).
  • The Patented Solution: The ’771 Patent describes a sidetracker with a similar body, fins, and a rotatable keel. The claims focus on the mechanism securing the keel, describing a screw that allows the keel to be "advanced away from the body along the vertical axis while still being coupled to the body" to enable its rotation between different orientations (’771 Patent, col. 6:33-38). This "lift-and-turn" mechanism is the key to adjusting the lure's lateral tracking direction. The specification also discloses that the keel can be rotated 360 degrees when advanced away from the body ('771 Patent, col. 6:40-45).
  • Technical Importance: The invention provides a robust and adjustable method for steering a trolling lure, which is foundational to the technology asserted in the litigation (’771 Patent, col. 5:1-12).

Key Claims at a Glance

  • The complaint does not specify which claims are asserted. For illustrative purposes, independent claim 1 is representative.
  • Independent Claim 1 of the ’771 Patent includes these essential elements:
    • A body with a first fin and a second fin.
    • A keel extending along a vertical axis from the body's bottom surface, rotatably secured to the body.
    • A screw extending through the height of the keel to secure it.
    • The keel is configured to be advanced away from the body along the vertical axis while still coupled by the screw, and rotated between a first and second rotational orientation.

III. The Accused Instrumentality

Product Identification

The accused products are Sterling Tackle, LLC's fishing lures, referred to in the complaint as the "Knock-Off Side Tracker" and marketed as the "Dial Tracker" (Compl. ¶¶ 20, 24).

Functionality and Market Context

The complaint alleges the accused product is a competing fishing lure used for trolling that incorporates the patented sidetracker technology (Compl. ¶¶ 20, 25). It is alleged to have "nearly identical features" and to operate in the same way as Plaintiff's "Side Tracker®" product to achieve the same result of lateral tracking (Compl. ¶25). The complaint provides a photograph of the accused "Dial Tracker" lure, which shows a central body, side fins, and what appears to be an adjustable rudder or keel mechanism on its underside (Compl. p. 7). The complaint also alleges that the Defendant modified its product design around 2022 to "more closely resemble the design of Chatter Lures' Side Tracker® lure," supporting this with a comparative image (Compl. ¶22, p. 6). This image, reproduced from a letter, shows Defendant's 2017 product with squid-shaped lures and its 2022 product with bird-shaped lures that allegedly mimic Plaintiff's design (Compl. p. 6).

IV. Analysis of Infringement Allegations

The complaint references exemplary claim charts in "Exhibit C" to detail its infringement theory; however, this exhibit was not attached to the publicly filed complaint (Compl. ¶21). In the absence of claim charts, the infringement theory is based on the complaint's narrative allegations.

The core of the infringement theory is that the accused "Knock-Off Side Tracker" or "Dial Tracker" lure is a direct copy of Plaintiff's commercial embodiment of the patents-in-suit (Compl. ¶22). Plaintiff alleges that Defendant's product has "nearly identical features," "operates and/or purports to operate in the same way," and "provides and/or purports to provide the same result as the Side Tracker®'s claimed features" (Compl. ¶25). A visual comparison provided in the complaint purports to show that Sterling altered its product design between 2017 and 2022 to adopt features, such as bird-shaped lures, that are "ornamentally indistinguishable from the Chatter Lures design," suggesting intentional copying of the overall configuration (Compl. ¶22, p. 6).

Identified Points of Contention

  • Technical Questions: A central question will be whether the mechanism on Sterling's "Dial Tracker" for adjusting direction operates in the specific manner claimed in the patents. For instance, the complaint does not provide evidence showing that the accused device's keel can be "advanced away from the body along the vertical axis while still being coupled to the body by the screw," as required by claim 1 of the ’771 Patent. The actual mechanics of the accused device's adjustment feature will be a focal point of discovery and expert analysis.
  • Scope Questions: The interpretation of terms like "keel" and "rotatably coupled" will be critical. The patents use "keel," "wing," and "rudder" interchangeably, which may support a broad construction. However, the specific "lift-and-turn" functionality described in the patents could be used to argue for a narrower scope that the accused product may not meet.

V. Key Claim Terms for Construction

  • The Term: "keel"

    • Context and Importance: This term defines the primary steering component of the invention. Its construction will determine whether the corresponding feature on the accused "Dial Tracker" falls within the scope of the claims. Practitioners may focus on this term because the patents use it interchangeably with "wing" and "rudder," creating ambiguity.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification explicitly states, "The wing (20) may be interchangeably referred to and understood as a ‘keel’ or a ‘rudder’," suggesting the term is not limited to a specific shape but rather refers to the functional component that provides lateral control (’824 Patent, col. 4:41-44).
      • Evidence for a Narrower Interpretation: The figures and embodiments consistently depict the "keel" as a distinct component that is detachably or rotatably affixed to the main body's underside, separate from the primary stabilizing fins (’824 Patent, FIG. 5). A party could argue the term is limited to this type of structure and does not encompass other forms of adjustable hydrofoils.

  • The Term: "configured to be advanced away from the body along the vertical axis while still being coupled to the body by the screw" (from ’771 Patent, claim 1)

    • Context and Importance: This phrase describes a specific, dynamic function of the claimed "lift-and-turn" mechanism. Infringement of this claim will hinge on whether the accused product's adjustment mechanism performs this precise action.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: A party might argue this language simply describes any mechanism that allows the keel to disengage from a groove for rotation without being fully detached, focusing on the outcome rather than the precise path of movement.
      • Evidence for a Narrower Interpretation: The language is highly specific, defining movement "along the vertical axis" while remaining "coupled by the screw." This phrasing strongly suggests a specific engineering design where the keel slides up the screw shaft before rotating. Evidence that the accused product uses a different rotational method (e.g., a pivot without vertical advancement) could support a finding of non-infringement.

VI. Other Allegations

  • Indirect Infringement: The complaint does not contain separate counts for indirect infringement. However, it alleges that Sterling's product is "particularly made or adapted for use in infringing" the patents, which tracks the language of contributory infringement under 35 U.S.C. § 271(c) (Compl. ¶25).
  • Willful Infringement: The complaint explicitly pleads willful infringement for both patents (Compl., Counts I & II). The primary basis for this allegation is Defendant's continued infringement "since at least the April 15, 2024 date that Chatter Lures provided to Sterling a notice letter and detailed infringement claim charts," establishing alleged post-notice knowledge and intent (Compl. ¶¶ 32, 42).

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

  1. A core issue will be one of claim construction and functional operation: Can the specific "lift-and-turn" mechanism described in the patents—particularly the requirement that the keel be "advanced away from the body along the vertical axis" while remaining coupled—be proven to read on the adjustment feature of Sterling's "Dial Tracker" lure, or is there a fundamental mismatch in their mechanical operation?
  2. A second key issue concerns intent and design evolution: Will the evidence, including the comparative photographs provided in the complaint, persuade a fact-finder that Sterling intentionally copied Plaintiff's patented design to create a "knock-off" product, or will Sterling be able to demonstrate that its design changes were the result of independent development or common industry trends?
  3. Finally, the case raises an evidentiary question regarding the scope of infringement: In the absence of the complaint's "Exhibit C" claim charts, the infringement allegations remain general. A central point of contention will be the development of evidence through discovery that maps specific features of the accused product to the detailed limitations of the asserted patent claims.