DCT
3:10-cv-00014
QSIndustries Inc v. BROADWAY Ltd Imports LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: QSIndustries, Inc. (Oregon), Frederick E. Severson, and Patrick A. Quinn
- Defendant: Broadway Limited Imports, LLC (Florida) and Precision Craft Models, Inc. (Florida)
- Plaintiff’s Counsel: Esler Stephens & Buckley
- Case Identification: 3:10-cv-00014, D. Or., 06/09/2011
- Venue Allegations: Plaintiff alleges venue is proper in the District of Oregon because Defendants have committed acts of patent infringement in the state and advertise, promote, offer for sale, and sell the accused products in Oregon.
- Core Dispute: Plaintiff alleges that Defendant’s control systems and decoders for model trains infringe patents related to using polarity reversals of a DC track power signal to control auxiliary functions, such as sound effects.
- Technical Context: The technology resides in the field of model railroad control systems, where enhancing realism through sophisticated sound and operational effects, beyond simple motion, is a key market differentiator.
- Key Procedural History: The complaint alleges that Defendant Broadway Limited Imports was previously a customer of Plaintiff QSI and sold products containing QSI's patented technology, which it marked with Plaintiff's patent number. Plaintiff further alleges that Defendants subsequently engaged a third party to develop a replacement system designed to infringe the patents-in-suit. One of the asserted patents, the ’142 Patent, was reissued as the ’284 Patent shortly before the filing of this amended complaint.
Case Timeline
| Date | Event |
|---|---|
| 1987-04-13 | Earliest Priority Date for ’142, ’284, and ’017 Patents |
| 1995-09-05 | U.S. Patent No. 5,448,142 Issued |
| 1999-04-20 | U.S. Patent No. 5,896,017 Issued |
| c. 2005 | Defendants allegedly requested development of infringing system |
| c. 2005-2006 | Defendants allegedly began selling accused ESU "LokSound v3.5 Decoder" |
| c. 2007-2008 | Defendants allegedly began selling their own accused decoder system |
| 2011-04-12 | U.S. Reissue Patent No. RE 42,284 E Issued |
| 2011-06-09 | Plaintiffs' First Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 5,448,142 - "Signaling Techniques for DC Track Powered Model Railroads"
The Invention Explained
- Problem Addressed: In conventional direct current (DC) powered model railroads, there was no established method for sending remote control signals to operate auxiliary functions like horns or bells. The power supply's primary signaling mechanism, reversing the DC polarity, was already used to control the locomotive motor's direction of travel. (’142 Patent, col. 4:26-31).
- The Patented Solution: The invention decouples the locomotive's motor from the raw track power. It introduces an on-board motor controller and a state generator. This architecture allows a polarity reversal (PR) of the DC track power to be interpreted as a control signal for triggering "remote effects" (e.g., sound) without causing an abrupt reversal of the motor. The motor's direction is controlled independently by the on-board electronics, which can be instructed to change direction through other means. (’142 Patent, Abstract; col. 7:1-9).
- Technical Importance: This approach enabled the addition of sophisticated, remote-controlled features to the large installed base of DC-powered model trains using their existing, simple power supplies. (’142 Patent, col. 5:11-24).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 2, 8, 10, and 15 (Compl. ¶14).
- Independent Claim 1:
- A model train locomotive for use on a track coupled to a power supply applying a polarity-reversible DC track power signal;
- a motor for driving the locomotive;
- means for isolating the motor from the track so as to allow use of polarity-reversals on the track power signal for controlling remote effects; and
- means responsive to polarity-reversals on the DC track power signal for controlling remote effects without reversing the motor.
U.S. Reissue Patent No. RE 42,284 E - "Signaling Techniques for DC Track Powered Model Railroads"
The Invention Explained
- Problem Addressed: This patent is a reissue of the ’142 Patent and addresses the same technical problem: the lack of a signaling method for auxiliary functions in traditional DC-powered model railroads. (’284 Reissue, col. 4:28-33). The complaint states the reissue "provided greater specificity of the scope of the invention" without expanding it (Compl. ¶24).
- The Patented Solution: The solution is identical to that of the ’142 Patent, using an isolated motor and an on-board state generator to interpret DC polarity reversals as control signals for remote effects. (’284 Reissue, Abstract).
- Technical Importance: The technical importance is identical to that of the original ’142 Patent.
Key Claims at a Glance
- The complaint asserts claims 1, 2, 8, 10, 15, and numerous newly-added dependent claims (Compl. ¶25).
- Independent Claim 1:
- A model train locomotive for use on a track coupled to a power supply applying a polarity-reversible DC track power signal;
- a motor for driving the locomotive;
- means for isolating the motor from the track so as to allow use of polarity-reversals on the track power signal for controlling remote effects; and
- means responsive to polarity-reversals on the DC track power signal for controlling remote effects without reversing the motor.
U.S. Patent No. 5,896,017 - "Model Train Locomotive with Doppler Shifting of Sound Effects"
- Technology Synopsis: This patent, related to the ’142 patent family, discloses technology for enhancing the realism of model train sound effects by simulating the Doppler shift. This involves altering the pitch of a sound, such as a horn, to mimic the change in frequency perceived by a stationary observer as the train approaches and then recedes. (’017 Patent, Abstract; col. 8:36-40).
- Asserted Claims: The complaint does not specify which claims of the ’017 Patent are asserted (Compl. ¶33).
- Accused Features: The complaint accuses model train decoders and similar components that incorporate a "Doppler special effect" (Compl. ¶33).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities include the "DC Master Controller," the "ESU ‘LokSound v3.5 Decoder’," the "BLI-PCM Decoder," and other similar control systems, decoders, and upgrades sold by the Defendants (Compl. ¶¶ 9, 11, 12, 15).
Functionality and Market Context
- The accused products are electronic components designed for use in DC-powered model railroad systems (Compl. ¶12). The complaint alleges their function is to receive polarity reversals (PR) and polarity reversal pulses (PRP) from the DC power on the track and use them as control signals to trigger special effects in the locomotive (Compl. ¶9). This functionality allegedly allows for enhanced realism without reversing the direction of the train's motor (Compl. ¶7, ¶9). For the ’017 Patent, the accused functionality is the implementation of a "Doppler sound shift effect" (Compl. ¶33).
- The complaint alleges that these features are commercially important as they enhance realism, a quality highly sought by "serious model train hobbyists," and that adding such features was an "important selling feature" for Defendants (Compl. ¶12).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’142 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a model train locomotive for use on a model railroad track that is coupled to a power supply for controllably applying a polarity-reversible DC track power signal to the track... | Defendants' accused decoders are designed for and sold for installation in model train locomotives that operate on DC-powered track. | ¶12 | col. 6:47-56 |
| ...a motor for driving the locomotive over the track; | The accused decoders are installed in locomotives that contain a motor. | ¶12 | col. 7:1-2 |
| ...means for isolating the motor from the track so as to allow use of polarity-reversals on the track power signal for controlling remote effects... | The accused decoders allegedly receive PR and PRP signals to trigger special effects without reversing the direction of the motor, which requires functionally isolating the motor from the direct track polarity. | ¶9 | col. 7:10-14 |
| ...and means responsive to polarity-reversals on the DC track power signal for controlling remote effects without reversing the motor. | The decoders are allegedly "designed to receive polarity reversals to the DC power signal as control signals and to produce special effects in response." | ¶9 | col. 7:15-18 |
’284 Reissue Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A model train locomotive for use on a model railroad track that is coupled to a power supply for controllably applying a polarity-reversible DC track power signal to the track... | Defendants' accused decoders are designed for and sold for installation in model train locomotives that operate on DC-powered track. | ¶12 | col. 6:50-59 |
| ...a motor for driving the locomotive over the track; | The accused decoders are installed in locomotives that contain a motor. | ¶7:1-2 | |
| ...means for isolating the motor from the track so as to allow use of polarity-reversals on the track power signal for controlling remote effects... | The accused decoders allegedly receive PR and PRP signals to trigger special effects without reversing the direction of the motor, which requires functionally isolating the motor from the direct track polarity. | ¶9 | col. 7:12-16 |
| ...and means responsive to polarity-reversals on the DC track power signal for controlling remote effects without reversing the motor. | The decoders are allegedly "designed to receive polarity reversals to the DC power signal as control signals and to produce special effects in response." | ¶9 | col. 7:17-20 |
Identified Points of Contention
- Scope Questions: Claim 1 of both the ’142 and ’284 Patents includes "means-plus-function" limitations (e.g., "means for isolating," "means responsive to"). A central legal question will be the scope of these terms. Under 35 U.S.C. § 112(f), their scope is limited to the specific structures disclosed in the patent specification for performing the recited function and their structural equivalents. The dispute may focus on whether the circuitry within Defendants’ decoders is structurally equivalent to the relay-based and other specific electronic circuits disclosed in the patents.
- Technical Questions: The complaint alleges that the accused systems are "designed to receive polarity reversals" (Compl. ¶9). A factual question for the court will be what evidence demonstrates that the accused decoders actually operate by detecting and using polarity reversals as the specific control signal required by the claims, as opposed to operating on a different technical principle.
V. Key Claim Terms for Construction
The Term: "means for isolating the motor from the track"
- Context and Importance: This means-plus-function term is critical because it defines the core architectural requirement of the invention. Infringement will depend on whether the accused decoders, which are alleged to be solid-state electronic devices, contain a structure that is the same as or equivalent to the specific circuits disclosed in the specification for performing this isolating function.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the function in general terms, stating that the "motor controller... supplies a specific polarity of voltage to the motors independent of the polarity of the track voltage" (’142 Patent, col. 7:10-13). This could support an interpretation covering any circuit that achieves this functional separation.
- Evidence for a Narrower Interpretation: The patent discloses specific structures for performing the function, including a motor controller circuit using relays and diodes (e.g., FIG. 8). A party could argue the claim is limited to these disclosed relay-based structures and their equivalents, potentially excluding different types of solid-state circuitry. (’142 Patent, col. 12:55-67).
The Term: "polarity-reversals on the DC track power signal"
- Context and Importance: The definition of the control "signal" itself is central to the infringement analysis. Practitioners may focus on this term because the dispute could turn on whether any brief fluctuation in polarity constitutes the claimed "signal," or if it must be a deliberate, user-initiated event with specific electrical characteristics.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification introduces the term broadly as a "new remote control signal... called, PR, for Polarity Reversal" (’142 Patent, col. 7:7-9), which might suggest any reversal of polarity qualifies.
- Evidence for a Narrower Interpretation: The patent describes generating the signal by toggling the power pack's direction switch, implying a deliberate, manual action by the user (’142 Patent, col. 7:3-7). The specification also distinguishes between a single Polarity Reversal (PR) and a Polarity Reversal Pulse (PRP), which consists of "two polarity reversals in a row," suggesting the signals have defined temporal and electrical properties rather than being any random fluctuation (’142 Patent, col. 8:3-8).
VI. Other Allegations
- Indirect Infringement: The complaint alleges both contributory and induced infringement. It alleges the accused decoders are not staple articles of commerce suitable for substantial non-infringing use and were "specially made and adapted for use in an infringement" (Compl. ¶¶ 13, 16). For inducement, it alleges Defendants knew and intended for customers to use the products in an infringing manner and provided support and updates to encourage such use (Compl. ¶¶ 12, 20, 26).
- Willful Infringement: The complaint alleges willful infringement based on Defendants’ pre-suit knowledge of the patents. This allegation is supported by facts asserting that Defendant BLI was a former QSI customer that sold products licensed under the ’142 Patent and marked its packaging with that patent number, before allegedly commissioning a third party to develop an infringing replacement system (Compl. ¶¶ 8, 9, 17, 34).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of structural equivalence: under the means-plus-function framework, are the integrated circuits within the accused electronic decoders structurally equivalent to the specific relay-based and discrete logic-gate circuits disclosed in the patents for performing the functions of "isolating the motor" and "responding to polarity-reversals"?
- A key evidentiary question will be one of intent and knowledge: given the allegations of a prior business relationship, patent marking by the Defendant, and subsequent alleged copying, what was the Defendants’ state of mind regarding the Plaintiffs' patent rights, an issue central to the claim of willful infringement and potential enhanced damages?
- A fundamental technical question will be one of operational principle: does the evidence demonstrate that the accused products were designed to and in fact operate by detecting "polarity-reversals" as the specific, claimed control signal, or is there a material difference in their technical method of operation?