5:19-cv-01796
Wilson v. American Turf Installers LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Troy Wilson (Pennsylvania)
- Defendant: American Turf Installers, LLC (Pennsylvania)
- Plaintiff’s Counsel: Pietragallo Gordon Alfano Bosick & Raspanti
- Case Identification: 5:19-cv-01796, E.D. Pa., 04/25/2019
- Venue Allegations: Venue is alleged to be proper as the Defendant is a Pennsylvania limited liability company that resides in the judicial district, with a principal place of business in Berks County.
- Core Dispute: Plaintiff alleges that Defendant’s synthetic turf removal attachment for skid steers infringes a patent for a similar device.
- Technical Context: The technology relates to specialized mechanical attachments for vehicles like skid steers, designed to automate and expedite the labor-intensive process of removing large-scale synthetic turf fields.
- Key Procedural History: The complaint alleges a prior business relationship where Defendant worked on a job with Plaintiff in 2013, observed Plaintiff's invention in action, and was informed that the device was patent pending. Plaintiff further alleges providing notice of the issued patent to the Defendant in January 2019, prior to filing the complaint. These allegations form the basis for a claim of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2012-06-20 | ’386 Patent Priority Date (Provisional Application) |
| 2013-01-01 | Defendant allegedly observed Plaintiff's device (approximate date) |
| 2016-05-01 | Defendant allegedly used infringing device on a job (approximate date) |
| 2018-11-06 | ’386 Patent Issue Date |
| 2019-01-17 | Defendant allegedly made aware of issued patent |
| 2019-04-25 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,117,386 - "Synthetic Turf Removal Skid Steer Attachment Assembly"
The Invention Explained
Problem Addressed: The patent's background describes conventional synthetic turf removal as a difficult, time-consuming, and expensive process, often requiring large crews (10-12 people) and nearly a week of labor ('386 Patent, col. 1:28-32). Existing automated equipment is described as expensive, low-powered, and inefficient, producing "sloppy rolls" of turf that are difficult to handle and dispose of ('386 Patent, col. 1:25-28, 1:32-35).
The Patented Solution: The invention is a mechanical attachment for a skid steer that uses the vehicle's own hydraulic power to operate turf removal tools ('386 Patent, Abstract). The attachment comprises a frame with two arms that support tools, such as cutting blades to slice the turf into manageable strips and roller tines to spool the strips into tight, compact rolls ('386 Patent, col. 2:57-59; col. 3:4-18). The use of the skid steer's hydraulic system, managed by a dedicated hydraulic circuit on the attachment, provides the necessary power for these operations ('386 Patent, col. 2:61-68).
Technical Importance: This approach aims to allow a single operator to accomplish a turf removal job in 1 to 1.5 days, a significant reduction in time and labor, while also producing tight turf rolls that require less disposal space ('386 Patent, col. 1:36-41).
Key Claims at a Glance
The complaint asserts claims 1-13 (Compl. ¶21). Independent claim 1 is the focus.
The essential elements of independent claim 1 include:
- A frame comprising a "vertically oriented transverse component" with a first and second arm extending from its opposite ends.
- A first and second "removable turf removal tool" connected to the distal ends of the first and second arms.
- A first and second hydraulic motor coupled to the respective turf removal tools.
- A hydraulic system that includes first and second "hydraulic quick coupler[s]" for connecting to an external hydraulic source (e.g., a skid steer) and a "valve assembly" operably connected to the motors.
- A mounting plate with a plurality of holes for attaching the device to the skid steer.
The complaint reserves the right to assert all dependent claims (Compl. ¶21).
III. The Accused Instrumentality
Product Identification
The accused instrumentality is a "synthetic turf removal attachment for a skid steer" manufactured, used, and sold by the Defendant (Compl. ¶21).
Functionality and Market Context
The complaint alleges that the accused product is an "identical infringing device" that was "secretly and without Plaintiff's consent copied" from the Plaintiff's own device (Compl. ¶14). Its function is to perform turf removal on Defendant's jobs (Compl. ¶16). The complaint alleges that Plaintiff's family business and the Defendant are direct competitors in the turf installation and removal market (Compl. ¶10). The complaint includes a side-by-side visual comparison, juxtaposing a photograph of the alleged infringing device with a figure from the ’386 Patent to support its allegation of identity (Compl. p. 7).
IV. Analysis of Infringement Allegations
’386 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a frame, comprising: (i.) a vertically oriented transverse component; (ii.) a first arm extending substantially orthogonally from a first distal end... and (iii.) a second arm extending substantially orthogonally from a second distal end... | The complaint alleges the accused device is an identical copy of the patented invention and thus possesses the claimed frame structure, as depicted in the complaint's visual comparison (Compl. p. 7). | ¶14, ¶21 | col. 2:43-52 |
| a first removable turf removal tool connected to a distal end of the first arm; [and] a second removable turf removal tool connected to a distal end of the second arm; | The complaint's theory of identical copying suggests the accused device includes the same removable turf removal tools as the patented invention. | ¶14, ¶21 | col. 3:4-18 |
| a first hydraulic motor operably coupled to the first turf removal tool; [and] a second hydraulic motor operably coupled to the second turf removal tool; | The complaint's theory of identical copying suggests the accused device includes first and second hydraulic motors to power its turf removal tools. | ¶14, ¶21 | col. 2:57-59 |
| a hydraulic system, comprising: (i.) a first hydraulic quick coupler... (ii.) a second hydraulic quick coupler... and (iii.) the valve assembly operably connected to the first hydraulic motor and the second hydraulic motor... | The complaint's theory of identical copying suggests the accused device includes a hydraulic system with quick couplers and a valve assembly to connect to and control power from a skid steer. | ¶14, ¶21 | col. 2:61-68 |
| a mounting plate attached to a rear face of the transverse component having a plurality of holes capable of accepting a plurality of attachment bolts, permitting attachment... to the skid steer. | The complaint's theory of identical copying suggests the accused device includes a mounting plate for attachment to a skid steer. | ¶14, ¶21 | col. 2:52-56 |
Identified Points of Contention
Factual Question: The central issue appears to be factual rather than legal. The complaint's core theory is that the accused device is an exact copy of the Plaintiff's commercial embodiment of the patent (Compl. ¶14). The primary question for the court will be an evidentiary one: can the Plaintiff prove, through discovery, that the accused device is in fact "identical" and incorporates every element of the asserted claims?
Technical Questions: If the accused product is found not to be an exact copy, the analysis will shift to a technical, element-by-element comparison. For example, a key question would be whether the accused device's hydraulic control system meets the specific limitations of a "valve assembly" and "quick coupler[s]" as recited in claim 1 and described in the specification.
V. Key Claim Terms for Construction
The Term: "valve assembly"
Context and Importance: This term is a critical component of the claimed hydraulic system (claim 1(f)). Its definition will determine what type of hydraulic control architecture falls within the scope of the claim. Practitioners may focus on this term because the infringement analysis could depend on whether a simple component like a fluid splitter constitutes a "valve assembly," or if a more complex, active control unit is required.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself does not specify the type of valve assembly, potentially allowing for any component that manages hydraulic fluid flow to the motors.
- Evidence for a Narrower Interpretation: The specification's only described embodiment discloses an "electric over hydraulic valve assembly 44" ('386 Patent, col. 2:65-66). A defendant may argue that the term should be limited to this more complex type of assembly, especially in light of the functions it enables, such as controlling the hydraulic rams described in dependent claim 2.
The Term: "removable turf removal tool"
Context and Importance: This term defines the functional implements of the device (claim 1(b), 1(c)). Its scope is important because the patent discloses multiple types of tools. Practitioners may focus on this term if the accused device uses a different type of tool than the cutting blades and roller tines shown in the patent's figures.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term itself is general. The specification supports this by stating the arms are "adapted to support turf removal tools" generally ('386 Patent, col. 1:49-51). Dependent claims 3 and 11 separately claim "turf cutting tools" and "turf rolling tools," which suggests the independent claim term is broader and encompasses both.
- Evidence for a Narrower Interpretation: A party could argue the term should be limited to the specific tools disclosed that are necessary to achieve the invention's stated object of both slicing and rolling turf, such as the cutting blades (55) and roller tines (60) ('386 Patent, Fig. 4; col. 3:4-18).
VI. Other Allegations
Indirect Infringement: The complaint does not contain a formal count for indirect infringement, but the prayer for relief seeks to enjoin Defendant from "instructing, assisting, aiding or abetting" infringement (Compl. p. 9, ¶6(c)). The complaint does not, however, plead specific facts to support the knowledge and intent elements required for such a claim beyond the general allegations of direct infringement.
Willful Infringement: The complaint alleges facts to support willfulness based on both pre- and post-patent-issuance conduct. It alleges pre-issuance knowledge of the invention by asserting that Defendant saw Plaintiff's device in operation in 2013 and was made aware that it was "patent pending" (Compl. ¶12, ¶13). It alleges post-issuance knowledge based on notice of the issued '386 Patent being provided "at least as early as January 17, 2019" (Compl. ¶17). The allegations that Defendant "secretly...copied" the device and continued to use it after notice form the basis of the willfulness claim (Compl. ¶14, ¶18).
VII. Analyst’s Conclusion: Key Questions for the Case
A core issue will be one of evidentiary proof: The case appears to hinge on the Plaintiff's ability to prove its central allegation that the Defendant's device is an "identical" copy of the patented invention. The outcome will likely depend on factual evidence uncovered during discovery comparing the accused device to the patent's claims, with the visual evidence presented in the complaint (p. 7) setting the stage for this direct comparison.
A second key question will be the viability of the willfulness claim: Given the complaint's detailed allegations of a prior business relationship, pre-issuance knowledge of the "patent pending" device, and post-issuance notice of the patent, the claim for willful infringement and potential for enhanced damages will be a significant focal point of the litigation. The determination will turn on the credibility of the evidence regarding the alleged "secret" copying and the Defendant's conduct after being notified of the patent.