DCT
1:24-cv-00939
River Road Jet Boats LLC v. Rock Proof Boats LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: River Road Jet Boats, LLC (Virginia) and Waimed Enterprises, LLC (Virginia)
- Defendant: Rock Proof Boats LLC (Pennsylvania)
- Plaintiff’s Counsel: Woods Rogers Vandeventer Black, PLC
- Case Identification: 1:24-cv-00939, M.D. Pa., 06/20/2024
- Venue Allegations: Venue is alleged to be proper as Defendant resides in the district and has a regular and established place of business within the district.
- Core Dispute: Plaintiffs allege that Defendant’s "Nozzle Jett" product line, which includes directional steering and mounting components for outboard jet motors, infringes two patents related to improving the performance and durability of such motors in shallow water.
- Technical Context: The technology addresses the vulnerability of outboard jet motor water intakes by creating systems to protect the intake, improve water flow, and enable steering by deflecting the water jet rather than pivoting the entire motor.
- Key Procedural History: The complaint notes this action was transferred from the U.S. District Court for the Western District of Virginia. The complaint alleges that prior to litigation, the parties engaged in licensing discussions and that Defendant's counsel sent a letter in May 2023 acknowledging Plaintiffs' patents and infringement allegations; this history is presented to support a claim of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2016-08-19 | Priority Date for '619 and '027 Patents |
| 2020-04-14 | U.S. Patent No. 10,618,619 Issues |
| 2023-01-XX | Approximate start of licensing communications |
| 2023-05-16 | U.S. Patent No. 11,649,027 Issues |
| 2023-05-19 | Defendant’s counsel allegedly acknowledges Plaintiffs' patents |
| 2023-06-XX | Approximate end of licensing communications |
| 2024-06-20 | First Amended Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,618,619 - "CLOSED TUNNEL SYSTEM AND DIRECTIONAL DEVICE FOR OUTBOARD JET MOTORS" (Issued Apr. 14, 2020)
The Invention Explained
- Problem Addressed: The patent’s background section identifies that the water intake for a conventional outboard jet motor typically sits below the bottom of the boat's hull, which exposes it to potential collisions and damage when navigating shallow waters (’619 Patent, col. 1:40-45).
- The Patented Solution: The invention describes, in part, a directional steering device that attaches to the fixed jet nozzle of an outboard motor. This mechanism, comprising a conduit, an "outer frame," and a steering nozzle, allows the water jet itself to be directed for steering and trimming, eliminating the need to pivot the entire heavy motor unit and allowing it to be mounted in a more protected position (’619 Patent, col. 2:62-col. 3:12).
- Technical Importance: This design sought to provide outboard jet motors with the nimble, nozzle-based steering common to inboard jet boats, thereby improving maneuverability in shallow river environments where fixed-motor mounting is advantageous for protection.
Key Claims at a Glance
- The complaint asserts independent claim 1.
- Essential elements of claim 1 include:
- A directional device for an outboard jet motor comprising a conduit, a steering nozzle, and an outer frame joining the two.
- A first pair of axles in communication with the outer frame and conduit.
- The steering nozzle is configured to receive water flow from the jet nozzle via the conduit.
- The outer frame and steering nozzle are capable of rotating relative to the conduit along a first axis defined by the axles.
- The complaint reserves the right to assert dependent claims 2-10 (Compl. ¶25).
U.S. Patent No. 11,649,027 - "ACCEPTOR DEVICE FOR OUTBOARD JET MOTORS" (Issued May 16, 2023)
The Invention Explained
- Problem Addressed: Like its parent patent, the ’027 Patent addresses the vulnerability of outboard jet motor intakes in shallow water applications (’027 Patent, col. 1:40-45).
- The Patented Solution: The patent describes an "acceptor device" for mounting an outboard motor to a watercraft. This device features a shrouded opening that connects to the motor's intake and is configured to position that intake at an upward-sloping angle, elevating it above the bottom surface of the hull for protection and to optimize water flow from a hull tunnel (’027 Patent, col. 2:18-28; Fig. 1). The patent also claims a boat hull that incorporates a purpose-built tunnel and adapter to achieve this integrated, protected intake system.
- Technical Importance: This invention focuses on the physical interface between the hull and the motor, aiming to create a more durable and hydrodynamically efficient system for shallow-water jet boats by channeling water through the hull directly to a protected, elevated intake.
Key Claims at a Glance
- The complaint asserts independent claims 1, 11, 15, and 16.
- Essential elements of claim 1 include:
- An acceptor device for securing an outboard jet motor to a watercraft.
- The device comprises one or more shrouded openings for communication with the motor's intake.
- The device is configured to position the intake at an upward-sloping angle.
- The device is configured to elevate at least a portion of the intake above the boat's bottom surface.
- Essential elements of claim 16 include:
- A boat hull comprising a transom, a tunnel in the bottom surface, and an adapter where the tunnel and transom meet.
- The adapter has a shrouded opening to communicate with the motor's intake.
- The tunnel directs water flow to the adapter and intake.
- The adapter provides the motor intake at an upward-sloping angle toward the tunnel.
- The complaint reserves the right to assert all dependent claims (Compl. ¶26).
III. The Accused Instrumentality
Product Identification
- The "Nozzle Jett" (Compl. ¶20).
Functionality and Market Context
- The complaint alleges the Accused Product is both a "directional device" and an "acceptor device" for outboard jet motors (Compl. ¶20). According to the Defendant's website, as quoted in the complaint, the product's design locks the outboard motor in place and allows the user "to turn the nozzle to steer the boat - not the motor" (Compl. ¶22). This description aligns with the function of the '619 Patent's claimed invention. The complaint's photographic evidence further alleges that the Accused Product incorporates the features of the '027 Patent, including a shrouded opening to channel water from a hull tunnel to an angled motor intake (Compl. ¶26). Plaintiffs allege that Defendant markets the Accused Product as "Patent Pending" and that this is a misleading reference to Plaintiffs' own patents, used to compete after failed licensing discussions (Compl. ¶19, ¶23). A screenshot from Defendant's website shows the "Nozzle Jett (Patent Pending)" marketing language (Compl. ¶22).
IV. Analysis of Infringement Allegations
’619 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A directional device for an outboard jet motor comprising: a conduit adapted to fit around a jet nozzle of an outboard jet motor; | The Accused Product is alleged to include a conduit that surrounds the jet nozzle of the motor. A photograph shows a component of the "Nozzle Jett" fitted around the motor's nozzle outlet (Compl. ¶25, p. 6). | ¶25 | col. 15:41-42 |
| a steering nozzle; | The Accused Product is alleged to use a steering nozzle to direct the flow of water. | ¶25 | col. 15:43 |
| an outer frame joining the conduit and the steering nozzle; | Defendant's product is alleged to use an outer frame to connect its conduit and steering nozzle components. | ¶25 | col. 15:44 |
| a first pair of axles in communication with the outer frame and the conduit; | The complaint alleges the Accused Product provides a first pair of axles connecting the outer frame and conduit for steering purposes. | ¶25 | col. 15:45-47 |
| wherein the steering nozzle is configured to receive a flow of water from the jet nozzle by way of the conduit; | The complaint alleges the steering nozzle receives water from the jet via the conduit, as depicted in a photograph labeled "Flow of Water" (Compl. ¶25, p. 7). | ¶25 | col. 15:48-50 |
| wherein the outer frame and the steering nozzle are capable of rotating relative to the conduit along a first axis defined by the first pair of axles. | The complaint asserts the product's outer frame and steering nozzle can rotate relative to the conduit along an axis defined by the axles, claiming the feature is "identical to the patent figure" (Compl. ¶25, p. 7). | ¶25 | col. 15:51-54 |
’027 Patent Infringement Allegations
| Claim Element (from Ind. Claims 1 & 16) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| Claim 1: An acceptor device for securing an outboard jet motor to a watercraft... | Defendant's "Nozzle Jett" is alleged to be an acceptor device that secures the motor to the watercraft. | ¶26 | col. 13:1-5 |
| Claim 1: ...one or more shrouded opening(s) shaped and sized for communication with an intake of one or more outboard jet motor(s); | The complaint points to a photograph of the Accused Product showing a shrouded opening that allegedly communicates with the motor's intake (Compl. ¶26, p. 9). | ¶26 | col. 14:29-31 |
| Claim 1: ...wherein the acceptor device is configured to provide the outboard jet motor intake disposed at an angle that slopes upwardly toward the watercraft; | A photograph in the complaint purports to show the Defendant's device positioning the motor intake at an upward angle (Compl. ¶26, p. 9). | ¶26 | col. 2:22-25 |
| Claim 16: A boat hull comprising: a transom for supporting an outboard jet motor; | The Accused Product is shown mounted on a boat hull with a transom that supports the motor. | ¶26 | col. 22:22-23 |
| Claim 16: ...a tunnel disposed in a bottom surface of the hull and extending to the transom; | The complaint includes a photograph, allegedly sent from Defendant to Plaintiff, showing a tunnel built into the bottom of a boat hull and extending to the transom (Compl. ¶26, p. 10). | ¶26 | col. 12:4-15 |
| Claim 16: ...an adapter disposed where the transom and the tunnel meet, the adapter comprising a shrouded opening for communication with the outboard jet motor... | A photograph allegedly shows an adapter with a shrouded opening on the Accused Product, positioned to communicate with the motor intake (Compl. ¶26, p. 11). | ¶26 | col. 14:23-27 |
Identified Points of Contention
- Technical Questions: The complaint presents detailed photographic evidence suggesting a very close, if not identical, match between the claimed inventions and the Accused Product. A primary point of contention will be evidentiary: can the Defendant demonstrate any meaningful technical or structural differences between its "Nozzle Jett" components and the elements as claimed in the patents? The Plaintiff's case, as pleaded, appears to be one of direct copying.
- Scope Questions: The dispute may turn on the construction of key terms. For the '619 Patent, a question is whether the Defendant's connecting hardware constitutes an "outer frame joining the conduit and the steering nozzle" as the claim requires. For the '027 Patent, a question is whether the collection of mounting components on the accused boat constitutes an "acceptor device" or "adapter" within the meaning of the claims.
V. Key Claim Terms for Construction
Term: "outer frame" (’619 Patent, Claim 1)
- Context and Importance: This term is the structural linchpin of claim 1, recited as "joining the conduit and the steering nozzle." Its construction is critical because if Defendant's connecting component does not meet the definition of an "outer frame," the infringement claim fails. Practitioners may focus on this term because the patent discloses both a "trim ring" and an "outer frame" as alternative structures, raising questions about the scope of each.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself is functional, suggesting the term could cover any structure that performs the function of "joining" the two components and allowing the claimed rotation. The specification describes the outer frame as an alternative to a "trim ring" and as providing structure for securing actuators, which may support a broader, more functional definition (’619 Patent, col. 2:62-63, col. 14:5-7).
- Evidence for a Narrower Interpretation: The specification describes a specific embodiment of the outer frame as being "both rectilinear and curvilinear in shape" (’619 Patent, col. 14:8-10) and shows it in specific detail in figures like Fig. 5. A party could argue that the term should be limited to a structure that includes these disclosed characteristics, rather than any component that simply joins the parts.
Term: "acceptor device" (’027 Patent, Claim 1)
- Context and Importance: This term defines the invention of claim 1. The breadth of its definition will determine whether the Defendant's mounting system, which appears to be an integrated part of a boat modification, infringes.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The preamble of claim 1 defines the term by its purpose: "An acceptor device for securing an outboard jet motor to a watercraft." This broad functional language may support an interpretation that covers any device achieving that purpose through the subsequent limitations of the claim.
- Evidence for a Narrower Interpretation: The specification frequently uses the term interchangeably with "adapter" and describes it as a discrete component that can be "installed during the manufacture of the hull or as an aftermarket modification" (’027 Patent, col. 13:7-9). A party could argue that the "acceptor device" must be a distinct article of manufacture, not simply the resulting configuration of a modified hull and motor.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement (Compl. ¶31, ¶40). This is supported by allegations that Defendant markets and sells the "Nozzle Jett" to customers with the knowledge and intent that they will use it in an infringing manner. The product's website description, which explains how to "turn the nozzle to steer the boat," could be presented as evidence of instruction that encourages infringement (Compl. ¶22).
- Willful Infringement: The complaint makes a detailed allegation of willfulness. It is based on alleged pre-suit knowledge from failed licensing negotiations (Compl. ¶18-19) and, most significantly, a letter dated May 19, 2023, from Defendant's counsel that allegedly acknowledged Plaintiffs' patents and the infringement allegations (Compl. ¶27). The complaint asserts that any infringement after this date was deliberate and intentional (Compl. ¶28, ¶33, ¶42).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be evidentiary and factual: given the complaint's extensive photographic evidence suggesting a one-to-one mapping between the patented inventions and the "Nozzle Jett," can the defendant introduce evidence of a functional or structural difference sufficient to create a viable non-infringement defense?
- A second core issue will be the degree of culpability: the allegations of failed licensing talks and, crucially, the specific allegation of an acknowledgment letter from Defendant's counsel, create a significant question regarding willful infringement. The court will likely need to determine if Plaintiffs can show by clear and convincing evidence that Defendant acted with reckless disregard for Plaintiffs' patent rights, which could expose Defendant to enhanced damages.
- A key legal question will be one of definitional scope: can the term "outer frame" (’619 patent) be construed broadly to cover any component joining the conduit and nozzle for steering, or will it be limited to the specific rectilinear/curvilinear structure disclosed? Similarly, does the term "acceptor device" (’027 patent) cover an integrated system on a modified boat, or is it limited to a discrete, installable component?