DCT
1:19-cv-00146
Wilson v. TPK Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Troy Wilson (Pennsylvania)
- Defendant: TPK, Inc. (West Virginia)
- Plaintiff’s Counsel: The Webb Law Firm
- Case Identification: 1:19-cv-00146, W.D. Pa., 07/06/2020
- Venue Allegations: Venue is alleged to be proper based on Defendant having a principal place of business within the Western District of Pennsylvania.
- Core Dispute: Plaintiff alleges that Defendant’s synthetic turf removal equipment infringes a patent for a hydraulically powered skid steer attachment assembly designed for slicing and rolling up old turf.
- Technical Context: The technology provides a mechanical attachment for common construction vehicles (skid steers) to automate the removal of synthetic turf, a process that was previously highly labor-intensive or required expensive, specialized machinery.
- Key Procedural History: The complaint alleges a prior business relationship in 2013, during which Defendant's owner witnessed Plaintiff using a "patent pending" version of the invention. Plaintiff alleges that Defendant was formally notified of the issued patent in January 2019 but continued its allegedly infringing activities.
Case Timeline
| Date | Event |
|---|---|
| 2012-06-20 | ’386 Patent Priority Date |
| 2013-06-20 | ’386 Patent Application Filing Date |
| 2013 | Defendant allegedly observes Plaintiff's patent-pending device |
| 2014 | Defendant allegedly possesses a device identical to Plaintiff's |
| 2018-11-06 | ’386 Patent Issue Date |
| 2019-01-13 | Defendant allegedly made aware of issued ’386 Patent |
| 2020-07-06 | Amended 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"
- Issued: November 6, 2018.
The Invention Explained
- Problem Addressed: The patent describes the removal of existing synthetic turf as a difficult, time-consuming, and expensive process. Prior methods were either manual, requiring large crews and significant time, or involved automated equipment that was costly, low-powered, and inefficient, resulting in sloppy, hard-to-dispose-of turf rolls. (’386 Patent, col. 1:21-36; Compl. ¶9).
- The Patented Solution: The invention is a specialized attachment for a skid steer vehicle that uses the vehicle's own hydraulic system as a power source. The attachment features a C-shaped frame with two arms that can hold interchangeable tools. One set of tools consists of cutting blades to slice the turf into manageable strips. Another set of tools, roller tines, can then be attached to spool the cut strips into tight, compact rolls. The hydraulic system is described as including a "splitter valve" to ensure equal power is delivered to motors on both arms of the frame. (’386 Patent, Abstract; col. 2:42-65).
- Technical Importance: The invention is presented as a "less expensive mechanical alternative" that allows a single operator to accomplish a turf removal job in a fraction of the time (1-1.5 days) compared to manual methods. (’386 Patent, col. 1:37-42).
Key Claims at a Glance
- The complaint asserts infringement of claims 1-13. (Compl. ¶21).
- Independent Claim 1 recites the following essential elements:
- A frame comprising a vertically oriented transverse component with a first and second arm extending substantially orthogonally from opposite ends.
- A first and a second "removable turf removal tool" connected to the distal ends of the first and second arms, respectively.
- A first and a second hydraulic motor operably coupled to the respective turf removal tools.
- A hydraulic system with first and second quick couplers for connecting to an external hydraulic source (i.e., the skid steer) and a valve assembly connected to the motors.
- A mounting plate on the rear of the transverse component with holes for attaching the assembly to a skid steer.
III. The Accused Instrumentality
Product Identification
- The complaint identifies three sets of accused products, collectively referred to as "Defendant's Infringing Devices": "Defendant's First Device," "Defendant's Second Device," and the "SMG Device," which is identified as a "Turf Winch Vario" purchased from SMG Equipment, LLC. (Compl. ¶14-16).
Functionality and Market Context
- The complaint alleges these devices are all synthetic turf removal attachments that perform the same function as the patented invention. (Compl. ¶11, ¶15). Plaintiff alleges that Defendant's "First Device" was a direct copy of Plaintiff's device, made after Defendant's owner observed it in operation. (Compl. ¶11-14). The complaint includes a photograph purporting to show one of the accused devices in operation on a turf field. (Compl. p. 6). The complaint further alleges that Defendant uses these devices for all of its turf removal jobs, positioning them as direct competitors to Plaintiff's own business. (Compl. ¶10, ¶17).
IV. Analysis of Infringement Allegations
Claim Chart Summary
- The complaint provides a narrative infringement analysis in paragraph 23, which tracks the language of independent claim 1.
’386 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a frame, comprising... a vertically oriented transverse component;... a first arm extending substantially orthogonally... and... a second arm extending substantially orthogonally... | The accused devices include a frame having a vertically oriented transverse component, and first and second arms extending substantially orthogonally from opposite distal ends of the transverse component. | ¶23 | col. 2:44-47 |
| 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 accused devices include first and second removable turf removal tools connected to distal ends of the first arm and second arm, respectively. | ¶23 | col. 3:5-14 |
| 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 accused devices include first and second hydraulic motors coupled to the first and second turf removal tools, respectively, and mounted on the first arm and the second arm, respectively. | ¶23 | col. 2:57-60 |
| a hydraulic system, comprising... first... and... second hydraulic quick coupler... operably connected to an output port [and] a return port of the external source of hydraulic fluid... is a hydraulic system of the skid steer; and... the valve assembly operably connected to the first... and... second hydraulic motor | The accused devices include a hydraulic system with first and second hydraulic quick couplers for connecting to a skid steer's hydraulic system and a valve assembly connected to the motors. The system is alleged to include a splitter valve. | ¶23 | col. 2:61-65 |
| 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 accused devices include a mounting plate on the rear of the transverse component having a plurality of holes capable of accepting attachment bolts to attach the devices to a skid steer. | ¶23 | col. 2:51-56 |
Identified Points of Contention
- Scope Questions: The complaint includes a side-by-side comparison of a photograph of "Defendant's First Device" and a drawing from the '386 Patent, asserting they are identical. (Compl. p. 4). A question for the court will be whether the other accused products—the "Second Device" and the third-party "SMG Device"—also meet every claim limitation, or if there are material structural or functional differences between them.
- Technical Questions: Dependent claim 10 requires a "splitter valve capable of ensuring that equal hydraulic force is applied to each of the first and second hydraulic motors." The complaint alleges the accused devices contain such a feature. (Compl. ¶23). A potential point of contention is whether the accused devices' hydraulic systems merely split the fluid flow (e.g., with a simple T-connector) or if they contain a component that actively performs the claimed function of ensuring equal force, which can be a distinct technical challenge under varying loads.
V. Key Claim Terms for Construction
The Term: "removable turf removal tool"
- Context and Importance: This term defines the operative components of the invention. The scope of "removable" and what constitutes a "turf removal tool" will be central to the infringement analysis, as the complaint alleges the accused devices use different tools, including cutting blades and roller tools. (Compl. ¶25).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification discloses multiple types of tools, such as "cutting blades" and "roller tines," that can be mounted on the arms, suggesting "turf removal tool" is a genus covering different species of implements. (’386 Patent, col. 3:5-14).
- Evidence for a Narrower Interpretation: A party could argue that "removable" implies a specific type of quick-change connection or that the term should be limited to the structures of the specific embodiments disclosed, such as the particular cutting blade assembly (Fig. 2) or roller tines (Fig. 4).
The Term: "splitter valve capable of ensuring that equal hydraulic force is applied" (from dependent claim 10)
- Context and Importance: This functional language is critical because it defines not just the presence of a component, but its specific performance characteristic. The complaint specifically alleges this feature is present in the accused devices. (Compl. ¶23). Practitioners may focus on this term because proving that a component in the accused device performs this exact function will be a key evidentiary burden.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification refers to a "hydraulic flow divider 50 to ensure equal flow through hydraulic lines 52 to power motors 36a, 36b," which a party may argue is synonymous with a splitter valve ensuring equal force. (’386 Patent, col. 3:1-3).
- Evidence for a Narrower Interpretation: A party could argue that "ensuring equal hydraulic force" requires more than a simple "flow divider," as equal flow does not always guarantee equal force if the loads on the two motors are different. The interpretation may turn on the precise technical meaning of these terms in the context of hydraulic engineering.
VI. Other Allegations
Indirect Infringement
- The complaint’s infringement count focuses on direct infringement by use. (Compl. ¶21). However, the prayer for relief includes a request for an injunction against "instructing, assisting, aiding or abetting" others in infringing activities, which suggests a potential future argument for indirect infringement. (Compl. p. 10, ¶6(c)).
Willful Infringement
- The complaint makes explicit allegations supporting willfulness. It claims Defendant had pre-issuance knowledge of the invention as "patent pending" from a 2013 business engagement and subsequently copied the device. (Compl. ¶11-14). It further alleges that Defendant was formally notified of the issued patent as early as January 13, 2019, but "continues to willfully and blatantly infringe." (Compl. ¶17-18).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central question will be one of evidentiary proof related to copying: The complaint's narrative of a prior relationship followed by direct copying will require Plaintiff to prove not only that the accused devices meet the claim limitations, but to factually substantiate the story of when and how the alleged copying occurred. The visual evidence presented in the complaint directly supports this theory of infringement. (Compl. p. 4).
- A key issue for damages will be willfulness: The case will likely involve a significant factual dispute over what Defendant knew about Plaintiff’s patent rights and when. The court's determination of whether Defendant’s alleged conduct—both before and after the patent issued—was objectively reckless will be critical to the potential for enhanced damages.