DCT
1:19-cv-00039
RTC Holdings LLC v. Heil Co JRG3
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: RTC Holdings LLC (Georgia)
- Defendant: The Heil Co. (Delaware)
- Plaintiff’s Counsel: Chambliss, Bahner & Stophel, P.C.; Thomas | Horstemeyer LLP
- Case Identification: 1:19-cv-00039, E.D. Tenn., 02/12/2019
- Venue Allegations: Venue is alleged to be proper in the Eastern District of Tennessee because Defendant resides in the district, maintains a regular and established place of business there, has committed alleged acts of infringement in the district, and a substantial part of the events giving rise to the claims occurred there.
- Core Dispute: Plaintiff alleges that Defendant’s camera clearing systems for commercial vehicles infringe a patent related to an obstruction-removal system that uses compressed air to clean a camera lens.
- Technical Context: The technology addresses the problem of maintaining clear visibility from externally-mounted cameras on large vehicles like garbage trucks, which are often obscured by weather and road debris.
- Key Procedural History: The complaint details extensive pre-litigation history between the inventor, Joseph Cooper, and Defendant's predecessor-in-interest, 3rd Eye. This includes meetings at industry trade shows beginning in 2014, 3rd Eye’s purchase of a sample of the inventor's product for evaluation in 2015, and a January 2016 notice letter from the inventor’s counsel to 3rd Eye regarding the then-pending patent application. These allegations may be foundational to claims of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2014-04-01 | Inventor allegedly first meets with 3rd Eye at Waste Expo (approx. date) |
| 2014-06-06 | '280 Patent Priority Date |
| 2015-02-01 | 3rd Eye allegedly purchases a sample of inventor's AV 2000 system (approx. date) |
| 2015-03-04 | '280 Patent Application Filing Date |
| 2016-01-21 | Inventor's counsel allegedly sends notice letter of pending application to 3rd Eye |
| 2016-06-01 | 3rd Eye allegedly offers its accused Air*Wash system at 2016 Waste Expo (approx. date) |
| 2016-09-01 | Defendant Heil allegedly acquires/merges with 3rd Eye's parent company (approx. date) |
| 2018-08-28 | U.S. Patent No. 10,059,280 Issues |
| 2019-02-12 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,059,280 - "Obstruction-Removal System and Method for Vehicle-Camera Lens"
- Patent Identification: U.S. Patent No. 10,059,280, “Obstruction-Removal System and Method for Vehicle-Camera Lens,” issued August 28, 2018 (the “’280 Patent”).
The Invention Explained
- Problem Addressed: The patent’s background section describes how external cameras on large commercial vehicles are highly exposed to the accumulation of rain, mud, snow, and other debris, which impairs driver visibility and creates safety concerns, particularly because drivers often cannot easily or safely access the cameras to clean them while in motion (ʼ280 Patent, col. 1:38-65).
- The Patented Solution: The invention is a system that uses a blast of compressed gas, typically from the vehicle's own pre-existing air-brake or air-suspension system, to clear obstructions from the camera lens (ʼ280 Patent, col. 2:18-27, 49-54). A key aspect is a discharge nozzle positioned adjacent to, but outside of, the camera’s field of view, which directs the air blast across the lens cover (ʼ280 Patent, col. 2:25-29; Fig. 2).
- Technical Importance: The system is designed to be retrofitted onto existing vehicles and allows drivers to clear camera lenses on demand from inside the cab, improving safety and operational efficiency without requiring the vehicle to stop (ʼ280 Patent, col. 2:35-40).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶67).
- Claim 1 recites a system for removing an obstruction from a camera lens cover, comprising:
- a gas line that connects to a source of compressed gas and is routed to the camera;
- a discharge nozzle positioned adjacent the camera lens cover to deliver a blast of compressed gas;
- the nozzle having an airflow axis positioned "substantially laterally relative to the optical axis, but not parallel to the lens cover, and instead at a descending angle to the lens cover";
- the nozzle is positioned outside of the camera’s field of view;
- a rain shield positioned to cover the lens from above, also outside the camera's field of view, to which the nozzle is mounted; and
- a control valve to selectively release the gas.
- The complaint does not explicitly reserve the right to assert dependent claims but references infringement of "one or more claims" (Compl. ¶62).
III. The Accused Instrumentality
Product Identification
- The "3rd Eye Air*Wash" camera clearing systems, including Model #AWT1020 (collectively, the "Accused Products") (Compl. ¶62).
Functionality and Market Context
- The Accused Products are camera clearing systems for commercial vehicles that connect to a truck's compressed gas source, such as its secondary air brake tank or manifold (Compl. ¶69(i)). A photograph provided in the complaint shows the Accused Product installed on a Waste Connections truck at a trade show (Compl. ¶60, p. 12).
- The system uses a discharge nozzle, allegedly mounted to a "Sun Shield," to deliver a blast of compressed air across the camera lens to remove obstructions (Compl. ¶69(ii), (v)). The system is operated via a toggle controller inside the vehicle cab (Compl. ¶69(vi)).
- The complaint alleges that Defendant Heil, through its acquisition of 3rd Eye's parent company, manufactures and sells the Accused Products to major operators in the waste and recycling industry (Compl. ¶22, 24, 57). The complaint further alleges the Accused Product is "virtually identical" to Plaintiff's own "AV 2000" system (Compl. ¶49). A photograph of the nozzle of Plaintiff's AV 2000 system mounted on a commercial vehicle is provided for comparison (Compl. ¶16, p. 5).
IV. Analysis of Infringement Allegations
- Claim Chart Summary: The complaint provides a narrative summary of infringement for Claim 1 (Compl. ¶69). The following table organizes those allegations against the claim elements.
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a gas line that connects to the compressed-gas source, is routed to adjacent the camera | The Accused Products include a gas line ("DOT Airline Tubing") that connects to a truck's compressed gas source (e.g., air brake tank). | ¶69(i) | col. 4:10-13 |
| and includes a discharge nozzle that positions adjacent the camera lens cover to deliver a blast of the compressed gas across the lens cover to remove the obstruction | The gas line includes a discharge nozzle positioned adjacent to the camera lens to deliver a blast of compressed air across the lens. | ¶69(ii) | col. 6:56-60 |
| wherein the nozzle has an airflow axis and in use the nozzle airflow axis is positioned aimed substantially laterally relative to the optical axis, but not parallel to the lens cover, and instead at a descending angle to the lens cover | The discharge nozzle has an airflow axis positioned substantially laterally to the camera's optical axis, not parallel to the lens cover, and at a descending angle. | ¶69(iii) | col. 8:26-44 |
| and wherein the nozzle is positioned outside of the camera field of view so that the nozzle does not obstruct the camera field of view | The discharge nozzle is positioned outside the field of view so that it does not obstruct the camera's view. | ¶69(iv) | col. 8:55-65 |
| a rain shield that is positioned covering the lens cover of the camera from above, that is positioned outside of the camera field of view... and to which the discharge of the gas line is mounted | The discharge nozzle is mounted to a "Sun Shield" that covers the camera lens from above and is outside the field of view. | ¶69(v) | col. 10:45-51 |
| and a control valve operable to selectively release the compressed gas... through the gas line onto the lens cover | The Accused Products have a control valve ("DOT Air*Wash Toggle Controller") to selectively release compressed gas. | ¶69(vi) | col. 6:12-18 |
- Identified Points of Contention:
- Scope Questions: A primary dispute may arise over the term "rain shield." The complaint alleges the accused nozzle is mounted to a "Sun Shield" (Compl. ¶69(v)). The case may turn on whether the accused "Sun Shield" meets the definition and function of the "rain shield" as claimed in the patent.
- Technical Questions: The complaint alleges a very specific nozzle orientation ("substantially laterally... but not parallel... and at a descending angle") (Compl. ¶69(iii)). A key factual question will be whether the Accused Product's nozzle is actually mounted and operates with this precise geometry, or if Plaintiff will need to rely on the doctrine of equivalents (Compl. ¶67).
V. Key Claim Terms for Construction
- The Term: "rain shield"
- Context and Importance: This term appears in the final limitation of independent claim 1, which requires the discharge nozzle to be mounted to the rain shield. Literal infringement of Claim 1 appears to depend on the presence of this structure and the specific mounting relationship. Practitioners may focus on this term because if the accused "Sun Shield" is not a "rain shield," or if the nozzle is mounted to the camera housing or another structure instead, there may be no literal infringement of this claim.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification provides a non-limiting example, stating the air line is mounted to "a rain shield (e.g., a hood)" ('280 Patent, col. 10:46-47). This parenthetical suggests "rain shield" is not a narrow term of art and could encompass similar structures like a "Sun Shield" that provides overhead coverage.
- Evidence for a Narrower Interpretation: The claim requires the shield to be "positioned covering the lens cover of the camera from above" and for the nozzle to be mounted "to" it ('280 Patent, col. 18:56-62). A defendant could argue this requires a specific structure whose primary purpose is rain protection and a direct mounting, potentially distinguishing it from a component named a "Sun Shield" or one where the nozzle is merely adjacent to, but not physically mounted on, the shield. The patent's embodiment in Figure 8 shows a distinct, curved component (136) serving as the shield.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement. Inducement is based on allegations that Heil provides instructions on how to install and use the Accused Products in an infringing manner and encourages such use (Compl. ¶64, 75-76). Contributory infringement is based on allegations that the Accused Products are especially made for infringing use and have no substantial non-infringing use (Compl. ¶65, 85-86).
- Willful Infringement: The complaint lays a detailed foundation for willfulness. It alleges that Defendant's predecessor had direct knowledge of the inventor's design after receiving a product sample for evaluation in 2015, and was sent a notice letter regarding the pending patent application in January 2016, well before the '280 Patent issued (Compl. ¶30, 46). The complaint alleges that Defendant’s "virtually identical" product appeared on the market shortly thereafter (Compl. ¶48-49). These allegations of pre-issuance knowledge and copying, followed by post-issuance infringement, support the claim for deliberate and willful conduct warranting enhanced damages (Compl. ¶72).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction: can the term "rain shield," which claim 1 requires the nozzle be mounted to, be construed to read on the accused product's "Sun Shield"? The outcome of this question could be dispositive for literal infringement.
- A second central question will be one of willfulness: given the extensive allegations of pre-suit interactions, notice of the pending application, and alleged copying of the inventor's design, the court will need to determine whether the defendant's conduct was egregious enough to justify an award of enhanced damages.
- An underlying evidentiary question will be one of technical proof: what evidence will Plaintiff present to demonstrate that the accused nozzle’s airflow axis meets the precise, multi-part angular and positional limitations recited in claim 1, or will it be forced to argue for infringement under the doctrine of equivalents?