DCT
1:19-cv-00095
Miller Industries Towing Equipment Inc v. NRC Industries PLR3
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Miller Industries Towing Equipment Inc. (Delaware / Tennessee)
- Defendant: NRC Industries (Canada)
- Plaintiff’s Counsel: Patrick, Beard, Schulman & Jacoway, P.C.; Michael P. Mazza, LLC
- Case Identification: 1:19-cv-00095, E.D. Tenn., 05/06/2019
- Venue Allegations: Venue is alleged based on Defendant’s transaction of business, advertising, and promotion of accused products within the judicial district.
- Core Dispute: Plaintiff alleges that Defendant’s fold-down control systems for vehicle wreckers infringe one utility patent and two design patents related to movable, ergonomic control panels.
- Technical Context: The technology concerns the operator control interfaces for heavy-duty vehicle wreckers, a field where operator safety, ergonomic comfort, and clear sightlines during recovery operations are significant factors.
- Key Procedural History: The complaint alleges that Defendant had pre-suit knowledge of the utility patent-in-suit because Defendant cited it during the prosecution of its own patent application, a fact Plaintiff presents to support its claim for willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2012-08-02 | U.S. Patent No. 9,440,577 Priority Date |
| 2014-04-07 | U.S. Patent No. D751,963 Priority Date |
| 2014-04-07 | U.S. Patent No. D752,492 Priority Date |
| 2016-03-22 | U.S. Patent No. D751,963 Issue Date |
| 2016-03-29 | U.S. Patent No. D752,492 Issue Date |
| 2016-09-13 | U.S. Patent No. 9,440,577 Issue Date |
| 2017-09-20 | Alleged date of Defendant's pre-suit notice of '577 Patent |
| 2019-05-06 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,440,577 - "Vehicle Wrecker With Improved Controls", issued Sep. 13, 2016
The Invention Explained
- Problem Addressed: The patent’s background section states that conventional controls for vehicle wreckers are typically located inside a side-mounted toolbox, forcing an operator to bend forward in an uncomfortable position. This placement can also obstruct the operator's sightlines to the boom and the vehicle being recovered (’577 Patent, col. 1:31-43).
- The Patented Solution: The invention is a wrecker control system featuring a control panel that is stored within an interior compartment but is movable to a second, external operating position. This new position is displaced from the vehicle body, creating an "ergonomic-oriented work station" that allows the operator to stand upright and provides "enhanced sight lines" to the work area (’577 Patent, col. 2:5-12, col. 4:20-28). The control panel can be mounted on structures like a hinged door or a sliding shelf (’577 Patent, col. 2:5-9).
- Technical Importance: The described approach sought to improve operator safety and efficiency by integrating hydraulic and electrical controls onto a single, movable panel that could be positioned for better visibility and comfort during complex recovery operations (’577 Patent, col. 5:55-64).
Key Claims at a Glance
- The complaint asserts independent claims 1 (apparatus) and 16 (method) (Compl. ¶¶17-18, 21).
- Independent Claim 1 requires, among other elements:
- A vehicle frame supporting a vehicle body and a boom.
- Manually-manipulable wrecker controls on a control panel stored within an interior compartment.
- The control panel is "moveable from a first, storage position ... to a second, operable position" that is displaced from the vehicle exterior.
- In the first position, the control panel is "operable to close off the interior compartment."
- In the second position, the control panel is "downwardly-angled relative to ground" and provides an "ergonomically-enhanced work surface."
- The complaint reserves the right to assert dependent claims 2-3, 6-8, 11, 13, 17, 20, and 21 (Compl. ¶17).
U.S. Design Patent No. D751,963 - "Compartment And Console With Controls For A Recovery Vehicle", issued Mar. 22, 2016
The Invention Explained
- Problem Addressed: Design patents do not address technical problems; they protect the novel, ornamental appearance of an article of manufacture.
- The Patented Solution: The patent claims the specific ornamental design for a vehicle wrecker control system assembly. The design consists of a side compartment with an outwardly-opening, hinged door, where a control console is mounted to the interior face of that door, as depicted in the patent's figures (D'963 Patent, Figs. 1-8). The claim covers the overall visual appearance of this combination.
- Technical Importance: Not applicable to a design patent.
Key Claims at a Glance
- The patent contains a single claim for "the ornamental design for a compartment and console with controls for a recovery vehicle, as shown and described" (Compl. ¶30; D'963 Patent, CLAIM).
U.S. Design Patent No. D752,492 - "Console With Recovery Vehicle Controls", issued Mar. 29, 2016
- Technology Synopsis: This design patent claims the specific ornamental design for the control console component itself, divorced from the larger compartment or door assembly. The claimed design features a particular arrangement of a display screen, push-buttons, and joystick-style controls within a uniquely shaped housing.
- Asserted Claims: The single claim for the ornamental design of the console as shown and described (Compl. ¶30).
- Accused Features: The complaint alleges that the design of Defendant's control console is "substantially the same" as the design claimed in the ’492 Patent (Compl. ¶33).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are the "fold-down controls" offered on certain vehicle wreckers manufactured by Defendant NRC, including its 50/65CSR and 40/50CSR rotator wrecker models (Compl. ¶4).
Functionality and Market Context
- The complaint alleges that the accused controls are stored within an interior compartment of the wrecker (Compl. ¶13). This control system is located on a "control panel that has an attached arm, which is capable of folding outward to the exterior of the wrecker" (Compl. ¶14). When extended, the control panel is allegedly supported by the open door of the interior compartment (Compl. ¶16). Plaintiff alleges that it and Defendant are the "only competitors" supplying products that fall within the scope of the patents, which forms a basis for its request for lost profits damages (Compl. ¶38).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’577 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| manually-manipulable wrecker controls located on and supported by a control panel | The controls are located on a control panel with an attached arm. | ¶14, 18(a) | col. 8:34-35 |
| the control panel is stored within an interior compartment of the wrecker | The accused controls are stored in an interior compartment of NRC’s wreckers. | ¶13, 18(b) | col. 8:35-36 |
| the control panel is moveable from a first, storage position within the interior compartment of the vehicle body ... to a second, operable position displaced from and outside the compartment and remote from the vehicle exterior | The control panel has an attached arm capable of folding outward to the exterior of the wrecker. | ¶14, 18(c) | col. 8:41-48 |
| when the control panel is in the first, storage position ... it is operable to close off the interior compartment from an operator of the wrecker controls | A door closes off the interior compartment with the control panel from the exterior when in the closed position. | ¶15, 18(d) | col. 8:41-45 |
| in the second position the control panel is downwardly-angled relative to ground ... and ... comprises a strategic location of the wrecker controls, providing an operator with an ergonomically-enhanced work surface | The complaint alleges the accused product meets these functional and positional limitations when the control panel is in the second position. | ¶18(e) | col. 8:53-62 |
- Identified Points of Contention:
- Scope Questions: Claim 1 requires "the control panel" to be "moveable." The complaint alleges the accused product has a "control panel that has an attached arm" and is "supported by the open door" (Compl. ¶¶14, 16). This raises the question of whether the "control panel" itself is "moveable" as claimed, or if it is a component of a larger, moving door assembly, a distinction which may be legally significant.
- Technical Questions: The complaint alleges the accused device achieves a specific "downwardly-angled" orientation and provides an "ergonomically-enhanced work surface" (Compl. ¶18(e)). The court will require factual evidence, such as product demonstrations and expert testimony, to determine if the accused product's physical configuration and function meet these qualitative claim limitations.
V. Key Claim Terms for Construction
The Term: "control panel"
- Context and Importance: The definition of "control panel" is critical because Claim 1 of the ’577 Patent ascribes specific actions to this element, including being "moveable" and "operable to close off the interior compartment." The infringement analysis will depend on whether this term refers only to the console holding the controls or to the entire moving structure (e.g., the door on which the console is mounted). Practitioners may focus on this term because the complaint's allegations appear to distinguish between the "control panel" and the "door" that supports it (Compl. ¶16).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the invention as providing "wrecker controls that are more easily accessible" and not tethered to a specific location (’577 Patent, col. 1:47-50). This purpose might support an interpretation where "control panel" broadly means the entire movable support structure for the controls.
- Evidence for a Narrower Interpretation: The specification refers to "console 30" being mounted "on door 25" (’577 Patent, col. 4:38-40). A party could argue that "control panel" refers specifically to the "console 30" component, which is distinct from the "door 25" that performs the movement and closing functions.
The Term: "operable to close off the interior compartment"
- Context and Importance: This limitation in Claim 1 is applied directly to the "control panel." The complaint alleges the accused product has a "door that closes off the interior compartment with the control panel" (Compl. ¶15), potentially separating the actor (door) from the claimed element (control panel). Plaintiff’s argument regarding Claim 16—that the door closes the compartment, not the panel—highlights an awareness of this distinction (Compl. ¶22).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Figure 4 shows the console 30 as part of the closed door 25, suggesting they function as a single unit to close the compartment. This could support a reading where being part of the closing structure satisfies the limitation.
- Evidence for a Narrower Interpretation: The plain language of Claim 1 requires the "control panel" itself to be "operable to close off" the compartment. If the evidence shows a separate door performs this function, a defendant could argue this element is not met literally.
VI. Other Allegations
- Indirect Infringement: The complaint does not plead a separate count for indirect infringement or provide specific factual allegations detailing inducement or contributory infringement beyond general allegations of making, using, and selling.
- Willful Infringement: The complaint alleges that Defendant’s infringement has been willful (Compl. ¶28). The factual basis for this allegation is that Defendant was on notice of the ’577 Patent "since at least September 20, 2017, when NRC cited the ’577 Patent in its application for its own patent" (Compl. ¶26). It is alleged that despite this pre-suit knowledge, Defendant continued its infringing activities (Compl. ¶27).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of claim construction and scope: can the term "control panel" in Claim 1 of the '577 Patent, which is recited as being both "moveable" and "operable to close off" a compartment, be construed to read on an accused system where a console is allegedly mounted on a structurally distinct door that performs these functions?
- For the design patents, the key question will be one of visual appearance: would an "ordinary observer," familiar with the prior art, find the overall ornamental design of NRC's control system to be substantially the same as the designs depicted in the '963 and '492 patents, or are there sufficient visual differences to avoid infringement?
- A third key question will relate to willfulness: if infringement is found, will the Defendant's alleged act of citing the '577 Patent during its own patent prosecution be sufficient evidence to prove the level of culpability required to justify an award of enhanced damages?