DCT
3:21-cv-00313
Rimco v. Dual Tech Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Rimco, Inc., dba Idaho Wrecker Sales (Idaho)
- Defendant: Dual-Tech, Inc. (Tennessee)
- Plaintiff’s Counsel: Michael P. Mazza, LLC; Patrick, Beard, Schulman & Jacoway, P.C.
- Case Identification: 3:21-cv-00313, E.D. Tenn., Filed 08/31/2021
- Venue Allegations: Venue is based on Defendant being a Tennessee corporation with its principal place of business and corporate headquarters located within the Eastern District of Tennessee.
- Core Dispute: Plaintiff alleges that Defendant’s side puller recovery systems for tow trucks infringe a patent related to an accessory frame that enables side-pulling vehicle recovery.
- Technical Context: The technology concerns vehicle recovery equipment designed to allow tow trucks to retrieve disabled vehicles from the side of a road while minimizing obstruction of traffic.
- Key Procedural History: The complaint alleges that Defendant has been on notice of the patent-in-suit since at least June 2, 2015, when the patent’s parent application was cited by the U.S. Patent and Trademark Office as prior art during the prosecution of Defendant’s own patent. This allegation forms the basis for the claim of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2003-05-15 | '135 Patent Priority Date |
| 2012-06-04 | Defendant Dual-Tech files for its own '733 Patent |
| 2012-06-05 | '135 Patent Issue Date |
| 2015-06-02 | Alleged date of first notice via USPTO Office Action |
| 2021-08-31 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,192,135 - "Side Puller Accessory Frame For A Car Carrier And For A Tow Truck," issued June 5, 2012
The Invention Explained
- Problem Addressed: The patent’s background section identifies the problem that conventional tow trucks, when recovering a vehicle from the side of the road, often must use more than one lane of traffic, causing significant disruption (’135 Patent, col. 1:51-59).
- The Patented Solution: The invention is an accessory frame designed to be mounted transversely on a vehicle frame behind the driver's cab (’135 Patent, col. 2:45-49). This frame includes a winch and a system of sheaves (pulleys) that can direct a pulling force to the side of the recovery vehicle. This configuration allows the operator to recover a disabled vehicle from an adjacent lane or off-road location while occupying only a single lane of traffic or the shoulder, thus turning a standard car carrier into a more "versatile recovery truck" (’135 Patent, col. 1:49-51, 1:63-2:7).
- Technical Importance: The technology provides a vehicle recovery apparatus with "multiple useful angles of pulling power" that can "reduce the lateral space" needed for recovery operations (’135 Patent, col. 1:63-2:2).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 2 (Compl. ¶15).
- Independent Claim 1 recites:
- A side puller with an accessory frame mounted on a recovery vehicle, oriented transversely to the vehicle's longitudinal axis.
- The frame comprises "bracing securely and rigidly fastened to the vehicle frame."
- The bracing extends above the frame and has "two nesting legs, each nesting leg selectively sliding in and out of a corresponding lower portion of the bracing."
- A winch with a cable is carried by the frame, with the cable orientable in a transverse direction.
- Independent Claim 2 recites:
- A side puller with an accessory frame mounted on a recovery vehicle, oriented transversely.
- The frame comprises "bracing securely and rigidly fastened to the vehicle frame" that extends above the vehicle.
- The bracing itself comprises a "top horizontal frame tube and two diagonal frame tubes."
- A winch with a cable is carried by the frame, with the cable orientable in a transverse direction.
- The frame also includes "two support tube assemblies joined to the diagonal frame tubes."
- The complaint reserves the right to assert dependent claims 3 and 4 (Compl. ¶15).
III. The Accused Instrumentality
Product Identification
- The accused products are Defendant's "Sidepuller" devices for vehicle recovery (Compl. ¶9, 11).
Functionality and Market Context
- The complaint alleges the accused products are vehicle-mounted side puller devices that perform the same function as Plaintiff's patented technology (Compl. ¶8, 11). The complaint provides photographs of the accused Dual-Tech devices, which allegedly show the infringing functionality (Compl. ¶15, referencing Ex. F). A brochure for one of the accused devices is referenced as Exhibit G (Compl. ¶9).
- The complaint alleges that Plaintiff and Defendant are in direct competition and, along with a third company (Jerr-Dan) that sells a dissimilar product, are the only major U.S. suppliers of such devices. This frames a "two-supplier market" for the purposes of calculating lost profits damages (Compl. ¶11, 17).
IV. Analysis of Infringement Allegations
The complaint alleges literal infringement of claims 1 and 2 based on Defendant's manufacture and sale of its "Sidepuller" products (Compl. ¶15).
'135 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A side puller with an accessory frame mounted on a recovery vehicle... oriented transversely to a longitudinal axis of the recovery vehicle... | The accused "Sidepuller" is an accessory frame mounted on a recovery vehicle for side-pulling operations. | ¶15 | col. 4:16-22 |
| bracing securely and rigidly fastened to the vehicle frame, the bracing extending above the vehicle frame... | The accused product is a bracing structure fastened to a vehicle frame. | ¶15 | col. 4:23-25 |
| ...and having two nesting legs, each nesting leg selectively sliding in and out of a corresponding lower portion of the bracing... | The complaint does not provide sufficient detail for analysis of this element. | col. 4:25-27 | |
| a winch whose cable is carried by the accessory frame, wherein the cable may be oriented... in a direction substantially transverse... | The accused "Sidepuller" product includes a winch and cable system for transverse pulling. | ¶9, ¶15 | col. 4:28-33 |
'135 Patent Infringement Allegations
| Claim Element (from Independent Claim 2) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| bracing... comprises a top horizontal frame tube and two diagonal frame tubes... | The accused product is alleged to have the frame structure recited in the claim, as shown in attached photographs. | ¶15 | col. 4:42-45 |
| a winch whose cable is carried by the accessory frame, wherein the cable may be oriented... in a direction substantially transverse... | The accused "Sidepuller" product includes a winch and cable system for transverse pulling. | ¶9, ¶15 | col. 4:46-50 |
| two support tube assemblies joined to the diagonal frame tubes. | The complaint does not provide sufficient detail for analysis of this element. | col. 4:51-52 |
- Identified Points of Contention:
- Technical Questions: A primary factual question will be whether the accused products, depicted in Exhibit F, actually contain the specific structures recited in the claims. The complaint does not explicitly map the product's features to the "nesting legs" of Claim 1 or the "support tube assemblies" of Claim 2, suggesting this will be a central point of dispute requiring discovery and expert testimony.
- Scope Questions: The dispute may turn on the scope of the structural terms. For example, the case raises the question of whether the defendant's support legs, whatever their specific design, fall within the meaning of "nesting legs" or "support tube assemblies" as used in the patent.
V. Key Claim Terms for Construction
- The Term: "nesting legs" (Claim 1)
- Context and Importance: This term defines a key structural element of Claim 1. Proving literal infringement of this claim will require Plaintiff to show that the accused device possesses this specific feature. Practitioners may focus on this term because the complaint provides no specific allegations about this feature on the accused product, making it a likely point of non-infringement argument.
- Intrinsic Evidence for Interpretation:
- Evidence for a Narrower Interpretation: The specification describes a specific embodiment of "manually actuated nesting legs 50" that slide in and out of diagonal frame tubes and are secured by a "cam lock 54" that engages "pin bores 52" (’135 Patent, col. 3:36-43). A party could argue this detailed description limits the term to a structure with these characteristics.
- The Term: "support tube assemblies" (Claim 2)
- Context and Importance: This term is a critical limitation in Claim 2, distinguishing it from Claim 1. Whether the accused device infringes Claim 2 will depend on whether its structure includes components that meet this definition.
- Intrinsic Evidence for Interpretation:
- Evidence for a Narrower Interpretation: The specification discloses an alternative embodiment where "two support tube assemblies 60 are joined to the diagonal frame tubes" and each has a "hydraulically extendable leg 62" moved by a "hydraulic actuator" (’135 Patent, col. 3:46-53). A defendant could argue this ties the term to a structure with hydraulically actuated legs, as distinct from the manually actuated "nesting legs" of Claim 1.
VI. Other Allegations
- Willful Infringement: The complaint alleges willful infringement based on pre-suit knowledge of the ’135 Patent. The specific factual basis for this allegation is that the ’135 Patent and its parent application were cited as prior art by the USPTO against Defendant’s own patent application (for the ’733 patent) on or before June 2, 2015 (Compl. ¶10, 16).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of structural infringement: does the accused "Sidepuller" device, as a matter of fact, incorporate the specific "nesting legs" required by Claim 1 or the distinct "support tube assemblies" required by Claim 2? The resolution will depend on evidence developed during discovery comparing the accused product's design to the claim language and the patent's specification.
- A key question for damages will be willfulness: did the citation of the ’135 Patent by a patent examiner during the prosecution of Defendant’s own, later patent provide legally sufficient notice to Defendant? The court will need to determine if this event establishes the knowledge and intent required to support a finding of willful infringement from the date alleged by the Plaintiff.