DCT
6:18-cv-00377
Georgetown Rail Equipment Co v. Tetra Tech Canada Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Georgetown Rail Equipment Company (Texas)
- Defendant: Tetra Tech Inc. (Canada)
- Plaintiff’s Counsel: Yarbrough Wilcox PLLC; Parsons Behle & Latimer
- Case Identification: 6:18-cv-00377, E.D. Tex., 07/27/2018
- Venue Allegations: Venue is alleged to be proper for a foreign defendant under 28 U.S.C. § 1391(c)(3), based on the defendant's alleged acts of patent infringement and substantial contacts within the United States.
- Core Dispute: Plaintiff alleges that Defendant’s 3D Track Assessment System infringes patents related to automated, machine-vision-based railroad track inspection technology.
- Technical Context: The technology at issue involves vehicle-mounted laser and camera systems designed to automatically scan railroad tracks at high speed to detect defects, aiming to replace slower and less precise manual inspection methods.
- Key Procedural History: The complaint alleges that in 2015, Plaintiff sued Defendant's predecessor, Tetra Tech EBA, in Canada for infringing Canadian patents that are counterparts to the ’329 and ’320 patents-in-suit. In January 2018, the Canadian court reportedly found those counterpart patents valid and infringed. The complaint also alleges Defendant had pre-suit knowledge of the ’329 and ’320 patents via a notice letter sent in December 2014.
Case Timeline
| Date | Event |
|---|---|
| 2003-01-01 | Plaintiff invents its AURORA® track inspection technology |
| 2004-06-30 | Earliest Priority Date for ’329, ’320, and ’956 Patents |
| 2009-11-10 | U.S. Patent No. 7,616,329 Issues |
| 2011-12-20 | U.S. Patent No. 8,081,320 Issues |
| 2014-12-29 | Plaintiff sends notice letter regarding ’329 and ’320 Patents |
| 2015-01-12 | Defendant's predecessor acknowledges receipt of notice letter |
| 2015-01-01 | Plaintiff files Canadian lawsuit against Defendant's predecessor |
| 2016-05-17 | Alleged infringing use of 3DTAS in Michigan |
| 2016-09-13 | U.S. Patent No. 9,441,956 Issues |
| 2017-12-16 | Alleged infringing use of 3DTAS in Illinois |
| 2018-01-25 | Canadian Court enters judgment in favor of Plaintiff |
| 2018-07-27 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,616,329 - "System and Method for Inspecting Railroad Track," issued November 10, 2009
The Invention Explained
- Problem Addressed: The patent's background describes traditional visual inspection of railroad tracks by human inspectors as "quite time consuming," imprecise, and logistically challenging, noting a crew can only inspect 5 to 7 miles of track per day (’329 Patent, col. 1:45-53).
- The Patented Solution: The invention is a vehicle-mounted inspection system that uses a laser to project a line of light across the railroad track bed and a camera to capture images of that line as the vehicle moves (’329 Patent, Abstract). A processor analyzes these images, which represent a profile of the track, to automatically detect a wide range of defects, such as "misaligned or sunken tie plates," "missing fasteners," and "rail wear" (’329 Patent, col. 2:22-34). The complaint includes an image of a three-dimensional model of a railroad track generated by Plaintiff's own AURORA® system, which embodies this technology (Compl. p. 4).
- Technical Importance: This automated approach was designed to enable faster, more objective, and more accurate identification of track defects compared to prior manual methods (Compl. ¶13).
Key Claims at a Glance
- The complaint asserts "one or more claims of the ’329 Patent, including at least claim 16" (Compl. ¶29).
- Independent Claim 16 requires:
- A system mounted on a vehicle comprising a light generator (e.g., laser) to project a beam across a track bed and an optical receiver (e.g., camera) to generate images of the reflected light.
- A processor that analyzes the images to determine physical characteristics of the track bed.
- The processor includes an algorithm for detecting a "misaligned or sunken tie plate" by performing a specific series of steps: (a) analyzing an image frame, (b) determining if it contains a tie plate, (c) if so, determining a "crosstie contour" and a "tie plate contour," (d) "comparing an orientation of the crosstie contour and an orientation of the tie plate contour," and (e) determining the condition "based upon the comparison."
U.S. Patent No. 9,441,956 - "System and Method for Inspecting Railroad Ties," issued September 13, 2016
The Invention Explained
- Problem Addressed: The patent identifies a need for a "fully computerized system and method for inspecting railroad tracks" that can not only identify and locate track components but also "determine condition metrics" for them and automatically generate a tie replacement plan (’956 Patent, col. 2:13-19).
- The Patented Solution: Like the ’329 patent, this invention uses a laser and camera system to generate profile data of the track (’956 Patent, Abstract). It further discloses algorithms that use this data to find the boundaries of individual ties, apply weighting factors to various "condition metrics" (e.g., warpage, plate cut), and compute a "condition grade or score" for each tie to create a replacement plan (’956 Patent, col. 2:38-46).
- Technical Importance: The invention seeks to automate not just the data gathering but also the higher-level analysis and maintenance planning for railroad infrastructure (Compl. ¶¶12-13).
Key Claims at a Glance
- The complaint asserts "one or more claims of the ’956 Patent, including at least claim 27" (Compl. ¶39).
- Independent Claim 27 requires:
- A railroad track inspection system with a light generator and a light receiver to generate an image of a portion of the railroad track bed.
- A processor configured to analyze the image.
- The processor is configured to determine if the image contains a tie plate.
- If a tie plate is present, the processor is further configured to determine a "crosstie contour," a "tie plate contour," and determine whether the tie plate is "misaligned or sunken based on the crosstie contour and the tie plate contour."
U.S. Patent No. 8,081,320 - "Tilt Correction System and Method for Rail Seat Abrasion," issued December 20, 2011
- Technology Synopsis: This patent addresses the technical challenge of vehicle tilt, which occurs on curved or banked track and can skew measurement data. The invention is a system that compensates for this tilt using a "mathematics based algorithm" to accurately determine "rail seat abrasion" (the wear on a crosstie where the rail sits), a key indicator of track degradation (’320 Patent, Abstract; col. 2:21-29).
- Asserted Claims: The complaint asserts "at least claim 1" (Compl. ¶49).
- Accused Features: The complaint alleges that the accused 3DTAS includes a processor that "compensates for tilt of the railroad track and determines whether rail seat abrasion is present" (Compl. ¶49).
III. The Accused Instrumentality
Product Identification
- Defendant's "3D Track Assessment System" ("3DTAS") (Compl. ¶17).
Functionality and Market Context
- The complaint alleges that 3DTAS is a railroad track inspection system that Defendant sells, offers for sale, uses, or imports in the United States in competition with Plaintiff (Compl. ¶16). The system allegedly involves hardware installed on railroad "geometry cars" to collect and process data from tracks (Compl. ¶18). The complaint alleges that this hardware includes at least one laser to project a beam and at least one camera to generate images of the track's profile, which are then analyzed by a processor to detect defects (Compl. ¶¶29, 39, 49). The complaint includes a photograph allegedly showing the 3DTAS hardware mounted on the side of a Canadian National Railway car in Illinois. This photograph, taken in December 2017, shows equipment with lenses pointed toward the track bed (Compl. ¶19, p. 5). Another photograph from May 2016 allegedly depicts similar hardware on a CN track inspection train in Michigan (Compl. ¶20, p. 6).
IV. Analysis of Infringement Allegations
'329 Patent Infringement Allegations
| Claim Element (from Independent Claim 16) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A system for inspecting a railroad track bed... to be mounted on a vehicle for movement along the railroad track... | The 3DTAS includes hardware installed on Canadian National Railway's geometry cars. A photograph in the complaint purports to show this hardware. | ¶18, ¶19 | col. 4:1-8 |
| at least one light generator positioned adjacent the railroad track for projecting a beam of light across the railroad track bed; | The 3DTAS is alleged to include "at least one laser ('light generator') used to project a beam across the railroad track bed." | ¶29 | col. 3:23-24 |
| at least one optical receiver... for receiving at least a portion of the light reflected... and generating a plurality of images representative of the profile of at least a portion of the railroad track bed; | The 3DTAS is alleged to include "at least one camera ('optical receiver') used to generate a plurality of images representative of a profile." | ¶29 | col. 3:25-29 |
| ...wherein the processor includes an algorithm for detecting a misaligned or sunken tie plate... the algorithm comprising the steps of: ... (d) comparing an orientation of the crosstie contour and an orientation of the tie plate contour; and (e) determining whether the tie plate is misaligned or sunken based upon the comparison. | The 3DTAS is alleged to include "a processor that uses an algorithm for detecting a misaligned or sunken tie plate... as recited in claim 16 of the '329 Patent." | ¶29 | col. 11:57-65 |
'956 Patent Infringement Allegations
| Claim Element (from Independent Claim 27) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A railroad track inspection system... | The 3DTAS is identified as a railroad track inspection system. | ¶39 | col. 2:13-19 |
| at least one light generator... to project a beam of light across a portion of the railroad track bed; | The 3DTAS allegedly includes a laser to project a beam across the railroad track bed. | ¶39 | col. 26:1-4 |
| at least one light receiver... to generate an image of the portion of the railroad track bed; | The 3DTAS allegedly includes a camera to generate an image of a portion of the railroad track bed. | ¶39 | col. 26:5-8 |
| ...at least one processor... configured to determine whether the image contains a tie plate, wherein if the image contains a tie plate the processor being configured to... determine whether the tie plate is misaligned or sunken based on the crosstie contour and the tie plate contour. | The 3DTAS is alleged to include a processor "configured to determine whether a tie plate is misaligned or sunken, as recited in claim 27 of the '956 Patent." | ¶39 | col. 26:9-20 |
Identified Points of Contention
- Scope Questions: A central dispute may arise over the meaning of the specific algorithmic steps recited in the claims. For example, does the accused 3DTAS system "determine whether a tie plate is misaligned or sunken" by first identifying a "crosstie contour" and a "tie plate contour" and then performing a determination "based on" those specific contours, as required by both asserted independent claims? The defendant may argue its system uses a different analytical method that does not map onto these claimed steps.
- Technical Questions: The complaint's infringement allegations regarding the processor's functions are conclusory. A key technical question will be what evidence exists that the 3DTAS software actually operates in the manner claimed. The provided photographs show hardware but offer no insight into the algorithms being executed. The outcome may depend on evidence obtained through discovery, such as source code or technical documentation for the 3DTAS system.
V. Key Claim Terms for Construction
For the '329 and '956 Patents
- The Term: "determine whether the tie plate is misaligned or sunken based on the crosstie contour and the tie plate contour" (language from ’956 Patent, Claim 27; similar concept in ’329 Patent, Claim 16).
- Context and Importance: This term defines the core analytical function of the claimed invention. The infringement analysis will likely turn on whether the accused 3DTAS system performs this specific type of contour-based comparison or uses an alternative method to detect the same defects. Practitioners may focus on this term because the claims appear to require a specific analytical pathway, not just the end result of defect detection.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patents' specifications describe a wide range of "measurable aspects" that the system can determine, suggesting the invention is not limited to a single, rigid method for all defect types (’329 Patent, col. 2:22-34). A plaintiff may argue that "based on" should be interpreted broadly to cover any algorithm that uses contour data as a primary input for determining the state of a tie plate.
- Evidence for a Narrower Interpretation: The ’329 Patent’s Claim 16 recites a more specific algorithm involving a "comparison" of the "orientation" of the contours. The specification provides a detailed example of this, showing analysis of lines L1 and L2 to determine the angle of a crosstie (’329 Patent, FIG. 5; col. 8:26-41). A defendant could argue this specific method of comparing orientations limits the scope of what it means to make a determination "based on" the contours, even for the slightly broader language in the ’956 patent.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement, stating that Defendant provided the 3DTAS hardware to customers, such as Canadian National Railway, and "instructed" them to use the system in a manner that constitutes direct infringement (Compl. ¶¶31, 41, 51). These allegations may be intended to address potential divided infringement issues where the customer operates the hardware while the defendant performs data processing.
- Willful Infringement: Willfulness is alleged for all three patents. For the ’329 and ’320 patents, the allegation is based on pre-suit knowledge from a December 2014 notice letter and the prior Canadian litigation on counterpart patents (Compl. ¶¶32, 52). For the ’956 patent, which issued after the notice letter, the willfulness allegation appears to be based on knowledge obtained from the filing of the complaint itself, as the complaint alleges Defendant acted "despite knowledge of the '956 Patent" (Compl. ¶42).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of algorithmic infringement: does the accused 3DTAS software perform the specific, contour-based analytical steps recited in the asserted claims, or does it use a technically distinct method to detect track defects? The conclusory nature of the complaint’s allegations suggests this will be a central battleground dependent on evidence revealed in discovery.
- A second key question will be the impact of the Canadian litigation: while the Canadian court's finding of infringement on counterpart patents is not binding on a U.S. court, it may be viewed as persuasive authority on technical and claim construction issues, potentially influencing the trajectory of the U.S. case and any settlement negotiations.
- A third question concerns proof of infringement in a multi-party system: can the plaintiff establish that all steps of the claimed methods are performed by or attributable to a single actor, or, failing that, can it meet the high bar for proving joint infringement, given that the defendant's customers allegedly operate the hardware while the defendant may perform the subsequent data analysis?