DCT
3:18-cv-00280
Thrash Master Concaves LLC v. Estes
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Thrash Master Concaves, LLC and C&C Combine Performance, LLC (Texas)
- Defendant: Donald Estes, CSM Corp., Copperhead Concave Systems, L.L.C., and CM Welding, Inc. (Indiana, Illinois, South Dakota)
- Plaintiff’s Counsel: Fulkerson Lotz LLP
- Case Identification: 3:18-cv-00280, S.D. Tex., 02/08/2019
- Venue Allegations: Plaintiffs allege venue is proper because Defendants conduct business in the district, the disputed actions and alleged infringement occurred in the district, and a significant percentage of witnesses reside there.
- Core Dispute: Plaintiffs, manufacturers of aftermarket combine harvester components, seek a declaratory judgment that their products do not infringe Defendants' patent and that the patent is invalid and unenforceable, following infringement accusations and licensing demands from Defendants.
- Technical Context: The technology concerns the design of concaves, a component in agricultural combine harvesters that works with a rotor to thresh grain from harvested crop material.
- Key Procedural History: The action was initiated after Defendants accused Plaintiffs of infringement and demanded royalty payments. The patent-in-suit is a reissued patent. Subsequent to the filing of this complaint, the patent underwent an ex parte reexamination, which concluded with the cancellation of all 22 claims. This development raises the question of whether a live controversy for infringement still exists.
Case Timeline
| Date | Event |
|---|---|
| 2011-09-09 | Priority Date for U.S. Patent No. 8,454,416 (from Provisional App. 61/573,644) |
| 2013-06-04 | U.S. Patent No. 8,454,416 Issues |
| 2017-05-16 | U.S. Reissued Patent No. RE46,401 E Issues |
| 2018-05-15 | Defendants allegedly contact Plaintiffs regarding infringement and demand royalties |
| 2018-05-25 | Defendant Estes allegedly demands $500 per concave sold |
| 2019-02-08 | Plaintiffs' Second Amended Complaint Filed |
| 2021-05-11 | U.S. Reexamination Certificate US RE46,401 C1 issues, cancelling all claims |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Reissued Patent No. RE46,401 E - "Concave with an Array of Longitudinally Notched Spaced Apart Threshing Elements"
- Patent Identification: U.S. Reissued Patent No. RE46,401 E, "Concave with an Array of Longitudinally Notched Spaced Apart Threshing Elements," issued May 16, 2017.
The Invention Explained
- Problem Addressed: The patent's background section describes a trade-off in prior art combine concaves. Designs with square bars and wires could restrict crop flow too much, causing the concave to plug with material like corn shucks. (’401 Patent, col. 1:46-51). Conversely, simpler designs with round bars could allow too little restriction, leading to ineffective threshing for other crop types and overloading the separator section. (’401 Patent, col. 1:51-58).
- The Patented Solution: The invention is a concave that uses an array of spaced-apart bars, each featuring a longitudinal notch. This notch creates an "aggressive threshing edge" that is recessed into the bar and faces against the direction of crop flow. (’401 Patent, Abstract; col. 2:12-17). This design purports to provide effective threshing via the notched edge while the spacing and shape of the bars reduce the potential for plugging. (’401 Patent, col. 2:1-7).
- Technical Importance: The design aims to resolve the longstanding operational compromise between preventing plugging in corn and ensuring effective threshing in other crops, potentially reducing the need for farmers to switch concaves for different harvests. (’401 Patent, col. 1:55-58).
Key Claims at a Glance
- The complaint seeks a declaration of non-infringement of "any valid claim of the ‘416 patent" (the reissued '401 Patent) without specifying claims. (Compl. ¶24). Independent claim 1 is representative.
- Essential elements of independent claim 1 include:
- A frame comprised of a plurality of members, including two opposite members.
- An array of spaced-apart threshing elements extending between the opposite frame members.
- The threshing elements are "elongated bars."
- Each bar has a pair of opposite ends seated in openings of the frame members.
- A "notch" is formed in each bar, extending longitudinally.
- The notch defines an "aggressive threshing edge" that is recessed into the bar.
- The aggressive threshing edge faces opposite to "a direction of movement of a rotor of the agricultural combine."
- The complaint does not explicitly reserve the right to assert dependent claims, as it is a declaratory judgment action filed by the accused infringer.
III. The Accused Instrumentality
Product Identification
- The "Thrash Master Concave System." (Compl. ¶16).
Functionality and Market Context
- The accused product is an aftermarket concave system for combine harvesters. (Compl. ¶16).
- The complaint alleges that the product features a "unique configuration" that improves harvest speed, reduces grain damage during threshing, and minimizes grain loss. (Compl. ¶16).
- The complaint positions the product as competing in the same general market as the products sold by Defendants. (Compl. ¶17). No further technical details of the accused product's structure or operation are provided in the complaint.
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint, being a declaratory judgment action, does not contain a claim chart. It asserts that Plaintiffs' concaves do not infringe any valid claim of the '401 Patent. (Compl. ¶24). The following table outlines the elements of claim 1, but the complaint does not provide sufficient detail to populate the "Alleged Infringing Functionality" column with the specific features of the Thrash Master Concave System that Defendants contend meet these limitations.
RE46,401 E Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a frame comprised of a plurality of members interconnected to one another and including a pair of said members spaced apart opposite, and extending generally parallel, to one another... | The complaint does not provide sufficient detail for analysis of this element. | ¶24 | col. 6:3-15 |
| an array of threshing elements supported by and extending between said opposite members of said frame and being spaced apart and extending generally parallel to one another; | The complaint does not provide sufficient detail for analysis of this element. | ¶24 | col. 6:16-20 |
| said threshing elements being elongated bars | The complaint does not provide sufficient detail for analysis of this element. | ¶24 | col. 6:21-22 |
| a notch formed in said bar and extending longitudinally between said opposite ends of said bar such that said notch defines an aggressive threshing edge recessed into said bar...and facing opposite to a direction of movement of a rotor... | The complaint does not provide sufficient detail for analysis of this element. | ¶24 | col. 6:28-36 |
- Identified Points of Contention:
- Scope Questions: A central question may concern the scope of "elongated bars." During reissue, the phrase "[having round configurations in cross-section]" was deleted from claim 1. This raises the question of whether the claim now covers bars with non-round cross-sections, or if the specification, which heavily emphasizes round bars, limits the scope. (’401 Patent, col. 6:21-23; col. 4:12-13).
- Technical Questions: The complaint does not provide evidence regarding the specific structure of the Thrash Master concaves. A factual dispute would concern whether the accused products possess a "notch" that forms an "aggressive threshing edge" facing opposite the rotor direction, as required by the claim.
V. Key Claim Terms for Construction
The Term: "aggressive threshing edge"
Context and Importance: This term appears in independent claim 1 and is a primary feature of the purported invention. The definition of what makes a threshing edge "aggressive" will be critical to the infringement analysis, as it is a qualitative descriptor.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not provide an explicit definition. A party could argue that any forward-facing surface on a threshing bar that enhances threshing action relative to a smooth bar meets the definition.
- Evidence for a Narrower Interpretation: The specification describes the edge (40) as being formed by a second surface (38) that extends "upright from and in the transverse relation to" a first surface (36). (’401 Patent, col. 4:56-61). This suggests the edge must be a relatively sharp, near-90-degree corner, not merely a textured or curved surface.
The Term: "elongated bars"
Context and Importance: Practitioners may focus on this term because the original patent claim specified bars "having round configurations in cross-section," but this language was removed during reissue. (’401 Patent, col. 6:21-23). This history directly impacts the potential scope of infringement.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The removal of the "round configurations" limitation during reissue could be argued to reflect a clear intent to broaden the claim to cover bars of any cross-sectional shape (e.g., square, oval).
- Evidence for a Narrower Interpretation: The specification repeatedly describes the bars as having "round configurations in cross-section" and a "semi- or half-cylindrical rounded configuration." (’401 Patent, col. 2:12-13, col. 4:29-30). A party could argue that the written description only supports round-bar embodiments and that the claim scope should be limited accordingly to avoid invalidity for lack of written description.
VI. Other Allegations
- Indirect Infringement: The complaint seeks a declaration of non-infringement both "directly or indirectly." (Compl. ¶24). However, the complaint does not allege any specific facts asserted by Defendants that would form the basis of a claim for induced or contributory infringement.
- Willful Infringement: As a declaratory judgment action, the complaint does not allege willfulness by the Defendants. However, it establishes a basis for a potential willfulness counterclaim from the Defendants by alleging pre-suit knowledge. The complaint states that Defendants first contacted Plaintiffs about alleged infringement on or about May 15, 2018, and subsequently demanded royalties, thereby putting Plaintiffs on notice of the patent. (Compl. ¶¶ 19-20).
VII. Analyst’s Conclusion: Key Questions for the Case
- A threshold issue is one of mootness: given that all claims of the '401 Patent were cancelled in a subsequent ex parte reexamination, a court must first determine if any live case or controversy regarding infringement remains for the period prior to cancellation.
- A central question of claim scope would have been whether the term "elongated bars," broadened during reissue to remove a "round configuration" limitation, could be construed to cover non-round structures, or if the specification's consistent focus on round bars limits the claim's reach.
- An ultimate question of validity: the complaint broadly challenges validity on grounds of anticipation, obviousness, and indefiniteness. (Compl. ¶29). The subsequent cancellation of all claims by the USPTO strongly suggests that these challenges were well-founded and would have been a primary focus of the litigation.