DCT
6:17-cv-00055
Pisony v. McLeod
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Murray Walter Pisony (Texas)
- Defendant: Commando Construction, Inc. (Canada); James McLeod Holdings Inc. (Canada)
- Plaintiff’s Counsel: Wilson Legal Group P.C.
- Case Identification: 6:17-cv-00055, W.D. Tex., 06/06/2018
- Venue Allegations: Venue is alleged as proper because a substantial part of the events giving rise to the claims occurred in the district and the defendants are not residents of the United States.
- Core Dispute: Plaintiff alleges that Defendants’ “skid hustler” machines infringe a patent related to all-terrain apparatus for collecting, stacking, and bundling lumber.
- Technical Context: The technology concerns heavy machinery designed to automate the collection and bundling of lumber pieces, known as "skids," which are used in industrial applications such as supporting pipelines during construction.
- Key Procedural History: Plaintiff and James McLeod (principal of Defendants) were co-inventors on an earlier, related patent (U.S. Patent No. 7,320,202), which is cited as prior art in the patent-in-suit. Plaintiff sent a cease-and-desist letter regarding the asserted patent on October 28, 2016, and received a response denying infringement on November 18, 2016.
Case Timeline
| Date | Event |
|---|---|
| 2004-08-01 | '629 Patent Priority Date Asserted by Plaintiff |
| 2004-10-21 | U.S. Patent No. 7,320,202 ("Joint Patent") Filing Date |
| 2005-06-07 | U.S. Patent No. 7,591,629 ("Pisony Patent") Filing Date |
| 2008-01-22 | "Joint Patent" Issue Date |
| 2009-09-22 | "Pisony Patent" Issue Date |
| 2016-10-28 | Plaintiff sends Cease and Desist Letter to Defendants |
| 2016-11-18 | Defendants' counsel responds to Cease and Desist Letter |
| 2018-06-06 | Plaintiff files Second Amended Complaint |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,591,629 - "All Terrain Lumber Collection and Stacking Apparatus"
- Issued: September 22, 2009.
The Invention Explained
- Problem Addressed: The patent's background section describes prior art machines for picking up lumber as being limited in application because they require "smooth, flat and dry ground conditions" and cannot pick up lumber from surfaces significantly above or below the machine itself (’629 Patent, col. 1:45-54).
- The Patented Solution: The invention claims to solve this problem with an all-terrain apparatus that uses a grapple to pick up lumber pieces from a wide radius and varied ground conditions, depositing them into a conveyor assembly for sorting and cleaning. A key aspect is the inclusion of leveling means, such as an adjustable mast, which allows the conveyor and stacking assemblies to function effectively on inclines and declines (’629 Patent, Abstract; col. 2:8-16).
- Technical Importance: The claimed use of a grapple for collection and a leveling mechanism for the conveyor system allows the machine to operate on uneven terrain common to industrial sites like pipeline routes, expanding its utility beyond prior art designs (’629 Patent, col. 2:5-16).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 2, 4, and 6 (Compl. ¶17).
- Independent Claim 1 recites an apparatus comprising:
- a chassis
- a grapple carried with the chassis
- a conveyor assembly supported on the chassis
- a stacking assembly (including an unscrambling hopper, row conveyor, stacking bin, and bundling assembly) operatively connected adjacent to the conveyor
- a discharge platform operatively connected adjacent to the bundling assembly
- wherein the conveyor assembly includes a frame, a pivotal connection for angular adjustment of the frame relative to the chassis, and an extendible mast connected between the frame and chassis to drive the frame about the pivotal connection.
- the mast is also operable to drive adjustment of the angle of the frame to select the approach angle for the conveyor relative to the stacking assembly.
III. The Accused Instrumentality
Product Identification
- The accused products are "skid hustler" machines manufactured, used, distributed, and sold by Defendants Commando Construction, Inc. and James McLeod Holdings Inc. (Compl. ¶¶10-11).
Functionality and Market Context
- The complaint alleges the accused products are all-terrain vehicles equipped with a grapple arm for picking up lumber, a receiving bin, a conveyor, and a rear-mounted stacking and bundling assembly (Compl. ¶10, Ex. 3). The complaint includes photographs of accused machines operating at worksites, such as one model from 2008 depicted loading lumber into a conveyor bin (Compl. Ex. 6, p. 71). The complaint asserts these machines are sold for use in the United States, including in Texas (Compl. ¶11).
IV. Analysis of Infringement Allegations
'629 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a chassis | The accused machine is built on a wheeled vehicle chassis that provides the structural base for all other components. | Ex. 6, p. 72 | col. 4:19-21 |
| a grapple carried with the chassis | The accused machine includes an articulated grapple arm mounted on the vehicle, used to pick up lumber from the ground. | Ex. 6, p. 73 | col. 4:48-52 |
| a conveyor assembly supported on the chassis | The accused machine has a conveyor assembly, including a receiving bin and conveyor belt, mounted on the vehicle's frame. | Ex. 6, p. 75 | col. 4:32-35 |
| a stacking assembly operatively connected adjacent the conveyor assembly, the stacking assembly including an unscrambling hopper, a row conveyor, a stacking bin and a bundling assembly, and, | A stacking assembly is positioned at the rear of the conveyor. It allegedly includes components that perform the functions of an unscrambling hopper, a row conveyor for aligning lumber, a stacking bin, and a bundling frame for securing the stacked lumber. | Ex. 6, p. 76-78 | col. 4:23-24; 29-31 |
| wherein the conveyor assembly includes a frame, a pivotal connection for the frame to permit angular adjustment of the frame relative to the chassis, an extendible mast connected between the frame and the chassis to drive the frame about the pivotal connection | The conveyor assembly is alleged to include a frame that pivots relative to the vehicle chassis. This pivot is allegedly driven by hydraulic cylinders, which the complaint identifies as the claimed "extendible mast." | Ex. 6, p. 80-82 | col. 12:1-5 |
| and the mast being operable to drive adjustment of the angle of the frame relative to the chassis to select the approach angle for the conveyor relative to the stacking assembly. | The hydraulic cylinders ("mast") are alleged to be operable to change the angle of the conveyor frame, thereby adjusting the path by which lumber is delivered to the stacking assembly. A visual points to these cylinders and the resulting pivot (Compl. Ex. 6, p. 87). | Ex. 6, p. 87 | col. 12:19-24 |
Identified Points of Contention
- Scope Questions: The pre-suit correspondence attached to the complaint indicates a dispute over the meaning of "extendible mast" (Compl. Ex. 5, p. 62). This raises the question of whether the term, as defined and used in the patent, can be construed to read on the hydraulic cylinders present in the accused product.
- Technical Questions: The complaint alleges the accused machine's conveyor assembly has a "pivotal connection... relative to the chassis" (Compl. Ex. 6, p. 81). However, the pre-suit response letter asserts the accused conveyor is mounted on a fixed frame (Compl. Ex. 5, p. 63). This suggests a central factual dispute over how the accused product's conveyor mechanism actually operates and whether that operation meets the claim limitation.
V. Key Claim Terms for Construction
The Term: "extendible mast"
- Context and Importance: The definition of this term appears to be a central point of disagreement, as Defendants' pre-suit correspondence explicitly argues that the accused product's hydraulic cylinders do not constitute a "mast" (Compl. Ex. 5, p. 62). The infringement analysis for a key structural element of claim 1 may depend on this term's construction.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Dependent claim 6 claims the apparatus of claim 1 wherein the "mast includes a hydraulic cylinder drivable to telescope to various lengths" (’629 Patent, col. 12:6-7). This language may support an interpretation where a hydraulic cylinder can be a component of, or itself constitute, the claimed "mast."
- Evidence for a Narrower Interpretation: The detailed description refers to the mast as including an "inner mast and an outer mast" and being mounted to the chassis to "extend substantially perpendicularly upwardly" (’629 Patent, col. 12:8-11). This language, along with dictionary definitions of "mast" as a vertical structural support, may support a narrower construction that excludes a simple hydraulic actuator.
The Term: "pivotal connection for the frame to permit angular adjustment of the frame relative to the chassis"
- Context and Importance: This term defines the core leveling mechanism of the conveyor. Whether the accused device contains this specific structure and function is a primary issue, with Defendants having argued pre-suit that their conveyor is on a "fixed frame" (Compl. Ex. 5, p. 63).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language is functional, describing a connection that permits angular adjustment. An argument may be made that any mechanism achieving this function relative to the chassis falls within the claim's scope, regardless of its specific design.
- Evidence for a Narrower Interpretation: The specification states that the "pivotal connection connects between the frame and the stacking assembly" (’629 Patent, col. 12:25-26). This specific location could be argued to limit the scope of the claim to arrangements where the pivot point is located at the stacking assembly, potentially distinguishing it from the accused device's configuration.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendant McLeod Holdings induced infringement by "encouraging CCI to manufacture, use, distribute, sell, and/or offer for sale" the accused machines (Compl. ¶25). This is based on James McLeod's alleged role as sole shareholder of McLeod Holdings and President of CCI (Compl. ¶25).
- Willful Infringement: Willfulness is alleged based on both pre- and post-suit knowledge. The complaint alleges pre-suit knowledge dating back to at least October 2008 and based on James McLeod's status as a co-inventor on the related '202 patent (Compl. ¶25). Post-suit knowledge is based on the October 28, 2016 cease-and-desist letter (Compl. ¶12, ¶19, ¶28).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "extendible mast," described in the patent in the context of an upwardly extending structural element, be construed to cover the hydraulic cylinder actuators used in the accused product to adjust the conveyor angle?
- A key evidentiary question will be one of technical operation: does the mechanism that adjusts the accused product's conveyor function as a "pivotal connection for the frame... relative to the chassis" as required by the claim, or is there a fundamental mismatch in its mechanical principle and point of articulation?
- A third issue may concern prior art and inventorship: given the shared history of the parties on the related '202 patent, the litigation may explore questions of what knowledge should be imputed to the defendants and whether features of the accused product were derived from the prior joint work rather than the novel aspects of the patent-in-suit.