DCT
6:20-cv-00570
Wilco Marsh Buggies & Draglines Inc v. EIK E
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Wilco Marsh Buggies & Draglines, Inc. (Louisiana)
- Defendant: EIK Engineering Sdn. Bhd. (Malaysia)
- Plaintiff’s Counsel: HANOR LAW FIRM PC; KEATY LAW FIRM LLC
- Case Identification: 6:20-cv-00570, W.D. Tex., 06/26/2020
- Venue Allegations: Plaintiff alleges venue is proper because Defendant is subject to personal jurisdiction in the district, having purposefully availed itself of the forum by importing, marketing, offering for sale, and selling its products in Texas.
- Core Dispute: Plaintiff alleges that Defendant’s amphibious excavator undercarriages, when equipped with pontoons and spuds, infringe a patent related to amphibious vehicles capable of operating on land and in water.
- Technical Context: The technology concerns heavy excavating equipment designed for versatility, enabling operation on solid ground, in soft terrain such as marshes, and while floating in deep water by using deployable stabilizing anchors.
- Key Procedural History: The complaint notes that Defendant filed a petition for Inter Partes Review (IPR2020-00344) against the patent-in-suit on December 23, 2019. The Patent Trial and Appeal Board (PTAB) issued a decision denying institution of the IPR on June 23, 2020, three days before this complaint was filed. A denial of institution indicates the PTAB did not find a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged.
Case Timeline
| Date | Event |
|---|---|
| 2003-06-03 | Priority Date for U.S. Patent No. 6,918,801 |
| 2005-07-19 | U.S. Patent No. 6,918,801 Issued |
| 2019-12-23 | Defendant Files IPR Petition Against '801 Patent |
| 2020-06-23 | PTAB Denies Institution of IPR |
| 2020-06-26 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,918,801 - "AMPHIBIOUS VEHICLE"
- Patent Identification: U.S. Patent No. 6,918,801, "AMPHIBIOUS VEHICLE," issued July 19, 2005.
The Invention Explained
- Problem Addressed: The patent’s background section identifies the limitations of then-existing excavating equipment. It notes that traditional "marsh buggies" are effective in soft terrain but cannot operate in deep water, while "spud barges" can operate in deep water but have limited access to land-locked areas and can cause environmental damage if channels must be dug for access. ('801 Patent, col. 1:19 - col. 2:16).
- The Patented Solution: The invention is a self-propelled amphibious vehicle that integrates the features of a marsh buggy and a spud barge. It consists of a chassis with pontoons for buoyancy, a track system for propulsion on both land and in water, and a plurality of deployable "spuds" (piling-like anchors) that can be extended to the floor of a body of water to stabilize the vehicle during floating excavation operations. ('801 Patent, Abstract; col. 2:22-34; Fig. 1).
- Technical Importance: This approach sought to create a single, versatile machine that could traverse difficult terrain to reach a work site and then perform heavy excavation while stabilized in deep water, overcoming the operational and environmental limitations of prior, more specialized equipment. ('801 Patent, col. 2:17-21).
Key Claims at a Glance
- The complaint asserts infringement of independent claims 1, 9, and 12, as well as multiple dependent claims (2-5, 8, 10-11, 13-15, and 18). (Compl. ¶¶ 83-193).
- Independent Claim 1 (apparatus) requires:
- a chassis
- at least two pontoons supported by the chassis providing buoyancy to float
- a track system on the pontoons for propulsion on land or in water
- a plurality of spuds connected to the chassis, movable between a first (deployed) position extending below the pontoons and a second (retracted) position not extending below the pontoons
- Independent Claim 9 (method) requires steps including:
- providing a vehicle with earth excavating equipment
- floating the vehicle in a body of water
- deploying spuds into the bottom of the water
- performing earth excavating operations
- retracting the spuds and moving the vehicle to a new position
- Independent Claim 12 (apparatus) requires:
- an amphibious chassis with pontoons and powered track systems
- a plurality of spud assemblies attached to the chassis
- mounted equipment with a first operating mode (on ground) and a second operating mode (floating), where the spuds are retracted in the first mode and deployed to laterally support the vehicle in the second mode
III. The Accused Instrumentality
Product Identification
- The "Amphibious Excavator" series of undercarriages (including models AM60 through AM400) and associated supplementary pontoons and spuds, which are collectively referred to as the "Infringing Products." (Compl. ¶¶ 47, 49, 53).
Functionality and Market Context
- The complaint alleges that Defendant purchases standard excavator power units and modifies their undercarriages by adding pontoons and spuds. (Compl. ¶39). These modifications allegedly provide "extra floating capacity" and allow for stationary "digging jobs" in water up to 4.5 meters deep. (Compl. ¶¶ 59-60). The products are marketed for use in marshy, swampy, and soft terrains, and are described as being able to "float on water as an added safety feature." (Compl. ¶57). Defendant's operation manual allegedly illustrates the accused product, equipped with pontoons and spuds, dredging in water. The complaint includes a reference to Figure 1.18 from this manual, which depicts an excavator dredging at a particular water depth. (Compl. ¶62).
- Plaintiff alleges Defendant is a major international competitor that markets its products in Texas and was aware of Plaintiff's business. (Compl. ¶¶ 37, 42-43).
IV. Analysis of Infringement Allegations
'801 Patent Infringement Allegations (Claim 1)
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a chassis | The accused amphibious excavators comprise a chassis. | ¶71 | col. 4:8-9 |
| at least two pontoons supported by said chassis, wherein said pontoons provide sufficient buoyancy such that the vehicle can float on water | The undercarriages are fitted with two pontoons that allegedly provide buoyancy for the vehicle to float. | ¶74 | col. 4:10-12 |
| a track system disposed on said pontoons and adapted to provide propulsion to the vehicle when moving on land or in water | The accused products have a track system on the pontoons for propulsion. | ¶77 | col. 4:12-15 |
| a plurality of spuds connected to said chassis, wherein said spuds have a first position wherein said spuds extend below the bottom of said pontoons and a second position wherein said spuds do not extend below the bottom of said pontoons | The accused products include attachable spuds that can be extended for stabilization in water and retracted for movement. | ¶79 | col. 6:1-6 |
'801 Patent Infringement Allegations (Claim 9)
| Claim Element (from Independent Claim 9) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| providing earth excavating equipment disposed on a vehicle adapted to move over land or through the water | Defendant provides amphibious excavators, which are vehicles adapted to move over land and water. | ¶121 | col. 4:8-9 |
| floating the vehicle carrying the earth excavating equipment in a body of water | The accused products are designed to float, and Defendant’s manuals allegedly instruct on their operation in water. | ¶124 | col. 4:51-54 |
| deploying a plurality of spuds from the vehicle into the bottom of the body of water | The use of the accused products allegedly involves deploying spuds to stabilize the vehicle for dredging. | ¶127 | col. 4:21-23 |
| performing earth excavating operations | The intended use of the accused products is to perform excavation and dredging. | ¶130 | col. 4:8-9 |
- Identified Points of Contention:
- Scope Questions: The complaint alleges infringement by a product made by modifying a standard excavator. A potential dispute may arise over whether the combination of a standard excavator undercarriage and Defendant’s added components constitutes the claimed "chassis". The construction of "chassis" and the nature of the "connection" between the spuds and the chassis may be central to the infringement analysis for the apparatus claims.
- Technical Questions: For method claim 9, a key question will be what evidence demonstrates that the accused products are used in the specific sequence claimed, particularly the steps of (1) performing excavation while floating with spuds deployed, (2) retracting the spuds, and then (3) "moving the vehicle to a position where the vehicle is not floating but is resting at the bottom of a body of water" to perform additional excavation. The complaint alleges this use (Compl. ¶¶ 133, 136), but proving this specific multi-stage operational sequence by end-users could be an evidentiary challenge.
V. Key Claim Terms for Construction
The Term: "chassis"
- Context and Importance: This term appears in all asserted independent claims (1, 9, and 12). Its definition is critical because the accused products are allegedly created by modifying a pre-existing excavator chassis with add-on components like pontoons. Practitioners may focus on this term because its scope will determine whether an assembly of separately manufactured parts reads on the claim, or if a more integrated, purpose-built frame is required.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states the "chassis is formed by two interconnected pontoon sections," and separately refers to a "chassis cross member 15" connecting the pontoons, suggesting "chassis" refers to the overall structural framework. ('801 Patent, col. 2:26-27; col. 4:10-12). This could support an interpretation that includes a modified undercarriage.
- Evidence for a Narrower Interpretation: Claim 1 recites "pontoons supported by said chassis," which could imply the chassis is a distinct entity that supports the pontoons, rather than being formed by them. A defendant might argue this language requires a frame that is structurally independent of the pontoons it supports.
The Term: "spuds connected to said chassis"
- Context and Importance: This phrase from claim 1 is central to the infringement theory, which relies on spuds being added to the vehicle. The required nature of the "connection" will be a key issue.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent figures depict spud assemblies attached to the sides of the pontoons, without specifying that the connection must be integral or permanent. ('801 Patent, Fig. 1). The specification also contemplates that spud assemblies "may be... removable," which could support reading the claim on the allegedly attachable spud systems of the accused products. ('801 Patent, col. 4:29-32).
- Evidence for a Narrower Interpretation: The specification mentions spud assemblies may be "permanently mounted." ('801 Patent, col. 4:29-30). A defendant could argue this suggests a more robust, structural integration is envisioned, rather than a temporary or user-installed attachment, to withstand the forces of stabilizing a large excavator.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement.
- The inducement claim is based on allegations that Defendant provides assembly and operation manuals that instruct end-users on how to assemble the pontoons and spuds and operate the vehicle in an infringing manner, such as by dredging in water. (Compl. ¶¶ 58-63, 197, 215).
- The contributory infringement claim alleges that Defendant sells the undercarriages, pontoons, and spuds knowing they are "especially made and especially adapted" for an infringing use and have no substantial non-infringing use. (Compl. ¶¶ 198, 222).
- Willful Infringement: Willfulness is alleged based on both pre-suit and ongoing conduct. The complaint asserts that Defendant had actual pre-suit knowledge of the '801 patent no later than December 23, 2019, the date it filed an IPR petition against the patent. (Compl. ¶¶ 30, 201, 228).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope: Can the term "chassis", as used in the patent, be construed to read on a standard excavator undercarriage that has been modified with bolt-on pontoons and spud assemblies, as the complaint alleges? The resolution of this question may be dispositive for the apparatus claims.
- A second central question will be one of willfulness and damages: The complaint provides a specific, factual basis for pre-suit knowledge of the patent via Defendant’s prior IPR filing. A key issue for the court will be whether Defendant’s alleged infringement after gaining this knowledge—and after the PTAB declined to institute review—was objectively reckless, potentially justifying an award of enhanced damages under 35 U.S.C. § 284.
- Finally, an evidentiary question will be one of proving infringing use: For the method claims, the case may turn on whether Plaintiff can produce sufficient evidence to show that Defendant’s customers perform all the steps of the claimed methods in the specified order, particularly the less common operational modes described in claim 9.