DCT
6:23-cv-00082
River Road Jet Boats LLC v. Rock Proof Boats LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: River Road Jet Boats, LLC (Virginia) and Waimed Enterprises, LLC (Virginia)
- Defendant: Rock Proof Boats LLC (Pennsylvania)
- Plaintiff’s Counsel: Woods Rogers Vandeventer Black PLC
- Case Identification: 6:23-cv-00082, W.D. Va., 12/29/2023
- Venue Allegations: Plaintiffs allege venue is proper because a substantial part of the events giving rise to the claim occurred in the district and Defendant is subject to personal jurisdiction there.
- Core Dispute: Plaintiffs allege that Defendant’s "Nozzle Jett" product infringes two patents related to steering and mounting systems for outboard jet motors on riverboats.
- Technical Context: The technology addresses challenges specific to riverboats with outboard jet motors, aiming to improve maneuverability and protect the motor's water intake from damage in shallow water environments.
- Key Procedural History: The complaint alleges that the parties engaged in communications regarding a potential contractual relationship from January to June 2023. It further alleges that on May 19, 2023, Defendant's counsel sent a letter acknowledging Plaintiffs' patents and the infringement allegations, a fact which may be material to the claim of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2016-08-19 | Priority Date for ’619 and ’027 Patents |
| 2020-04-14 | U.S. Patent No. 10,618,619 Issues |
| 2023-01-01 | Approximate Start of Pre-suit Communications |
| 2023-05-16 | U.S. Patent No. 11,649,027 Issues |
| 2023-05-19 | Defendant's Counsel Allegedly Acknowledges Patents |
| 2023-12-29 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,618,619 - "Closed Tunnel System and Directional Device for Outboard Jet Motors"
- Patent Identification: U.S. Patent No. 10,618,619, titled "Closed Tunnel System and Directional Device for Outboard Jet Motors," issued April 14, 2020.
The Invention Explained
- Problem Addressed: The patent's background section notes that while outboard jet motors are advantageous for navigating shallow waters, the motor's water intake typically sits below the boat's hull, leaving it exposed to potential collisions with rocks and other submerged obstacles (’619 Patent, col. 2:37-45).
- The Patented Solution: The patent primarily describes a directional mechanism that attaches to the jet nozzle of a fixed outboard motor. This device allows the boat to be steered by pivoting a smaller, lighter steering nozzle that receives the water jet, rather than rotating the entire heavy motor assembly (’619 Patent, Abstract). The mechanism consists of a conduit that fits around the motor's nozzle, an outer frame, and a pivoting steering nozzle, all connected by axles to enable rotation for steering (’619 Patent, col. 16:1-19).
- Technical Importance: This approach decouples the steering function from the motor's position, aiming to provide quicker and more responsive handling, similar to that of an inboard jet boat, for watercraft using outboard jet motors (Compl. ¶22).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶35).
- The essential elements of independent claim 1 are:
- A directional device for an outboard jet motor comprising: a conduit adapted to fit around a jet nozzle of an outboard jet motor;
- a steering nozzle;
- an outer frame joining the conduit and the steering nozzle;
- a first pair of axles in communication with the outer frame and the conduit;
- wherein the steering nozzle is configured to receive a flow of water from the jet nozzle by way of the conduit;
- and wherein the outer frame and the steering nozzle are capable of rotating relative to the conduit along a first axis defined by the first pair of axles.
U.S. Patent No. 11,649,027 - "Acceptor Device for Outboard Jet Motors"
- Patent Identification: U.S. Patent No. 11,649,027, titled "Acceptor Device for Outboard Jet Motors," issued May 16, 2023.
The Invention Explained
- Problem Addressed: The patent addresses the same problem as its parent '619 Patent: the vulnerability of a conventional outboard jet motor's intake, which sits below the boat hull (’027 Patent, col. 1:40-45).
- The Patented Solution: The patent describes an "acceptor device" and a corresponding boat hull featuring a "tunnel." The acceptor device is mounted to the boat's transom and interfaces with the tunnel, which channels water from underneath the boat directly to the motor's intake (’027 Patent, col. 2:1-16). This configuration allows the motor's intake to be elevated, even above the bottom surface of the hull, protecting it from impact while ensuring a steady water supply for propulsion (’027 Patent, Abstract). The device is specifically configured to hold the intake at an upward-sloping angle to optimize water flow from the tunnel (’027 Patent, col. 2:22-25).
- Technical Importance: This system provides a structural solution to protect a critical and vulnerable component of an outboard jet motor, thereby enhancing the reliability and safety of riverboats operating in shallow, potentially hazardous waters (’027 Patent, col. 2:15-18).
Key Claims at a Glance
- The complaint asserts independent claims 1, 11, 15, and 16, along with their dependent claims (Compl. ¶12, ¶35).
- The essential elements of independent claim 1 are:
- An acceptor device for securing an outboard jet motor to a watercraft, comprising: one or more shrouded opening(s) for communication with a motor intake;
- wherein the device is configured to provide the motor intake at an upwardly sloping angle; and
- wherein the device is configured to elevate at least a portion of the intake above a bottom surface of the watercraft.
- The essential elements of independent claim 16 are:
- A boat hull comprising: a transom;
- a tunnel in the bottom surface of the hull extending to the transom;
- an adapter at the junction of the transom and tunnel with a shrouded opening for the motor intake;
- wherein the tunnel directs water into the adapter and intake; and
- wherein the adapter provides the intake at an upwardly sloping angle toward the tunnel.
III. The Accused Instrumentality
Product Identification
- The accused product is identified as the "Nozzle Jett" (Compl. ¶20).
Functionality and Market Context
- The complaint alleges the Nozzle Jett is a "directional device for fitting an outboard jet motor jet nozzle and an acceptor device for outboard jet motors" (Compl. ¶20). Defendant's marketing materials, cited in the complaint, describe it as an "innovative design" where the "outboard jet motor is locked into place allowing you to turn the nozzle to steer the boat - not the motor" (Compl. ¶22). This description aligns the product's function with the technology of the '619 Patent. Photographic evidence in the complaint shows the Nozzle Jett also incorporates a tunnel and intake adapter system, implicating the '027 Patent (Compl. p. 10). The Defendant's website also advertises the product as "Patent Pending" (Compl. ¶22, ¶41).
IV. Analysis of Infringement Allegations
U.S. Patent No. 10,618,619 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A directional device for an outboard jet motor comprising: a conduit adapted to fit around a jet nozzle of an outboard jet motor; | The accused product includes a conduit that surrounds the jet nozzle. | ¶23 | col. 16:2-4 |
| a steering nozzle; | The accused product includes a steering nozzle to direct the water jet. | ¶23 | col. 16:5 |
| an outer frame joining the conduit and the steering nozzle; | The accused product is alleged to have an outer frame that joins the conduit and steering nozzle. A provided photo shows this component highlighted with a red arrow (Compl. p. 6). | ¶23 | col. 16:6-7 |
| a first pair of axles in communication with the outer frame and the conduit; | The accused product allegedly uses a pair of axles to connect the outer frame and conduit for steering. | ¶23 | col. 16:8-10 |
| wherein the steering nozzle is configured to receive a flow of water from the jet nozzle by way of the conduit; | The complaint alleges the accused steering nozzle receives water from the jet via the conduit, supported by a photo labeled "Flow of Water" (Compl. p. 7). | ¶23 | col. 16:11-13 |
| wherein the outer frame and the steering nozzle are capable of rotating relative to the conduit along a first axis defined by the first pair of axles. | The complaint alleges the accused product's outer frame and nozzle can rotate relative to the conduit around an axis defined by the axles. | ¶23 | col. 16:14-19 |
Identified Points of Contention
- Scope Questions: A central question may be whether the accused product's structure literally meets the "outer frame joining the conduit and the steering nozzle" limitation. While the complaint alleges this, a defendant could argue that its product is a more integrated unit that does not have a separately identifiable "outer frame" that "joins" the other two components in the manner described by the patent.
- Technical Questions: The complaint's assertion that the accused product rotates "along a first axis defined by the first pair of axles" is conclusory. The actual mechanical operation and the precise pivot points of the accused device will be a key factual determination for the court.
U.S. Patent No. 11,649,027 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An acceptor device for securing an outboard jet motor to a watercraft, the acceptor device comprising: one or more shrouded opening(s) shaped and sized for communication with an intake of one or more outboard jet motor(s); | The accused product is alleged to be an acceptor device with a shrouded opening for the motor intake. | ¶24 | col. 22:3-6 |
| wherein the acceptor device is configured to provide the outboard jet motor intake disposed at an angle that slopes upwardly toward the watercraft; and | The complaint provides a photo allegedly showing the accused product positioning the motor intake at an upward slope (Compl. p. 8). | ¶24 | col. 22:7-10 |
| wherein the acceptor device is configured to elevate at least a portion of the intake of the outboard jet motor above a bottom surface of the watercraft. | The complaint alleges the accused product elevates the motor intake above the bottom of the boat. | ¶24 | col. 22:11-14 |
| Claim Element (from Independent Claim 16) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A boat hull comprising: a transom for supporting an outboard jet motor; | The complaint shows the accused product installed on a boat with a transom that supports the motor. | ¶24 | col. 22:39-40 |
| a tunnel disposed in a bottom surface of the hull and extending to the transom; and | A screenshot from a text message exchange allegedly from the Defendant shows a tunnel built into a boat hull for use with the accused product (Compl. p. 10). | ¶24 | col. 22:41-43 |
| an adapter disposed where the transom and the tunnel meet, the adapter comprising a shrouded opening...; | The complaint alleges the accused product includes an adapter with a shrouded opening that connects the tunnel to the motor intake. | ¶24 | col. 22:44-48 |
| wherein the tunnel is configured for directing a flow of water through the tunnel, into the adapter, and into the intake...; and | The complaint alleges the system is configured to channel water from the tunnel through the adapter to the intake. | ¶24 | col. 22:49-53 |
| wherein the adapter is configured to provide the outboard jet motor intake disposed at an angle that slopes upwardly toward the tunnel. | A photo in the complaint allegedly shows the installed product holding the motor intake at an upward angle relative to the tunnel (Compl. p. 11). | ¶24 | col. 22:54-57 |
Identified Points of Contention
- Scope Questions: Claim 16 is directed to a "boat hull." The complaint alleges direct infringement by the "Accused Product," which it defines as the "Nozzle Jett" device. This raises the question of whether Defendant makes or sells the entire claimed "boat hull" or only a component kit for modifying a hull. This distinction is critical, as selling a kit typically gives rise to claims of indirect infringement, which has not been separately pleaded as a cause of action.
- Technical Questions: For Claim 1, it will be a factual question whether the accused "acceptor device" is a single component or a collection of parts that, when installed, performs the claimed functions of elevating and angling the motor intake.
V. Key Claim Terms for Construction
Term 1: "outer frame" (’619 Patent, Claim 1)
- The Term: "outer frame"
- Context and Importance: This term defines the central structural component that connects the fixed conduit to the pivoting steering nozzle. The existence and nature of this "frame" in the accused device is a likely point of dispute. Practitioners may focus on this term because it appears to be a key structural element distinguishing the invention from a simple pivot.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim requires the frame to perform a function: "joining the conduit and the steering nozzle" (’619 Patent, cl. 1). The specification also refers to it joining these components, which could support an argument that any structure performing this function meets the definition (’619 Patent, col. 13:42-43).
- Evidence for a Narrower Interpretation: The specification describes specific embodiments, such as an outer frame that is "both rectilinear and curvilinear in shape" (’619 Patent, col. 14:7-8) or, alternatively, a "circular ring" (’619 Patent, col. 15:42-43). A defendant may argue these embodiments limit the term's scope to these disclosed structures.
Term 2: "acceptor device" (’027 Patent, Claim 1)
- The Term: "acceptor device"
- Context and Importance: This term defines the entire apparatus claimed in claim 1. Its construction will determine whether the accused "Nozzle Jett" product, potentially sold as a kit of parts, falls within the claim's scope.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims define the "acceptor device" functionally by what it is "configured to" do—provide an angled intake and elevate it (’027 Patent, cl. 1). The summary describes "a system of fitting an outboard jet motor on a boat, including an adapter," suggesting a collection of components could constitute the device (’027 Patent, col. 1:56-58).
- Evidence for a Narrower Interpretation: The patent uses "acceptor device" and "adapter" somewhat interchangeably, and the abstract refers to an "acceptor/adapter device" (’027 Patent, Abstract). A defendant could argue this implies a single, integrated component rather than a multi-part kit plus a hull modification.
VI. Other Allegations
Indirect Infringement
- The complaint does not contain a standalone count for indirect or contributory infringement. However, the prayer for relief seeks to enjoin "contribution to infringement or inducement of infringement" (Compl. Prayer ¶D). The factual allegations regarding Defendant’s promotional materials and the nature of the product as a component for installation could potentially support such claims.
Willful Infringement
- The complaint alleges that Defendant's infringement became willful after it received actual notice of the patents and the infringement allegations via a letter from its own counsel on May 19, 2023 (Compl. ¶25-26, ¶36). The claim for willfulness is based on Defendant’s alleged continued infringing conduct after this date.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of infringement theory versus claim language: For U.S. Patent No. 11,649,027, can Plaintiffs prove direct infringement of a "boat hull" claim (Claim 16) by a defendant who sells a component kit? This misalignment raises a fundamental question of whether the proper claim should have been for indirect infringement.
- The case will also turn on claim construction: Can the term "outer frame" in the '619 patent be broadly construed to cover any joining structure, or is it limited to the specific shapes disclosed in the patent's figures? Similarly, is the "acceptor device" of the '027 patent a single component, or can it be a multi-part system sold as a kit?
- A key evidentiary question will be one of willfulness: The complaint alleges Defendant had actual notice of the patents and infringement contentions from its own counsel. The evidence surrounding Defendant's state of mind and any actions taken to assess infringement or validity after this notice will be central to the determination of willfulness and potential enhanced damages.