DCT

2:24-cv-01281

Champion Power Equipment Inc v. Generac Power Systems Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:24-cv-01281, E.D. Wis., 10/09/2024
  • Venue Allegations: Venue is alleged to be proper in the Eastern District of Wisconsin because Defendant Generac resides in the district, maintaining its headquarters and manufacturing facilities there, and has allegedly committed acts of infringement within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s multi-fuel portable generators infringe eleven patents related to systems for safely selecting between liquid and gaseous fuel sources, including mechanical lockouts, fuel cut-offs, and external fuel regulators.
  • Technical Context: The technology at issue involves safety and operational mechanisms for small internal combustion engines, such as those in portable generators, that can run on multiple fuel types like gasoline and propane.
  • Key Procedural History: The complaint alleges that Plaintiff sent cease and desist letters to Defendant regarding infringement of its patents on at least two occasions, July 7, 2020, and April 4, 2024, which may be relevant to allegations of willful infringement.

Case Timeline

Date Event
2013-11-01 Priority Date for U.S. Patent No. 10,598,101
2015-06-12 Priority Date for U.S. Patent No. 10,221,780
2015-10-28 Priority Date for U.S. Patent No. 10,697,398
2018-11-15 Priority Date for U.S. Patent No. 11,530,654
2019-03-05 U.S. Patent No. 10,221,780 Issued
2020-02-06 Priority Date for U.S. Patent No. 11,492,985
2020-02-13 Priority Date for U.S. Patent No. 11,306,667
2020-03-24 U.S. Patent No. 10,598,101 Issued
2020-06-22 Priority Date for U.S. Patent Nos. 11,143,120 & 11,143,145
2020-06-30 U.S. Patent No. 10,697,398 Issued
2020-07-07 First Alleged Cease and Desist Letter Sent
2021-10-12 U.S. Patent Nos. 11,143,120 & 11,143,145 Issued
2022-04-19 U.S. Patent No. 11,306,667 Issued
2022-11-08 U.S. Patent No. 11,492,985 Issued
2022-12-20 U.S. Patent No. 11,530,654 Issued
2022-09-30 Priority Date for U.S. Patent No. 11,840,970
2023-03-14 Priority Date for U.S. Patent No. 11,905,895
2023-06-07 Priority Date for U.S. Patent No. 11,905,896
2023-12-12 U.S. Patent No. 11,840,970 Issued
2024-02-20 U.S. Patent Nos. 11,905,895 & 11,905,896 Issued
2024-04-04 Second Alleged Cease and Desist Letter Sent
2024-10-09 Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 10,221,780 - "DUAL FUEL LOCKOUT SWITCH FOR GENERATOR ENGINE," Issued March 5, 2019

The Invention Explained

  • Problem Addressed: The patent describes a common problem in dual-fuel engines where the simultaneous delivery of two different fuels (e.g., gasoline and propane) can create an "overly rich air-fuel ratio," leading to hard starting or unstable operation (’780 Patent, col. 2:48-55).
  • The Patented Solution: The invention is a mechanical fuel lockout switch comprising a fuel valve and a "fuel lockout apparatus" that are physically coupled (’780 Patent, Abstract). As illustrated in Figure 2 of the patent, when the valve handle (56) is moved to the first position to allow gasoline flow, an attached fuel inlet cover (61) rotates to physically block the inlet (59) for the second fuel (LPG), preventing its connection (’780 Patent, col. 6:12-20, FIG. 2). This mechanical interlock ensures only one fuel source can be connected and delivered to the engine at any given time (’780 Patent, col. 5:24-30).
  • Technical Importance: The invention provides a simple, cost-effective, and purely mechanical safety system to prevent dangerous and inefficient fuel mixing without requiring complex electronic controls (’780 Patent, col. 2:56-60).

Key Claims at a Glance

  • The complaint asserts independent claims 1, 8, and 15 (Compl. ¶¶ 14.a, 14.e, 14.i).
  • Essential elements of independent claim 1 include:
    • A mechanical fuel valve actuateable between a first and second position to selectively control fuel flow from a first fuel source and a second fuel source.
    • A fuel lockout apparatus coupled to the mechanical fuel valve.
    • The switch communicates the first fuel source and prevents communication from the second fuel source when the valve is in the first position.
    • The switch communicates the second fuel source and interrupts communication from the first fuel source when the valve is in the second position.
    • The fuel lockout apparatus is configured to prevent the second fuel source from coupling to its fuel line when the valve is in the first position, and to permit coupling when in the second position.
  • The complaint also asserts dependent claims 2, 6-9, 11, and 14 (Compl. ¶¶ 14.b-d, 14.f-h).

U.S. Patent No. 10,598,101 - "DUAL FUEL SELECTOR SWITCH," Issued March 24, 2020

The Invention Explained

  • Problem Addressed: The patent addresses the risk in dual-fuel generators of having separate valves for each fuel type, creating a scenario where both valves could be left in the "on" position simultaneously, leading to an unsafe mixture of fuels (’101 Patent, col. 1:43-51).
  • The Patented Solution: The invention is a fuel selector featuring two separate mechanical fuel valves and a sliding selector switch that acts as a physical interlock (’101 Patent, Abstract). As shown in Figure 3 of the patent, the selector switch (30) is designed to physically cover one valve handle (e.g., 34) while exposing the other (38); to switch fuels, the operator must first turn the active valve off, slide the selector switch over to cover its now-disabled handle, which in turn uncovers the handle for the other fuel, allowing it to be activated (’101 Patent, col. 6:32-41, FIG. 3). A groove (54) on the back of the selector switch prevents it from sliding unless the handle it is meant to cover is in the horizontal "off" position, ensuring only one valve can be "on" at a time (’101 Patent, col. 5:31-41).
  • Technical Importance: This design provides a clear, intuitive, and mechanically robust method for a user to select a fuel source while making it physically impossible to have both fuel sources active concurrently (’101 Patent, col. 7:5-12).

Key Claims at a Glance

  • The complaint asserts independent claims 1 and 18 (Compl. ¶¶ 25.a, 25.e).
  • Essential elements of independent claim 1 include:
    • A valve assembly fluidly connected to a first and a second fuel source, operable to selectively control fuel flow.
    • A selector switch on the valve assembly for a user to manually select one of the fuel flows.
    • The valve assembly comprises a first mechanical fuel valve and a second mechanical fuel valve, each having open and closed positions.
  • The complaint also asserts dependent claims 2, 8, 9, and 19 (Compl. ¶¶ 25.b-d, 25.f).

U.S. Patent No. 10,697,398 - "BATTERYLESS DUAL FUEL ENGINE WITH LIQUID FUEL CUT-OFF," Issued June 30, 2020

  • Patent Identification: 10,697,398, "BATTERYLESS DUAL FUEL ENGINE WITH LIQUID FUEL CUT-OFF," Issued June 30, 2020 (Compl. ¶33).
  • Technology Synopsis: This patent addresses dual-fuel engines, particularly those without a battery. It discloses a liquid fuel cut-off mechanism, which can be a solenoid, incorporated into the carburetor to interrupt the flow of liquid fuel (e.g., gasoline) when the engine is switched to operate on gaseous fuel, preventing an overly rich mixture (’398 Patent, Abstract).
  • Asserted Claims: Independent claims 1, 43, and 57 (Compl. ¶¶ 16.a, 16.d, 17.a, 17.j, 38.a, 40.a, 40.j).
  • Accused Features: The accused generators are alleged to incorporate a carburetor with a liquid fuel cut-off that interrupts liquid fuel flow upon actuation of a switch to change operation from liquid to gaseous fuel (Compl. ¶¶ 16.a, 36).

U.S. Patent No. 11,143,120 - "FUEL SYSTEM FOR A MULTI-FUEL INTERNAL COMBUSTION ENGINE," Issued October 12, 2021

  • Patent Identification: 11,143,120, "FUEL SYSTEM FOR A MULTI-FUEL INTERNAL COMBUSTION ENGINE," Issued October 12, 2021 (Compl. ¶46).
  • Technology Synopsis: This patent describes a fuel delivery system for multi-fuel engines. It features a fuel regulator system with primary and secondary pressure regulators to step down the pressure of a gaseous fuel source for delivery to the engine, and a carburetor cutoff solenoid to control liquid fuel flow (’120 Patent, Abstract).
  • Asserted Claims: Independent claims 12 and 18 (Compl. ¶¶ 49.a, 51.a, 51.e, 53.a, 53.e).
  • Accused Features: The accused generators are alleged to have a multi-fuel delivery system including a fuel regulator system with primary and secondary pressure regulators for gaseous fuel, and a carburetor with a cutoff solenoid to control liquid fuel flow (Compl. ¶¶ 49, 51).

U.S. Patent No. 11,143,145 - "BATTERYLESS DUAL FUEL ENGINE WITH LIQUID FUEL CUT-OFF," Issued October 12, 2021

  • Patent Identification: 11,143,145, "BATTERYLESS DUAL FUEL ENGINE WITH LIQUID FUEL CUT-OFF," Issued October 12, 2021 (Compl. ¶59).
  • Technology Synopsis: This patent focuses on a batteryless dual-fuel generator that uses power from a charging coil to operate a liquid fuel cut-off solenoid. It also describes a manually actuated fuel shutoff coupled to the carburetor, which comprises an external end for user actuation and an internal end to block fuel flow (’145 Patent, Abstract).
  • Asserted Claims: Independent claims 1 and 11 (Compl. ¶¶ 62.a, 64.a, 66.a).
  • Accused Features: The accused generators are alleged to include a dual-fuel system with a manually actuated fuel shutoff and, in some models, a liquid fuel cut-off solenoid powered by a charging coil and voltage regulator (Compl. ¶¶ 62, 64).

U.S. Patent No. 11,306,667 - "DUAL FUEL SELECTOR SWITCH," Issued April 19, 2022

  • Patent Identification: 11,306,667, "DUAL FUEL SELECTOR SWITCH," Issued April 19, 2022 (Compl. ¶72).
  • Technology Synopsis: This patent is a continuation of the technology in the ’101 patent, describing a fuel selector for a dual-fuel generator with a valve assembly and a selector switch. The switch is designed to ensure only one fuel source can be selected at a time, and in some embodiments, can actuate an associated carburetor solenoid (’667 Patent, Abstract).
  • Asserted Claims: Independent claim 1 (Compl. ¶¶ 75.a, 77.a, 79.a).
  • Accused Features: The accused generators are alleged to have a fuel selector with a valve assembly and selector switch that allows a user to select one fuel flow while preventing the other, and in some models, actuates a carburetor solenoid (Compl. ¶¶ 75, 77).

U.S. Patent No. 11,492,985 - "OFF-BOARD FUEL REGULATOR FOR GENERATOR ENGINE," Issued November 8, 2022

  • Patent Identification: 11,492,985, "OFF-BOARD FUEL REGULATOR FOR GENERATOR ENGINE," Issued November 8, 2022 (Compl. ¶85).
  • Technology Synopsis: This patent discloses a fuel delivery system where the fuel regulator is located "off board" the generator. It describes a dual-stage regulator system that reduces the pressure of a gaseous fuel source in two steps for delivery to the engine, improving safety and performance (’985 Patent, Abstract).
  • Asserted Claims: Independent claim 16 (Compl. ¶¶ 88.a, 90.a).
  • Accused Features: The accused generators are alleged to be used with an off-board fuel regulator system that reduces gaseous fuel pressure in two stages for delivery to the generator's engine (Compl. ¶¶ 88, 90).

U.S. Patent No. 11,530,654 - "OFF-BOARD FUEL REGULATOR FOR GENERATOR ENGINE," Issued December 20, 2022

  • Patent Identification: 11,530,654, "OFF-BOARD FUEL REGULATOR FOR GENERATOR ENGINE," Issued December 20, 2022 (Compl. ¶96).
  • Technology Synopsis: This patent builds on the '985 patent's off-board regulator concept. It combines the off-board dual-stage regulator with a mechanical fuel valve and a fuel lockout apparatus on the generator itself, creating an integrated system to manage both gaseous fuel pressure and fuel source selection (’654 Patent, Abstract).
  • Asserted Claims: Independent claim 6 (Compl. ¶¶ 99.a, 101.a).
  • Accused Features: The accused generators are alleged to possess a system combining an off-board, dual-stage pressure regulator with an on-board mechanical fuel valve and fuel lockout apparatus (Compl. ¶¶ 99, 101).

U.S. Patent No. 11,840,970 - "DUAL FUEL GENERATOR WITH REMOTE REGULATOR," Issued December 12, 2023

  • Patent Identification: 11,840,970, "DUAL FUEL GENERATOR WITH REMOTE REGULATOR," Issued December 12, 2023 (Compl. ¶107).
  • Technology Synopsis: This patent describes a dual-fuel generator with an off-board fuel regulator system and an on-board mechanical fuel valve and lockout apparatus. The claims detail the interaction between the off-board regulator and the on-board valve, which selectively controls flow from both the liquid fuel source and the now-regulated gaseous fuel source (’970 Patent, Abstract).
  • Asserted Claims: Independent claims 1 and 20 (Compl. ¶¶ 110.a, 110.g, 112.a, 112.g).
  • Accused Features: The accused generators are alleged to include a fuel delivery system with an off-board regulator for gaseous fuel and an on-board mechanical fuel valve and lockout apparatus to control flow from both fuel sources (Compl. ¶¶ 110, 112).

U.S. Patent No. 11,905,895 - "DUAL FUEL LOCKOUT SWITCH FOR GENERATOR ENGINE," Issued February 20, 2024

  • Patent Identification: 11,905,895, "DUAL FUEL LOCKOUT SWITCH FOR GENERATOR ENGINE," Issued February 20, 2024 (Compl. ¶118).
  • Technology Synopsis: This patent is a continuation of the technology in the '780 patent. It claims a mechanical fuel valve configured to prevent communication between the non-selected fuel source and the engine, combined with a fuel lockout apparatus that prevents the non-selected fuel source from even being physically coupled to its fuel line (’895 Patent, Abstract).
  • Asserted Claims: Independent claims 1, 8, and 14 (Compl. ¶¶ 121.a, 121.e, 121.h, 123.a, 123.e, 123.h).
  • Accused Features: The accused generators are alleged to have a mechanical fuel lockout switch and valve that prevents both communication from and physical coupling of the non-selected fuel source (Compl. ¶¶ 121, 123).

U.S. Patent No. 11,905,896 - "DUAL FUEL SELECTOR SWITCH," Issued February 20, 2024

  • Patent Identification: 11,905,896, "DUAL FUEL SELECTOR SWITCH," Issued February 20, 2024 (Compl. ¶129).
  • Technology Synopsis: This patent is a continuation of the technology in the '101 and '667 patents. It claims a fuel selector with a valve assembly having two mechanical fuel valves and a selector switch that is movable to allow a user to manually select one fuel flow, ensuring only one can be active at a time (’896 Patent, Abstract).
  • Asserted Claims: Independent claims 7, 15, and 30 (Compl. ¶¶ 132.a, 132.d, 132.f, 134.a, 134.d, 134.f, 136.a, 136.d, 136.f).
  • Accused Features: The accused generators are alleged to have a fuel selector with a valve assembly comprising two mechanical valves and a movable selector switch for manual fuel selection (Compl. ¶¶ 132, 134, 136).

III. The Accused Instrumentality

Product Identification

  • The accused products are Generac Model GP7500E and Powermate Models PM4500DF, PM7500DF, DF3500E, and DF7500E (Compl. ¶¶ 13, 15, 24, 26, 35, 37, 39, 48, 50, 52, 61, 63, 65, 74, 76, 78, 87, 89, 98, 100, 109, 111, 120, 122, 131, 133, 135).

Functionality and Market Context

  • The complaint identifies the accused products as multi-fuel or dual-fuel portable generators capable of operating on both liquid fuel (gasoline) and gaseous fuel (LPG) (Compl. ¶¶ 13, 24). The infringement allegations are based on Plaintiff's acquisition, inspection, disassembly, and review of owner's manuals and schematics for these products (Compl. ¶¶ 14, 25). The core accused functionalities are the mechanical and electrical systems used to select between fuel sources, including selector switches, safety lockouts, fuel cut-off mechanisms, and external pressure regulators (Compl. ¶¶ 14, 25, 36, 49). The complaint alleges that these products directly compete with those sold by the Plaintiff (Compl. ¶¶ 3-4).

IV. Analysis of Infringement Allegations

10,221,780 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a mechanical fuel valve actuateable between a first position and a second position to selectively control fuel flow to the dual fuel engine from a first fuel source through a first fuel line and a second fuel source through a second fuel line The complaint alleges the accused generators include a mechanical fuel valve that operates between two positions to control which fuel source is delivered to the engine. ¶14 col. 11:53-59
a fuel lockout apparatus coupled to the mechanical fuel valve The complaint alleges the accused generators' fuel valve is coupled to a fuel lockout apparatus. ¶14 col. 11:60-61
wherein the mechanical fuel lockout switch: communicates the first fuel source ... and prevents communication between the second fuel source ... when the mechanical fuel valve is in the first position, and communicates the second fuel source ... and interrupts the first fuel source ... when in the second position The complaint alleges the switch assembly performs the claimed function of enabling one fuel source while preventing communication from the other, depending on the valve's position. ¶14 col. 11:62-67
and wherein the fuel lockout apparatus is configured to: prevent the second fuel source from coupling to the second fuel line while the mechanical fuel valve is in the first position; and permit the second fuel source to couple ... while the mechanical fuel valve is in the second position The complaint alleges the lockout apparatus performs the claimed function of physically preventing the coupling of the second fuel line in one position and permitting it in the other. ¶14 col. 12:7-14

Identified Points of Contention

  • Scope Questions: A central dispute may be the construction of "fuel lockout apparatus." The analysis will question whether the specific mechanism in the accused products performs the dual functions of both preventing/permitting "communication" (fuel flow) and preventing/permitting physical "coupling" (connection of a fuel line) as required by the claim.
  • Technical Questions: The complaint alleges infringement based on inspection. A key factual question will be what evidence demonstrates that the accused device's switch "interrupts the first fuel source communication" when in the second position, as distinguished from merely closing a valve.

10,598,101 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a valve assembly fluidly connected to each of a first fuel source and a second fuel source, the valve assembly being operable to selectively control a first fuel flow and a second fuel flow... to an engine The complaint alleges the accused generators include a valve assembly connected to two fuel sources to control fuel delivery. ¶25 col. 8:1-5
a selector switch positioned on the valve assembly to allow a user to manually select one of the first fuel flow and the second fuel flow The complaint alleges the accused generators have a user-operated selector switch for choosing between fuels. ¶25 col. 8:5-7
wherein the valve assembly comprises: a first fuel valve having open and closed positions ... and a second fuel valve having open and closed positions The complaint alleges the valve assembly contains two distinct fuel valves, each with open and closed states. ¶25 col. 8:8-12
and wherein the first fuel valve and the second fuel valve are mechanical valves The complaint alleges these two distinct valves are mechanical, not solenoid-based. ¶25 col. 8:13-14

Identified Points of Contention

  • Scope Questions: The analysis may focus on the meaning of "selector switch positioned on the valve assembly." This raises the question of the required structural and operational relationship between the user interface (the switch) and the valving components.
  • Technical Questions: A key factual question will be whether the accused devices contain two distinct "mechanical valves" as claimed, or a single, multi-port valve that performs a similar function but may not meet the literal claim language of two separate valves.

V. Key Claim Terms for Construction

For the ’780 Patent

  • The Term: "fuel lockout apparatus"
  • Context and Importance: This term is central to the patent's novelty. Its construction will determine whether the accused mechanism, which allegedly prevents simultaneous fuel use, infringes. Practitioners may focus on this term because the patent's specific embodiments show a physical cover that blocks an inlet port, and the scope of "lockout apparatus" could be disputed if the accused device achieves a similar result through a different mechanical means.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: Claim 1 defines the term functionally as being "configured to: prevent the second fuel source from coupling to the second fuel line... and permit the second fuel source to couple..." (’780 Patent, col. 12:7-14). This may support a construction that covers any apparatus performing these functions.
    • Evidence for a Narrower Interpretation: The specification describes a specific embodiment as a "fuel inlet cover 61, which may be a flange," that "rotates transversely across fuel inlet 59 and blocks access thereto" (’780 Patent, col. 6:22-29). This language may support a narrower construction limited to a mechanism that physically blocks access to the fuel inlet.

For the ’101 Patent

  • The Term: "selector switch"
  • Context and Importance: The infringement analysis depends on whether the accused device's user-operated fuel selector constitutes the claimed "selector switch." Practitioners may focus on this term because the patent illustrates a specific sliding switch that physically interacts with valve handles, and its scope could be contested if the accused device uses a different type of switch, such as a rotating dial.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim describes the term functionally as being "positioned on the valve assembly to allow a user to manually select one of the first fuel flow and the second fuel flow" (’101 Patent, col. 8:5-7). This could support a broader meaning covering various types of user-operated selectors.
    • Evidence for a Narrower Interpretation: The detailed description explains that the "selector switch 30" is "slideably coupled to the selector plate" and has a "groove or channel 54" that physically receives and blocks the valve handles (’101 Patent, col. 5:25-41). This detailed description of a linear sliding mechanism may support a narrower construction.

VI. Other Allegations

Willful Infringement

  • The complaint alleges that Defendant’s infringement has been willful, deliberate, and with knowledge of Plaintiff's patents (Compl. ¶¶ 18, 29, 42, 55, 68, 81, 92, 103, 114, 125, 138). This allegation is based on alleged pre-suit knowledge, citing cease and desist letters sent on July 7, 2020, and April 4, 2024, as well as an allegation that Defendant has monitored Plaintiff's patents and patent applications (Compl. ¶¶ 19, 30, 43, 56, 69, 82, 93, 104, 115, 126, 139).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of definitional scope: Across multiple patents, the claims recite specific mechanical arrangements like a "fuel lockout apparatus" or a "selector switch." The case will likely turn on whether the accused generators' mechanisms fall within the patent's specific definitions, or if they operate on distinct mechanical principles that achieve a similar result.
  • A second central question will be one of claim differentiation: Plaintiff has asserted eleven patents covering various aspects and generations of its dual-fuel technology. An extensive analysis will be required to determine whether the accused products meet the specific combination of elements recited in any single asserted claim, or if they represent a non-infringing alternative design that combines features in a different way.
  • A key evidentiary question will be one of technical operation: The complaint's allegations are based on physical inspection and disassembly. The case will likely devolve into a fact-intensive, expert-driven dispute over how the accused generators' fuel selection systems, carburetors, and regulator systems actually operate at a component level, and whether that operation maps onto the specific functional and structural limitations of the asserted claims.