DCT
3:11-cv-00756
Expedite Intl Inc v. Western Rivers Light Supply Co Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Expedite International, Inc. (Wisconsin)
- Defendant: Western Rivers Light and Supply Company, Inc. (Tennessee)
- Plaintiff’s Counsel: Adams Monahan LLP
- Case Identification: 3:11-cv-00756, W.D. Wis., 11/04/2011
- Venue Allegations: Plaintiff alleges venue is proper in the Western District of Wisconsin because Defendant is subject to personal jurisdiction in the state due to online sales and sales at retail stores within the district.
- Core Dispute: Plaintiff alleges that Defendant’s "Deceptor Rabbit" hunting decoy infringes a patent related to motion-type decoy technology.
- Technical Context: The technology concerns motorized decoys designed to simulate distressed prey, thereby attracting predators for hunting or wildlife management purposes.
- Key Procedural History: The complaint alleges that on April 22, 2008, Plaintiff contacted Defendant to provide notice of its then-pending patent application and its infringement concerns regarding Defendant's product, which forms the basis for the willfulness allegation.
Case Timeline
| Date | Event |
|---|---|
| 2008-04-17 | U.S. Patent No. 7,958,666 Priority Date (Application Filing) |
| 2008-04-22 | Plaintiff allegedly informs Defendant of pending patent application |
| 2011-06-14 | U.S. Patent No. 7,958,666 Issue Date |
| 2011-11-04 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,958,666, “DECOY TECHNOLOGY,” issued June 14, 2011
The Invention Explained
- Problem Addressed: The patent identifies a need for "new and improved means of attracting coyotes and other predators for removal or eradication," noting that such animals are an increasing nuisance and threat in both rural and urban areas (’666 Patent, col. 1:41-61).
- The Patented Solution: The invention is a motion decoy apparatus that uses a motor inside a housing to generate a "vibratory motion." (’666 Patent, col. 9:66-10:2). This housing is mounted on a base (such as a stake). An elongated, flexible arm is attached to the vibrating housing, and a decoy member, such as a cover designed to look like a rabbit, is placed over the arm. The motor's vibration is transferred through the housing to the arm, causing the decoy member to exhibit a "quivering and shaking motion" that simulates a small animal in distress to attract predators (’666 Patent, Abstract; col. 4:1-19).
- Technical Importance: The invention provides a portable, ground-based, motion-type decoy that aims to create a more realistic and enticing lure for predators compared to static decoys (’666 Patent, col. 1:32-38).
Key Claims at a Glance
- The complaint asserts infringement of "one or more claims" without specifying which ones (Compl. ¶12). Independent Claim 1 is representative of the core invention.
- Independent Claim 1 Elements:
- An apparatus, comprising a base for placement during use on an environmental surface...
- a driven decoy mechanism communicatively connected at the support end of the base, the decoy mechanism comprising an actuator and a decoy member...
- the actuator comprising a power supply, a switch..., a motor..., an actuator housing for the power supply, switch and motor...
- the motor being fixedly connected to an interior surface of the housing whereby actuation of the motor causes the housing to undergo a vibratory motion...
- an elongated arm connected to an exterior surface of the housing at a top end thereof...
- the decoy member being connected to the arm.
- The complaint does not explicitly reserve the right to assert dependent claims, but the broad allegation of infringing "one or more claims" leaves this possibility open.
III. The Accused Instrumentality
Product Identification
- Defendant’s "Deceptor Rabbit" product (Compl. ¶10).
Functionality and Market Context
- The complaint alleges the Deceptor Rabbit is a hunting accessory and a rabbit decoy (Compl. ¶8, ¶10). It further alleges that the product is "virtually identical" to Plaintiff's own "Quiver Critter" product, which embodies the patented invention (Compl. ¶10). The complaint does not provide specific technical details about the operation of the Deceptor Rabbit, but alleges it is manufactured, sold, and distributed by Defendant online and in retail stores (Compl. ¶12).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint does not contain a claim chart or detailed allegations mapping specific features of the Accused Instrumentality to the elements of any patent claim. It makes a general allegation that the "Deceptor Rabbit" product infringes "one or more claims" of the ’666 Patent (Compl. ¶12). The following chart summarizes the infringement theory for representative Claim 1 based on the general allegations.
'666 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An apparatus, comprising a base for placement during use on an environmental surface, the base including a surface contact end of a predetermined dimension and a support end; | The complaint does not provide specific details, but generally alleges the "Deceptor Rabbit" product is a decoy apparatus that includes a base. | ¶10, ¶12 | col. 4:29-40 |
| and a driven decoy mechanism communicatively connected at the support end of the base, the decoy mechanism comprising an actuator and a decoy member... | The complaint does not provide specific details, but generally alleges the "Deceptor Rabbit" product is a decoy apparatus that includes a driven decoy mechanism. | ¶10, ¶12 | col. 3:54-58 |
| the actuator comprising a power supply, a switch..., a motor..., an actuator housing for the power supply, switch and motor... | The complaint does not provide specific details, but generally alleges the "Deceptor Rabbit" product contains an actuator with these components. | ¶10, ¶12 | col. 9:62-65 |
| the motor being fixedly connected to an interior surface of the housing whereby actuation of the motor causes the housing to undergo a vibratory motion... | The complaint does not provide specific details, but generally alleges the "Deceptor Rabbit" product operates via a motor-driven vibratory motion. | ¶10, ¶12 | col. 9:66-10:2 |
| and an elongated arm connected to an exterior surface of the housing at a top end thereof, the decoy member being connected to the arm. | The complaint does not provide specific details, but generally alleges the "Deceptor Rabbit" product includes an arm and decoy member. | ¶10, ¶12 | col. 10:2-4 |
Identified Points of Contention
- Scope Questions: A central question will be whether the specific components of the "Deceptor Rabbit" fall within the scope of the claim terms. For instance, does the mechanism used to create motion in the accused product meet the definition of a motor "fixedly connected to an interior surface of the housing" that causes the "housing to undergo a vibratory motion," as claimed?
- Technical Questions: Since the complaint lacks technical detail, discovery will be required to determine the actual mechanism of the accused product. A key question for the court will be what evidence exists that the accused product generates motion in the manner specified by the claims, such as via an off-center flywheel causing the entire actuator housing to vibrate, as described in the patent's preferred embodiment (’666 Patent, col. 6:49-54).
V. Key Claim Terms for Construction
The Term: "vibratory motion"
Context and Importance
- This term is central to the function of the invention. The infringement analysis will depend on whether the motion generated by the accused product qualifies as the claimed "vibratory motion." Practitioners may focus on this term because its construction could either broadly cover many types of shaking or be limited to the specific "quiver" motion described in the patent.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The term itself has a broad, plain and ordinary meaning that could encompass any oscillating or shaking movement.
- Evidence for a Narrower Interpretation: The specification repeatedly characterizes the motion more specifically as a "quiver motion having random longitudinal, radial and lateral movement components" (’666 Patent, col. 10:5-7) that "simulates a small animal in distress" (’666 Patent, col. 10:42-44). A party may argue these descriptions limit the scope of "vibratory motion."
The Term: "elongated arm"
Context and Importance
- This element transmits the "vibratory motion" from the housing to the decoy member. Its definition is important for determining what structures can meet this limitation.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The term itself does not imply any particular shape or material, only that the structure is elongated.
- Evidence for a Narrower Interpretation: The preferred embodiment describes and depicts the arm as a flexible wire with a specific "S" shape (’666 Patent, col. 7:17-20; Fig. 5). A party could argue that the term should be construed to require flexibility or a similar structure capable of producing the "quiver motion."
VI. Other Allegations
Indirect Infringement
- The complaint does not contain specific counts for indirect (induced or contributory) infringement, focusing its allegations on direct infringement through "manufacture, sale and distribution" (Compl. ¶12).
Willful Infringement
- The complaint alleges that Defendant's infringement is willful, seeking enhanced damages (Compl. ¶15). The factual basis for this allegation is that Plaintiff "contacted Defendant on April 22, 2008 to inform Defendant of the existence of the pending patent application" and of its infringement concerns, but Defendant "did not cease sales" (Compl. ¶10).
VII. Analyst’s Conclusion: Key Questions for the Case
- A primary issue will be one of claim construction: can the term "vibratory motion" be interpreted broadly to cover any motorized shaking, or will the court limit it to the specific "quiver motion" with random multi-directional components, as detailed in the patent's specification? The outcome of this construction will significantly impact the infringement analysis.
- An essential evidentiary question will be factual: what is the precise mechanism of operation of the "Deceptor Rabbit" decoy? As the complaint provides no technical details, the case will turn on evidence uncovered in discovery regarding how the accused product's motor, housing, and arm are constructed and how they interact to produce motion.
- The allegation of willfulness will depend on the factual record surrounding the alleged pre-issuance notice in 2008. A key question for the court will be whether this notice of a pending application is sufficient to establish the knowledge and intent required for a finding of willful infringement for actions taken after the patent issued.