DCT
3:14-cv-00569
Flambeau Inc v. Primos Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Flambeau, Inc. (Wisconsin)
- Defendant: Primos, Inc. (Mississippi)
- Plaintiff’s Counsel: Quarles & Brady LLP
- Case Identification: 3:14-cv-00569, W.D. Wis., 11/10/2014
- Venue Allegations: Plaintiff alleges venue is proper because Defendant has committed acts of direct infringement in the district and has previously acknowledged proper venue in a prior litigation between the parties.
- Core Dispute: Plaintiff alleges that Defendant’s game call products infringe a patent related to a game call apparatus designed to mimic the sound of a rutted male deer.
- Technical Context: The technology relates to mechanical, reed-based game calls used in hunting to attract animals by producing specific vocalizations.
- Key Procedural History: The complaint notes that Defendant previously acknowledged personal jurisdiction and venue in the Western District of Wisconsin in a prior case, [Flambeau, Inc.](https://ai-lab.exparte.com/party/flambeau-inc) v. [Primos, Inc.](https://ai-lab.exparte.com/party/primos-inc), Case No. 3:13-cv-00717. The complaint also alleges that Plaintiff provided Defendant with notice of the patent-in-suit on April 18, 2013. Subsequent to the filing of this complaint, the asserted patent underwent an ex parte reexamination, which concluded with the issuance of a certificate on November 23, 2016, amending the sole asserted claim. The infringement analysis will therefore be governed by this amended claim language.
Case Timeline
| Date | Event |
|---|---|
| 2006-10-26 | Earliest Priority Date ('275 Patent) |
| 2012-10-02 | Issue Date, U.S. Patent No. 8,277,275 |
| 2013-04-18 | Plaintiff allegedly provided notice of '275 Patent to Defendant |
| 2014-11-10 | Complaint Filing Date |
| 2015-08-10 | Reexamination of '275 Patent Requested |
| 2016-11-23 | Reexamination Certificate Issued for '275 Patent |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,277,275 - "Game Call Apparatus"
- Patent Identification: U.S. Patent No. 8277275, "Game Call Apparatus," issued October 2, 2012. (Note: The analysis below considers the claim language as amended by Ex Parte Reexamination Certificate US 8,277,275 C1, issued November 23, 2016).
The Invention Explained
- Problem Addressed: The patent describes a problem with conventional reed-type game calls, which often require extensive practice and can be difficult to use effectively. A common failure mode is that users blow air with too high a velocity, causing the call's reed to "seize" and fail to vibrate properly, producing an unrealistic sound that may frighten game animals. (’275 Patent, col. 1:21-39; col. 3:59-62).
- The Patented Solution: The invention is a multi-component game call apparatus designed to be easier to use and to produce more realistic sounds. It consists of an inner sound chamber (containing a reed assembly) nested within a larger, tapered outer sound chamber. This tapered outer chamber is described as creating "air back pressure," which results in a "more mellow, deep tonal quality" and, critically, reduces the air velocity across the reed. This reduction in velocity makes the reed less prone to seizing, allowing users with less skill to produce desirable sounds. (’275 Patent, col. 3:51-68; Abstract). The overall structure is illustrated in the cross-sectional view of Figure 3. (’275 Patent, Fig. 3).
- Technical Importance: The design's focus on managing air pressure and velocity sought to improve the acoustic realism and operational forgiveness of deer calls, thereby increasing their effectiveness for a broader range of users. (’275 Patent, col. 1:56-62).
Key Claims at a Glance
- The complaint asserts independent claim 1. (Compl. ¶15).
- The essential elements of the amended Claim 1 are:
- A mouthpiece with an air inlet, outlet, and passageway.
- A reed assembly with a sounding board defining a trough.
- An inner sound chamber with an inlet, outlet, a "radially outer wall", and an air passageway.
- An outer sound chamber with an inlet, a "radially inner wall", an air exit opening, and which "tapers inwardly".
- A specific spatial relationship wherein the outer chamber "partly encompasses" the inner chamber, with the inner chamber's outer wall being "spaced radially apart" from the outer chamber's inner wall.
- A dimensional limitation wherein the sounding board extends into the inner sound chamber air passageway by "less than 50 percent" of the inner chamber's axial length.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The "Bottleneck," "Little Big Roar," and "Two Faced" game calls. (Compl. ¶16).
Functionality and Market Context
- The complaint alleges these products are game calls for "producing a realistic game call of a rutted male deer" by using a mouthpiece, a reed that vibrates in an inner sound chamber, and air that exits from a tapered outer sound chamber. (Compl. ¶7).
- The complaint does not provide further technical detail, diagrams, or specifications regarding the internal construction or specific operation of the accused products.
- The complaint alleges that Defendant Primos is one of Plaintiff Flambeau's "primary competitors in the game call industry." (Compl. ¶12).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
The complaint makes general allegations of infringement without providing a detailed claim chart. The table below summarizes the infringement theory based on the allegations in the complaint, mapped to the controlling, amended claim language of the ’275 Patent.
’275 Patent Infringement Allegations
| Claim Element (from Independent Claim 1, as amended) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a mouthpiece having an air inlet opening, an air outlet opening, and a mouthpiece air passageway... | The accused products are alleged to have a mouthpiece into which a user blows. | ¶7 | col. 3:13-21 |
| a reed assembly disposed within the mouthpiece air passageway and including a sounding board defining a trough... | The accused products allegedly cause a reed to vibrate to produce sound. | ¶7 | col. 3:7-12 |
| an inner sound chamber having an air inlet opening, an air outlet opening, a radially outer wall, and an inner sound chamber air passageway... | The accused products are alleged to contain a "tubular inner sound chamber" where the reed vibrates. | ¶7 | col. 3:32-38 |
| an outer sound chamber having an air inlet opening... a radially inner wall, and an air exit opening... and the outer sound chamber tapering inwardly... | The accused products are alleged to have a "tapered outer sound chamber" from which air exits. | ¶7 | col. 6:7-13 |
| wherein the outer sound chamber at least partly encompasses the inner sound chamber, with at least a portion of the radially outer wall of the inner sound chamber extending axially into the outer sound chamber and being spaced radially apart from the radially inner wall of the outer sound chamber | The complaint does not provide sufficient detail for analysis of this element. | col. 2:13-19 (Reexam Cert.) | |
| wherein the sounding board extends into the inner sound chamber air passageway by less than 50 percent of an axial length of the inner sound chamber air passageway | The complaint does not provide sufficient detail for analysis of this element. | col. 6:19-23 |
- Identified Points of Contention:
- Scope Questions: A central issue will be whether the accused products, accused of infringement in 2014, meet the specific structural limitations added to Claim 1 during the 2016 reexamination. The added language requires a specific nested relationship where the inner chamber's outer wall is "spaced radially apart" from the outer chamber's inner wall. The case may turn on whether the accused products possess this specific configuration.
- Technical Questions: The complaint lacks any specific evidence (e.g., product teardowns, schematics) of the accused products' internal construction. A key factual question will be whether discovery reveals that the accused calls actually contain the precise structure of amended Claim 1, particularly the "less than 50 percent" dimensional limitation for the sounding board's extension into the inner chamber.
V. Key Claim Terms for Construction
The Term: "tapering inwardly"
Context and Importance: This term describes a core feature of the outer sound chamber, which the patent credits with creating the beneficial "air back pressure." Practitioners may focus on this term because the functionality of the device is heavily dependent on this structure, and the scope of "tapering" could be disputed.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes a "tapered section 76" that "decreases the large internal diameter section 78 from a diameter a to a small internal diameter b." (’275 Patent, col. 3:38-42). This could support a construction covering any structure with a continuously decreasing diameter.
- Evidence for a Narrower Interpretation: The patent explicitly links this tapering to a functional outcome: "a significantly improved deer call is provided by the tapered constriction of the outer tubular member 60 which causes an air back pressure resulting in a more mellow, deep tonal quality." (’275 Patent, col. 3:51-54). A party could argue the term requires a taper sufficient to produce this specific acoustic effect.
The Term: "sounding board extends into the inner sound chamber air passageway by less than 50 percent of an axial length of the inner sound chamber air passageway"
Context and Importance: This is a precise dimensional limitation that defines the physical placement of the reed assembly relative to the inner chamber. Practitioners may focus on this term because infringement of such a quantitative limitation requires specific measurement and a clear, agreed-upon methodology.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself provides the definition. A party might argue for a simple, literal measurement based on the plain meaning of "axial length."
- Evidence for a Narrower Interpretation: The patent does not explicitly define the start and end points for measuring the "axial length of the inner sound chamber air passageway." A dispute could arise over whether the measurement should include or exclude certain features, such as the corrugated, extendable portion described in what became dependent claim 2, potentially altering the outcome of the "less than 50 percent" calculation. (’275 Patent, col. 3:40-45; ’275 Reexam Cert., col. 2:24-27).
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Primos induces infringement by "inducing the sale of infringing products." (Compl. ¶5, 11, 15). The complaint does not, however, plead specific facts detailing the acts of inducement, such as referencing user manuals, advertisements, or other instructions that would encourage an infringing use.
- Willful Infringement: The complaint alleges willful infringement based on Plaintiff having provided "notice of the '275 Patent to Primos at least as early as April 18, 2013," more than a year before the complaint was filed. (Compl. ¶13, 16). This allegation is based on pre-suit knowledge of the patent.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope versus timing: Do the accused game calls—which were on the market and accused of infringement prior to the 2016 reexamination—possess the specific, nested structural features (e.g., the radially spaced-apart walls) that were explicitly added to Claim 1 to secure its patentability during that proceeding?
- A key evidentiary question will be one of structural proof: Can the plaintiff produce technical evidence from product teardowns that demonstrates the accused devices meet every element of the amended claim, particularly the quantitative limitation that the "sounding board extends... by less than 50 percent of an axial length" of the inner chamber? The resolution of this factual question will depend heavily on how the court construes the measurement methodology for "axial length."