Reck-N-Rack LLC v. Just Encase Products Inc
2:22-cv-00503
| E.D. Wis. | Mar 6, 2024Background
- Reck-n-Rack LLC (RNR) sued Just Encase Products Inc. (Just Encase) alleging violation of Wisconsin's “patent trolling” statute based on alleged false infringement accusations regarding U.S. Patent No. 8,016,106.
- The dispute centers on a patent for a fishing tackle storage system, with claims involving design elements such as compartment structure and the ability of the box top to support weight.
- After the case was removed to federal court, a motion to dismiss was granted for insufficient pleading of “bad faith,” but RNR amended its complaint to address this deficiency.
- Both parties filed claim construction briefs over the meaning and definiteness of multiple terms in the patent, leading to a Markman hearing.
- The court’s order addresses the construction and definiteness under federal patent law, largely favoring resolving terms by their ordinary meaning absent evidence of technical jargon or ambiguity.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Construction of terms like “between the sides” | Needs clarifying, not defined in patent, should mean “extending entire distance…” | Ordinary meaning sufficient; RNR trying to create non-infringement arguments | No construction; ordinary meaning is clear |
| Meaning of “supported on the dividers/sides” | Should mean “in simultaneous contact with…” with added details from prosecution history | Plain meaning is clear; RNR’s proposal is unnecessarily complicated | No construction; ordinary meaning is clear |
| Meaning of “transparent” | Proposes “not painted or otherwise not opaque” | Initially plain meaning, later agreed on definition with RNR | Defined as “allowing transmission of light for interior views of contents” |
| Meaning of “nested” | Proposes “at least partially positioned one within another” | Initially plain meaning, later agreed on definition with RNR | Defined as “one panel partially positioned within another” |
| “The top” and panel terms — definiteness | Argues terms indefinite, or require construction, not clearly referenced in patent | Plain meaning is clear; terms not indefinite, RNR lacks expert support | No construction; terms are definite and clear |
| “Sufficient horizontal area...for two anglers” | Claims indefinite for lack of upper limit, or should specify “adequate ...while angling” | Plain meaning is clear, not indefinite, specification provides lower limit | No construction; term is clear, not indefinite |
| "Tackle storage system" — antecedent basis issue | Claims indefinite, unclear antecedent basis | Clear what is referenced; specification and figures make it understandable | No construction; term is clear and unambiguous |
Key Cases Cited
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (clarifies that claim terms should be given their ordinary and customary meaning in patent law)
- Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) (establishes that claim construction is a matter of law for the court)
- Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111 (Fed. Cir. 2004) (reiterates that patent claims define the invention to which the patentee is entitled exclusivity)
- Kara Tech. Inc. v. Stamps.com Inc., 582 F.3d 1341 (Fed. Cir. 2009) (patent protection is not limited to preferred embodiments in the specification)
- BASF Corp. v. Johnson Matthey Inc., 875 F.3d 1360 (Fed. Cir. 2017) (standard for indefiniteness in patent claims)
- Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 91 (2011) (burden of proof for invalidating a patent is clear and convincing evidence)