Brunswick Corp. v. Volvo Penta of the Ams., LLC

640 F.Supp.3d 498

BRUNSWICK CORPORATION, Plaintiff, v. VOLVO PENTA OF THE AMERICAS, LLC, Defendant.

Civil Action No. 1:22-cv-00108

United States District Court, E.D. Virginia, Alexandria Division

Signed November 10, 2022

Kadie Jelenchick, Pro Hac Vice, Foley & Lardner LLP, Milwaukee, WI, Eli Leighton Evans, Justin Baird, Lauren Ashley Champaign, Foley & Lardner LLP, Washington, DC, Jack Thomas Carroll, Pro Hac Vice, Foley & Lardner LLP, Madison, WI, for Plaintiff.

Andrew N. Saul, Pro Hac Vice, Kilpatrick Townsend & Stockton LLP, Atlanta, GA, John Steven Gardner, Pro Hac Vice, Matias Ferrario, Kilpatrick Townsend & Stockton LLP, Winston-Salem, NC, Kathleen R. Geyer, Pro Hac Vice, Kilpatrick Townsend and Stockton LLP, Seattle, WA, for Defendant.

MEMORANDUM OPINION

T. S. Ellis, III, United States District Judge

At issue in this patent infringement case is Defendant's threshold Motion to Dismiss, arguing that Claim 1—the sole claim asserted in the Complaint—of each of the five allegedly infringed patents is directed to patent-ineligible subject matter under 35 U.S.C. § 101 and Alice Corp. Pts. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 134 S.Ct. 2347, 189 L.Ed.2d 296 (2014). Specifically, defendant contends that each of the relevant claims in the five patents at issue (i) are directed to a patent-ineligible abstract idea; and (ii) contain no "inventive concept" sufficient to "transform" the claimed abstract idea into a patent-eligible application. Alice, 573 U.S. at 221, 134 S.Ct. 2347. Plaintiff opposes the Motion to Dismiss, arguing that the patents (i) are not directed to abstract ideas and, in any event, (ii) contain inventive concepts that are sufficient transform the claims into patent-eligible subject matter. The matter has now been fully briefed and argued orally on two occasions by the parties. For the reasons stated herein, the Motion to Dismiss must be granted.

I.

To begin with, it is appropriate to describe generally each of the five patents and the single claim at issue in each. The five patents held by plaintiff are:

(1) U.S. Patent No. 7,305,928 (hereinafter the "'928 Patent"), titled "Method for positioning a marine vessel";

(2) U.S. Patent No. 7,727,036 (hereinafter the "'036 Patent"), titled "System and method for controlling movement of a marine vessel";

(3) U.S. Patent No. 10,095,232 (hereinafter the "'232 Patent"), titled "Station keeping methods";

(4) U.S. Patent No. 10,324,468 (hereinafter the "'468 Patent"), titled "System and method for controlling a position of a marine vessel near an object"; and

(5) U.S. Patent No. 10,671,073 (hereinafter the "'073 Patent"), titled "Station keeping system and method."

A. The '928 Patent

As the specification of the '928 Patent notes, the '928 Patent, titled a "method for positioning a marine vessel," is directed to a "method for positioning a marine vessel and, more particularly, a method for maintaining the position of a marine vessel at a selected global position." '928 Patent, col. 1, ll. 1-18. Thus, Claim 1 of the '928 Patent, the only claim in the '928 Patent asserted against the defendant, is solely a method claim; it makes no claim to any novel device, instrumentality, or apparatus and instead claims only a method that incorporates prior-art devices, instrumentalities, and apparatuses for the purpose or goal of maintaining the position and heading of a marine vessel. Claim 1, set forth in its entirety in the footnote below,¹ consists of sixteen elements which can be summarized in plain language as follows:

• The first and second claim elements simply recite the necessity for the use of prior art marine propulsion devices which are rotatable around steering axes.

• The third and fourth claim elements recite the requirement for determining the current global position and heading of the marine vessel.

• The fifth and sixth claim elements recite the necessary steps of receiving a command to maintain the vessel at its global position and heading and storing that information as a target global position and heading.

• The seventh and eighth claim elements list the requirement of determining the new current position and heading of the vessel.

• The ninth and tenth claim elements recite the necessary step of determining the difference or error between the target and new current positions and headings of the vessel.

• The eleventh and twelfth claim elements recite the requirement for determining the vessel movements needed to correct that error to return the vessel to its target position and heading.

• The thirteenth, fourteenth, and fifteenth claim elements list the requirement of operating the vessel's propulsion devices to effectuate those vessel movements, thereby correcting the error or difference between the current and target positions and headings by returning the vessel to the target position and heading.

• The sixteenth claim element simply recites the necessity of a generic, prior-art, manually operable control device, such as a joystick, whereby a captain or boat operator can communicate a desire to maintain the boat at a fixed position and heading.

'928 Patent, col. 21, l.42-col. 22, l. 27.

In essence, therefore, Claim 1 of the '928 Patent simply describes a method for determining the difference between the actual and target global positions and headings of a vessel, and then for correcting that difference to return the vessel to its target global position and heading. Notably, Claim 1 of the '928 Patent does not rely on any novel device, instrumentality, or apparatus to accomplish the purpose of the Claim; instead, Claim 1 of the '928 Patent calls for the use of prior art devices, instrumentalities, and apparatuses—propulsion devices and a manually operatable control device—to accomplish the purpose of the Claim.

B. The '036 Patent

As the specification of the '036 Patent notes, the '036 Patent, titled a "system and method for controlling movement of a marine vessel," is directed to "movement and coordination control of a marine vessel and, more particularly to improved systems and methods for damping unwanted motions of the marine vessel about or along an axis." '036 Patent, col. 1, ll. 1-10. Like Claim 1 of the '928 Patent, Claim 1 of the '036 Patent is the sole claim asserted against the defendant and makes no claim to any novel device, sensor or controller; instead, it claims only a system² that incorporates prior-art devices, sensors, and controllers for the purpose or goal of reducing unwanted movements of the marine vessel.

To that end, Claim 1, set forth in its entirety in the footnote below,³ consists of five elements that can be summarized in plain language free from patent-ese as follows:

• The first claim element simply recites the necessity for the use of a generic, prior-art device, such as a joystick, whereby a vessel operator can communicate desired vessel movements to a device like a prior-art, generic control module.

• The second claim element merely recites the necessity for the use of a generic, prior-art sensor to sense the actual rate of the vessel's movements.

• The third claim element recites the requirement of a controller known in the art that outputs a rate of position change command based upon the difference between the vessel operator's desired movement, as evidenced by the joystick in the first element, and the vessel's actual movement, as evidenced by the sensor in the second element.

• The fourth claim element recites a controller known in the art that causes the vessel to move based upon the rate of position change command outputted in the third claim element.

• The fifth claim element simply recites the requirement that a lack of movement in the joystick is to be interpreted as a request by the vessel operator to maintain the vessel in its current position, rather than to allow the vessel to drift.

'036 Patent, col. 5, ll. 2-21.

In other words, Claim 1 of the '036 Patent is a system that simply (i) allows a vessel operator to use a joystick to communicate to a control module or other computer the operator's desired rate of position change; (ii) carries out that position change by comparing the vessel's location (as determined by sensors) to the vessel operator's desired location, and moves the vessel accordingly; and (iii) interprets a stationary joystick as a request by the vessel operator to keep the vessel in its current position, rather than a request to let the vessel drift. Put simply, Claim 1 of the '036 Patent is directed to controlling the movement of a marine vessel to remedy unintended movements caused by external effects. The specification of the '036 Patent recognizes that the devices referenced—"a[n] operator controllable device," a "sensor," and controllers—are all "known in the art." Id., col.1, l. 63 -col.4, l. 20. Thus, Claim 1 of the '036 Patent does not claim any novel device, sensor, or controller to achieve its purpose of damping unwanted movements of the marine vessel.

C. The '232 Patent

As the specification of the '232 Patent notes, the '232 Patent, titled "station keeping methods," is related to "automatic positioning systems and methods for marine vessels." '232 Patent, col. 1, ll. 1-14. Claim 1 of the '232 Patent, the only claim in the '232 Patent asserted against defendant, is merely a method claim; it makes no claim to any novel device, instrumentality, or apparatus and instead, it claims only a method that incorporates prior-art devices, instrumentalities, and apparatuses to maintain a vessel at a specific position by using information from a prior position. Claim 1, set forth in its entirety in the footnote below,⁴ consists of six elements which can be summarized in plain language as follows:

• The first and second claim elements simply list the required steps of maintaining the vessel at an initial position through use of a prior-art method to operate a propulsion device to counteract external forces on the vessel.

• The third and fourth elements simply recite the necessary step of receiving a command from the

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