DCT

2:08-cv-07576

Roland Corp v. Mitch Herbert

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:08-cv-07576, C.D. Cal., 11/17/2008
  • Venue Allegations: Plaintiff alleges venue is proper in the Central District of California based on Defendant’s sales of accused products into the district through its website and eBay auctions.
  • Core Dispute: Plaintiff alleges that Defendant’s mesh heads and foam cones for electronic drums infringe five U.S. patents related to electronic percussion instrument technology.
  • Technical Context: The technology concerns electronic drum pads that use mesh heads to provide a playing experience similar to an acoustic drum but with minimal acoustic noise, a significant feature for practice and recording applications.
  • Key Procedural History: The five patents-in-suit constitute a family of related patents stemming from a common priority application, with each subsequent patent being a continuation or divisional of the prior. The patents' prosecution history suggests a focused effort to protect various aspects of the same core invention. For example, U.S. Patent No. 6,271,458 was filed with a terminal disclaimer over its parent, U.S. Patent No. 6,121,538, which may limit its enforceable term.

Case Timeline

Date Event
1996-07-04 Earliest Priority Date for all Patents-in-Suit
2000-09-19 U.S. Patent No. 6,121,538 Issued
2001-08-07 U.S. Patent No. 6,271,458 Issued
2004-06-29 U.S. Patent No. 6,756,535 Issued
2005-07-26 U.S. Patent No. 6,921,857 Issued
2008-06-10 U.S. Patent No. 7,385,135 Issued
2008-11-17 Complaint Filed

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

U.S. Patent No. 6,121,538

  • Patent Identification: U.S. Patent No. 6,121,538, "Electronic Percussion Instrumental System and Percussion Detecting Apparatus Therein," issued September 19, 2000.
  • The Invention Explained:
    • Problem Addressed: The patent’s background section describes deficiencies in prior art electronic drum pads. Surfaces made of soft compounds produced an unrealistic "repulsive feeling" when struck, while pads using traditional acoustic drum heads were too loud for quiet practice, defeating a primary purpose of electronic drums (’538 Patent, col. 1:36-41, 1:60-66).
    • The Patented Solution: The invention proposes an electronic drum head made from a "net-like raw material" (’538 Patent, col. 2:27-28). This mesh surface is described as providing excellent "percussion feeling" due to its elasticity while remaining extremely quiet because air passes through the openings in the material when struck (’538 Patent, col. 2:32-38). The preferred embodiment discloses laminating two mesh nets with their weave patterns oriented obliquely to one another to ensure uniform tension and response across the head (’538 Patent, Abstract; Fig. 6). A sensor assembly, typically comprising a transducer on a cushioning element, is placed in contact with the underside of the mesh head to detect vibrations from a strike and convert them into an electrical signal (’538 Patent, Fig. 3).
    • Technical Importance: This design offered a solution that combined the realistic rebound and feel of an acoustic drum with the low acoustic volume required for practice, a key innovation in the electronic percussion market (’538 Patent, col. 2:1-5).
  • Key Claims at a Glance:
    • The complaint does not identify specific asserted claims (Compl. ¶¶ 11-16). The following analysis is based on representative independent Claim 1, which covers the overall system.
    • Claim 1 Elements:
      • a barrel section;
      • a drum head comprising a net-like material having openings through which air passes;
      • a supporting material disposed within the barrel section;
      • a cushioning member composed of an elastic material disposed in contact with the head; and
      • a transducer located between the head and the supporting material, with the cushioning member located between the head and the transducer.
    • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 6,271,458

  • Patent Identification: U.S. Patent No. 6,271,458, "Electronic Percussion Instrumental system and Percussion Detecting Apparatus Therein," issued August 7, 2001.
  • The Invention Explained:
    • Problem Addressed: As a continuation of the application leading to the ’538 patent, this patent addresses the same technical problems: the unnatural feel of solid pads and the excessive acoustic noise of electronic drums that use conventional heads (’458 Patent, col. 1:36-41, 1:63-66).
    • The Patented Solution: The solution is fundamentally the same as in the ’538 patent, centered on a tensioned percussion surface made from a quiet, responsive material, and a sensor assembly to detect impacts (’458 Patent, Abstract). The claims in this patent are structured differently, with some focusing on a "head composed of a flexible material" rather than strictly a "net-like material," suggesting a potentially broader scope (’458 Patent, col. 19:44-45). The core inventive concept of a quiet, realistic-feeling electronic drum surface remains consistent across the shared specification and figures.
    • Technical Importance: This patent broadened the protection around the core invention described in the ’538 patent, securing rights to varied structural configurations of the same quiet electronic drum technology (’458 Patent, col. 2:1-5).
  • Key Claims at a Glance:
    • The complaint does not identify specific asserted claims (Compl. ¶¶ 17-22). The following analysis is based on representative independent Claim 6.
    • Claim 6 Elements:
      • a barrel section having a first end;
      • a head composed of a flexible material disposed in a tensioned state across the first end of the barrel section to define a percussion surface;
      • a support member disposed within the barrel section; and
      • a head sensor comprising a cushioning member and a transducer, supported by the support member, with the cushioning member in contact with the flexible material and the transducer.
    • The complaint does not explicitly reserve the right to assert dependent claims.

Multi-Patent Capsules

  • U.S. Patent No. 6,756,535

    • Patent Identification: U.S. Patent No. 6,756,535, "Electronic Percussion Instrumental System and Percussion Detecting Apparatus Therein," issued June 29, 2004.
    • Technology Synopsis: Continuing the same patent family, this invention addresses the need for a quiet electronic drum with a realistic playing feel (’535 Patent, col. 1:40-45). It discloses a percussion system using a "net-like raw material" for the drum head and a sensor assembly underneath it, with the claims directed toward specific structural arrangements of the sensor and its contact with the head (’535 Patent, Abstract).
    • Asserted Claims: The complaint does not identify specific asserted claims (Compl. ¶¶ 23-28).
    • Accused Features: The complaint alleges infringement by "certain components for use in electronic percussion instruments" (Compl. ¶26), identified as the "Cone Head" and "Alien Skins" products (Compl. ¶5).

  • U.S. Patent No. 6,921,857

    • Patent Identification: U.S. Patent No. 6,921,857, "Electronic Percussion Instrumental System and Percussion Detecting Apparatus Therein," issued July 26, 2005.
    • Technology Synopsis: This patent, also in the same family, is directed at solving the problems of unrealistic feel and excessive noise in prior art electronic drums (’857 Patent, col. 1:45-51). The patented solution involves a drum head made from a "net-like raw material" and a sensor assembly positioned beneath it to detect strikes, with claims directed to particular structural elements of the system (’857 Patent, Abstract).
    • Asserted Claims: The complaint does not identify specific asserted claims (Compl. ¶¶ 29-34).
    • Accused Features: Infringement is alleged by "certain components for use in electronic percussion instruments" (Compl. ¶30), identified as "Cone Head" and "Alien Skins" (Compl. ¶5).

  • U.S. Patent No. 7,385,135

    • Patent Identification: U.S. Patent No. 7,385,135, "Electronic Percussion Instrumental System and Percussion Detecting Apparatus Therein," issued June 10, 2008.
    • Technology Synopsis: As a later patent in the asserted family, this invention also addresses the need for a quiet electronic drum with a realistic feel (’135 Patent, col. 1:45-51). It discloses the use of a "net-like raw material" for the head and a sensor assembly for detecting percussion, with claims focusing on specific arrangements and combinations of these elements (’135 Patent, Abstract).
    • Asserted Claims: The complaint does not identify specific asserted claims (Compl. ¶¶ 35-40).
    • Accused Features: The accused products are "certain components for use in electronic percussion instruments" (Compl. ¶36), namely the "Cone Head" and "Alien Skins" (Compl. ¶5).

III. The Accused Instrumentality

  • Product Identification: Defendant’s products sold under the names "Cone Head" and "Alien Skins," described as "mesh heads for electronic drums, two ply mesh head, and foam cones for electronic drums" (Compl. ¶5, ¶12).
  • Functionality and Market Context: The complaint alleges these products are "components for use in electronic percussion instruments" (Compl. ¶12). Based on their description, the "Alien Skins" products appear to be mesh drum heads intended to replace or be installed on electronic drum pads, while the "Cone Head" products appear to be foam cones that function as part of the sensor assembly located beneath the head. The complaint alleges these components are offered for sale and sold through the website www.ufodrums.com and on eBay (Compl. ¶5). The complaint does not provide further technical details about the construction or operation of the accused products.
    No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint does not provide claim charts or detailed infringement contentions mapping specific features of the accused products to the elements of any asserted claims. The allegations are conclusory statements that the Defendant has infringed the patents-in-suit.

  • ’538 Patent Infringement Allegations
    The complaint alleges that the Defendant has been "infringing, directly and contributorily, and has been and is, actively inducing the infringement of the ’538 patent" by making, using, and selling the accused components (Compl. ¶12). The infringement theory appears to be that the combination of Defendant's "Alien Skins" mesh heads and "Cone Head" foam cones, when assembled into an electronic drum, embodies the invention claimed in the ’538 patent. The complaint does not provide sufficient detail for analysis of how the accused products meet specific claim limitations.

  • ’458 Patent Infringement Allegations
    Similarly, the complaint alleges direct, contributory, and induced infringement of the ’458 patent through the sale and use of the accused components (Compl. ¶18). The unstated theory is that these components, when used as intended, form an electronic percussion system that falls within the scope of the ’458 patent's claims. The complaint does not provide sufficient detail for analysis of this theory against specific claim elements.

  • Identified Points of Contention

    • Scope Questions: As the accused products are components, a central issue may be the theory of liability. A question for the court will be whether Defendant’s actions constitute direct infringement (e.g., if it sells fully assembled infringing drum pads) or if liability hinges on indirect infringement, which would require Plaintiff to prove Defendant supplied these components with the knowledge and intent that its customers would combine them in an infringing manner (Compl. ¶12, ¶18).
    • Technical Questions: A primary factual dispute will concern the specific construction and function of the accused "Cone Head" and "Alien Skins." The analysis will require evidence of whether these products, when combined, perform the functions required by the claims. For example, does the "Cone Head" function as the claimed "cushioning member" and how does it interact with a transducer? The complaint provides no specific evidence to answer this.

V. Key Claim Terms for Construction

  • The Term: "cushioning member" (e.g., ’538 Patent, Claim 1)

  • Context and Importance: This term is critical as it defines the interface between the drum head and the transducer, which is essential for translating a physical strike into an electronic signal. The accused "Cone Head" product appears to correspond to this claimed element. Practitioners may focus on this term because its construction will determine whether the Defendant’s foam cone falls within the scope of the claims.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The claim language uses the general term "elastic material" (’538 Patent, col. 19:3). The specification provides examples such as "rubber, sponge and the like," which may support a construction covering a broad class of resilient materials (’538 Patent, col. 7:1).
    • Evidence for a Narrower Interpretation: The specification’s preferred embodiment discloses a "frustoconical cushioning member" and provides detailed figures of this specific shape (’538 Patent, col. 6:65-66; Fig. 7). This disclosure could be used to argue that the term should be limited to the disclosed shape or to structures that are its functional or structural equivalent.

  • The Term: "net-like material" (e.g., ’538 Patent, Claim 1)

  • Context and Importance: This term defines the novel playing surface, which is a core inventive aspect. The accused "Alien Skins" are described as "mesh heads" (Compl. ¶5). The dispute will likely turn on whether the specific material and construction of Defendant’s mesh heads are covered by the patent’s claims.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The related ’458 patent uses the broader term "flexible material" in an independent claim, which may suggest the inventors did not intend to limit the invention strictly to a net structure (’458 Patent, col. 19:44). The term "net-like" itself suggests something that has the properties of a net without necessarily being one.
    • Evidence for a Narrower Interpretation: The specification of the ’538 patent describes a specific embodiment where two woven nets are laminated with their weave patterns crossing "obliquely" to create uniform tension (’538 Patent, col. 5:51-6:6). An accused infringer might argue that the term "net-like material" should be construed to require this specific multi-ply, offset-weave construction.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both contributory and induced infringement for all five patents, stating that Defendant sells "certain components for use in electronic percussion instruments" (Compl. ¶12, ¶18, ¶26, ¶30, ¶36). This suggests Plaintiff's case may rely on the theory that Defendant is knowingly and intentionally causing its customers to create infringing assemblies.
  • Willful Infringement: The complaint alleges that Defendant’s infringement "has been willful and deliberate" for all asserted patents (Compl. ¶13, ¶19, ¶25, ¶31, ¶37). These allegations are made "on information and belief" and are not supported by specific factual assertions regarding pre-suit knowledge of the patents.

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

  • A core issue will be one of evidentiary proof: Can Plaintiff demonstrate, through technical analysis, that the combination of Defendant's "Alien Skins" and "Cone Head" products, when used as intended in an electronic drum, meets every limitation of at least one asserted patent claim? The complaint’s lack of technical detail leaves this as the primary open question.
  • A second key issue will be one of definitional scope: How broadly will the court construe key claim terms? For example, can the term "cushioning member," described in the patent with a specific frustoconical shape, be interpreted to cover the Defendant’s "Cone Head" product? The outcome of claim construction will be pivotal.
  • A third central question will relate to indirect liability: Since the accused products are components rather than complete systems, can Plaintiff prove that Defendant sold them with the specific knowledge and intent required to establish induced or contributory infringement? This will likely require evidence beyond the simple act of selling replacement parts.