2:17-cv-03917
Total Import Solutions Inc v. Dehn S Innovation LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Total Import Solutions, Inc. d/b/a Nanoskin Car Care Products (California)
- Defendant: Dehn's Innovation LLC (Texas)
- Plaintiff’s Counsel: Greenberg Gross LLP
- Case Identification: 2:17-cv-03917, C.D. Cal., 05/24/2017
- Venue Allegations: Plaintiff alleges venue is proper because Defendant has communicated infringement allegations to distributors located within the Central District of California.
- Core Dispute: This is a declaratory judgment action in which the Plaintiff, an accused infringer, seeks a court declaration that its "X ONE" automotive cleaning tool does not infringe three patents owned by the Defendant.
- Technical Context: The technology relates to pneumatically-operated, hand-held cleaning tools that use a rotating nozzle to spray pressurized air, and in some cases a cleaning liquid, to clean automotive interiors.
- Key Procedural History: The action was precipitated by pre-suit communications from Defendant to Plaintiff. The complaint notes that Defendant sent letters on February 7, 2017, and May 18, 2017, alleging infringement and threatening legal action, which Plaintiff asserts creates an actual controversy sufficient for declaratory judgment jurisdiction.
Case Timeline
| Date | Event |
|---|---|
| 2007-09-04 | Priority Date for '011, '077, and '071 Patents |
| 2013-07-09 | U.S. Patent No. 8,480,011 Issues |
| 2014-04-08 | U.S. Patent No. 8,690,077 Issues |
| 2016-10-25 | U.S. Patent No. 9,475,071 Issues |
| 2017-02-07 | Defendant sends first letter to Plaintiff alleging infringement |
| 2017-05-18 | Defendant sends second letter to Plaintiff alleging infringement |
| 2017-05-24 | Complaint for Declaratory Judgment Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,480,011 - "Nozzle System and Method," issued July 9, 2013
The Invention Explained
- Problem Addressed: The patent describes prior art cleaning nozzles made of flexible materials that are subject to wear, contamination, and unreliable rotation, particularly in cold climates or at low pressures (’011 Patent, col. 2:1-7).
- The Patented Solution: The invention replaces the flexible nozzle with a system comprising a stationary tube and a rigid rotor. The rigid rotor is spun by the reaction force of pressurized air exiting an offset outlet port, creating a rotating spray without the durability issues of a flexible component (’011 Patent, Abstract; col. 2:10-33). The design aims to eliminate the need for a "horn-like guide" to constrain the nozzle's movement (’011 Patent, col. 5:1-7).
- Technical Importance: This approach seeks to create a more robust and reliable rotating nozzle that can function effectively even with low-pressure air, broadening its applicability to more delicate cleaning tasks (’011 Patent, col. 5:17-24).
Key Claims at a Glance
- The complaint does not identify specific claims, but its non-infringement arguments align with the elements of independent claim 1.
- Independent Claim 1 requires, among other elements:
- A stationary tube in fluid communication with a pressurized air source.
- A rotor coupled to the tube.
- A conduit that is rigid and "substantially arched or angled" with an outlet "offset a radial distance" from the rotor axis.
- A hand-held actuator to control air flow.
U.S. Patent No. 8,690,077 - "Nozzle System and Method," issued April 8, 2014
The Invention Explained
- Problem Addressed: The ’077 Patent, a continuation of the application leading to the '011 Patent, addresses the same durability and reliability problems with prior art flexible nozzles (’077 Patent, col. 2:1-10).
- The Patented Solution: The invention builds on the rigid rotor concept by adding the capability to spray a liquid or granular "sub-medium" (e.g., a detergent). The system includes a second, inner tube connected to a sub-medium supply. The rotation of the nozzle and ejection of pressurized air creates a negative pressure that siphons the sub-medium from its source, mixes it with the air, and sprays it as an aerosol (’077 Patent, Abstract; col. 13:20-24, 14:58-65).
- Technical Importance: The invention provides a single tool that can generate a rotating air jet and automatically mix and spray a cleaning solution, enhancing its cleaning power and versatility (’077 Patent, col. 6:28-37).
Key Claims at a Glance
- The complaint does not identify specific claims, but its arguments align with the elements of independent claims 1 and 9.
- Independent Claim 1 requires, among other elements:
- A spray nozzle with a stationary tube, a rotor, and a rigid, "substantially arched or angled" conduit with an "offset" outlet.
- A "second tube" for carrying a sub-medium.
- A "sub-medium supply source" from which the sub-medium is drawn during use.
Multi-Patent Capsule: U.S. Patent No. 9,475,071 - "Nozzle System and Method," issued October 25, 2016
Technology Synopsis
The ’071 Patent, a continuation from the same family, also discloses a hand-held spray nozzle apparatus with a rigid, rotating component. The claims focus on a configuration where a rotor is coupled to an exterior surface of a first tube and to a conduit, with the ejection of pressurized air from the conduit's offset outlet causing the assembly to rotate (’071 Patent, Abstract; col. 24:46-59). The technology continues the core theme of a durable, rigid rotating nozzle for cleaning applications.
Asserted Claims
The complaint does not specify which claims of the ’071 patent are at issue but makes general allegations of non-infringement. Independent claim 1 is representative.
Accused Features
The complaint alleges that the X ONE tool as a whole does not infringe, focusing on the specific non-infringement arguments applicable to all three patents-in-suit (Compl. ¶¶21, 30).
III. The Accused Instrumentality
Product Identification
The "X ONE Professional Cleaning Tool EG-X001," referred to as the "X ONE" (Compl. ¶15).
Functionality and Market Context
The complaint describes the X ONE as a "pneumatic cleansing tool that blasts low-moisture solution to clean automotive carpet and upholstery interior without over-saturating the surface" (Compl. ¶16). It is positioned as a "popular" product in a "crowded and competitive" market for automotive care products (Compl. ¶¶13, 15).
IV. Analysis of Infringement Allegations
'011 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a conduit...wherein the conduit is rigid and substantially arched or angled... | The conduit in the X ONE is substantially straight. | ¶21 | col. 24:9-10 |
| ...such that an outlet of the conduit is offset a radial distance in a radial direction from the rotor axis... | The direction of the conduit in the X ONE is consistent with the rotor axis. | ¶21 | col. 24:10-12 |
'077 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a conduit...rigid and substantially arched or angled... | The conduit in the X ONE is substantially straight. | ¶21 | col. 24:11 |
| ...such that an outlet of the conduit is offset a radial distance in a radial direction from the rotor axis... | The direction of the conduit in the X ONE is consistent with the rotor axis. | ¶21 | col. 24:12-14 |
Identified Points of Contention
- Scope Questions: The dispute appears to center on claim construction. A primary question is whether the term "substantially arched or angled," as used in the patents, can be interpreted to read on a conduit that is alleged to be "substantially straight." Likewise, the court will have to determine the scope of "offset a radial distance" and whether it can read on a product whose conduit direction is alleged to be "consistent with the rotor axis."
- Technical Questions: A factual question for the court will be the actual internal structure and operation of the X ONE tool. The complaint does not provide evidence, such as diagrams or expert declarations, to substantiate its claims about the tool's internal geometry. The case will require evidence comparing the precise fluid path within the X ONE to the requirements of the patent claims.
No probative visual evidence provided in complaint.
V. Key Claim Terms for Construction
The Term: "substantially arched or angled"
- Context and Importance: This term is at the core of the non-infringement argument. Plaintiff contends its product's conduit is "substantially straight," setting up a direct conflict over the term's meaning (Compl. ¶21). Practitioners may focus on this term because its resolution could be dispositive of infringement for all three patents.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specifications state that the purpose of the angled ejection is to "produce directional components of the pressurized air in the direction of rotation" (’011 Patent, col. 8:36-41). A party could argue that any configuration, even one appearing generally straight, that achieves this rotational function falls within the scope of "substantially angled."
- Evidence for a Narrower Interpretation: The patent figures consistently depict a conduit that is visibly bent or tilted relative to the main axis of rotation (’011 Patent, Figs. 2A, 5A, 7A). These embodiments could be used to argue that "substantially arched or angled" requires a clear, non-axial path for the conduit itself, excluding a straight one.
The Term: "offset a radial distance"
- Context and Importance: This term defines the geometric relationship between the nozzle's outlet and its axis of rotation, which is the mechanism that generates the rotational force. Plaintiff’s allegation that its conduit is "consistent with the rotor axis" suggests it will argue there is no such offset (Compl. ¶21).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the function of the offset as enabling the nozzle tip to "receive a counter force F" that causes it to "spin about the axis of rotation" (’011 Patent, col. 8:46-49). An argument could be made that the term covers any structure that effectively displaces the line of force from the axis of rotation, regardless of the precise geometry.
- Evidence for a Narrower Interpretation: The figures, such as Figure 2A, explicitly label a physical "radial direction (R)" showing the outlet's displacement from the central axis "AX" (’011 Patent, Fig. 2A). This provides strong support for an interpretation requiring a clear, measurable geometric displacement of the outlet port itself, which may not be present in a conduit that is "consistent with the rotor axis."
VI. Other Allegations
The complaint is for declaratory judgment of non-infringement and does not contain allegations of indirect or willful infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
This declaratory judgment action appears poised to turn on the resolution of two central, interrelated questions for the court:
A key issue will be one of claim construction and definitional scope: Can the claim term "substantially arched or angled," which is illustrated in the patents with visibly bent conduits, be construed broadly enough to cover the allegedly "substantially straight" conduit of the accused X ONE tool?
A core evidentiary question will be one of geometric functionality: Does the internal mechanism of the accused X ONE tool, which is alleged to have a conduit "consistent with the rotor axis," nonetheless create a rotational force via an outlet that is functionally "offset a radial distance" as required by the claims, or does it operate on a principle that falls outside the patents' scope?