DCT
2:19-cv-05777
Theragun LLC v. Massage GUNS Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Theragun, LLC (Delaware)
- Defendant: Massage Guns Inc. (Canada)
- Plaintiff’s Counsel: Jeffer Mangels Butler & Mitchell LLP
- Case Identification: 2:19-cv-05777, C.D. Cal., 07/02/2019
- Venue Allegations: Venue is asserted based on the defendant being a foreign corporation.
- Core Dispute: Plaintiff alleges that Defendant’s percussive massage gun attachment heads infringe two U.S. design patents covering the ornamental appearance of such attachments.
- Technical Context: The technology involves the industrial design of interchangeable heads for handheld percussive therapy devices, a market where product appearance can be a significant differentiator.
- Key Procedural History: The complaint alleges that Plaintiff obtained one of the accused infringing devices on July 1, 2019, one day prior to filing the complaint. No other procedural history is mentioned.
Case Timeline
| Date | Event |
|---|---|
| 2017-07-11 | Priority Date for '260 and '500 Patents |
| 2019-04-09 | U.S. Patent No. D845,500 Issued |
| 2019-05-21 | U.S. Patent No. D849,260 Issued |
| 2019-07-01 | Plaintiff allegedly obtained Defendant's device |
| 2019-07-02 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. D849,260 - "Massage Element," issued May 21, 2019
The Invention Explained
- Problem Addressed: Design patents protect ornamental appearance rather than solving a technical problem. The '260 Patent protects the novel, non-functional appearance of a massage device attachment.
- The Patented Solution: The patent claims the specific ornamental design for a massage element. The complaint describes the key visual features as a circular, dome-shaped head with a "flattened" point, which sits on a bottom piece that tapers inward toward the dome (Compl. ¶8). A notable feature is a "circular rounded ridge" on the bottom piece that extends beyond the dome's circumference, creating a "crevice or slot" between the two main components (Compl. ¶8; '260 Patent, Figs. 1, 6).
- Technical Importance: The complaint alleges these ornamental features combine to give the attachment a "distinct patented design" intended to distinguish it in the marketplace (Compl. ¶8).
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a massage element, as shown and described" (’260 Patent, Claim). This claim protects the overall visual appearance of the object depicted in the patent’s solid-line drawings.
U.S. Patent No. D845,500 - "Massage Element," issued April 9, 2019
The Invention Explained
- Problem Addressed: Like the '260 Patent, the '500 Patent protects the ornamental, non-functional appearance of a massage device attachment.
- The Patented Solution: The patent claims the specific ornamental design for a massage element. The complaint highlights features such as "rounded corners at the distal end" which combine to "form a unique wedge shape" (Compl. ¶11). The patent figures illustrate a tapered, somewhat conical design with soft edges (’500 Patent, Figs. 1-3).
- Technical Importance: The combination of these design elements is alleged to create a "distinct patented design" for product differentiation (Compl. ¶11).
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a massage element, as shown and described" (’500 Patent, Claim). The scope of this protection is defined by the overall visual appearance depicted in the patent’s figures.
III. The Accused Instrumentality
- Product Identification: The complaint identifies two accused products: the "First Infringing Attachment," which is accused of infringing the '260 Patent, and the "Second Infringing Attachment," which is accused of infringing the '500 Patent (Compl. ¶¶17, 19).
- Functionality and Market Context: The attachments are sold as part of a kit with Defendant’s percussive massage devices (Compl. ¶14). The complaint alleges these products are sold and advertised online through Defendant’s website, www.massageguns.com, and social media channels (Compl. ¶¶23-24). A screenshot from Defendant's social media page shows the massage gun, a case, a charger, and a set of six distinct attachment heads (Compl. p. 4).
IV. Analysis of Infringement Allegations
The infringement allegation for a design patent rests on the "ordinary observer" test, which asks whether an ordinary observer would believe the accused design is the same as the patented design. The complaint provides side-by-side comparisons to support its claims. The image included in the complaint shows a side-by-side comparison of the patented design from Figure 6 of the '260 patent and a photograph of the accused product (Compl. p. 6). A similar comparison is provided for the '500 patent, showing Figure 2 of the patent next to the second accused product (Compl. p. 8).
D'260 Patent Infringement Allegations
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a massage element, as shown and described. | The "First Infringing Attachment" is alleged to appear "substantially the same" as the patented design, such that the resemblance would deceive an ordinary observer into purchasing the accused product believing it to be the patented one. | ¶17 | '260 Patent, Figs. 1-9 |
D'500 Patent Infringement Allegations
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a massage element, as shown and described. | The "Second Infringing Attachment" is alleged to appear "substantially the same" as the patented design, such that the resemblance would deceive an ordinary observer. | ¶26 | '500 Patent, Figs. 1-11 |
- Identified Points of Contention:
- Scope Questions: The primary question is whether the overall visual impression of each accused attachment is "substantially the same" as the corresponding patented design. The analysis will depend on comparing the designs as a whole, not on a simple tally of similarities and differences.
- Legal Questions: The complaint pleads both "literal infringement" and "infringement under the doctrine of equivalents" (Compl. ¶¶19, 28). Since the Federal Circuit has clarified that the "ordinary observer" test is the sole test for design patent infringement, the relevance and application of a separate equivalents analysis may become a point of legal argument.
V. Key Claim Terms for Construction
In design patent cases, formal claim construction is less common than in utility patent cases, as the claim is defined by the drawings. The "construction" is a description of the design's visual characteristics.
- The Term: "The ornamental design... as shown and described."
- Context and Importance: The entire dispute hinges on the scope of the visual impression protected by the patent figures. The court’s interpretation of what constitutes the overall "look and feel" of the claimed designs will be dispositive. Practitioners may focus on identifying the most prominent visual features and the overall shape and configuration shown in the drawings.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language "as shown and described" is standard and points to the design as a whole, suggesting the test should focus on the overall impression rather than minute details.
- Evidence for a Narrower Interpretation: The specific contours, proportions, and interplay between different parts of the design shown in the patent figures (e.g., the specific curvature of the dome in the '260 Patent or the taper angle in the '500 Patent) define the boundaries of the claimed design. Any significant visual differences in these features in the accused products could support a finding of non-infringement. The broken lines in the patent figures explicitly disclaim those portions of the massage element as not being part of the claimed design, which narrows the scope of protection to only the features shown in solid lines ('260 Patent, Description; '500 Patent, Description).
VI. Other Allegations
- Indirect Infringement: The complaint's prayer for relief seeks an injunction against direct, contributory, and induced infringement (Compl. ¶18.D). However, the body of the complaint only contains factual allegations supporting direct infringement by the Defendant (Compl. ¶¶18, 27). The complaint does not provide sufficient detail for analysis of indirect infringement claims.
- Willful Infringement: The complaint alleges that Defendant’s infringement has been "willful and deliberate" (Compl. ¶¶23, 32). The complaint does not allege any pre-suit notice or knowledge. The basis for willfulness appears to be a conclusory allegation, potentially to be supported by the alleged degree of similarity between the designs and Defendant's post-filing conduct.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual comparison: In the eye of an ordinary observer familiar with the prior art, is the overall ornamental design of each accused attachment "substantially the same" as the corresponding design claimed in the '260 and '500 patents, or are the visual differences significant enough to avoid infringement?
- A key evidentiary question will be the impact of prior art: How will the landscape of pre-existing massage head designs affect the scope of the patents-in-suit and the infringement analysis? The degree of novelty of the patented designs over the prior art will inform how closely the accused products must resemble them to infringe.
- Finally, the case may present a question of willfulness: Can the plaintiff provide evidence to support its claim that the alleged infringement was willful and deliberate, especially in the absence of any alleged pre-suit notification, which would be critical for an award of enhanced damages?