DCT
5:17-cv-02513
American Latex Corp v. California Exotic Novelties LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: American Latex Corp. (California)
- Defendant: California Exotic Novelties, LLC; CalExotics (California)
- Plaintiff’s Counsel: Leech Tishman Fuscaldo & Lampl
- Case Identification: 5:17-cv-02513, C.D. Cal., 12/18/2017
- Venue Allegations: Venue is alleged to be proper as Defendants reside in the judicial district, have committed acts of infringement there, and maintain regular and established places of business in the district.
- Core Dispute: Plaintiff alleges that Defendant’s "LUXE touch-sensitive vibrator" infringes a patent related to interactive massaging devices that automatically adjust vibration based on proximity to a user.
- Technical Context: The lawsuit concerns personal massaging devices, a market segment where user experience features like automatic or interactive controls can be a point of product differentiation.
- Key Procedural History: The complaint details pre-suit communications, alleging that the original patent owner, Wing Pow, notified Defendants of the patent on August 1, 2016, and provided a detailed infringement claim chart on March 27, 2017. These allegations form the basis for the willfulness claim. The patent was subsequently assigned to the current Plaintiff, American Latex Corp., on August 4, 2017.
Case Timeline
| Date | Event |
|---|---|
| 2010-03-12 | ’337 Patent Priority Date |
| 2014-06-10 | ’337 Patent Issue Date |
| Mid-2016 | Original patentee allegedly learns of accused product |
| 2016-08-01 | Original patentee sends notice letter to Defendants |
| 2016-08-16 | Defendants respond to notice letter |
| 2017-03-27 | Original patentee sends infringement claim chart to Defendants |
| 2017-08-04 | ’337 Patent assigned to Plaintiff American Latex Corp. |
| 2017-12-18 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,747,337 - "Interactive Massaging Device," issued June 10, 2014
The Invention Explained
- Problem Addressed: The patent identifies a drawback in prior art massaging devices where the need for a user to manually manipulate controls to change vibration modes "tends to detract from desired effects" (’337 Patent, col. 1:24-27). The goal was to create a device that could offer varied stimulation without requiring active user intervention on the controls during use (’337 Patent, col. 1:27-29).
- The Patented Solution: The invention is a massaging device that incorporates a "spaced plurality of proximity sensors" along its body (’337 Patent, col. 1:37-39). A control circuit is connected to these sensors and a vibrator motor. The circuit automatically drives the vibrator at different intensity levels depending on which of the sensors comes into "close proximity with user's body parts" (’337 Patent, col. 1:40-43). For example, as the device is inserted further, it activates sensors sequentially, causing the vibration intensity to increase automatically (’337 Patent, col. 3:12-20).
- Technical Importance: This approach automates the escalation of vibratory feedback based on the physical interaction of the device with the user, aiming to enhance the user experience by making it more responsive and intuitive.
Key Claims at a Glance
- The complaint asserts infringement of claims 1-15, 17, and 18 (Compl. ¶20).
- Independent Claim 1, a device claim, recites:
- A housing, a motor, and a control circuit
- A first proximity sensor located in an insertable portion of the device
- The sensor produces signals for the control circuit
- The speed of the motor varies in response to the signals
- The device is arranged such that the sensor automatically produces the signal when it comes into close proximity with a user's body part
- Independent Claim 18, also a device claim, is similar but requires at least a first and a second proximity sensor, wherein activation of the second sensor results in a higher motor speed than activation of the first sensor.
III. The Accused Instrumentality
Product Identification
- The accused product is identified as the "LUXE touch-sensitive vibrator" (the "LUXE Vibrator") (Compl. ¶14).
Functionality and Market Context
- The complaint describes the Defendants as manufacturers and distributors of adult toys and novelties, promoting themselves as a "world's leading source of pleasure products" (Compl. ¶13). The complaint alleges the LUXE Vibrator is a "touch-sensitive" device, which implies it has features that respond to user contact (Compl. ¶14). However, the complaint does not provide specific technical details on how the accused product's touch-sensitive functionality operates, instead incorporating by reference a claim chart (Exhibit E) that was allegedly provided to the Defendants pre-suit but is not attached to the publicly filed complaint (Compl. ¶17). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint’s infringement theory is that the "touch-sensitive" feature of the LUXE Vibrator meets the "proximity sensor" limitations of the ’337 Patent.
’337 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A sex toy device comprising: a housing; a motor; a control circuit; | The LUXE Vibrator is a device that allegedly contains a housing, motor, and control circuit. | ¶¶14, 20 | col. 5:55-59 |
| a first proximity sensor located in an insertable portion of the device that produces signals to the control circuit; | The "touch-sensitive" feature of the LUXE Vibrator allegedly functions as a proximity sensor located in an insertable portion that sends signals to a control circuit. | ¶¶14, 20 | col. 6:1-3 |
| wherein the speed of the motor varies in response to the signals, | The motor speed of the LUXE Vibrator allegedly varies based on signals from its touch-sensitive feature. | ¶¶14, 20 | col. 6:4-5 |
| and wherein the device is arranged such that the first proximity sensor automatically produces the signal in response to the first proximity sensor coming into close proximity with a user's body part. | The LUXE Vibrator is allegedly designed so that its touch-sensitive feature automatically generates a signal upon contact or proximity with a user. | ¶¶14, 20 | col. 6:5-8 |
- Identified Points of Contention:
- Scope Questions: A central dispute may be whether the term "proximity sensor," as used in the patent, is broad enough to read on the "touch-sensitive" functionality of the accused product. The question is whether "proximity" requires non-contact detection or if it can include direct physical contact.
- Technical Questions: The complaint alleges that the motor speed "varies" in response to sensor signals. A key factual question for discovery will be whether the LUXE Vibrator's motor speed is truly variable based on sensor input, or if the sensor merely acts as an on/off switch, which may not satisfy the "varies" limitation.
V. Key Claim Terms for Construction
- The Term: "proximity sensor"
- Context and Importance: This term is the technological core of the asserted claims. The outcome of the infringement analysis will likely depend on whether the defendant's "touch-sensitive" mechanism is construed to be a "proximity sensor." Practitioners may focus on this term because the patent's description of capacitive sensing could be used to argue for a narrower definition than what the plaintiff's theory may require.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The plain language of the term "proximity" does not explicitly forbid contact. A plaintiff could argue that a sensor activated by touch is necessarily activated by "proximity," as touch is the state of zero proximity.
- Evidence for a Narrower Interpretation: The specification describes the sensor system as working via "capacitive coupling" that "alters (increases) loading" when a sensor "comes into close proximity to a user's body part" (’337 Patent, col. 4:28-32). A defendant might argue this language, which describes a change based on nearness rather than direct pressure, limits the claim scope to non-contact or near-contact sensors, thereby excluding a simple "touch" sensor.
VI. Other Allegations
- Willful Infringement: The complaint alleges that Defendants had knowledge of the ’337 patent and their alleged infringement at least as of March 27, 2017, the date they allegedly received a detailed claim chart from the prior patent owner (Compl. ¶¶ 17, 25). Plaintiff alleges that any subsequent infringement has been willful and seeks treble damages pursuant to 35 U.S.C. § 284 and a finding that the case is "exceptional" for the purpose of awarding attorneys' fees under 35 U.S.C. § 285 (Compl. ¶¶ 25, B, C).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this dispute will likely depend on the court’s determination of two primary issues:
- A core issue will be one of definitional scope: Will the term "proximity sensor," which the patent describes in the context of capacitive coupling that detects nearness, be construed broadly enough to encompass the "touch-sensitive" feature of the accused product?
- A key evidentiary question will be one of technical operation: Assuming the "touch-sensitive" feature is found to be a "proximity sensor," does it cause the motor speed of the accused product to vary as required by the claims, or does it function as a simple on/off switch? The complaint lacks the specific factual allegations to resolve this, making it a central point of contention for discovery and expert testimony.