DCT
5:20-cv-00859
Richard Shane v. Newell Brands Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Richard Shane (California)
- Defendant: Newell Brands, Inc. (Delaware); Graco Children's Products, Inc. (Delaware)
- Plaintiff’s Counsel: Insigne LLP
- Case Identification: 5:20-cv-00859, C.D. Cal., 04/21/2020
- Venue Allegations: Venue is alleged to be proper based on Defendants maintaining regular and established places of business within the Central District of California and committing the alleged acts of infringement in the District.
- Core Dispute: Plaintiff alleges that Defendants’ "EveryWay Soother" infant seat infringes patents related to an automated device and method for soothing an infant through adjustable positioning and vertical motion.
- Technical Context: The technology concerns automated infant care products designed to soothe a distressed child by mechanically replicating the bouncing motion of a caregiver.
- Key Procedural History: During prosecution of the '285 patent, the applicant successfully appealed examiner rejections to the Patent Trial and Appeal Board (PTAB), which found the claimed invention non-obvious over the cited prior art. The complaint also alleges that Plaintiff offered Defendants a license three months prior to filing suit, which Defendants declined.
Case Timeline
| Date | Event |
|---|---|
| 2006-06-05 | Priority Date for '285 and '752 Patents |
| 2014-07-15 | U.S. Patent No. 8,776,285 Issues |
| 2018-02-06 | U.S. Patent No. 9,883,752 Issues |
| 2020-01-21 | Plaintiff allegedly offers license to Defendants |
| 2020-04-21 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,776,285 - "Infant Soothing Device Having an Actuator," issued July 15, 2014
The Invention Explained
- Problem Addressed: The patent describes the physical strain and exhaustion caregivers experience when holding and bouncing a distressed infant for long periods, a motion often required to soothe the child (Compl. ¶11; ’285 Patent, col. 1:26-34). It notes that existing infant devices were often static or had limited, non-adjustable incline positions, failing to provide the beneficial effects of motion that many infants require (’285 Patent, col. 1:35-56).
- The Patented Solution: The invention is a device that automates the soothing process. It comprises a frame supporting an infant resting member that can be adjusted to various orientations, combined with an actuator that automatically moves the infant in a vertical motion (’285 Patent, Abstract). The design intends to unburden the caregiver while providing a customizable soothing experience through adjustable positioning and motion (’285 Patent, col. 2:15-24).
- Technical Importance: The technology sought to combine two key features—adjustable orientation and automated vertical motion—that were allegedly not present together in prior art devices, offering a more versatile solution for soothing infants with different comfort needs (Compl. ¶15; ’285 Patent, col. 2:61-65).
Key Claims at a Glance
- The complaint asserts independent claim 1.
- Essential elements of independent claim 1 include:
- A device for soothing an infant, comprising: a frame;
- an infant resting member coupled to the frame that retains an infant in an adjustable position including a position in which the infant's feet are substantially below its head; and
- a mechanism that moves the infant resting member in a vertical motion to soothe the infant, the mechanism further comprises an actuator that automatically moves the frame and the infant resting member.
- The complaint also asserts dependent claims 2, 3, 6, 7, and 8 and reserves the right to assert other claims (Compl. ¶22, 34).
U.S. Patent No. 9,883,752 - "Infant Soothing Device and Method for Soothing an Infant," issued February 6, 2018
The Invention Explained
- Problem Addressed: The '752 Patent addresses the same technical problem as its parent '285 Patent: the limitations and drawbacks of conventional infant soothing devices and the physical burden placed on caregivers (’752 Patent, col. 1:20-47).
- The Patented Solution: This patent claims the method of using a mechanical soothing device. The method involves the steps of providing a device with a frame and actuator, securing an infant in an adjustable position (where the feet are below the head), and using the actuator to impart a "substantially vertical motion" that can be varied in amplitude (’752 Patent, Abstract; col. 8:56-col. 9:6). The specification describes how this method allows for a customized soothing experience based on the infant's needs (’752 Patent, col. 2:20-28).
- Technical Importance: By claiming the method of use, the patent aims to cover the act of soothing an infant with such a device, extending protection beyond the apparatus itself to its application and operation (’752 Patent, col. 1:15-18).
Key Claims at a Glance
- The complaint asserts independent claim 2 (Compl. ¶30). While the complaint also describes the steps of independent claim 1, it only explicitly lists claims 2, 3, and 4 as being infringed.
- Essential elements of independent claim 2 include:
- A method for soothing an infant using a mechanical motion, comprising:
- providing a frame, an infant resting member coupled to the frame and an actuator that automatically moves the frame and the infant resting member;
- securing an infant in an adjustable position including a position in which the infant's feet are substantially below its head;
- imparting, using the actuator, a substantially vertical motion to the infant resting member and the infant to soothe the infant by moving the frame and the infant resting member; and
- moving the infant resting member and the infant in one or more different motion amplitudes.
- The complaint also asserts dependent claims 3 and 4 (Compl. ¶30).
III. The Accused Instrumentality
Product Identification
- The accused product is the "EveryWay Soother" manufactured and sold by Defendant Graco (Compl. ¶18).
Functionality and Market Context
- The complaint alleges the EveryWay Soother is a "multi-direction seat" marketed as offering "8 ways to swing" to soothe an infant (Compl. ¶18, fn. 1). Its accused technical features include a frame, an infant resting member adjustable to three different reclining positions, and the ability to produce a vertical "bounce" motion (Compl. ¶22). The motion is powered by an electric motor with an AC adapter and a gearbox, and the user can select different motion types via a keypad (Compl. ¶27-29). The orientation of the seat is adjusted by pressing buttons on its sides (Compl. ¶25). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
'285 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a frame; | The Accused Product has a frame. | ¶22 | col. 3:21-22 |
| an infant resting member coupled to the frame that retains an infant in an adjustable position including a position in which the infant's feet are substantially below its head; | The Accused Product has an infant resting member that is adjustable to three incline positions, including a position where the infant's feet are "considerably below the infant's head." | ¶22, 24 | col. 5:37-39 |
| a mechanism that moves the infant resting member in a vertical motion to soothe the infant, the mechanism further comprises an actuator that automatically moves the frame and the infant resting member. | The Accused Product has a mechanism with an electric motor (actuator) that moves the infant in a vertical "bounce" motion to soothe the infant. The motion is automatic and selectable via a keypad. | ¶22, 27, 28 | col. 5:40-45 |
'752 Patent Infringement Allegations
| Claim Element (from Independent Claim 2) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| providing a frame, an infant resting member coupled to the frame and an actuator that automatically moves the frame and the infant resting member; | The Accused Product provides a frame, an adjustable resting member, and an actuator that automatically moves them. | ¶30 | col. 8:61-63 |
| securing an infant in an adjustable position including a position in which the infant's feet are substantially below its head; | The Accused Product allows for securing an infant in one of three incline positions, with at least one position placing the infant's feet substantially below the head. | ¶30 | col. 8:64-66 |
| imparting, using the actuator, a substantially vertical motion to the infant resting member and the infant to soothe the infant by moving the frame and the infant resting member; | The Accused Product allegedly imparts a vertical "bounce" motion using its actuator to soothe the infant. | ¶30 | col. 8:67-col. 9:2 |
| moving the infant resting member and the infant in one or more different motion amplitudes. | The Accused Product provides eight different selectable movements, which allegedly corresponds to moving the infant in different motion amplitudes. | ¶27, 30 | col. 9:4-6 |
- Identified Points of Contention:
- Scope Questions: The complaint alleges the accused product has "8 ways to swing" (Compl. ¶18, fn. 1). A potential dispute is whether a "swing" or "bounce" motion, which may have arc-like or non-vertical components, meets the "vertical motion" limitation of the claims.
- Technical Questions: The complaint relies on the PTAB's construction of "substantially below its head" as "considerably below" ('285 Patent, Compl. ¶23). A central factual question will be whether the actual angles of inclination offered by the accused product meet this standard. Evidence of the product's precise operational characteristics will be critical.
V. Key Claim Terms for Construction
The Term: "substantially below its head"
- Context and Importance: This term is a primary point of patentability and a likely focus of the infringement dispute. Its definition determines the range of incline positions that fall within the scope of the claims. Practitioners may focus on this term because the complaint highlights that the PTAB construed it as "considerably below" and distinguished it from the prior art, suggesting its interpretation was critical to the patent's allowance (Compl. ¶23).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests a wide range of adjustability, stating the device holds an infant in an orientation that "can be adjusted from horizontal to vertical" based on the infant's "comfort requirements," not a specific angle (’285 Patent, col. 2:62-65).
- Evidence for a Narrower Interpretation: The background discusses the utility of such devices for infants with "gastroesophageal reflux," which may imply a more pronounced, medically significant upright angle is intended (’285 Patent, col. 1:52-54). The patent figures also depict a distinctly upright orientation (’285 Patent, Fig. 2).
The Term: "vertical motion"
- Context and Importance: This term is central to the mechanism of action. Given the accused product is marketed with "8 ways to swing," the definition of "vertical motion" will be critical to determining if these motions infringe.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the resulting movement as a "roughly sinusoidal vertical motion," acknowledging it may not be perfectly linear (’285 Patent, col. 4:38-39). It also aims to replicate a caregiver "bouncing" a child, an action that is not perfectly vertical in practice (’285 Patent, col. 3:1-2).
- Evidence for a Narrower Interpretation: The claims consistently use the term "vertical motion" without modifiers like "swinging" or "rocking." The description of the problem focuses on automating an up-and-down bouncing motion, suggesting that a purely or predominantly vertical vector was the intended scope (’285 Patent, col. 1:28-30).
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendants actively induce infringement of the '752 patent's method claims by providing customers with instructions on how to operate the Accused Product in a manner that performs the claimed steps (Compl. ¶35).
- Willful Infringement: Willfulness is alleged based on pre-suit knowledge. The complaint asserts that Defendants had actual notice of the patents as of January 21, 2020, via a license offer, but continued their alleged infringement after declining the offer (Compl. ¶19, 36).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "substantially below its head," which the complaint notes was construed by the PTAB as "considerably below," be proven to read on the specific, measurable incline angles of the accused EveryWay Soother?
- A key evidentiary question will be one of functional characterization: do the accused product's various "swing" and "bounce" motions constitute the "vertical motion" required by the claims, or do they possess sufficient non-vertical operational characteristics to place them outside the scope of the patented invention?
- A third question relates to willfulness: assuming infringement is found, did Defendants' alleged continuation of sales after receiving a specific notice and license offer in January 2020 rise to the level of egregious misconduct required for enhanced damages under 35 U.S.C. § 284?