DCT
5:23-cv-02116
Distributing Co LLC v. Joicom Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: FKA Distributing Co., LLC, d/b/a HoMedics (Michigan)
- Defendant: Joicom Corporation d/b/a Renpho, Renpho USA, Inc., and Panatrade LLC (California)
- Plaintiff’s Counsel: Brooks Kushman P.C.
- Case Identification: 5:23-cv-02116, C.D. Cal., 10/16/2023
- Venue Allegations: Venue is alleged to be proper in the Central District of California because Defendants' headquarters and/or principal places of business are located in the district, and they are alleged to conduct substantial business, including sales of the accused products, within the district.
- Core Dispute: Plaintiff alleges that Defendant’s line of “Heated Shiatsu Massagers” infringes a patent related to technology for delivering heat through a rotating massage apparatus.
- Technical Context: The technology concerns electrically powered personal massagers that combine mechanical shiatsu-style massage with a heating function, a feature common in the consumer health and wellness product market.
- Key Procedural History: The complaint asserts U.S. Patent No. 7,722,553, which was the subject of an ex parte reexamination proceeding requested in September 2022. The U.S. Patent and Trademark Office issued a Reexamination Certificate on February 21, 2023, confirming the patentability of the primary asserted claim, Claim 1. The complaint alleges that Defendants had actual notice of the patent as of February 28, 2023, one week after the certificate was issued.
Case Timeline
| Date | Event |
|---|---|
| 2004-03-19 | U.S. Patent No. 7,722,553 Priority Date |
| 2010-05-25 | U.S. Patent No. 7,722,553 Issue Date |
| 2023-02-21 | U.S. Patent No. 7,722,553 Reexamination Certificate Issued |
| 2023-02-28 | Date of Alleged Actual Notice to Defendants |
| 2023-10-16 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,722,553 - "Massage Apparatus"
- Patent Identification: U.S. Patent No. 7,722,553, "Massage Apparatus", issued May 25, 2010.
The Invention Explained
- Problem Addressed: The patent identifies a need for a massager that can provide both heat and mechanical massage simultaneously to targeted areas of a user's body, such as the feet, with improved control over these features (’553 Patent, col. 1:28-34).
- The Patented Solution: The invention describes a massage apparatus with a rotating component (a "substrate") that incorporates a heating element. To power the heater while it is in motion, the patent teaches a system of stationary "conductive contacts" (e.g., an annular plate) and rotating "conductive brushes" that remain in electrical communication, thereby allowing for the continuous transfer of electricity to the heater on the moving part (’553 Patent, col. 5:50-65).
- Technical Importance: This design provides a technical solution for integrating an active heating element directly into a moving, rotating massage node, distinguishing it from devices that may have separate, stationary heaters or rely only on passive heat from friction (’553 Patent, col. 1:28-34).
Key Claims at a Glance
- The complaint asserts independent claim 1 of the ’553 Patent (Compl. ¶18).
- Claim 1 requires, in essence:
- A housing.
- A substrate mounted to the housing that can rotate.
- A heater mounted on that rotating substrate.
- A system of paired conductive contacts and conductive brushes, with one part mounted to the housing and the other to the substrate.
- This system must maintain engagement during rotation to conduct electricity to the heater.
- The complaint reserves the right to assert infringement of other claims of the ’553 Patent (Compl. ¶26).
III. The Accused Instrumentality
Product Identification
- The accused products are Defendants' "Heated Shiatsu Massagers," including various back, neck, shoulder, and chair massagers sold under the "Renpho" brand (Compl. ¶¶16, 17). The complaint identifies products by Amazon Standard Identification Numbers (ASINs), including B08N6G5V4H and B08FCKFXB7 (Compl. ¶15).
Functionality and Market Context
- The complaint alleges these products are marketed as providing a "Shiatsu Massage" with "deep tissue kneading and heat" (Compl. ¶22). Functionally, they are alleged to contain rotating massage nodes that also provide a "Heat Function," with marketing materials citing temperatures such as "113°F/45°C Infrared heating temperature" (Compl. ¶20, ¶21). The complaint positions the parties as direct competitors in the personal wellness product space (Compl. ¶15).
IV. Analysis of Infringement Allegations
’553 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a housing | The massagers are alleged to include a housing. | ¶21 | col. 4:21-25 |
| a substrate mounted to the housing for rotation relative thereto | The massagers are alleged to include a "rotating substrate." A photograph shows a rotating massage node component. | ¶21, p. 6 | col. 5:1-4 |
| a heater mounted to the substrate for providing a heat therapy effect from the substrate | The complaint alleges a heater is mounted to the rotating substrate and provides a photograph of what it identifies as "infrared heaters" on a circuit board within the rotating component. | ¶21, ¶22, p. 6 | col. 5:50-63 |
| a pair of conductive contacts each mounted to one of the substrate and the housing | The complaint alleges the presence of "annular contacts," which appear in a photograph to be part of the stationary housing. | ¶24, p. 7 | col. 5:50-54 |
| and a pair of conductive brushes each mounted to the other of the substrate and the housing in engagement with one of the contacts for maintaining engagement during rotation of the substrate relative to the housing | The complaint alleges "conductive brushes are mounted to the substrate" and provides a composite image illustrating that the brushes on the rotating part engage the stationary contacts. | ¶23, ¶24, p. 7 | col. 5:63-65 |
| wherein at least two of the contacts and brushes are in electrical communication with the heater and rotate relative to the housing with rotation of the substrate and the heater for conducting electricity to the heater | The complaint alleges the brushes and contacts "maintain contact... through continuous rotation to conduct electricity to the heater." A photograph shows wires connecting the brushes to the heater's circuit board. | ¶23, ¶25, p. 6 | col. 5:63-68 |
- Identified Points of Contention:
- Scope Questions: A central issue may be whether the components of the accused Renpho products fall within the scope of the patent's claim terms. For example, a court will need to determine if the term "substrate" as used in the patent, which describes a "base 72" for a massage member, can be construed to read on the specific rotating node structure of the accused massagers (’553 Patent, col. 5:23).
- Technical Questions: The complaint's allegations rely on photographs of a disassembled product. An evidentiary question will be whether discovery confirms that this specific teardown is representative of all accused products and that the components function as claimed. For instance, what evidence demonstrates that the alleged "infrared heaters" (Compl. ¶22) provide a "heat therapy effect" as required by the claim, or that the electrical connection between the alleged "brushes" and "contacts" is maintained throughout the full range of rotation? A photograph of a disassembled massage node shows infrared heaters on a circuit board, which the complaint alleges is part of the rotating substrate (Compl. p. 6). A composite image illustrates how conductive brushes on the rotating component allegedly engage with stationary conductive contacts on the housing to supply power to the heater (Compl. p. 7).
V. Key Claim Terms for Construction
The Term: "substrate"
- Context and Importance: This term defines the core rotating structure upon which the heater must be mounted. Its construction will determine the physical scope of the invention and what part of the accused device must be shown to carry the heater.
- Intrinsic Evidence for a Broader Interpretation: The patent does not provide an explicit definition, referring to the element as "a substrate mounted to the housing for rotation relative thereto" (col. 7:4-5). This general language could support an interpretation covering any rotating base structure that supports a massage element.
- Intrinsic Evidence for a Narrower Interpretation: The specification consistently describes the substrate in the context of a specific embodiment, the "outer massage member base 72" (’553 Patent, col. 5:23, 5:39). A party could argue that the term should be limited to the concentric, two-part massage center structure detailed in the figures and description.
The Term: "heater"
- Context and Importance: The complaint identifies the accused infringing component as "infrared heaters" (Compl. ¶22). The construction of "heater" and its associated functional language, "providing a heat therapy effect," will be critical to the infringement analysis.
- Intrinsic Evidence for a Broader Interpretation: The claim uses the generic term "heater" without specifying a type. The specification discloses "infrared lamps" as part of a "heating assembly," but this is presented as a preferred embodiment, not necessarily a limiting one (’553 Patent, col. 5:50-60).
- Intrinsic Evidence for a Narrower Interpretation: A party may argue that the phrase "providing a heat therapy effect" limits the scope of "heater" to devices that achieve a specific therapeutic outcome. The specification describes this effect as heat that "penetrate[s] deep underneath the surface of the skin, causing the pores of the skin to be opened and promoting metabolism" (’553 Patent, col. 5:54-58), which could be used to argue for a narrower functional definition.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendants induce infringement by providing instructions for operating the "Heat Shiatsu Massagers," which allegedly direct users to perform the infringing use (Compl. ¶29).
- Willful Infringement: The willfulness allegation is based on alleged actual notice of the ’553 Patent provided to Defendants "at least as early as February 28, 2023" (Compl. ¶27). The complaint asserts that Defendants' continued infringement after this date, particularly given the parties' status as competitors, constitutes willful, wanton, and deliberate conduct (Compl. ¶28).
VII. Analyst’s Conclusion: Key Questions for the Case
- A primary issue will be one of claim construction: can the general term "substrate", as described in the patent, be construed to cover the specific rotating massage node structures in Defendants' various massager models? Similarly, does the accused products' use of "infrared heaters" satisfy the claim requirement of a "heater" that provides a "heat therapy effect", as that function is described in the patent specification?
- The case will also present a key evidentiary question of infringement: beyond the initial teardown photographs in the complaint, can Plaintiff demonstrate through discovery and expert analysis that every accused product model contains the complete electrical system recited in Claim 1—specifically, a pair of "conductive contacts" and a corresponding pair of "conductive brushes" that maintain continuous electrical connection to a heater on the rotating substrate during operation?
- Finally, a central question for damages will be willfulness: given the complaint’s allegation that Defendants received actual notice of the patent just one week after its asserted claim was confirmed as patentable in an ex parte reexamination, the court will likely examine whether Defendants’ post-notice conduct was objectively reckless, which could expose them to enhanced damages.