Topeka Tech Inc v. Releaseway

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Topeka Tech, Inc (California)
  • Defendant: RELEASEWAY (NingBowenlindianzishangwuyouxiangongsi) (China)
  • Plaintiff’s Counsel: Nguyen & Yip, P.C.
• Case Identification: 5:24-cv-02326, C.D. Cal., 11/06/2024
• Venue Allegations: The complaint does not contain specific allegations establishing venue in the Central District of California.
• Core Dispute: Plaintiff alleges that Defendant’s handheld massaging devices, sold on Amazon.com, infringe two of its U.S. design patents.
• Technical Context: The patents relate to the ornamental designs of handheld, non-electronic tools for self-massage, a product category within the consumer wellness market.
• Key Procedural History: The complaint alleges that Plaintiff provided Defendant with "notification of its patent rights" prior to filing the lawsuit, a fact which may be used to support the claim of willful infringement.

Case Timeline

II. Technology and Patent(s)-in-Suit Analysis

U.S. Design Patent No. D863,587 - “Handheld Body Massaging Device,” issued October 15, 2019 (['587](https://ai-lab.exparte.com/patent/D863587) Patent)

The Invention Explained

• Problem Addressed: The patent does not explicitly state a problem, but the context implies a need for an ergonomic and aesthetically distinct tool for applying pressure to muscles for self-massage (D’587 Patent, Title).
• The Patented Solution: The patent protects the specific ornamental appearance of a handheld massager. The claimed design features a central body with two opposing, symmetrical "jaws," each bearing a series of rounded massaging nubs. The design shown in the figures includes a central grip section and two larger end caps, though these are depicted in broken lines and are not part of the claimed design (D’587 Patent, FIG. 1; Description). The core visual impression is created by the solid-line portions of the device.
• Technical Importance: The patent protects a particular visual appearance for a massage tool, seeking to differentiate it aesthetically in the marketplace (D’587 Patent, Claim).

Key Claims at a Glance

• The patent asserts a single claim for "The ornamental design for a handheld body massaging device, as shown and described" (D’587 Patent, Claim).
• The essential elements of the claim are the visual characteristics of the device as depicted in the solid-line portions of Figures 1-7, including the overall configuration, shape, and arrangement of the massaging nubs.

U.S. Design Patent No. D981,578 - “Handheld Body Massaging Device,” issued March 21, 2023 (['578](https://ai-lab.exparte.com/patent/D981578) Patent)

The Invention Explained

• Problem Addressed: Similar to the '587 Patent, this patent addresses the need for a visually unique handheld massaging device (D’578 Patent, Title).
• The Patented Solution: This patent claims a different ornamental design for a handheld massager. The design features a smooth, curved, bar-like handle from which two sets of massaging nubs protrude. Unlike the '587 Patent, the nubs are arranged in a more linear, comb-like fashion, and the overall profile is distinct (D’578 Patent, FIG. 1; Description). As with the '587 Patent, the claim covers the ornamental features shown in solid lines.
• Technical Importance: The patent protects a second, distinct aesthetic for a massage tool, broadening the plaintiff's portfolio of protected designs (D’578 Patent, Claim).

Key Claims at a Glance

• The patent asserts a single claim for "The ornamental design for a handheld body massaging device, as shown and described" (D’578 Patent, Claim).
• The essential elements are the visual features depicted in the solid lines of Figures 1-8, which define a different overall shape, handle design, and nub configuration from the '587 Patent.

III. The Accused Instrumentality

Product Identification

The complaint identifies handheld massaging products sold on Amazon.com under the ASINs B0C5WTLD4X, B0CWZ5R5TG, and B0CVV3ZX4P (Compl. ¶III).

Functionality and Market Context

The complaint describes the accused instrumentalities as "handheld massaging device[s]" that "incorporate features claimed in Plaintiff's Patents" (Compl. ¶III). The complaint alleges these products are sold on Amazon.com, placing them in the e-commerce market for consumer wellness products (Compl. ¶III). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint does not provide a detailed, element-by-element comparison or claim chart to support its infringement allegations. Instead, it makes a general assertion that "Defendant has been selling products on Amazon.com that infringe on Plaintiff's Patents" and that these products "incorporate features claimed in Plaintiff's Patents" (Compl. ¶III).

• Identified Points of Contention:
  • Design Similarity: The central question for both asserted patents will be whether an "ordinary observer," familiar with the prior art designs of handheld massagers, would be deceived into purchasing the accused products believing them to be the designs claimed in the '587 and '578 patents. This analysis will require a side-by-side visual comparison of the patent figures and the actual accused products.
  • Scope Questions: The court will need to determine the scope of each patented design as a whole, focusing on the visual impression created by the features shown in solid lines in the patent figures. The question will be whether the overall visual effect of the accused products is "substantially the same" as that of the patented designs.

V. Key Claim Terms for Construction

In design patent cases, there are typically no textual "claim terms" to construe in the manner of utility patents. The "claim" is understood to be the design itself, as depicted in the drawings. The analysis focuses on the scope of the design as a whole.

• The Term: "The ornamental design ... as shown and described."
• Context and Importance: The entire infringement analysis hinges on the interpretation of the visual scope of the patented designs. Practitioners may focus on which specific features of the designs are the most prominent and contribute most significantly to the overall visual impression, as these will be critical in the "ordinary observer" test.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party might argue that the overall configuration and general shape of the massager are the dominant features, suggesting that minor differences in surface detail or nub shape on an accused product do not avoid infringement.
  • Evidence for a Narrower Interpretation: A party could argue that the specific curvature, arrangement, and shape of the individual massaging nubs, as precisely depicted in the figures (e.g., D’587 Patent, FIG. 1; D’578 Patent, FIG. 1), are critical to the design's novelty. This interpretation would mean that an accused product must replicate these details more closely to be found infringing. The existence of two distinct patented designs by the same inventor for similar products may itself be used to argue for a narrower scope for each.

VI. Other Allegations

• Willful Infringement: The complaint alleges that the defendant's infringement was willful and deliberate based on the allegation that "Despite Plaintiff's notification of its patent rights, Defendant has continued to sell the infringing products" (Compl. ¶III). Plaintiff requests enhanced damages under 35 U.S.C. § 284 and a declaration that the case is "exceptional" under 35 U.S.C. § 285, which could permit recovery of attorneys' fees (Compl. ¶III, ¶IV.C-D).

VII. Analyst’s Conclusion: Key Questions for the Case

1. A primary issue will be one of visual comparison: Will an ordinary observer, after obtaining visual evidence of the products sold under the accused ASINs, find their designs to be substantially the same as the overall ornamental designs protected by the '587 and '578 patents? The outcome will depend entirely on a visual analysis that is not yet possible from the complaint alone.
2. A key evidentiary question for damages will be one of willfulness: Did the alleged "notification" provide the defendant with actual, unambiguous knowledge of infringement by specific products, and was the defendant's continued conduct sufficiently egregious to warrant enhanced damages and a finding of an exceptional case?