DCT

8:17-cv-01638

World Smoke Shop Inc v. Mya Saray LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 8:17-cv-01638, C.D. Cal., 09/20/2017
  • Venue Allegations: Venue is asserted based on Defendant's alleged substantial and continuous business activities in the district, including product sales and having previously filed a lawsuit in the same district.
  • Core Dispute: Plaintiffs, manufacturers and distributors of hookah products, seek a declaratory judgment that their products do not infringe four of Defendant's patents related to hookah stem, base, and hose designs.
  • Technical Context: The technology concerns hookahs (water pipes), with the patents-in-suit directed to specific improvements in stem-to-base sealing, modular stem construction, multi-user functionality, and smoke cooling.
  • Key Procedural History: This declaratory judgment action was filed by the Plaintiffs following three prior patent and trademark infringement lawsuits filed against them by the Defendant in Virginia. The complaint states that the prior actions were either dismissed for lack of service or for lack of personal jurisdiction, creating what Plaintiffs allege is a continuing and substantial controversy warranting declaratory relief.

Case Timeline

Date Event
2003-01-31 '123 Patent Priority Date
2005-08-11 '978 Patent Priority Date
2005-08-11 '229 Patent Priority Date
2010-10-05 '123 Patent Issue Date
2010-11-11 '456 Patent Priority Date
2011-08-23 '978 Patent Issue Date
2013-11-05 '229 Patent Issue Date
2015-08-18 '456 Patent Issue Date
2016-01-20 Defendant Mya Saray files first EDVA Action
2016-05-07 Defendant Mya Saray files second EDVA Action
2017-02-17 Defendant Mya Saray files third VA Action
2017-09-20 Complaint for Declaratory Judgment Filing Date

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

U.S. Patent No. 8,001,978 - Smoking Apparatus, issued August 23, 2011

The Invention Explained

  • Problem Addressed: The patent describes the difficulty of achieving a consistent, air-tight seal between a metal hookah stem and a blown-glass base. Traditional designs, where the stem is inserted into the neck of the glass base, can be unreliable due to manufacturing variations in the glass neck's inner dimensions, leading to smoke leakage (’978 Patent, col. 1:33-45).
  • The Patented Solution: The invention reconfigures the connection by placing the stem base over the exterior of the bottle's neck. A flexible o-ring is fitted around the outer surface of the bottle neck, and the stem base, which has a wider opening (an "interior plenum"), slides over the neck, compressing the o-ring to create a secure seal between the stem's inner wall and the neck's outer wall (’978 Patent, col. 2:20-30; Fig. 1).
  • Technical Importance: This "over-the-neck" coupling method accommodates greater manufacturing tolerances in the glass bottles and provides a more reliable and consistent air-tight seal compared to conventional "in-the-neck" designs (’978 Patent, col. 2:50-54).

Key Claims at a Glance

  • The complaint seeks a declaratory judgment of non-infringement for all valid claims, with Independent Claim 1 being foundational to the patent (’978 Patent, col. 3:17-4:5).
  • Essential elements of Independent Claim 1 include:
    • A hookah bottle with an upper neck having a "substantially flush exterior, peripheral side surface."
    • A flexible seal disposed around this exterior surface.
    • A hookah stem with a base defining an "interior plenum."
    • The plenum has an interior sidewall dimensioned to fit over the neck and compress the flexible seal.
    • The stem defines an "elevated wet smoke cavern" above the bottle opening for accumulating smoke.
    • A "wet smoke aperture" in the stem's sidewall adapted to accept a hose fitting.
  • The complaint does not specify any dependent claims.

U.S. Patent No. 7,806,123 - Modular Smoking Apparatus, issued October 5, 2010

The Invention Explained

  • Problem Addressed: The patent notes that conventional one-piece hookah stems are difficult to clean thoroughly. Furthermore, if a single part of the stem, such as the down tube that sits in the water, becomes corroded or occluded, the entire stem assembly must be replaced (’123 Patent, col. 1:36-47).
  • The Patented Solution: The invention discloses a modular hookah stem constructed from multiple, separate components that are joined by threaded connections. This allows the user to easily disassemble the stem for cleaning, maintenance, or replacement of individual parts like the down tube, intermediate sections, or the burner connection (’123 Patent, Abstract; col. 4:26-37).
  • Technical Importance: This modular, threaded construction improves the serviceability, longevity, and potential for customization of the hookah stem assembly when compared to unitary or interference-fit designs (’123 Patent, col. 1:5-9).

Key Claims at a Glance

  • The complaint seeks a declaratory judgment of non-infringement for all valid claims, with Independent Claim 1 defining the core modular concept (’123 Patent, col. 7:16-32).
  • Essential elements of Independent Claim 1 include:
    • A base with an "internally threaded upper end."
    • A stem comprising an "intermediate tube" and a "plenum."
    • The plenum has an upper end that "removably fasten[s]" to the intermediate tube and an "externally threaded lower end" that mates with the base's internal threads.
    • The stem terminates in a "selectively releasable peripheral down tube" that fastens to the plenum.
  • The complaint does not specify any dependent claims.

Multi-Patent Capsule: U.S. Patent No. 8,573,229 - Multiple Port, Pressure-Responsive Adjustable Hookah, issued November 5, 2013

  • Technology Synopsis: This patent addresses challenges in multi-user hookahs. It describes using one-way flow fittings on the hose ports, which automatically seal ports not in use, eliminating the need for smokers to manually block their hose tips to maintain a proper draft for others. The invention also includes a pressure-release exhaust valve for purging stale smoke from the base (’229 Patent, Abstract; col. 1:32-48).
  • Asserted Claims: The complaint seeks a declaration of non-infringement of all valid claims, including Independent Claim 1 (’229 Patent, col. 5:10-6:23).
  • Accused Features: The complaint does not provide sufficient detail for analysis of which features of Plaintiffs' products are accused of infringing this patent (Compl. ¶¶54-58).

Multi-Patent Capsule: U.S. Patent No. 9,107,456 - Hookah Hose, Hookah System, issued August 18, 2015

  • Technology Synopsis: This patent focuses on cooling hookah smoke beyond the traditional water filtration. It discloses a hookah hose with an integrated, segmentable reservoir designed to hold a removable coolant cartridge (e.g., a frozen gel pack). This provides a secondary cooling stage within the hose itself, chilling the smoke just prior to inhalation (’456 Patent, Abstract; col. 2:35-51).
  • Asserted Claims: The complaint seeks a declaration of non-infringement of all valid claims, including Independent Claim 1 (’456 Patent, col. 7:5-8:24).
  • Accused Features: The complaint does not provide sufficient detail for analysis of which features of Plaintiffs' products are accused of infringing this patent (Compl. ¶¶59-63).

III. The Accused Instrumentality

  • Product Identification: Plaintiffs' "hookah and hookah related products," including those sold under the "AMY DELUXE" and "AMY GOLD TOBACCO" brands (Compl. ¶¶1, 9-10).
  • Functionality and Market Context: The complaint does not provide any technical description of the design, components, or operation of the Plaintiffs' hookah products. The pleading focuses on the procedural history of the dispute and makes arguments regarding the invalidity of the Defendant's trade dress, not its patents. This drawing from the complaint's body depicts the Defendant's hookah base design, which Plaintiffs allege is functional (Compl. ¶36). Exhibits C and D to the complaint contain product pages and reviews for Defendant's "Mya QT" hookah, which Plaintiffs cite to support their trade dress invalidity arguments (Compl. ¶¶38-39, Ex. C-D). However, no equivalent information or visual evidence for the Plaintiffs' own products is provided.

IV. Analysis of Infringement Allegations

The complaint seeks a declaratory judgment of non-infringement but does not provide a factual basis or element-by-element analysis to support this request. It makes only conclusory statements that Plaintiffs have not infringed the patents-in-suit (Compl. ¶¶46, 51, 56, 61). As a result, a claim chart summary cannot be constructed from the complaint.

  • Identified Points of Contention:
    • '978 Patent: The primary question for infringement will be factual: do the Plaintiffs' hookahs employ a stem that fits over the exterior of the bottle neck and compresses an external seal, as recited in Claim 1? Or do they use a traditional design where the stem is inserted into the bottle neck? The complaint provides no information to resolve this.
    • '123 Patent: The infringement analysis will likely turn on the method of connection between the components of Plaintiffs' hookah stems. A key factual question is whether the stem plenum, intermediate tube, and base connect via the specific "threaded" means required by Claim 1, or if they use other methods such as interference fits, welding, or different fasteners.

V. Key Claim Terms for Construction

  • For the '978 Patent:

    • The Term: "substantially flush exterior, peripheral side surface"
    • Context and Importance: This term describes the part of the hookah bottle neck where the external seal is placed. The viability of the patent's "over-the-neck" sealing concept depends on this surface being suitable for forming a seal. Practitioners may focus on this term because its interpretation will determine whether bottles with any surface ornamentation or minor irregularities fall within the scope of the claims.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: A party could argue that "substantially flush" accommodates minor variations, as the patent's stated purpose is to overcome inconsistencies in blown glass manufacturing. The term does not require perfect smoothness, only a surface upon which the claimed seal can function (’978 Patent, col. 2:50-54).
      • Evidence for a Narrower Interpretation: The patent specification and Figure 1 depict a uniformly cylindrical and smooth neck. A party might argue that "substantially flush" requires the absence of any intentional features like ridges or bevels, limiting the claim to simple, unadorned neck designs (’978 Patent, Fig. 1; col. 2:7-9).

  • For the '123 Patent:

    • The Term: "internally threaded upper end" (of the base) and "externally threaded lower end" (of the plenum)
    • Context and Importance: These terms define the core inventive concept of a modular, screw-together stem and base. The infringement analysis will depend entirely on whether the Plaintiffs' products use this specific connection mechanism.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The term "threaded" is used repeatedly, suggesting any form of helical engagement for mechanical fastening is covered. The patent aims to provide a "removably" and "releasably" fastened system, and any screw-type connection achieves this goal (’123 Patent, col. 7:25-32).
      • Evidence for a Narrower Interpretation: The drawings depict conventional, multi-turn screw threads (’123 Patent, Fig. 7). A party could argue the term should be limited to such threads and not read on other rotational fasteners like bayonet mounts or single-turn locking mechanisms.

VI. Other Allegations

The complaint, being a request for a declaratory judgment of non-infringement, does not contain allegations of indirect or willful infringement against the Plaintiffs.

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

  • A central issue will be one of evidentiary proof: As the declaratory judgment plaintiffs, World Smoke Shop and Dabes bear the burden of proving non-infringement. Given the complaint's lack of any technical details about their own products, a primary question is what evidence they will produce to demonstrate how their hookahs are actually constructed and whether that construction avoids the claims of the four patents-in-suit.
  • A key question will be one of technological divergence: The case will turn on a direct comparison between the patented technologies and the plaintiffs' products. Do the plaintiffs' hookah stems attach over the bottle neck ('978 patent)? Are their stems threaded and modular ('123 patent)? Do they incorporate automatic one-way valves ('229 patent) or in-hose coolant cartridges ('456 patent)? The resolution of these factual questions will be dispositive.
  • A related legal question will be one of claim construction: Should the dispute proceed, the scope of infringement will depend on the court's interpretation of key terms. The analysis will likely focus on whether the term "substantially flush" ('978 patent) can encompass bottle necks with any surface texturing or if "threaded" ('123 patent) is limited to conventional screw threads, potentially creating avenues for non-infringement arguments.