DCT
8:19-cv-01258
Theragun LLC v. Hyper Ice Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Theragun, LLC (Delaware)
- Defendant: Hyper Ice, Inc. (California)
- Plaintiff’s Counsel: Jeffer Mangels Butler & Mitchell LLP
- Case Identification: 8:19-cv-01258, C.D. Cal., 06/21/2019
- Venue Allegations: Venue is asserted based on the Defendant's residence within the Central District of California.
- Core Dispute: Plaintiff alleges that the ornamental design of an attachment head for Defendant’s percussive massage devices infringes its design patent.
- Technical Context: The case concerns the design of product accessories in the competitive and growing market for personal percussive massage therapy devices.
- Key Procedural History: The complaint notes that on June 3, 2019, Plaintiff sent a letter to Defendant identifying the patent-in-suit and alleging infringement. This pre-suit notice may form the basis for the willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 2017-07-11 | U.S. D849,260 S Patent Priority Date |
| 2019-05-21 | U.S. D849,260 S Patent Issued |
| 2019-06-01 | Plaintiff alleges it first saw the accused product |
| 2019-06-03 | Plaintiff sent Defendant a notice of infringement letter |
| 2019-06-21 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D849260 S - "Massage Element"
- Patent Identification: U.S. Design Patent No. D849260 S, "Massage Element", issued May 21, 2019.
The Invention Explained
- Problem Addressed: The patent does not articulate a functional problem but instead provides a new, ornamental design for a massage device attachment. The complaint characterizes the result as a "distinct patented design" intended to be recognizable in the marketplace (Compl. ¶8).
- The Patented Solution: The patent claims the specific ornamental appearance of a massage element, not its function. The design consists of a two-part aesthetic: a top, circular, dome-shaped head with a "flattened" point, which is nested atop a bottom piece (’260 Patent, FIG. 1, 6). The bottom piece decreases in radius as it approaches the dome and features a rounded ridge that extends beyond the dome's circumference, creating what the complaint describes as a "crevice or slot" between the two sections (Compl. ¶8). The broken lines in the patent figures indicate that the mechanism for attaching the element to a device is not part of the claimed design ('260 Patent, Description).
- Technical Importance: The complaint alleges the patented design is "innovative" and has received industry recognition, suggesting its aesthetic distinction is a key element of Plaintiff's product identity and market strategy (Compl. ¶¶9-10).
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a massage element, as shown and described" ('260 Patent, Claim).
- The essential elements of the claim are the visual characteristics of the design as a whole, as depicted in the patent's nine figures. Key features identified in the complaint include:
- A circular, dome-shaped head with a flattened point.
- A bottom piece with a decreasing radius that nests under the dome-shaped head.
- A circular, rounded ridge on the bottom piece.
- A resulting "crevice or slot" between the head and the bottom piece.
- The complaint does not assert dependent claims, as there are none in a design patent.
III. The Accused Instrumentality
Product Identification
- The accused product is a head attachment for Defendant's percussive massage devices, referred to in the complaint as the "Infringing Attachment" (Compl. ¶7). A photograph shows the attachment included in the packaging for Defendant's "Hypervolt" product (Compl. p. 4).
Functionality and Market Context
- The attachment is used with percussive massage devices for therapeutic purposes (Compl. ¶10). Plaintiff alleges that the "Infringing Attachment has become integral to Defendant's product" and is now prominently featured in its newest packaging (Compl. ¶11). The complaint includes a photograph of Defendant's product packaging, which displays the accused attachment alongside the main device and other accessories (Compl. p. 4). The complaint further alleges that Defendant sells its products through the same marketing channels as Plaintiff, including "Amazon, distributors, retailers, health clubs and gyms, and studios" (Compl. ¶5).
IV. Analysis of Infringement Allegations
The complaint’s infringement theory rests on the "ordinary observer" test, alleging that the accused attachment is "substantially the same" as the patented design and that the resemblance is close enough to deceive an observer into purchasing the accused product believing it to be the Plaintiff's (Compl. ¶16). To support this, the complaint provides a side-by-side visual comparison of the patent's FIG. 6 and a photograph of the accused attachment (Compl. p. 6).
D849,260 S Infringement Allegations
| Claim Element (Described features of the claimed design) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A circular dome-shaped head that comes to a "flattened" point. | The complaint alleges Defendant’s attachment is "nearly identical" and "substantially the same" as the patented design, which includes this feature. The provided visual comparison supports this allegation. | ¶¶8, 16, p. 6 | FIG. 1, 6 |
| A bottom piece that decreases in radius as it approaches the dome-shaped head and nests under it. | The accused attachment, as shown in the complaint's photographic evidence, incorporates a bottom piece with a similar profile and relationship to the top dome. | ¶¶8, 16, p. 6 | FIG. 2, 6 |
| A circular rounded ridge on the bottom piece extending beyond the circumference of the dome-shaped head. | The side-by-side comparison shows the accused attachment possesses a visually similar ridge feature below the dome-shaped head. | ¶¶8, 16, p. 6 | FIG. 2, 6 |
| A "crevice or slot" formed between the dome-shaped head and the bottom piece. | The configuration of the top and bottom pieces of the accused attachment, as depicted, creates a distinct horizontal break or "crevice" that mirrors the patented design. | ¶¶8, 16, p. 6 | FIG. 6 |
- Identified Points of Contention:
- Scope Questions: The primary dispute will concern the overall visual impression of the two designs. The question for the court is whether, in the eye of an ordinary observer, the accused design is substantially the same as the claimed design. This analysis will consider the design as a whole, not just a comparison of discrete features.
- Technical Questions: While the complaint alleges the designs are "nearly identical" (Compl. ¶5), the litigation will focus on whether any minor differences in proportion, curvature, or the precise shape of the "crevice" are sufficient to differentiate the designs in the mind of an ordinary observer, giving due attention to the prior art. The complaint does not provide prior art against which to compare the designs.
V. Key Claim Terms for Construction
In design patent litigation, claim construction involves describing the claimed design in words to properly guide the comparison with the accused product. The central "term" for construction is the overall visual appearance of the design itself.
- The Term: The ornamental design for a "massage element" as shown in solid lines in Figures 1-9.
- Context and Importance: The scope of the claimed design is the central issue. The construction will determine which aspects of the design are considered part of its overall ornamental appearance and which are merely functional or disclaimed. Practitioners may focus on this issue because the perceived scope will dictate the outcome of the "ordinary observer" test.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that the core aesthetic is the combination of a simple upper dome with a distinct, flared lower base separated by a crevice. Under this view, minor variations in the exact curvature or proportions would not alter the overall visual impression conveyed by this general configuration ('260 Patent, FIG. 1, 6).
- Evidence for a Narrower Interpretation: A party could argue the claim is limited to the design's specific details, such as the precise ratio of the dome's height to the base's height, the exact curvature of the base's flare, and the specific "flattened" nature of the point on the dome as described in the complaint (Compl. ¶8; '260 Patent, FIG. 6, 9). The patent’s use of broken lines to disclaim the attachment mechanism explicitly limits the claimed design to the ornamental head itself ('260 Patent, Description, FIG. 6).
VI. Other Allegations
- Indirect Infringement: The complaint's prayer for relief seeks a finding of contributory and induced infringement (Compl. p. 8, ¶E). However, the complaint does not provide sufficient detail for analysis of the specific facts supporting the knowledge and intent elements required for these claims. The factual allegations focus on direct infringement by the Defendant (Compl. ¶17).
- Willful Infringement: The complaint alleges willful infringement based on Defendant's continued manufacturing, sale, and use of the accused attachment after receiving actual notice of its alleged infringement via a letter from Plaintiff dated June 3, 2019 (Compl. ¶¶11, 13, 22).
VII. Analyst’s Conclusion: Key Questions for the Case
A central issue will be one of visual identity: applying the "ordinary observer" test, is the overall ornamental design of the accused Hyperice attachment "substantially the same" as the design claimed in the '260 Patent? The outcome will depend on whether the trier of fact perceives the designs as confusingly similar when viewed as a whole.
A key related question will be the significance of design features: in conducting the visual comparison, how much weight will be given to the overall two-tiered configuration versus the more granular details, such as the exact proportions, curvatures, and the profile of the "crevice" that separates the two sections?
Finally, an evidentiary question will be one of intent: does the evidence surrounding the June 3, 2019 notice letter and Defendant's subsequent conduct support a finding of willful infringement, potentially exposing Defendant to enhanced damages?