Addaday LLC v. Hyper Ice Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Addaday LLC (California)
  • Defendant: Hyper Ice, Inc. (California)
  • Plaintiff’s Counsel: HANKIN PATENT LAW, APC
• Case Identification: 8:19-cv-01760, C.D. Cal., 09/16/2019
• Venue Allegations: Plaintiff Addaday alleges that venue is proper in the Central District of California because Defendant Hyper Ice maintains a place of business in the district and the effects of its allegedly threatening patent infringement correspondence were felt there.
• Core Dispute: In this declaratory judgment action, Plaintiff Addaday seeks a ruling that its percussive massager product does not infringe Defendant Hyper Ice's design patent, and that the patent is invalid.
• Technical Context: The dispute concerns the ornamental design of handheld percussive massage devices, often called "massage guns," a product category that has gained significant market popularity.
• Key Procedural History: The lawsuit was precipitated by a September 13, 2019 letter from Hyper Ice to Addaday, which alleged that Addaday's product infringed Hyper Ice's design patent and associated trade dress, and threatened litigation. The complaint also raises the issue of whether asserting both design patent and trade dress rights in the identical product shape constitutes an improper attempt to extend patent protection.

Case Timeline

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

U.S. Design Patent No. D855,822 - "Percussive massage device"

• Patent Identification: U.S. Design Patent No. D855,822, "Percussive massage device," issued August 6, 2019. (Compl. ¶13).

The Invention Explained

• Problem Addressed: The complaint suggests a market context where various companies adapted jigsaw power tools into "massage guns," leading to numerous products with a similar general form factor. (Compl. ¶8-10). Within this context, the design patent seeks to protect a specific ornamental appearance for such a device, distinguishing it from competitors.
• The Patented Solution: The patent claims the ornamental design for a percussive massage device, as depicted in the patent's figures. (’822 Patent, Claim; Compl. ¶14). The claimed design, shown in solid lines, features a T-shaped body where a vertical, cylindrical handle meets a horizontal main body. The main body has specific contours, a vented pattern on the rear circular surface, and a forward-projecting element for a massage tip. ('822 Patent, Figs. 1-8). The design explicitly disclaims, through the use of broken lines, the portion of the device that engages a massage tip. (Compl. ¶16; '822 Patent, Description).
• Technical Importance: In what the complaint describes as an "extremely popular type of product," a unique ornamental design can serve as a key market differentiator. (Compl. ¶9).

Key Claims at a Glance

• As a design patent, the '822 patent contains a single claim for "The ornamental design for a 'percussive massage device,' as shown and described." (Compl. ¶14; '822 Patent, Claim).
• The scope of the claim is defined by the visual appearance of the device as depicted in solid lines in Figures 1 through 8 of the patent.

III. The Accused Instrumentality

Product Identification

• The Addaday BioZoom Massager. (Compl. ¶11).

Functionality and Market Context

• The BioZoom is described as a wireless massage gun product introduced by Addaday in 2019. (Compl. ¶11). Addaday alleges that while its product follows the "same general shape" as other massage guns on the market, it incorporates "significant structural and design elements that differentiate it" from competitors, including Hyper Ice's product. (Compl. ¶12). To facilitate a non-infringement analysis, the complaint includes as Exhibit D a set of photographs of the BioZoom Massager that are intended to mirror the views shown in the '822 patent. (Compl. ¶38). The complaint describes the Addaday BioZoom Massager photographs in Exhibit D as "mirroring those views provided in the Hyper Design Patent." (Compl. ¶38).

IV. Analysis of Infringement Allegations

As this is a complaint for declaratory judgment of non-infringement, the analysis focuses on Addaday's asserted basis for why its product does not infringe. The infringement test for a design patent is whether an "ordinary observer," familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented design.

Addaday’s non-infringement position is not presented in a claim chart but through narrative denial. (Compl. ¶28, ¶37). The core of its argument rests on the assertion that the Addaday BioZoom massager has "significant structural and design elements that differentiate it" from competitor products. (Compl. ¶12). By providing photographs of its own product in Exhibit D, Addaday invites a direct visual comparison to the drawings in the '822 patent to highlight these alleged differences. (Compl. ¶38).

• Identified Points of Contention:
  • Visual Comparison: The central factual dispute will be a visual one: Are the ornamental differences between the Addaday BioZoom and the '822 patent design significant enough to preclude a finding of infringement under the ordinary observer test?
  • Scope Questions: The complaint raises the question of how the prior art informs the infringement analysis. Addaday alleges that the general "massage gun" shape evolved from jigsaw tools and is common in the market. (Compl. ¶8-10). This allegation suggests that the scope of the '822 patent may be narrow, limited only to the specific, non-functional ornamental details shown in the drawings that depart from the prior art.

V. Key Claim Terms for Construction

In design patent litigation, claim construction focuses on the scope of the claimed design as a whole, rather than on discrete text-based terms.

• The "Term": "The ornamental design for a 'percussive massage device,' as shown and described."
• Context and Importance: The scope of the design claim is the crux of the infringement dispute. A broad interpretation of the design's overall visual impression would favor the patentee, Hyper Ice. A narrow interpretation, focused on the precise details shown in the drawings and limited by the crowded prior art field alleged in the complaint, would favor the accused infringer, Addaday.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: Hyper Ice may argue that the overall visual impression—the T-shaped configuration, proportions, and general aesthetic—is what an ordinary observer perceives, and that these general features are replicated in the accused product.
  • Evidence for a Narrower Interpretation: Addaday may argue that the patent's scope is confined to the exact ornamental features shown in solid lines, such as the specific shape and pattern of the rear vents and the precise contours of the housing. (Compl. ¶15; '822 Patent, Figs. 1-8). Addaday will also emphasize that the broken-line disclaimer for the tip-engaging mechanism explicitly removes that functional area from the claim's scope. (Compl. ¶16; '822 Patent, Description).

VI. Other Allegations

• Indirect Infringement: The complaint includes a boilerplate denial of infringement "either literally, directly, indirectly, under the doctrine of equivalents, or by any other manner." (Compl. ¶37). As a declaratory judgment complaint, it does not allege facts related to inducement or contributory infringement.
• Willful Infringement: Willfulness is not alleged by Addaday. However, Addaday seeks a finding that the case is "exceptional" under 35 U.S.C. §285, entitling it to attorneys' fees. (Compl. ¶34). This request is based on allegations that Hyper Ice's threat of litigation was brought in "subjective bad faith" and is "objectively baseless," particularly given the alleged attempt to protect the "exact same design" with both patent and trade dress rights. (Compl. ¶32).

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

1. Scope in a Crowded Field: A primary issue will be the scope of the '822 patent's design claim in light of the alleged prior art. The complaint's narrative of a crowded market of similar-looking "massage guns" derived from jigsaw tools (Compl. ¶8-10) raises the question of whether the patented design is a narrow aesthetic departure, limiting its protection to its specific ornamental details and making it easier to design around.
2. Infringement via the Ordinary Observer: The case will turn on the ultimate question of visual comparison: after filtering out functional elements and features common to the prior art, would an ordinary observer be deceived into believing Addaday's BioZoom massager is the same as the design claimed in the '822 patent?
3. The Patent-Trade Dress Interface: A significant legal question is the viability of asserting both design patent and trade dress rights in what the complaint calls the "exact same shape." (Compl. ¶24, ¶32). The court may be asked to determine if this dual assertion is an improper attempt to use trademark law to extend rights that are, or were, protected by the patent, which could impact the validity of the asserted trade dress and support Addaday's request for an exceptional case finding.