DCT
8:20-cv-00074
Eg Intl v. SOUNDBRENNER Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: E.G. International d/b/a/ Elite Guitar (California)
- Defendant: Soundbrenner Limited (Hong Kong) and Soundbrenner GmbH (Germany)
- Plaintiff’s Counsel: Fish IP Law, LLP
- Case Identification: 8:20-cv-00074, C.D. Cal., 01/13/2020
- Venue Allegations: Venue is asserted based on sales of the accused products within the district and Defendant's attendance and demonstration of products at tradeshows in the district.
- Core Dispute: Plaintiff alleges that Defendant’s "Soundbrenner Core" smart music tool infringes a patent related to a magnetically mountable, vibration-sensing device for musical instruments.
- Technical Context: The technology concerns electronic tuners for musical instruments, specifically the method of physically attaching the tuner to the instrument to detect vibrations for accurate tuning.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with actual notice of the patent-in-suit via a letter on October 30, 2018. It also alleges that Defendant had prior knowledge of the patent from at least March 2018, based on a conversation at a January 2019 tradeshow, and that Defendant ordered Plaintiff's patented product in July 2018.
Case Timeline
| Date | Event |
|---|---|
| 2013-12-03 | ’044 Patent Priority Date |
| 2017-01-17 | ’044 Patent Issue Date |
| 2018-07-12 | Defendant allegedly orders Plaintiff's patented "Cling On Tuner" |
| 2018-10-01 | Defendant allegedly begins selling Accused Product on Kickstarter (approx.) |
| 2018-10-30 | Plaintiff sends notice letter to Defendant regarding the ’044 Patent |
| 2018-11-01 | Defendant allegedly begins fundraising for Accused Product on Indiegogo (approx.) |
| 2019-01-01 | Defendant allegedly demonstrates Accused Product at NAMM tradeshow (approx.) |
| 2020-01-13 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,548,044 - "Vibration-Sensing Music Instrument Mountable Device,"
- Patent Identification: U.S. Patent No. 9,548,044, "Vibration-Sensing Music Instrument Mountable Device," issued January 17, 2017.
The Invention Explained
- Problem Addressed: The patent describes drawbacks of conventional digital tuners, which often require clipping onto an instrument's headstock. This placement can be aesthetically unpleasing, damage the instrument's finish, cause unwanted buzzing sounds, and is not suitable for all instruments (’044 Patent, col. 1:23-53).
- The Patented Solution: The invention is a two-part magnetic mounting system for a vibration-sensing device. It comprises a main unit (e.g., a tuner) with an integrated magnet, and a separate "ferromagnetic attachment" that can be affixed anywhere on the instrument (e.g., with adhesive). The two parts connect magnetically, allowing the tuner to be placed inconspicuously and securely without a clip, while ensuring efficient vibration transfer for accurate tuning (’044 Patent, Abstract; col. 4:21-49).
- Technical Importance: This approach provides a universal and discreet mounting solution that overcomes the placement and potential damage issues associated with traditional clip-on tuners (’044 Patent, col. 1:41-53).
Key Claims at a Glance
- The complaint asserts at least Independent Claim 1 (’044 Patent, col. 6:51-65; Compl. ¶¶ 10, 17).
- Essential elements of Independent Claim 1 include:
- A vibration sensing device configured to detect a note.
- An attachment including a magnet, which is attached to the vibration sensing device and configured to releasably secure it to the instrument.
- A ferromagnetic attachment configured to releasably attach to the music instrument.
- The magnet and the ferromagnetic attachment are configured to magnetically and releasably connect to one another.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The "Soundbrenner Core: The 4-in-1 Smart Music Tool" ("Soundbrenner Core" or "Accused Product") (Compl. ¶16).
Functionality and Market Context
- The Soundbrenner Core is a multi-function wearable device for musicians that includes a "magnetic contact tuner" feature (Compl. ¶¶ 19, 22). According to the complaint, this feature allows the device to function as a vibration-based tuner by attaching magnetically to a musical instrument. A promotional screenshot shows the Soundbrenner Core attached to a violin headstock (Compl. p. 5). The complaint alleges the device can be attached "either to our included tuner mount, or your instrument's tuning pegs" (Compl. ¶22). It is marketed as suitable for guitar, bass, violin, and ukulele (Compl. ¶23).
IV. Analysis of Infringement Allegations
’044 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a music instrument mountable device, the music instrument mountable device comprising: | The Soundbrenner Core is described as a "magnetic contact tuner" that can be mounted on a musical instrument (Compl. ¶22). | ¶22 | col. 3:5-8 |
| a vibration sensing device configured to detect a note being played on a music instrument; | The Soundbrenner Core itself is the vibration sensing device, which functions as a tuner to detect notes (Compl. ¶19). | ¶19 | col. 3:29-34 |
| and an attachment including: a magnet, wherein the magnet is: attached to the vibration sensing device; and configured to releasably secure the vibration sensing device to the music instrument; | The Soundbrenner Core has a magnetic component that allows it to attach to an instrument. The complaint includes a screenshot describing it as a "magnetic contact tuner" (Compl. p. 5). | ¶¶ 19, 22 | col. 4:1-6 |
| and a ferromagnetic attachment configured to releasably attach to the music instrument; | The complaint alleges the Core attaches to either an "included tuner mount" or the instrument's existing "tuning pegs," which serve as the ferromagnetic attachment (Compl. ¶22). | ¶22 | col. 4:21-28 |
| wherein the magnet and the ferromagnetic attachment are configured to magnetically and releasably connect to one another to connect the vibration sensing mountable device to the music instrument. | The Core magnetically connects to either the tuner mount or the tuning pegs, which in turn connects the device to the instrument (Compl. ¶22). | ¶22 | col. 4:35-43 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether the phrase "a ferromagnetic attachment configured to releasably attach to the music instrument" reads on a pre-existing part of the instrument (e.g., metal tuning pegs) or if it requires a separate component that is supplied with the accused product (e.g., the "included tuner mount"). The patent figures primarily depict the ferromagnetic attachment as a distinct, add-on piece (’044 Patent, Fig. 2, item 204).
- Technical Questions: What evidence does the complaint provide that the "included tuner mount" is itself a "ferromagnetic attachment"? The complaint alleges its existence but does not describe its material composition or how it attaches to the instrument (Compl. ¶22).
V. Key Claim Terms for Construction
- The Term: "a ferromagnetic attachment"
- Context and Importance: The infringement analysis for users who attach the Soundbrenner Core directly to their instrument's tuning pegs, without using the separate "tuner mount," will depend on whether an integral part of the instrument can be considered "a ferromagnetic attachment" as claimed. Practitioners may focus on this term because its construction could determine whether a primary use case of the accused product is infringing.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests direct attachment to existing ferromagnetic parts is contemplated, stating that "Magnet 202 can be attached directly to any ferromagnetic metal that is present on the music instrument. In such instances there is no need of attachment 204. Examples of such are the tuning machines 402..." (’044 Patent, col. 5:50-54). This language could support an interpretation where the "ferromagnetic attachment" can be a pre-existing part of the instrument.
- Evidence for a Narrower Interpretation: Claim 1 recites the "ferromagnetic attachment" as a distinct element of the claimed "device." The patent's abstract and figures consistently depict it as a separate component (204) that is brought to the instrument, separate from the magnet (202) on the main device (’044 Patent, Abstract; Fig. 2). This could support a narrower construction requiring a component distinct from the instrument itself.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement by claiming Defendant's website, marketing materials, and retailer pages instruct customers and retailers on how to use the Soundbrenner Core in an infringing manner (Compl. ¶¶ 39, 40, 42). Contributory infringement is alleged on the basis that the Soundbrenner Core is a material component of the invention, is especially made for an infringing use, and is not a staple article of commerce with substantial non-infringing uses (Compl. ¶¶ 45, 48).
- Willful Infringement: The willfulness claim is based on alleged actual knowledge of the ’044 Patent. The complaint alleges this knowledge stems from a formal notice letter sent on October 30, 2018; Defendant's purchase of Plaintiff's patented product on July 12, 2018; and a conversation at a January 2019 tradeshow where Defendant's CEO allegedly did not object to a statement that he was aware of the patent (Compl. ¶¶ 25, 28, 30, 35).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the claim term "a ferromagnetic attachment," which the patent figures depict as a separate add-on component, be construed to also cover pre-existing, integral parts of a musical instrument, such as its metal tuning pegs? The outcome of this claim construction will be critical to the direct infringement analysis.
- A second key issue involves indirect infringement liability: if direct attachment to tuning pegs is found to be non-infringing, the viability of the inducement and contributory infringement claims may depend heavily on the use of the "included tuner mount" and the extent to which Defendant specifically instructed or encouraged that particular method of use.
- A third central question will be one of intent: the willfulness allegation will turn on evidence of Defendant's state of mind, with the court likely examining the specific content of the pre-suit notice letter, the timing of the product launch relative to the notice, and the factual record of communications between the parties.