DCT
8:20-cv-00115
Hyper Ice Inc v. Yournicedaycom
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Hyper Ice, Inc. (California)
- Defendant: Yourniceday.com (Unknown); Unknown owner of Tucows Inc. Registry Domain ID; Ping Zhou (Individual); and DOES 1-10
- Plaintiff’s Counsel: Lewis Brisbois Bisgaard & Smith LLP
- Case Identification: 8:20-cv-00115, C.D. Cal., 01/17/2020
- Venue Allegations: Venue is alleged to be proper in the Central District of California because a substantial part of the events giving rise to the claims occurred in the district, where Plaintiff is located and where the infringing products were allegedly sold, and because none of the named Defendants are alleged to reside in the United States.
- Core Dispute: Plaintiff alleges that Defendants’ percussive massage gun infringes a design patent covering the ornamental appearance of Plaintiff's HYPERVOLT product.
- Technical Context: The lawsuit concerns the market for personal, portable percussive massage devices, a category of products used for sports-injury recovery and muscle therapy.
- Key Procedural History: The complaint alleges that Plaintiff sent cease and desist letters to Defendant Yourniceday.com on October 28, 2019, and November 22, 2019. It further alleges that infringement notices were sent to Shopify.com, the e-commerce platform hosting Defendants' website, on the same dates.
Case Timeline
| Date | Event |
|---|---|
| 2018-02-22 | U.S. Patent No. D855,822 Priority Date (Application Filing) |
| 2019-08-06 | U.S. Patent No. D855,822 Issue Date |
| 2019-10-28 | Plaintiff allegedly learned of infringement |
| 2019-10-28 | Plaintiff sent first cease and desist letter to Defendant |
| 2019-11-22 | Plaintiff sent second cease and desist letter to Defendant |
| 2020-01-17 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D855,822 - “Percussive Massage Device”
- Issued: August 6, 2019
The Invention Explained
- Problem Addressed: Design patents protect the novel ornamental appearance of an article of manufacture, rather than its utilitarian features. The patent sought to protect a new, original, and ornamental design for a percussive massage device (D’822 Patent, CLAIM).
- The Patented Solution: The patent claims the specific visual appearance of the massage device as depicted in its eight figures (’D822 Patent, Figs. 1-8). The design consists of a T-shaped body with a primary vertical cylindrical handle and a horizontal cylindrical housing. Key ornamental features include the shape and arrangement of vents on the housing, the configuration of the percussive head attachment point, and the appearance of the handle's base, which includes an illuminated ring (’D822 Patent, Figs. 1-8; Compl. ¶15). The complaint describes the design as including a cylindrical center post, an intersecting cylindrical cross bar, and a half-oval shape near the handle (Compl. ¶15).
- Technical Importance: The complaint alleges the unique design of its HYPERVOLT product, covered by the patent, has received industry praise and recognition, contributing to its distinctiveness in the marketplace (Compl. ¶19).
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is: "The ornamental design for a 'percussive massage device,' as shown and described." (’D822 Patent, CLAIM).
- The scope of this claim is defined by the solid lines in the patent's drawings. Key visual elements of the claimed design include:
- The overall T-shaped configuration of the device.
- A cylindrical handle intersecting a horizontal cylindrical body.
- A flat rear surface on the horizontal body with a pattern of small holes arranged in concentric circles.
- Four horizontal cut-out lines (vents) on the top of the horizontal body.
- An illuminated line feature at the base of the handle.
III. The Accused Instrumentality
Product Identification
The "Infringing Massage Gun" offered for sale on the website yourniceday.com (Compl. ¶9, ¶27).
Functionality and Market Context
The accused product is a portable, percussive massage device (Compl. ¶27). The complaint provides a side-by-side visual comparison of Plaintiff's HYPERVOLT and the accused "Infringing Massage Gun" (Compl. ¶28). A second visual compares a figure from the ’D822 Patent to a photograph of the accused product (Compl. ¶38). The complaint alleges that Defendants began selling the accused product on or about October 28, 2019, in direct competition with Plaintiff (Compl. ¶27, ¶35).
IV. Analysis of Infringement Allegations
The standard for design patent infringement is whether an "ordinary observer," giving such attention as a purchaser usually gives, would be deceived into purchasing the accused device supposing it to be the patented design. The complaint alleges that the accused product is "substantially the same as the '822 Patent to an ordinary observer" (Compl. ¶38).
’D822 Patent Infringement Allegations
| Claim Element (Visual Feature from ’D822 Patent) | Alleged Infringing Functionality (from Accused Product) | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design for a percussive massage device | The complaint alleges the accused product has an "overall configuration identical to the design claimed by Plaintiff" and is a "colorable imitation." | ¶27, ¶25 | Figs. 1-8 |
| A T-shaped body comprising a vertical handle and a horizontal housing | The accused product is shown with a T-shaped body, including a vertical handle and a horizontal housing. | ¶28, ¶38 | Fig. 3 |
| A flat rear surface on the horizontal housing with a pattern of small holes | The accused product is depicted with a flat rear surface on its horizontal housing containing a pattern of holes. | ¶28 | Fig. 2 |
| A cylindrical handle with an illuminated ring at its base | The accused product is shown with a cylindrical handle that features a colored ring at its base, which the complaint alleges corresponds to the patented "illuminated line." | ¶28, ¶15 | Fig. 1 |
| Horizontal vent cut-outs on the top of the horizontal housing | The accused product is shown with horizontal vent cut-outs on the top of its horizontal housing. | ¶28, ¶38 | Fig. 1 |
Identified Points of Contention
- Scope Questions: The central question will be the application of the "ordinary observer" test. The court will consider whether the accused product's design is "substantially the same" as the claimed design, such that an ordinary observer would be deceived. The complaint asserts the resemblance is "so close as to deceive an observer" (Compl. ¶38).
- Technical Questions: A key evidentiary question is whether any minor differences between the patented design and the accused product are sufficient to alter the overall visual impression for an ordinary observer. For example, a court may examine the precise number, size, and spacing of the vent holes or surface textures to determine if they create a distinct visual appearance from the patented design when viewed as a whole.
V. Key Claim Terms for Construction
For design patents, the claim is understood to be for the design "as shown" in the drawings, and extensive claim construction of verbal terms is uncommon. The primary analysis is a visual comparison of the drawings to the accused product. Therefore, no key terms are identified for construction.
VI. Other Allegations
- Indirect Infringement: The complaint asserts a claim for contributory infringement, alleging Defendants knew the ’D822 patent was valid and that their "contributory activity" would cause direct infringement (Compl. ¶43). This knowledge is allegedly evidenced by the cease and desist letters sent to Defendants and Shopify (Compl. ¶44).
- Willful Infringement: Willfulness is alleged based on Defendants' continued infringement after receiving pre-suit notice of the ’D822 Patent via multiple cease and desist communications starting on October 28, 2019 (Compl. ¶41). Plaintiff alleges this conduct occurred despite an "objectively high likelihood" that the actions constituted infringement (Compl. ¶21-22).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual identity: In applying the "ordinary observer" test, is the overall ornamental appearance of the accused massage gun "substantially the same" as the design claimed in the ’D822 Patent, or are there sufficient visual differences to distinguish the two products in the eyes of a typical purchaser?
- A key legal question will be the impact of notice on willfulness: Given the complaint’s specific allegations of pre-suit cease and desist letters, a central issue will be whether Defendants’ alleged continuation of infringing conduct after receiving notice was objectively reckless, potentially exposing them to enhanced damages under 35 U.S.C. §284.