DCT
8:20-cv-01459
Addaday LLC v. Hyper Ice Inc
Key Events
Complaint
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: 8:20-cv-01459, C.D. Cal., 08/06/2020
- Venue Allegations: Venue is based on Defendant Hyper Ice, Inc. maintaining a place of business within the Central District of California and on the alleged effects of a related U.S. International Trade Commission (ITC) proceeding taking place within the district.
- Core Dispute: Plaintiff seeks a declaratory judgment that its percussive massage gun products do not infringe Defendant's utility and design patents, that the patents are invalid, and that Defendant has breached a prior settlement agreement.
- Technical Context: The technology involves portable, battery-powered percussive massage devices, a popular category of consumer health and fitness products used for deep-tissue muscle treatment.
- Key Procedural History: The complaint alleges that after an earlier dispute over a design patent was resolved via a 2019 Settlement Agreement containing a covenant not to sue, Defendant initiated a new action in the ITC asserting that same patent and two others against Plaintiff. Plaintiff alleges this new action breaches the settlement agreement and constitutes baseless litigation.
Case Timeline
| Date | Event |
|---|---|
| 2018-02-22 | Priority Date for D'822, D'317, and '574 Patents |
| 2018-XX-XX | Addaday introduces its first wired massage gun product |
| 2019-XX-XX | Addaday introduces its wireless "Discontinued BioZoom" product |
| 2019-08-06 | U.S. Design Patent D855,822 Issues |
| 2019-09-13 | Hyper sends letter to Addaday alleging infringement of D'822 Patent |
| 2019-09-16 | Addaday files "Prior Litigation" for Declaratory Judgment |
| 2019-10-29 | Parties enter into Settlement Agreement |
| 2019-11-05 | "Prior Litigation" is dismissed without prejudice |
| 2020-02-18 | U.S. Patent 10,561,574 Issues |
| 2020-06-02 | U.S. Design Patent D886,317 Issues |
| 2020-06-16 | Hyper files ITC Complaint against Addaday and others |
| 2020-07-16 | Addaday ceases offering the "Discontinued BioZoom" for sale |
| 2020-08-06 | Addaday files current Complaint for Declaratory Judgment |
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 do not solve technical problems; they protect the novel, ornamental, and non-functional appearance of an article of manufacture. The goal is to create a unique and visually distinct product design.
- The Patented Solution: The patent claims the specific ornamental design for a percussive massage device as depicted in its figures (D’822 Patent, Figs. 1-8). The claimed design features a T-shaped body with a cylindrical vertical handle, a horizontal main body, and a circular rear portion with a pattern of ventilation holes (D’822 Patent, Fig. 2). Portions shown in broken lines, such as the applicator tip, are not part of the claimed design (D’822 Patent, Description).
- Technical Importance: The design provides a specific aesthetic for a massage gun, intended to distinguish it commercially from competitors in a crowded market.
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a 'percussive massage device,' as shown and described" (D’822 Patent, Claim).
- Infringement of a design patent is evaluated from the perspective of an "ordinary observer," comparing the patented design to the design of the accused product.
U.S. Patent No. 10,561,574 - "Battery-Powered Percussive Massage Device," issued February 18, 2020
The Invention Explained
- Problem Addressed: The patent identifies prior art electromechanical percussive massage devices as being "expensive, large, relatively heavy, and tethered to an electrical power source," as well as "relatively noisy" due to the mechanisms used to convert rotational motor energy into reciprocating motion (’574 Patent, col. 1:39-47).
- The Patented Solution: The invention is a portable, battery-powered massage device that uses a "flexible interconnection linkage" to connect the motor's crank to the reciprocating piston (’574 Patent, col. 1:54-65). This flexible linkage, made of a resilient material like rubber, is described as bending during operation to cushion the "abrupt changes in direction at each end of the piston stroke," which reduces stress on the components and operating noise (’574 Patent, col. 14:35-50).
- Technical Importance: This approach aims to create a quieter, more durable, and potentially simpler portable massage device by replacing a conventional rigid linkage and piston-end bearing with a flexible component.
Key Claims at a Glance
- The complaint asserts non-infringement of the patent's independent claims (Compl. ¶81). Independent Claim 1 is analyzed here as representative.
- Essential Elements of Independent Claim 1:
- A main enclosure with a longitudinal cavity.
- A motor with a rotatable shaft.
- A reciprocation assembly with a piston.
- A removably attachable applicator head.
- A battery assembly receiving enclosure extending from the main enclosure.
- A battery assembly receiving tray within the longitudinal cavity of the main enclosure.
- A battery assembly with a contact end and a free end.
- The complaint does not explicitly reserve the right to assert dependent claims, but this is standard practice.
Multi-Patent Capsule: U.S. Design Patent No. D886,317 - "Percussive Massage Device," issued June 2, 2020
- Technology Synopsis: This patent, like the D'822 patent, protects an ornamental design for a percussive massage device. The complaint alleges that the D'317 patent is "identical except that certain lines that are solid in the ’822 Patent are replaced with broken lines in the ’317 Patent" (Compl. ¶33). Disclaiming additional features with broken lines generally broadens the scope of a design patent, as fewer elements must be matched by an accused product.
- Asserted Claims: The single claim for "The ornamental design for a 'percussive massage device,' as shown and described" (D’317 Patent, Claim).
- Accused Features: The overall ornamental design of the Addaday "Discontinued BioZoom" and "Current BioZoom" massagers (Compl. ¶72, ¶73).
III. The Accused Instrumentality
Product Identification
- The complaint identifies two accused products: the "Discontinued BioZoom" and the "Current BioZoom" (Compl. ¶12, ¶19).
Functionality and Market Context
- Both products are identified as wireless, gun-type percussive massagers (Compl. ¶11, ¶12, ¶19). The complaint includes a photograph showing the "Discontinued BioZoom," which has a T-shaped body with a downward-extending handle (Compl. p. 4). A separate photograph depicts the "Current BioZoom," which features a different handle and battery configuration (Compl. p. 5). Addaday alleges that its "Discontinued BioZoom" incorporates "significant structural and design elements that differentiate it from the myriad of available competitors" (Compl. ¶13).
IV. Analysis of Infringement Allegations
As this is a complaint for declaratory judgment, the allegations are framed as theories of non-infringement.
D855,822 and D886,317 Infringement Allegations
- The complaint does not provide a claim chart for the design patents. Instead, it makes a general denial of infringement, stating that Addaday's products do not infringe any claim of the design patents (Compl. ¶64, ¶72). The central allegation is that the overall appearance of the Addaday products is not substantially the same as the claimed designs. The photograph of the "Discontinued BioZoom" shows a device with a similar T-shape to the patented design but with different surface contours, button placements, and handle-to-body transitions (Compl. p. 4).
Identified Points of Contention (Design Patents):
- Scope Questions: The primary question will be whether an ordinary observer, familiar with prior art massage guns, would be deceived into believing the Addaday BioZoom products are the same as the designs claimed in the D'822 and D'317 patents. The analysis will focus on the visual impression of the solid-line features of the patents compared to the accused products.
10,561,574 Infringement Allegations
- The complaint presents a specific, technical argument for non-infringement of the '574 patent's independent claims (Compl. ¶81).
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a battery assembly receiving tray within the longitudinal cavity of the main enclosure | The complaint alleges the "battery assembly receiving tray" in the Current BioZoom is located within a longitudinal cavity of the main enclosure, and that its battery contacts "cannot be located within the longitudinal housing as required" by the claims. This suggests the accused product's tray is physically separate from where the claim requires it to be. | ¶81 | col. 23:12-14 |
Identified Points of Contention ('574 Patent):
- Technical Questions: The case may turn on the physical location of components in the accused BioZoom products. Evidence will be needed to establish precisely where the "battery assembly receiving tray" and its "electrical contact points" are located relative to what is defined as the "longitudinal cavity of the main enclosure." The photograph of the "Current BioZoom" shows a removable battery forming the handle, which may support Addaday’s argument that the receiving tray and contacts are in the handle, not the "main enclosure" housing the motor (Compl. p. 5).
- Scope Questions: The dispute raises a critical claim construction question regarding the scope of the phrase "within the longitudinal cavity of the main enclosure."
V. Key Claim Terms for Construction
- The Term: "battery assembly receiving tray within the longitudinal cavity of the main enclosure"
- Context and Importance: This term is central to the infringement dispute for the '574 patent. Addaday’s entire non-infringement theory, as stated in the complaint, rests on its products not meeting this limitation (Compl. ¶81). The definition of what constitutes the "main enclosure" and its "longitudinal cavity"—and whether the battery tray is located there—will likely be dispositive.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation (favors Hyper Ice): Hyper Ice may argue that the "main enclosure" encompasses the entire device body, including both the upper motor housing and the lower portion that receives the battery. Under this view, a tray anywhere inside the overall housing could be considered "within the longitudinal cavity."
- Evidence for a Narrower Interpretation (favors Addaday): The patent specification distinguishes between an "upper body portion" (112) housing the motor and a "lower body portion" (114) from which a "battery assembly receiving enclosure" (130) extends (’574 Patent, col. 5:21-34). The "battery assembly receiving tray" (200) is described as being "secured to the inside of the lower body portion" (’574 Patent, col. 6:35-37). Addaday may argue that the "longitudinal cavity of the main enclosure" refers specifically to the cavity in the upper motor housing, and that its tray is located in the physically distinct handle/battery enclosure, thereby falling outside the claim scope.
VI. Other Allegations
- Indirect Infringement: The complaint, being a DJ action, does not allege facts supporting indirect infringement by Addaday. It does, however, form the basis of the dispute by referencing Hyper's ITC Complaint which alleges infringement (Compl. ¶21-22).
- Willful Infringement: Willfulness is not directly alleged against Addaday. However, Addaday alleges that Hyper's infringement action is "objectively baseless" and brought in "subjective bad faith," particularly because Hyper initiated the ITC action after granting Addaday a "Covenant Not to Sue" relating to the D'822 patent and the Discontinued BioZoom in a prior settlement (Compl. ¶58). This allegation forms the basis for Addaday's request for attorneys' fees for an "exceptional case" under 35 U.S.C. §285 (Compl. ¶61).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of contractual estoppel: Does the October 2019 Settlement Agreement and its Covenant Not to Sue bar Hyper from asserting at least the D'822 patent against Addaday's Discontinued BioZoom, and does the pursuit of the ITC action in light of that agreement constitute litigation in bad faith?
- A key question for the design patents will be one of overall visual appearance: Are the ornamental designs of the Addaday BioZoom products "substantially the same" as the claimed designs in the D'822 and D'317 patents in the eyes of an ordinary observer, or are the visual differences significant enough to avoid infringement?
- A dispositive issue for the utility patent will be one of claim construction: How should the court define the scope of a "battery assembly receiving tray within the longitudinal cavity of the main enclosure," and does the physical architecture of the accused Addaday products fall within that definition?