DCT
8:23-cv-00485
Fountain Inc v. Promate System Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Fountain, Inc. (California)
- Defendant: Promate System Corporation (California)
- Plaintiff’s Counsel: Law Office of Michael J. Sullivan
- Case Identification: 8:23-cv-00485, C.D. Cal., 03/17/2023
- Venue Allegations: Venue is alleged to be proper because the Defendant resides in the judicial district and has committed acts of infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s diving masks, which feature an integrated camera mount, infringe a patent related to active headwear for detachably mounting an imaging device.
- Technical Context: The technology at issue facilitates the hands-free use of action cameras by integrating a compatible mounting system directly into the frame of headwear such as diving masks or goggles.
- Key Procedural History: The complaint alleges that Plaintiff first notified Defendant of the infringement via a complaint to Amazon.com in April 2018, which resulted in the removal of Defendant's product listings. Plaintiff further alleges it sent a direct cease and desist letter in January 2023. These allegations of pre-suit notice form the basis for the willfulness claim.
Case Timeline
| Date | Event |
|---|---|
| 2012-07-12 | ’877 Patent Priority Date |
| 2015-07-07 | ’877 Patent Issue Date |
| 2018-04-23 | Defendant allegedly notified via Amazon.com |
| 2023-01-15 | Plaintiff allegedly sent cease and desist letter |
| 2023-03-17 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,077,877 - "Active Headwear for Detachably Mounting an Imaging Device"
- Patent Identification: U.S. Patent No. 9,077,877, issued July 7, 2015.
The Invention Explained
- Problem Addressed: The patent identifies a need for an improved way to mount imaging devices, like digital cameras, onto "active headwear" such as diving masks, as existing headwear generally lacks such provisions and prior attempts involved "substantial design tradeoffs" (’877 Patent, col. 1:19-45).
- The Patented Solution: The invention discloses a mounting system for securing a camera to headwear. The system can be a separate "attachment base" that clamps onto an existing headwear frame or, as claimed in the asserted claims, an "integrated headwear frame and attachment base" where the mount is built directly into the mask's frame (’877 Patent, col. 2:50-58; col. 4:12-18). The attachment base features specific tabs designed to mate with a camera mount, enabling hands-free operation.
- Technical Importance: The described system provides a dedicated, stable platform for attaching popular action cameras to headwear, allowing users to capture point-of-view video and images during activities like diving without occupying their hands (’877 Patent, col. 2:55-58).
Key Claims at a Glance
- The complaint asserts independent claim 6 and dependent claims 7-8 (Compl. ¶16).
- Independent Claim 6 recites a mounting assembly comprising:
- An "integrated headwear frame and attachment base" for placement on a user's face, with the base including "at least two engagement tabs" to mate with a camera mount.
- The integrated frame has a right and left lens frame connected by a "nosepiece."
- The attachment base also has a "retainer engagement tab" adjacent to the other tabs.
- The tabs are spaced to define "open transverse slots" suitable for inserting a camera mount.
- The complaint does not explicitly reserve the right to assert other claims, but focuses on claims 6-8.
III. The Accused Instrumentality
Product Identification
- The "Accused Products" are at least one style of mask manufactured, sold, and/or imported by Defendant Promate System Corporation (Compl. ¶¶13, 15).
Functionality and Market Context
- The complaint alleges the Accused Products are diving masks that incorporate the patented technology (Compl. ¶16). A representative photograph provided with the complaint depicts a diving mask with a camera mount integrated into the top of the frame, featuring upward-facing tabs apparently designed to secure a camera (Compl. ¶14, Ex. 2). Defendant allegedly sells these products through its own online store, third-party platforms like eBay, and a network of dealers (Compl. ¶12).
IV. Analysis of Infringement Allegations
’877 Patent Infringement Allegations
| Claim Element (from Independent Claim 6) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an integrated headwear frame and attachment base...wherein said attachment base includes at least two engagement tabs...configured to mate with a camera mount | The Accused Product is a single-piece diving mask with a built-in camera mount featuring tabs for attaching a camera. | ¶16, ¶14 | col. 4:12-18 |
| wherein said integrated headwear frame...further has a right lens frame and a left lens frame, wherein the right lens frame is attached to the left lens frame by nosepiece | The Accused Product is a conventional dual-lens mask structure with two lens frames connected by a central nosepiece. | ¶16, ¶14 | col. 4:16-18 |
| wherein said attachment base further has a retainer engagement tab adjacent to the at least two engagement tabs | The complaint alleges infringement of Claim 6, which requires this element. The provided photo appears to show a central tab adjacent to two side tabs on the integrated mount. | ¶16, ¶14 | col. 4:18-20 |
| wherein the engagement tabs and the retainer engagement tab are spaced apart so as to define open transverse slots suitable for the insertion of a camera mount | The configuration of tabs on the Accused Product's mount allegedly creates slots to receive a standard camera mounting bracket. | ¶16, ¶14 | col. 4:22-26 |
- Identified Points of Contention:
- Technical Questions: A primary question will be whether the Accused Product’s mount contains a structure that meets the "retainer engagement tab" limitation in addition to the "at least two engagement tabs." The case may require evidence to establish whether one of the tabs on the accused mask is structurally or functionally distinct in a manner that corresponds to the "retainer" function described in the patent, or if all tabs are identical.
- Scope Questions: Discovery will likely focus on the precise structure of the Accused Product's mount to determine if it aligns with the specific configuration claimed, including the number and arrangement of the different types of tabs required by Claim 6.
V. Key Claim Terms for Construction
- The Term: "retainer engagement tab"
- Context and Importance: Claim 6 requires both "at least two engagement tabs" and a separate "retainer engagement tab." The distinction is critical; if the accused product's mount has three identical tabs, or lacks a specific "retainer" tab, it may not infringe. Practitioners may focus on this term because the infringement analysis depends on whether the accused device has this specific, separately identified component.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term itself is not explicitly defined. A party could argue that any tab adjacent to the main engagement tabs that assists in holding the camera mount in place satisfies the "retainer" function, giving it a broad functional meaning.
- Evidence for a Narrower Interpretation: The specification and figures consistently show the "retainer engagement tab" (e.g., element 112 in Fig. 10) as a distinct element from the "engagement tabs" (element 110). A party could argue the term must be construed to require the specific structure shown, such as the "boss 114" on the retainer tab, which is described as being "configured to hold a fastening device" (’877 Patent, col. 4:18-20, Claim 8).
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement, stating that Promate sells the Accused Products to distributors, retailers, and customers who then use the products in an infringing manner (Compl. ¶¶17-18). The alleged intent to induce is based on the sale of a product whose intended function is to be used with a camera in the manner claimed.
- Willful Infringement: The willfulness allegation is based on alleged pre-suit knowledge of the ’877 Patent. The complaint specifically pleads that Defendant was notified of its infringement first via Amazon.com in April 2018 and again through direct communications in January 2023, but continued its alleged infringement (Compl. ¶¶11, 19).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of structural correspondence: does the camera mount on the accused mask possess a distinct "retainer engagement tab" in addition to "at least two engagement tabs," as specifically required by the language of Claim 6, or does it utilize a configuration of tabs that falls outside the literal scope of the claim?
- A key factual question will be the effect of pre-suit notice: given the allegations that Defendant was aware of the patent and infringement allegations as early as 2018, the case will likely examine the evidence supporting this notice and Defendant’s subsequent conduct, which will be central to resolving the claim for willful infringement and potential enhanced damages.