DCT
8:23-cv-01942
Distributing Co LLC v. Zyllion Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: FKA Distributing Co., LLC, d/b/a HoMedics (Michigan)
- Defendant: Zyllion Inc. (California)
- Plaintiff’s Counsel: BROOKS KUSHMAN P.C.
- Case Identification: 8:23-cv-01942, C.D. Cal., 10/16/2023
- Venue Allegations: Venue is alleged to be proper in the Central District of California based on Defendant’s headquarters and principal place of business being located within the district, as well as its continuous sales and business transactions in the district.
- Core Dispute: Plaintiff alleges that Defendant’s "Heated Shiatsu Massagers" infringe a patent related to a massage apparatus that combines a rotating massage element with a heating function.
- Technical Context: The technology resides in the personal health and wellness market, specifically addressing the design of electronic massagers that can simultaneously provide both mechanical massage and heat therapy.
- Key Procedural History: The patent-in-suit, U.S. Patent No. 7,722,553, was the subject of an ex parte reexamination proceeding requested in 2022. The U.S. Patent and Trademark Office issued a Reexamination Certificate on February 21, 2023, confirming the patentability of asserted claim 1 without amendment. The complaint alleges Defendant had knowledge of the patent since at least September 2020.
Case Timeline
| Date | Event |
|---|---|
| 2004-03-19 | Priority Date for U.S. Patent No. 7,722,553 |
| 2010-05-25 | Issue Date for U.S. Patent No. 7,722,553 |
| 2020-09-01 | Alleged earliest date of Defendant's knowledge of the '553 patent |
| 2023-02-21 | Reexamination Certificate Issued for U.S. Patent No. 7,722,553 |
| 2023-10-16 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,722,553 - “Massage Apparatus” (issued May 25, 2010)
The Invention Explained
- Problem Addressed: The patent's background describes a need in the field of personal massagers for a device that offers "finer control of massage features" and can "provide heat and massage simultaneously to the feet specifically at those areas targeted by a user" (’553 Patent, col. 1:28-34).
- The Patented Solution: The invention is a heat therapy apparatus that solves this problem by mounting a heater directly onto a rotating component, referred to as a "substrate." To power the heater as it rotates, the design uses a system of stationary conductive contacts (e.g., annular plates) and rotating conductive brushes that maintain electrical communication, allowing for the delivery of continuous power to the heating elements during the massage motion (’553 Patent, Abstract; col. 5:50-65).
- Technical Importance: This approach provided a method for integrating a heating element into a moving part of a massager, enabling the combination of a dynamic, kneading massage with simultaneous heat therapy applied by the same rotating surface (’553 Patent, col. 2:5-11).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 (Compl. ¶15).
- The essential elements of independent claim 1 are:
- a housing;
- a substrate mounted to the housing for rotation relative thereto;
- a heater mounted to the substrate for providing a heat therapy effect from the substrate;
- a pair of conductive contacts mounted to one of the substrate and the housing;
- a pair of conductive brushes mounted to the other of the substrate and the housing, in engagement with one of the contacts to maintain engagement during rotation;
- wherein at least two contacts and brushes are in electrical communication with the heater and rotate relative to the housing to conduct electricity to the heater.
- The complaint notes that Defendant's activities may also infringe other claims of the patent (Compl. ¶23).
III. The Accused Instrumentality
Product Identification
- The complaint identifies Defendant's "Heated Shiatsu Massagers," including products sold as ZMA-33-BK and under Amazon Standard Identification Number (ASIN) B0881Y82NN (Compl. ¶11, ¶12, ¶19).
Functionality and Market Context
- The accused products are described as massagers that provide a "Shiatsu" massage with "circular kneading" and are marketed as providing "Heat for Muscle Pain Relief" (Compl. ¶16). The complaint includes photographs from a disassembly of an accused product, purporting to show its internal components, including a rotating substrate, heaters, and electrical contacts (Compl. ¶17, ¶19, ¶20). This image shows the disassembled rotating substrate of the accused massager. (Compl. ¶19, p. 5).
IV. Analysis of Infringement Allegations
Claim Chart Summary: ’553 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a housing | The massagers include an outer casing or housing. A photograph in the complaint depicts the housing of a disassembled unit. (Compl. ¶17, p. 5). | ¶17 | col. 4:21-24 |
| a substrate mounted to the housing for rotation relative thereto | The accused massagers are alleged to have a rotating substrate mounted to the housing. This is shown in an image of the disassembled unit. (Compl. ¶18, p. 5). | ¶18 | col. 5:25-33 |
| a heater mounted to the substrate for providing a heat therapy effect from the substrate | The complaint alleges that further disassembly reveals "infrared heaters" mounted to the substrate. A photograph points to these heaters on an internal component. (Compl. ¶20, p. 6). | ¶20 | col. 5:50-65 |
| a pair of conductive contacts each mounted to one of the substrate and the housing | The accused products are alleged to include conductive contacts. An image shows components identified as "the brushes and contacts." (Compl. ¶19, p. 5). | ¶19, ¶21 | col. 5:59-62 |
| a pair of conductive brushes each mounted to the other of the substrate and the housing in engagement with one of the contacts for maintaining engagement during rotation of the substrate relative to the housing | The complaint alleges the massagers include conductive brushes mounted to the substrate that engage with annular contacts on the housing. | ¶21 | col. 5:64-65 |
| wherein at least two of the contacts and brushes are in electrical communication with the heater and rotate relative to the housing with rotation of the substrate and the heater for conducting electricity to the heater | It is alleged that during operation, the brushes are in electrical communication with the heater and rotate with the substrate to conduct electricity to the heater. | ¶22 | col. 5:59-65 |
Identified Points of Contention
- Scope Questions: A central question may be whether the accused product's rotating component qualifies as a "substrate" as the term is used in the patent. The construction of this term will be critical in determining whether the accused device's structure meets this limitation.
- Technical Questions: The complaint alleges that the brushes and contacts "maintain engagement during rotation" to conduct electricity (Compl. ¶22). A key evidentiary question will be what proof demonstrates this dynamic electrical connection during actual operation of the accused device, as the complaint primarily provides static images of the disassembled components.
V. Key Claim Terms for Construction
The Term: "substrate"
Context and Importance: This term defines the core rotating element to which the heater is mounted. Its interpretation is critical because if defined narrowly, it might not read on the accused product's rotating component. Practitioners may focus on this term to dispute whether the accused product’s structure is equivalent to the patented invention.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not provide a formal definition for "substrate." Claim 1 uses the term broadly. The specification describes the heater as being mounted within an "outer massage member base 72" which itself is mounted for rotation, suggesting "substrate" could refer to any such rotating support structure (’553 Patent, col. 5:25-28, col. 5:62-65).
- Evidence for a Narrower Interpretation: An argument for a narrower meaning could be based on the embodiments, where the rotating element is a complex "outer massage member" assembly that includes a base, cover, and massage balls (’553 Patent, Fig. 2). A party could argue the term is limited to this specific type of multi-part structure, not just any rotating head.
The Term: "conductive brushes"
Context and Importance: This term is essential to the claimed mechanism for transferring power to the rotating heater. The dispute may turn on whether the specific type of electrical contact used in the accused product meets the definition of a "brush."
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification introduces the element as "a conductor 90, such as a brush" (’553 Patent, col. 5:64-65). This "such as" language suggests that "brush" is an exemplary, non-limiting embodiment of a broader "conductor" capable of maintaining a sliding electrical connection.
- Evidence for a Narrower Interpretation: The common meaning of "brush" in an electrical context often implies a component with bristles (e.g., a carbon brush). A party might argue that if the accused device uses a different type of sliding contact, such as a simple metallic leaf spring or wiper, it does not meet the specific limitation of a "brush."
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement, stating that Defendant provides "instructions for operating its Heat Shiatsu Massagers" that lead users to infringe the patent (Compl. ¶26).
- Willful Infringement: Willfulness is alleged based on pre-suit knowledge. The complaint asserts Defendant was aware of the ’553 patent "at least as early as September 2020" and was aware its products infringed (Compl. ¶24). The complaint further suggests copying based on the parties' competitive status and product similarities (Compl. ¶25).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction: how broadly will the court define the term "substrate"? The case may turn on whether this term is construed to cover any rotating component that supports a heater, as seen in the accused product, or if it is limited to the specific multi-part massage member assembly detailed in the patent’s preferred embodiments.
- A key evidentiary question will be one of proving dynamic function: what evidence will the Plaintiff present to prove that the accused device's electrical components—identified as "brushes" and "contacts" in static photographs—actually "maintain engagement during rotation" to conduct electricity to the heater, as required by the functional language of the claim?
- The allegation of willful infringement will likely be a significant focus, hinging on what evidence demonstrates Defendant's state of mind after its alleged awareness of the ’553 patent in September 2020. The patent's survival of a subsequent reexamination, which confirmed the asserted claim, may be presented by the Plaintiff as a factor weighing against any good-faith belief of invalidity Defendant might have held.