DCT
8:24-cv-00391
Hyperice Inc v. Macy's Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Hyper Ice, Inc. (California) and Hyperice IP Subco, LLC (Delaware)
- Defendant: Macy's Inc. (Delaware)
- Plaintiff’s Counsel: Miller Barondess LLP; Lewis Brisbois Bisgaard & Smith LLP
- Case Identification: Hyper Ice, Inc. et al v. Macy's Inc., 8:24-cv-00391, C.D. Cal., 02/26/2024
- Venue Allegations: Plaintiff alleges venue is proper because Defendant has committed acts of infringement in the district and maintains a regular and established place of business there.
- Core Dispute: Plaintiff alleges that various models of percussive massage guns sold by Defendant infringe one utility patent and two design patents related to the mechanical configuration, operation, and ornamental appearance of such devices.
- Technical Context: The lawsuit concerns the popular consumer market for handheld, battery-powered percussive massage devices used for muscle therapy and recovery.
- Key Procedural History: The complaint alleges that Defendant gained knowledge of the patents-in-suit no later than January 16, 2024, when Plaintiff filed a similar lawsuit against Defendant in the Western District of Texas. Plaintiff states that the Texas complaint was subsequently dismissed to be refiled in the current district, a fact which forms the basis for the willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 2013-07-01 | ’482 Patent Priority Date (Provisional App. 61/841,693) |
| 2018-02-22 | D’317 Patent Priority Date (App. 29/637,855) |
| 2020-06-02 | U.S. Design Patent D886,317 Issues |
| 2020-07-31 | U.S. Design Patent D956,253 Filing Date |
| 2022-06-28 | U.S. Design Patent D956,253 Issues |
| 2024-01-02 | U.S. Patent 11,857,482 Issues |
| 2024-01-16 | Prior suit filed against Defendant in W.D. Texas |
| 2024-02-26 | Current Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,857,482 - "Massage Device Having Variable Stroke Length"
- Patent Identification: U.S. Patent No. 11,857,482, "Massage Device Having Variable Stroke Length," issued January 2, 2024. (Compl. ¶10).
The Invention Explained
- Problem Addressed: The patent's background section notes that prior art vibrating massagers were often "bulky, get very hot, are noisy and/or are difficult to use for extended periods of time." (’482 Patent, col. 1:28-31).
- The Patented Solution: The invention is a handheld percussive massager with a specific mechanical layout, including a motor that drives a reciprocating piston via a drive mechanism. (’482 Patent, Abstract). A key feature described is a "quick-connect system" that allows a user to attach and detach different massaging heads, with one embodiment describing a magnetic connection that facilitates this exchange even while the device is operating. (’482 Patent, col. 6:46-56, col. 7:10-14).
- Technical Importance: The design aims to create a more robust and user-friendly device by improving the drive mechanism (e.g., using a "Scotch yoke" to convert rotary to linear motion) and adding versatility through easily swappable applicator heads. (’482 Patent, col. 5:10-14, col. 6:46-56).
Key Claims at a Glance
- The complaint asserts infringement of at least independent Claim 1. (Compl. ¶27).
- The essential elements of Claim 1 include:
- a housing;
- a piston with a proximal end and a distal end, where the distal end has a substantially cylindrical bore;
- a motor connected to the piston's proximal end to cause reciprocation;
- a drive mechanism controlling a predetermined stroke length; and
- a quick-connect system at the piston's distal end for securing a massaging head, which is configured to allow the head to be slid into the bore "while the piston reciprocates the predetermined stroke length at the first speed."
- The complaint reserves the right to assert other claims. (Compl. ¶13).
U.S. Design Patent No. D956,253 - "Percussive Massage Device"
- Patent Identification: U.S. Design Patent No. D956,253, "Percussive Massage Device," issued June 28, 2022. (Compl. ¶6; D’253 Patent, front page).
The Invention Explained
- Problem Addressed: Design patents protect the ornamental appearance of an article of manufacture, not its utility. The '253 Patent addresses the aesthetic design of the device.
- The Patented Solution: The patent claims the ornamental design for a percussive massage device. The design, as depicted in the patent's figures, features a T-shaped body where a horizontal, cylindrical main housing intersects a vertical, cylindrical handle. (D’253 Patent, Figs. 1-8). The solid lines in the drawings define the claimed design, including the specific proportions and smooth-surfaced transitions between the handle and housing.
- Technical Importance: The aesthetic design creates a unique visual impression for the product in the marketplace.
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is for "The ornamental design for a 'percussive massage device,' as shown and described." (D’253 Patent, Claim).
U.S. Patent No. D886,317 - "Percussive Massage Device"
- Patent Identification: U.S. Design Patent No. D886,317, "Percussive Massage Device," issued June 2, 2020. (Compl. ¶19).
- Technology Synopsis: The patent claims the ornamental design for a handheld percussive massage device. The design is characterized by a T-shaped body with a main housing featuring a prominent circular vent pattern on its rear face and a distinct angled transition to the percussive head attachment point. (D’317 Patent, Figs. 1, 2, 5).
- Asserted Claims: The single claim for the ornamental design as shown and described in the patent. (D’317 Patent, Claim).
- Accused Features: The complaint alleges that the overall visual appearance of the accused "Pursonic (Deep Tissue Professional Massage Gun), Evertone (TheraTone Pro-Therapy), and Life Authentics (Wireless Charging Massage Gun)" would be confused with the patented design by an ordinary observer. (Compl. ¶23).
III. The Accused Instrumentality
Product Identification
The complaint names a wide range of battery-powered percussive massage devices sold by Macy's from brands including Sharper Image, Pursonic, Conair, Homedics, Evertone, and others. (Compl. ¶¶ 14, 18, 23).
Functionality and Market Context
The accused products are handheld devices that deliver rapid, concentrated pulses to muscle tissue for therapeutic purposes. (Compl. ¶27). The complaint alleges these products incorporate the functional elements of the ’482 Patent, including a housing, motor, piston, and a quick-connect system for attaching massage heads. (Compl. ¶27). For the design patents, the complaint alleges that the ornamental appearance of certain accused products (e.g., Sharper Image Powerboost models) is confusingly similar to the patented designs. (Compl. ¶¶ 18, 23).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
’482 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a housing | The complaint alleges the accused products, as battery-powered percussive massagers, possess a housing. | ¶27a | col. 3:35-37 |
| a piston having a proximal end and a distal end, the distal end of the piston having a substantially cylindrical bore | The complaint alleges the accused products possess a piston with a distal end bore for receiving a massage head. | ¶27b | col. 6:58-62 |
| a motor at least partially within the housing and operatively connected to the proximal end of the piston, wherein the motor is configured to cause the piston to reciprocate at a first speed | The complaint alleges the accused products possess a motor that drives the piston's reciprocating motion. | ¶27c | col. 3:51-54 |
| a drive mechanism that controls a predetermined stroke length of the piston | The complaint alleges the accused products possess a drive mechanism that dictates the piston's stroke length. | ¶27d | col. 5:10-14 |
| a quick-connect system comprising the distal end of the piston and a first massaging head, wherein the quick-connect system is configured to secure the first massaging head...by a proximal end of the massaging head being slid into the bore while the piston reciprocates... | The complaint alleges the accused products possess a quick-connect system that allows for attachment of the head while the piston is in motion. | ¶27e | col. 7:10-14 |
Identified Points of Contention (’482 Patent)
- Scope Questions: A central question may be the interpretation of the final limitation requiring the quick-connect system to be "configured to secure" a head "while the piston reciprocates." Does this require a specific structure intentionally designed for this "hot-swapping" function (as the patent describes with a tapered head, col. 7:10-14), or does it read on any system where such an action is merely physically possible?
- Technical Questions: The complaint alleges literal infringement but pleads the doctrine of equivalents in the alternative. (Compl. ¶27). This suggests a potential dispute over whether the accused products' attachment mechanisms are structurally identical to the claimed system or merely perform the same function in a similar way to achieve a similar result. The evidence will need to show how the accused products' quick-connect systems actually operate.
D’253 Patent Infringement Allegations
The complaint alleges that the accused Sharper Image Powerboost massagers infringe the ’253 Patent because an "ordinary observer would confuse the patented designs" with the accused products. (Compl. ¶18). The core of this dispute will be a visual comparison based on the "ordinary observer" test, which assesses whether an ordinary purchaser would be deceived by the similarity in overall ornamental appearance between the patented design and the accused product. This analysis will focus on the claimed features shown in solid lines in the D’253 Patent's drawings.
V. Key Claim Terms for Construction
For the ’482 Patent:
The Term: "quick-connect system"
Context and Importance: This term appears in Claim 1 and is central to the invention's claimed versatility. The scope of this term will be critical, as it could determine whether various types of attachment mechanisms (e.g., magnetic, friction-fit, spring-loaded) are covered by the claim.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself does not specify a particular mechanism, only that the system "secure" the head. The term is generic and could be argued to encompass any mechanism that allows for rapid attachment and detachment without tools.
- Evidence for a Narrower Interpretation: The specification's only detailed embodiment of the quick-connect system is a magnetic one, where magnets in the piston and the massage head shaft attract each other. (’482 Patent, col. 6:57-66, FIGS. 6-6B). A defendant may argue that the term's meaning should be limited by or construed in light of this sole disclosed embodiment.
The Term: "configured to secure...while the piston reciprocates"
Context and Importance: This functional language in Claim 1 is highly specific and likely to be a primary point of contention. It defines not just what the system does (secures a head), but a specific condition under which it must be able to do so (during operation).
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A plaintiff may argue that if a system can have a head inserted while the piston is moving, it is inherently "configured" to do so, regardless of whether it was a primary design goal.
- Evidence for a Narrower Interpretation: A defendant may argue that "configured to" implies intentional design for a purpose. The specification mentions that the end of the massage head may be "rounded, pointed or tapered...to allow it to easily slip into the opening...even while the piston...is moving." (’482 Patent, col. 7:10-14). The absence of such facilitating features in an accused device could support an argument that it is not "configured" for this function.
VI. Other Allegations
- Indirect Infringement: The complaint focuses on direct infringement under 35 U.S.C. § 271 and does not contain specific allegations or a separate count for indirect infringement (inducement or contributory infringement).
- Willful Infringement: Plaintiff explicitly alleges willful infringement for all three patents. (Compl. ¶¶ 30, 35, 40). The allegation is based on Defendant having knowledge of the patents "by no later than January 16, 2024," the date Plaintiff filed a prior, since-dismissed lawsuit against Defendant in another district. (Compl. ¶24). The complaint alleges that Defendant's continued infringement after this date was and is "willful, intentional, and conscious disregard of the objectively high likelihood" that its conduct constituted infringement. (Compl. ¶¶ 24, 30).
VII. Analyst’s Conclusion: Key Questions for the Case
- A key evidentiary question will be one of functional capability: Does the evidence show that the accused products' attachment systems are merely capable of having a head inserted while the device is on, or are they specifically "configured to secure" a head during reciprocation, as required by the functional language of Claim 1 of the ’482 patent?
- The design patent claims will turn on a question of visual perception: Would an ordinary observer, giving the attention a typical purchaser does, be deceived into thinking the accused Sharper Image, Pursonic, and other massagers are the same as the ornamental designs protected by the D’253 and D’317 patents, considering the overall T-shaped form, surface details, and proportions?
- A central question for damages will be the effect of prior litigation: Is the act of filing a lawsuit in one jurisdiction, which is then voluntarily dismissed and refiled elsewhere, sufficient to establish the "knowledge" and "conscious disregard" necessary to support a finding of willful infringement for all sales occurring after the initial filing date?