DCT
8:24-cv-01512
MerchSource LLC v. Hyper Ice Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: MerchSource, LLC (Delaware)
- Defendant: Hyper Ice, Inc. (California) and Hyperice IP Subco, LLC (Delaware)
- Plaintiff’s Counsel: Renner Otto
- Case Identification: 8:24-cv-01512, C.D. Cal., 07/09/2024
- Venue Allegations: Venue is asserted based on Defendants having their principal places of business within the Central District of California.
- Core Dispute: Plaintiff MerchSource seeks a declaratory judgment that its percussion massage guns do not infringe Defendants' patent, following an extra-judicial infringement complaint filed by Defendants to Amazon that resulted in the delisting of Plaintiff's products.
- Technical Context: The lawsuit concerns the market for handheld percussive massage devices, which are used for deep muscle therapy and pain relief.
- Key Procedural History: This action is related to a separate, pending patent infringement lawsuit between the same parties over the same accused products, Hyper Ice, Inc. v. MerchSource, LLC (C.D. Cal., Case No. 8:24-CV-00410). Defendants allegedly did not assert the patent-in-suit from the current case in that prior action, instead using it as the basis for a takedown notice on Amazon.com.
Case Timeline
| Date | Event |
|---|---|
| 2013-07-01 | ’082 Patent Priority Date |
| 2024-01-16 | Defendants file related patent action in the District of Delaware |
| 2024-02-27 | Defendants dismiss Delaware action and commence related action in C.D. Cal. |
| 2024-03-26 | U.S. Patent No. 11,938,082 ('082 Patent) Issues |
| 2024-06-18 | Defendants submit extra-judicial infringement complaint to Amazon |
| 2024-07-09 | Complaint for Declaratory Judgment Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,938,082 - "Massage Device Having Variable Stroke Length"
- Patent Identification: U.S. Patent No. 11,938,082, "Massage Device Having Variable Stroke Length," issued March 26, 2024.
The Invention Explained
- Problem Addressed: The patent notes that prior art vibrating massagers suffer from deficiencies, including being "bulky, get very hot, are noisy and/or are difficult to use for extended periods of time" (’082 Patent, col. 1:31-34).
- The Patented Solution: The patent describes a handheld percussive massager designed to be more robust and user-friendly. The invention includes a drive mechanism (e.g., a Scotch yoke) to convert a motor's rotary motion into linear motion for a piston and an attached massage head (’082 Patent, col. 5:1-14). A key feature highlighted is a "quick-connect mechanism for connecting one or more massaging heads" to the device, which in one embodiment uses magnets to allow for rapid swapping of attachments (’082 Patent, col. 2:40-43, Figs. 6, 6A).
- Technical Importance: The technology aims to enhance the convenience and versatility of percussive massagers by enabling users to easily change applicator heads, potentially even while the device is operating (’082 Patent, col. 6:55-57).
Key Claims at a Glance
- The complaint primarily discusses independent claims 1 (apparatus) and 18 (method) (Compl. ¶¶ 13-14).
- Independent Claim 1 recites the essential elements of a percussive massager, including:
- a housing;
- a piston with a bore at its distal end;
- a motor to reciprocate the piston;
- a drive mechanism; and
- a "quick-connect system" comprising the piston and a massaging head, which is "configured to have a proximal end of the first massaging head inserted into or removed from the bore while the piston reciprocates."
- The complaint does not explicitly reserve the right to assert dependent claims but seeks a declaration of non-infringement of "any claim of the '082 patent" (Compl. ¶37).
III. The Accused Instrumentality
Product Identification
- The complaint identifies a line of Sharper Image® branded percussion massagers, including the Powerboost, Powerboost Deep Tissue, Powerboost Flex Pivot, Powerboost Pro+ Hot & Cold, Powerboost Palm, and Powerboost Move models (Compl. ¶17).
Functionality and Market Context
- These are handheld, battery-powered devices that provide percussive massage therapy through a reciprocating head (Compl. ¶¶ 17, 18).
- The complaint alleges two key technical aspects of their operation: first, that they use friction to secure the massage head in place, not magnets (Compl. ¶18); and second, that their instruction manuals explicitly warn users to "power off the massager before changing attachments" (Compl. ¶¶ 19, 20). An image from the "Powerboost® Deep Tissue Percussion Massager" manual illustrates the instruction to power off the device before changing attachments (Compl. ¶20, p. 8).
- The products are sold on e-commerce channels, including Amazon.com, where they are alleged to compete directly with Defendants' products (Compl. ¶2).
IV. Analysis of Infringement Allegations
As this is a complaint for declaratory judgment of non-infringement, the chart summarizes Plaintiff MerchSource's allegations of how its products fail to meet the claim limitations.
'082 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a quick-connect system comprising the distal end of the piston and a first massaging head... | The Accused Products allegedly do not include the required "quick-connect system." The complaint alleges they use friction to secure the massage head, not a magnetic system as described in the patent's embodiment. | ¶18, ¶37 | col. 6:46-67 |
| ...wherein the quick-connect system is configured to have a proximal end of the first massaging head inserted into or removed from the bore while the piston reciprocates the predetermined stroke length at the first speed. | The Accused Products are allegedly not configured to allow the massage head to be inserted or removed while operating. The complaint cites user manuals that instruct users to power off the device before changing attachments. A visual from the "Powerboost® Pro+ Hot & Cold Percussion Massager" manual shows this instruction. | ¶19, ¶21, ¶37 | col. 10:9-14 |
- Identified Points of Contention:
- Scope Questions: A central dispute will be whether the term "quick-connect system" should be construed broadly to encompass a friction-fit mechanism, or whether its meaning is limited by the specification's detailed description of a magnetic system.
- Technical Questions: The case raises the question of what it means for a device to be "configured to" perform a certain function. Does a manufacturer's instruction to power off the device before changing attachments prove that the product is not "configured to" allow swapping while operating, or is the analysis based on whether such an action is physically possible, regardless of safety warnings?
V. Key Claim Terms for Construction
- The Term: "quick-connect system"
- Context and Importance: This term's definition is critical, as MerchSource's primary non-infringement argument is that its friction-fit attachment mechanism does not meet this limitation (Compl. ¶18). Practitioners may focus on whether the specification's sole, detailed magnetic embodiment limits the scope of this otherwise general term.
- Intrinsic Evidence for a Broader Interpretation: The claim language itself does not recite magnets or any particular structure, suggesting a functional definition may be appropriate (’082 Patent, col. 10:5-14).
- Evidence for a Narrower Interpretation: The patent’s detailed description provides only one specific example of the "quick-connect system," which relies on two magnets to hold the massage head in place (’082 Patent, col. 6:46-67, Fig. 6). This may be argued to implicitly define or limit the scope of the term.
- The Term: "configured to... [be] inserted into or removed from the bore while the piston reciprocates"
- Context and Importance: This limitation is the basis for MerchSource's second major non-infringement argument, which relies on its user manuals that warn against this action (Compl. ¶19). The dispute will likely center on whether "configured to" refers to the device's physical capabilities or its intended and safe operational modes.
- Intrinsic Evidence for Interpretation: The patent specification supports that the invention is intended to be used this way, stating that the system "may be used without turning off the massaging device" and that a tapered head allows it to "easily slip into the opening... even while the piston... is moving" (’082 Patent, col. 6:55-57; col. 7:9-12). This language suggests the term relates to the physical design and capability of the device.
VI. Other Allegations
- Willful Infringement: As a declaratory judgment action, the complaint does not allege willfulness against the Defendants. Instead, it alleges that Defendants engaged in "objectively baseless, bad faith extra-judicial enforcement" by making infringement assertions to Amazon (Compl. ¶¶ 9, 53). The complaint alleges Defendants knew the Accused Products did not infringe because they lacked the required elements and because Defendants never asserted the '082 patent in the parallel court litigation (Compl. ¶¶ 31, 33). These allegations form the basis for MerchSource's request for a finding that the case is "exceptional" under 35 U.S.C. § 285, which could entitle it to attorneys' fees (Compl. ¶(g), p. 14).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction: can the term "quick-connect system", which is illustrated in the patent with a specific magnetic embodiment, be construed broadly enough to read on the friction-fit mechanism used by the Accused Products?
- A second pivotal issue will be a mixed question of law and fact: does a manufacturer's explicit instruction in a user manual to "power off" a device before changing an attachment mean the device is not "configured to" allow that action while operating, as required by the claim, or is the analysis determined by the device's physical capabilities alone?
- Finally, a key procedural and damages question will be whether Defendants' decision to enforce the '082 patent through an Amazon takedown notice, rather than adding it to the existing litigation, constitutes bad faith, potentially making this an "exceptional case" and giving rise to liability under the Lanham Act or state law.