DCT

8:24-cv-01907

Novoluto GmbH v. XR LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 8:24-cv-01907, C.D. Cal., 09/03/2024
  • Venue Allegations: Venue is alleged to be proper in the Central District of California because Defendant resides in the district and maintains its principal place of business there.
  • Core Dispute: Plaintiff alleges that Defendant’s line of sexual stimulation devices infringes six patents related to technology that uses modulated positive and negative air pressure to enhance sexual arousal.
  • Technical Context: The technology involves handheld devices that create a "pressure field" of alternating suction and pressure, intended to stimulate erogenous zones without direct mechanical contact, a method Plaintiff claims to have pioneered.
  • Key Procedural History: The complaint alleges that Plaintiff's commercial embodiments of the asserted patents are branded as "Womanizer®" and that their market success prompted an influx of allegedly infringing devices from competitors, including Defendant. No prior litigation or administrative patent challenges are mentioned in the complaint.

Case Timeline

Date Event
2013-09-23 Earliest Priority Date for Asserted Patents
2017-09-19 U.S. Patent No. 9,763,851 Issued
2017-12-26 U.S. Patent No. 9,849,061 Issued
2018-04-10 U.S. Patent No. 9,937,097 Issued
2020-12-08 U.S. Patent No. 10,857,063 Issued
2021-08-17 U.S. Patent No. 11,090,220 Issued
2021-08-31 U.S. Patent No. 11,103,418 Issued
2024-09-03 Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 9,763,851 - Stimulation Device, Issued Sep. 19, 2017

The Invention Explained

  • Problem Addressed: The patent's shared specification with the '063 Patent describes technical problems with prior art sexual stimulation devices. Direct-contact vibrators can cause skin irritation, while conventional vacuum pumps may lead to "habituation effects," dehydration of the stimulated skin, and can be complex, unhygienic, and difficult to clean due to their use of valves and pumps ('063 Patent, col. 1:21-2:52).
  • The Patented Solution: The invention is a device that generates "modulated positive and negative pressures" within a self-contained system ('063 Patent, Abstract). A drive unit causes a flexible wall of a chamber to deflect in opposing directions, which changes the chamber's volume and creates alternating pressure and suction ('063 Patent, col. 4:6-18). This pressure field is applied to a body part through an opening, providing stimulation without direct mechanical contact and avoiding the hygiene and drying issues of prior art pumps that discharge air ('063 Patent, col. 7:1-9, Fig. 3).
  • Technical Importance: The complaint alleges that this technology was the first to use modulated positive and negative pressures for sexual stimulation, representing a departure from conventional vibrators or simple vacuum devices (Compl. ¶9).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 ('851 Patent, IPR Certificate; Compl. ¶17). The IPR certificate confirms claims 1-6 are patentable.
  • While the complaint does not provide the text of claim 1 of the '851 patent, the related and asserted '063 patent provides a representative claim structure. The core elements generally require a chamber with a flexible wall, a drive unit to deflect the wall to create modulated pressures, an opening to apply those pressures to the body, a control device, and a housing ('063 Patent, col. 15:1-16:2).
  • The complaint notes infringement of "one or more claims" and focuses on claim 1 as representative, reserving the right to assert others (Compl. ¶¶3, 18).

U.S. Patent No. 10,857,063 - Stimulation Device, Issued Dec. 8, 2020

The Invention Explained

  • Problem Addressed: The '063 Patent addresses the same technical problems as the '851 Patent, including the irritation, habituation, and hygiene issues associated with prior art stimulation devices ('063 Patent, col. 1:21-2:52).
  • The Patented Solution: The solution is functionally identical to that described in the '851 Patent: a device that uses a drive unit to deflect a flexible wall of a chamber, creating modulated positive and negative air pressures in a closed or semi-closed system for indirect stimulation ('063 Patent, col. 4:6-18, Fig. 3). The patent describes this as creating a "true-to-life imitation of the natural act of cohabitation" that avoids habituation effects ('063 Patent, col. 6:22-27).
  • Technical Importance: This patent is part of a family that, according to the complaint, introduced a new category of stimulation device to the market based on modulated air pressure (Compl. ¶9).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶32).
  • The essential elements of independent claim 1 are:
    • A valveless stimulation device comprising:
    • a chamber having a flexible wall;
    • a drive unit in physical communication with the flexible wall to cause at least a portion of it to deflect in opposing directions, resulting in a changing volume that creates modulated positive and negative pressures;
    • a flexible material with an opening to sealingly engage a body part (e.g., a clitoris) and apply the pressures;
    • a control device to receive user input and control the drive unit;
    • a housing enclosing the drive unit and control device, where the flexible material is formed in one piece and both protrudes from and extends into the housing. ('063 Patent, col. 15:1-16:2).
  • The complaint reserves the right to assert dependent claims (Compl. ¶32).

U.S. Patent No. 11,090,220 - Stimulation Device

  • Patent Identification: U.S. Patent No. 11,090,220, "Stimulation Device," issued August 17, 2021.
  • Technology Synopsis: This patent is from the same family as the '851 and '063 patents and is directed to the same core technology of a handheld device that generates modulated positive and negative air pressures via a flexible-walled chamber to stimulate erogenous zones (Compl. ¶¶9-10).
  • Asserted Claims: At least independent claim 1 (Compl. ¶47).
  • Accused Features: The complaint alleges infringement by Defendant's stimulation devices that operate using modulated air pressure (Compl. ¶48).

U.S. Patent No. 11,103,418 - Stimulation Device

  • Patent Identification: U.S. Patent No. 11,103,418, "Stimulation Device," issued August 31, 2021.
  • Technology Synopsis: As a member of the same patent family, the '418 patent covers the same fundamental technology of generating modulated air pressure for stimulation using a drive unit and a flexible-walled chamber ('418 Patent, Abstract; Compl. ¶¶9-10).
  • Asserted Claims: At least independent claim 1 (Compl. ¶62).
  • Accused Features: The complaint accuses Defendant's air-pressure-based stimulation products of infringing the '418 patent (Compl. ¶63).

U.S. Patent No. 9,849,061 - Stimulation Device Having An Appendage

  • Patent Identification: U.S. Patent No. 9,849,061, "Stimulation Device Having An Appendage," issued December 26, 2017.
  • Technology Synopsis: This patent combines the core modulated air pressure technology with a second functional element: a "vaginal dildo appendage" (Compl. ¶10). The invention is thus a dual-function device providing both indirect air-pressure stimulation and direct physical stimulation ('061 Patent, Abstract).
  • Asserted Claims: At least independent claim 1 (Compl. ¶77).
  • Accused Features: The complaint targets accused products that incorporate both an air-pressure stimulator and a dildo-like appendage (Compl. ¶¶10, 78).

U.S. Patent No. 9,937,097 - Stimulation Device Having An Appendage

  • Patent Identification: U.S. Patent No. 9,937,097, "Stimulation Device Having An Appendage," issued April 10, 2018.
  • Technology Synopsis: This patent is a continuation of the same family as the '061 patent and is also directed to a dual-function stimulation device combining the modulated air pressure technology with an appendage for vaginal insertion (Compl. ¶10; '097 Patent, Abstract).
  • Asserted Claims: At least independent claim 1 (Compl. ¶92).
  • Accused Features: The complaint alleges infringement by Defendant's products that feature both an air-pressure stimulator and an appendage (Compl. ¶¶10, 93).

III. The Accused Instrumentality

Product Identification

The accused products include a range of stimulation devices, such as the "Shegasm Mini 12X Mini Silicone Clit Stimulator," "Bloomgasm Wild Rose 10X Suction Clit Stimulator," and "The Romping Rose 10X Suction Rose & Thrusting Vibrator," among others (Compl. ¶3). The complaint groups these into "Rose" type products, as well as the "Shegasm and Bloomgasm lines" (Compl. ¶12).

Functionality and Market Context

The complaint alleges that the accused products function by generating and applying modulated positive and negative pressures to erogenous zones, particularly the clitoris (Compl. ¶10). Some of the accused products are also alleged to include a "vaginal dildo appendage" in addition to the air pressure feature (Compl. ¶10). The complaint positions these products as part of an "influx of devices attempting to capitalize on the innovative technology disclosed in the Asserted Patents" following the launch of Plaintiff's "Womanizer®" commercial embodiments (Compl. ¶12).

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint references, but does not include, claim chart exhibits detailing the infringement allegations (Compl. ¶¶18, 33). The narrative infringement theory is summarized below.

'851 Patent Infringement Allegations (Summary)

The complaint alleges that Defendant's Accused Products, with "The Romping Rose" cited as a representative example, directly infringe at least claim 1 of the '851 Patent (Compl. ¶¶17-18). The core of the allegation is that these products are handheld stimulation devices that operate by generating modulated positive and negative air pressures, thereby practicing the patented invention (Compl. ¶¶9-10, 18).

'063 Patent Infringement Allegations (Summary)

The complaint alleges that products including "the Enchanted Rose" directly infringe at least claim 1 of the '063 Patent (Compl. ¶¶32-33). The infringement theory is that these devices embody the claimed invention of a "valveless" handheld device that uses a mechanism to create modulated air pressure for stimulation (Compl. ¶¶9-10; '063 Patent, col. 15:1).

Identified Points of Contention

  • Scope Questions: Claim 1 of the '063 patent recites a "valveless stimulation device." A central question for claim construction may be whether this term precludes only traditional, separate valves or any structure that performs a valving function. The complaint does not provide technical details of the accused products' internal mechanisms, leaving open the question of whether they contain any such structures.
  • Technical Questions: Claim 1 of the '063 Patent requires a "drive unit in physical communication with the flexible wall to cause... the flexible wall to deflect in opposing directions." The complaint does not specify the mechanism used in the Accused Products to generate pressure changes. A key factual dispute may arise over whether the accused mechanism—be it a diaphragm, piston, or other technology—technically meets the "deflect in opposing directions" limitation as described in the patent specification.

V. Key Claim Terms for Construction

The Term: "valveless stimulation device"

  • From: Claim 1 of the '063 Patent.
  • Context and Importance: This term appears in the preamble and is a significant structural limitation. The definition will be critical, as the presence of any structure construed as a "valve" in the Accused Products could be a basis for a non-infringement defense.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification contrasts the invention with prior art devices that use a "plurality of valves" ('063 Patent, col. 2:42-43). The patent also states its "simple construction" "avoids valves or pumps/compressors with potential dead spaces" ('063 Patent, col. 7:12-14). This may support an interpretation that "valveless" means lacking the separate, conventional valves found in the prior art.
    • Evidence for a Narrower Interpretation: The specification describes a "self-contained system of media- and airflow" where the medium "is moved decisively backwards and forwards between the chambers" ('063 Patent, col. 6:58-62). This description of a closed-loop system could support a narrower construction where "valveless" precludes any component that permits one-way air flow with the outside environment, such as an air intake or exhaust port.

The Term: "a chamber having a flexible wall"

  • From: Claim 1 of the '063 Patent.
  • Context and Importance: This phrase defines the core mechanism for generating the modulated pressure. The infringement analysis will depend on whether the pressure-generating component of the Accused Products meets this structural definition. Practitioners may focus on this term because the specific implementation of the pressure generator is a likely point of technical distinction.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The abstract describes the invention broadly as including a "chamber which has a flexible wall portion" where a drive unit causes "deflections of the flexible wall portion" ('063 Patent, Abstract). This language could support reading the claim on any enclosed volume that is changed by the movement of a flexible component.
    • Evidence for a Narrower Interpretation: The primary embodiment shows a specific arrangement where the "flexible wall" (31) is a diaphragm-like structure that is part of a first chamber (3) and is acted upon by a motor-driven eccentric (62) ('063 Patent, Fig. 3). A defendant could argue this embodiment limits the term "chamber having a flexible wall" to a diaphragm-style pump, potentially excluding devices that use a different mechanism, such as a piston in a cylinder.

VI. Other Allegations

Indirect Infringement

The complaint alleges inducement of infringement, stating on information and belief that Defendant provides customers with "user manuals and instructional videos, that teach, recommend and induce the infringing use and operation of the Accused Products" (Compl. ¶¶20, 35, 50, 65, 80, 95). It also alleges contributory infringement, stating the products are not staple articles of commerce and are especially adapted for infringement (Compl. ¶¶25-26, 40-41).

Willful Infringement

Willfulness is alleged based on pre-suit knowledge. The complaint asserts on "information and belief" that "Defendant has been aware of the Asserted Patents and the Commercial Embodiments since before the commercial release of Defendant's first air pleasure product" and that its infringement continued despite this awareness (Compl. ¶¶13, 28, 43, 58, 73, 88, 103).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A central evidentiary question will be one of technical operation: what is the precise internal mechanism by which the Accused Products generate modulated air pressure, and does that mechanism meet the claim requirements of a "valveless" device having a "chamber with a flexible wall" that is caused to "deflect in opposing directions"?
  • A key legal issue will be one of definitional scope: can the term "valveless," as used in the patents, be construed broadly to mean only the absence of conventional, discrete valves, or will it be interpreted more narrowly to preclude any structure that permits one-way airflow, a distinction that could be dispositive for infringement?
  • A critical factual question for willfulness will be the timing and substance of Defendant's alleged knowledge: what specific evidence can Plaintiff present to move beyond its "information and belief" allegations and establish that Defendant had pre-suit knowledge of the asserted patents themselves, as opposed to general awareness of Plaintiff's commercial products?