DCT
8:24-cv-02460
Ac Green Ltd v. Hyper Ice Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: AC Green Limited (Hong Kong)
- Defendant: Hyper Ice, Inc. (California) and Datafeel, Inc. (Nebraska)
- Plaintiff’s Counsel: Martin J. Foley, a PLC; Law Office of Edward H. Rice, LLC
- Case Identification: 8:24-cv-02460, C.D. Cal., 11/11/2024
- Venue Allegations: Venue is asserted based on Defendant Hyper Ice, Inc.'s residence within the Central District of California.
- Core Dispute: In this declaratory judgment action, Plaintiff AC Green Limited seeks a judicial declaration that its "Renpho Eye Massagers" do not infringe, and that the claims are invalid, of a patent owned by Defendant Datafeel and exclusively licensed to Defendant Hyper Ice related to wearable communication devices.
- Technical Context: The technology at issue involves wearable devices that use multiple, different forms of energy (e.g., heat, vibration, pressure) to transmit information to a user's skin, creating a non-visual channel for human-computer communication.
- Key Procedural History: The complaint states that this action arises from pre-suit communications in which Hyper Ice, as the exclusive licensee, accused AC Green's eye massager products of infringing the patent-in-suit and demanded a royalty-bearing license. This contact allegedly created the "actual controversy" required for a declaratory judgment filing.
Case Timeline
| Date | Event |
|---|---|
| 2017-10-23 | ’161 Patent Earliest Priority Date |
| 2018-01-01 | Plaintiff begins selling under "Renpho" brand |
| 2019-01-01 | Plaintiff begins selling "Renpho Eye Massagers" |
| 2024-09-01 | (Early September) Hyper Ice contacts Plaintiff re: infringement |
| 2024-09-24 | U.S. Patent No. 12,097,161 Issues |
| 2024-11-11 | Complaint for Declaratory Judgment Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 12,097,161 - "Communication Devices, Methods, and Systems"
- Patent Identification: U.S. Patent No. 12,097,161, "Communication Devices, Methods, and Systems," issued September 24, 2024.
The Invention Explained
- Problem Addressed: The patent's background section identifies the "negative effects of excessive screen time" as a key problem, noting that the human eye was not designed for prolonged use with computer screens (Compl. ¶¶27-28; ’161 Patent, col. 1:35-44). It proposes that "Alternate means for person-to-computer communications" are needed to address this issue (Compl. ¶28; ’161 Patent, col. 1:48-49).
- The Patented Solution: The invention is a wearable communication device that transmits information to a user through their skin. The core of the solution is a device with "a plurality of energy generators" that can be "independently operable" to convert electricity into "a plurality of different energy types" (e.g., impact, heat, electrical shock, pressure) that are recognizable by nerves in the skin (Compl. ¶32; ’161 Patent, Abstract; ’161 Patent, col. 3:20-26). This enables the communication of complex data, such as alphanumeric symbols, without relying on sight (Compl. ¶29; ’161 Patent, col. 2:42-49). The complaint notes the patent itself does not refer to eye massagers (Compl. ¶30).
- Technical Importance: The technology aims to leverage non-optical nerves to create a new, high-bandwidth sensory channel for human-computer interaction, moving beyond traditional visual and auditory displays ('161 Patent, col. 1:50-54).
Key Claims at a Glance
- The complaint identifies independent claims 1, 14, and 15 as being at issue (Compl. ¶31). The primary elements of independent claim 1 include:
- A body including a flexible material layer conformable about a head of a user.
- An attachment element including a band to maintain the body about the head of the user.
- A plurality of energy generators being independently operable to convert electricity from the power source into a plurality of different energy types transmittable towards the skin of the user.
- Wherein at least one of the plurality of energy generators is disposed at least partially within the flexible material layer.
- The complaint seeks a declaration of non-infringement for all claims of the ’161 Patent (Compl. ¶38).
III. The Accused Instrumentality
Product Identification
- The "Renpho Eye Massagers" product line (Compl. ¶15).
Functionality and Market Context
- The complaint describes the accused products as battery-operated devices that consumers wear over their eyes (Compl. ¶16). Their function is to "impart different forms of stimulation" to the area around the eyes, which may include "heat, vibration, and/or gentle massage type pressure" for relaxation and other health benefits (Compl. ¶¶16-17). The complaint does not provide sufficient detail for analysis of the internal architecture or specific components that generate these forms of stimulation. No probative visual evidence provided in complaint.
- The complaint positions the products as being commercially significant, describing them as part of a "best-selling" product line from a "world's leading brand" of eye massagers (Compl. ¶¶15, 19).
IV. Analysis of Infringement Allegations
’161 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Plaintiff's Non-Infringing Functionality Argument | Complaint Citation | Patent Citation |
|---|---|---|---|
| a plurality of energy generators being independently operable to convert electricity from the power source into a plurality of different energy types transmittable towards the skin of the user . . . . | The complaint asserts that the Renpho Eye Massagers "do not practice the energy generator limitation, as properly construed" (Compl. ¶34). It describes the products as providing heat, vibration, and/or pressure, implying these functions do not meet the claimed requirements (Compl. ¶17). | ¶32, ¶34 | col. 41:10-14 |
- Identified Points of Contention:
- Scope Questions: The central dispute is one of claim scope. Does the functionality of the accused eye massagers—providing therapeutic heat, vibration, and pressure—fall within the scope of the claim limitation requiring "a plurality of energy generators... operable to convert electricity... into a plurality of different energy types"? Plaintiff AC Green argues it does not (Compl. ¶¶33-34), raising the question of whether the general wellness functions of its product are technically equivalent to the specific multi-energy communication system described in the patent.
- Technical Questions: A key factual question for the court will be the actual electromechanical design of the Renpho Eye Massagers. The complaint does not detail the products' internal architecture, leaving open the question of whether they contain separate, distinct generators for heat and vibration, or a single integrated component. The answer to this technical question will be critical for determining if the "plurality of energy generators" limitation is met.
V. Key Claim Terms for Construction
- The Term: "a plurality of different energy types"
- Context and Importance: This term is the crux of Plaintiff's non-infringement argument (Compl. ¶32). Plaintiff contends its products do not generate a "plurality of different energy types" as the term is properly construed (Compl. ¶34). The construction of this term—whether it is broad enough to cover any combination of distinct physical stimuli (like heat and vibration) or is limited to a specific set of energies intended for complex data communication—will likely be dispositive for infringement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specification explicitly lists examples of generator elements, including "an impact generator element; a heat generator element; a shock generator element; and a pressure generator element" ('161 Patent, col. 3:23-26). Defendants will likely argue that because the accused products allegedly provide "heat" and "vibration" (a form of impact or pressure), they necessarily output a "plurality of different energy types" as disclosed in the patent.
- Evidence for a Narrower Interpretation: Plaintiff may argue that the term must be read in the context of the problem solved by the patent: creating a non-visual means for "person-to-computer communication" to reduce "excessive screen time" ('161 Patent, col. 1:35-54). This context, focused on communicating symbolic data, could support a narrower construction that excludes devices providing only general therapeutic sensations. The complaint's observation that the patent "does not refer to eye massagers" may be used to reinforce this point (Compl. ¶30).
VI. Other Allegations
- Invalidity: Plaintiff pleads in the alternative that if the claims of the ’161 Patent are construed broadly enough to read on the Renpho Eye Massagers, then those claims would be invalid (Compl. ¶41). The invalidity argument is asserted under 35 U.S.C. §§ 102 and/or 103 in view of two prior art patents, U.S. Patent Nos. 10,765,885 and 9,549,870 (Compl. ¶41). Plaintiff also raises a contingent invalidity challenge under 35 U.S.C. § 112 (Compl. ¶42).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: Can the claim phrase "a plurality of energy generators... [creating] a plurality of different energy types," which originates in a patent for complex, non-visual data communication, be construed to cover a consumer wellness device that provides therapeutic heat and vibration?
- A second key issue is one of technical operation versus claim language: Based on its actual internal architecture, does the accused Renpho Eye Massager in fact contain a "plurality of energy generators" that are "independently operable," or does it use a more integrated system that falls outside the literal scope of the claims?
- Finally, the case presents a contingent validity challenge: If the patent claims are interpreted broadly enough to encompass the accused eye massagers, are those claims then rendered obvious or anticipated by the prior art patents cited in the complaint, which may disclose similar technologies in the wellness space?