DCT
8:25-cv-00429
Wuyi Zhongyu Jinshu Zhiping Co Ltd v. Hyper Ice Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Wuyi Zhongyu Jinshu Zhiping Co. Ltd. and Yongkang Shiding Chuangong Maoyou Xian Gongsi (People's Republic of China)
- Defendant: Hyper Ice, Inc. (California) and Hyperice IP Subco, LLC ( Delaware)
- Plaintiff’s Counsel: K&L GATES LLP
- Case Identification: 8:25-cv-00429, C.D. Cal., 03/05/2025
- Venue Allegations: Venue is alleged to be proper based on forum selection clauses in prior Confidential Patent License Agreements between the parties.
- Core Dispute: Plaintiffs seek a declaratory judgment that their "Redesigned Massage Guns," which feature a threaded connection mechanism, do not infringe three of Defendant's patents and, consequently, that Plaintiffs have not breached the parties' license agreements by ceasing royalty payments on these products.
- Technical Context: The technology involves percussive massage devices, commonly known as massage guns, a significant category in the consumer health and wellness market.
- Key Procedural History: The parties executed patent license agreements in June 2024. During prosecution of the parent patent ('482), the applicant allegedly distinguished the invention from prior art using screw-thread connections by emphasizing its "quick-connect system" that allows a massage head to be attached while the piston is reciprocating. The two continuation patents ('082 and '826) were subject to terminal disclaimers over the '482 Patent, indicating no patentable distinction between their claims.
Case Timeline
| Date | Event |
|---|---|
| 2013-07-01 | Earliest Priority Date for '482, '082, and '826 Patents |
| 2024-01-02 | U.S. Patent 11,857,482 Issues |
| 2024-03-26 | U.S. Patent 11,938,082 Issues |
| 2024-06-26 | Parties Conclude Confidential Patent License Agreements |
| 2024-10-01 | Plaintiffs Begin Selling "Redesigned Massage Guns" |
| 2024-11-05 | U.S. Patent 12,133,826 Issues |
| 2025-01-19 | Plaintiffs Inform Defendant of Redesigned Massage Guns |
| 2025-03-05 | Complaint for Declaratory Judgment Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,857,482 - “MASSAGE DEVICE HAVING VARIABLE STROKE LENGTH” (Issued Jan. 2, 2024)
The Invention Explained
- Problem Addressed: The patent's background section notes that prior art vibrating massage devices suffer from deficiencies such as being "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 massage device with an improved drive mechanism and, critically, a "quick-connect system" for attaching and detaching massage heads ('482 Patent, col. 2:5-9). This system is described as allowing a user to swap heads without turning the device off, specifically while the piston is in its reciprocating motion, as illustrated by the magnetic connection mechanism in Figure 6A ('482 Patent, col. 6:46-57; Fig. 6A). The design also incorporates features like a separate cavity for a heat sink to improve cooling ('482 Patent, col. 6:10-25).
- Technical Importance: A mechanism that allows for quick swapping of applicator heads while the device is running could offer convenience and efficiency in a clinical or training setting, differentiating it from devices requiring a full stop or threaded disassembly.
Key Claims at a Glance
- The complaint seeks a declaration of non-infringement of "the claims of the Asserted Patents" (Compl. ¶9). Independent claim 1 is representative.
- Claim 1 Elements:
- A housing.
- A piston with a proximal end and a distal end having a "substantially cylindrical bore."
- A motor to make the piston reciprocate at a first speed.
- A drive mechanism controlling the piston's stroke length.
- A "quick-connect system" comprising the piston's distal end and a massaging head, which 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." ('482 Patent, col. 10:2-18).
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 11,938,082 - “MASSAGE DEVICE HAVING VARIABLE STROKE LENGTH” (Issued Mar. 26, 2024)
The Invention Explained
- Problem Addressed: As a continuation of the '482 patent, this patent addresses the same deficiencies in prior art massage devices, namely that they are bulky, noisy, and prone to overheating ('082 Patent, col. 2:25-33).
- The Patented Solution: The solution is nearly identical to that of the '482 patent, focusing on a massage device with a quick-connect mechanism for the massage head. The complaint alleges that all Asserted Patents "require that a 'massaging head' be capable of insertion and removal while the piston of the massaging device is 'reciprocating'" (Compl. ¶11). The patent specification describes a magnetic connection that enables this functionality ('082 Patent, col. 6:46-57).
- Technical Importance: This patent builds on the parent application, reinforcing the patentability of the quick-connect feature that functions during device operation.
Key Claims at a Glance
- The complaint seeks a declaration of non-infringement of "the claims of the Asserted Patents" (Compl. ¶9). Independent claim 1 is representative.
- Claim 1 Elements:
- A housing.
- A piston with a proximal end and a distal end having a bore.
- A motor to make the piston reciprocate.
- A drive mechanism controlling stroke length.
- A "quick-connect system" where a massaging head's proximal end is "inserted into or removed from the bore while the piston reciprocates." ('082 Patent, col. 10:1-12).
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 12,133,826 - “MASSAGE DEVICE WITH A RELEASABLE CONNECTION FOR A MASSAGING HEAD” (Issued Nov. 5, 2024)
- Technology Synopsis: This patent is a continuation within the same family as the '482 and '082 patents and is subject to a terminal disclaimer over the '482 Patent (Compl. ¶¶10, 14). It similarly describes a percussive massage device aiming to solve problems of prior art devices being noisy and hot by disclosing, among other things, a "quick-connect system" that permits a massage head to be attached or removed while the piston is actively reciprocating ('826 Patent, col. 2:25-33, col. 10:1-19; Compl. ¶11).
- Asserted Claims: The complaint generally refers to "the claims of the Asserted Patents" (Compl. ¶9). Independent claim 1 is representative.
- Accused Features: The non-infringement argument is based on the accused "Redesigned Massage Guns" using a threaded connection, which Plaintiffs contend is distinct from the claimed "quick-connect system," and instructing users to power off the device before changing heads (Compl. ¶¶17, 20, 35).
III. The Accused Instrumentality
Product Identification
- Plaintiffs' "Redesigned Massage Guns," sold under the Bodi-Well and Elefor trademarks (Compl. ¶¶3, 17).
Functionality and Market Context
- The key technical feature of the Redesigned Massage Guns is the use of "threading to engage the piston bore" for attaching the massage heads (Compl. ¶17). This is a deliberate design choice, as Plaintiffs' product literature explicitly "advise[s] users not to attempt to replace massage heads while the Redesigned Massage Guns are in operation" (Compl. ¶20). Plaintiffs argue this design was based on statements made by Defendant during patent prosecution to distinguish its invention from prior art with screw-thread mechanisms (Compl. ¶¶12, 19). These products are described as "central to Plaintiffs' business" and are sold into the U.S. market exclusively through the Amazon e-commerce platform (Compl. ¶25).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement. The analysis below summarizes the Plaintiffs' core arguments for why their products do not meet the limitations of the asserted claims.
'482 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a quick-connect system... 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 predetermined stroke length at the first speed. | The Redesigned Massage Guns use a "threaded connection" for the massage heads, which Plaintiffs contend is not a "quick-connect system." The product literature instructs users to turn the device off before swapping heads, arguing it is not configured for swapping during operation. | ¶¶17, 20, 34-35 | col. 6:46-57 |
'082 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a quick-connect system... 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 Redesigned Massage Guns employ a threaded connection, not a quick-connect system. Further, they are not configured for head removal "while the piston reciprocates" because product instructions advise powering the device off first. | ¶¶17, 20, 34-35 | col. 6:46-57 |
- Identified Points of Contention:
- Scope Questions: The primary dispute raises the question of whether a "threaded connection" can be considered a "quick-connect system" under the claim language. Plaintiffs' case for non-infringement relies heavily on the allegation that the patentee disavowed threaded connections during prosecution to overcome prior art (Compl. ¶¶12-13). The existence and scope of this alleged prosecution history disclaimer will be a central legal issue.
- Technical Questions: A key technical question is whether the accused products are "configured to" allow head swapping while reciprocating, even if the user manual advises against it. The analysis may turn on whether this claim limitation refers to the inherent physical capability of the device or its intended and instructed method of operation.
V. Key Claim Terms for Construction
The Term: "quick-connect system"
Context and Importance: This term is the lynchpin of the non-infringement argument. Plaintiffs contend their threaded mechanism is fundamentally different from a "quick-connect system," a distinction they allege Defendant itself made during prosecution (Compl. ¶12). Practitioners may focus on this term because its construction, informed by the alleged prosecution history disclaimer, could be dispositive of the infringement question.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party arguing for a broader scope might assert the term should be given its plain and ordinary meaning, encompassing any mechanism that allows for relatively fast connection compared to traditional tools, without being limited to the specific embodiments.
- Evidence for a Narrower Interpretation: The specification's only detailed embodiment of this system is a magnetic connection ( '482 Patent, col. 6:46-68; Figs. 6-6B). Crucially, the complaint alleges that during prosecution, the applicant distinguished the claims from prior art teaching a "screw/thread connection mechanism," which may create a strong argument for construing "quick-connect system" to explicitly exclude threaded connections (Compl. ¶12).
The Term: "while the piston reciprocates"
Context and Importance: This phrase is critical because Plaintiffs allege their products are designed to be turned off for head swapping (Compl. ¶20). The dispute will question whether a device is still infringing if it is physically capable of being operated in a manner that meets this limitation, even if instructed not to.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language "configured to" may be interpreted as referring to the structural design and physical possibility of the action. A party could argue that if head removal is physically possible while the piston is moving, the device is "configured" to do so, irrespective of user instructions.
- Evidence for a Narrower Interpretation: A party could argue that the term "configured" should be read in the context of the entire product as sold, including its operational instructions and safety features. Under this view, a product with instructions and design cues (like requiring threading) that guide a user to power it off is not "configured" for swapping "while" reciprocating.
VI. Other Allegations
The complaint does not contain allegations of indirect or willful infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
This declaratory judgment action appears to center on a classic design-around strategy, raising focused questions of claim scope and infringement. The resolution of the case may depend on the court's determination of the following:
- A core issue will be one of prosecution history estoppel: Did the patentee, in distinguishing the "quick-connect system" from prior art "screw/thread connection mechanism[s]," definitively surrender claim scope that would cover the threaded design of Plaintiffs' accused products?
- A key question of claim interpretation will be one of capability versus instructed use: Does the limitation "configured to... while the piston reciprocates" require only that the action is physically possible, or does it require that the device be designed and intended for such use, making the Plaintiffs' user instructions a relevant factor in the non-infringement analysis?
- Finally, the outcome will raise a contractual question: Does a licensee's unilateral decision to cease royalty payments on a redesigned product, based on its own non-infringement analysis, constitute a breach of the license agreement if that non-infringement position is later rejected by a court?