DCT
2:21-cv-02262
Yigal Mesika v. Murphys Magic Supplies
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Yigal Mesika (an individual)
- Defendant: Murphy's Magic Supplies, a California corporation
- Plaintiff’s Counsel: Frederic M. Douglas
- Case Identification: 2:21-cv-02262, E.D. Cal., 12/09/2021
- Venue Allegations: Venue is alleged to be proper in the Eastern District of California because Defendant maintains a regular and established place of business in the district, specifically an office in Rancho Cordova, California.
- Core Dispute: Plaintiff alleges that Defendant’s magic trick products, which utilize miniature motorized reels for "invisible thread," infringe two patents related to miniature spooling apparatuses and spools.
- Technical Context: The technology involves miniaturized, electronically controlled devices for magicians to create illusions of levitation or animation using an extremely thin, "invisible" monofilament thread.
- Key Procedural History: The '689 patent front page lists extensive prior litigation history involving a parent patent ('609 patent), including a complaint, court orders, and settlement, suggesting the patent family has been asserted before.
Case Timeline
| Date | Event |
|---|---|
| 2005-03-29 | Earliest Priority Date for '689 Patent |
| 2005-03-29 | Earliest Priority Date for '122 Patent |
| 2011-06-28 | U.S. Patent No. 7,967,689 Issued |
| 2012-03-13 | U.S. Patent No. 8,133,122 Issued |
| 2021-12-09 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,967,689 - "Miniature Spooling Apparatus"
The Invention Explained
- Problem Addressed: The patent describes shortcomings in existing "invisible thread reels" (ITRs) used by magicians. Traditional rubber-band-powered reels provided uneven tension, while prior motorized versions were difficult to control and conceal, limiting their use in performances ('689 Patent, col. 1:26-47).
- The Patented Solution: The invention is a miniature, motorized spooling apparatus designed for concealment and improved control. It features an integrated circuit that manages the motor's operation, such as starting and stopping the winding of thread. One embodiment describes a system where pulling the thread manually rotates a magnet on the spool shaft, which activates a magnetic reed switch, waking the circuit from a "sleep mode" to begin winding the thread ('689 Patent, col. 5:4-24). This provides a sophisticated, hands-free control mechanism superior to a simple on/off button.
- Technical Importance: This technology offers magicians a tool that provides even, consistent thread tension and advanced, concealable control options for creating more convincing levitation and animation illusions ('689 Patent, col. 4:25-34).
Key Claims at a Glance
- The complaint asserts infringement of claims 1-16, with a detailed analysis of independent claim 13 (Compl. ¶29, ¶32).
- Essential elements of independent claim 13 include:
- A miniature spooling apparatus with a miniature motor and a spool.
- Invisible, thin, monofilament thread wound on the spool.
- An integrated circuit to control the motor's start and stop functions.
- A "toe-switch" with a wireless transmitter.
- A wireless receiver connected to the integrated circuit to receive signals from the transmitter.
- The toe-switch is operable to cause the integrated circuit to start and stop the winding of the thread.
U.S. Patent No. 8,133,122 - "Miniature Spool"
The Invention Explained
- Problem Addressed: As with the '689 patent, this invention addresses the need for improved, concealable ITR technology for magicians ('122 Patent, col. 1:20-46).
- The Patented Solution: This patent focuses specifically on the physical design of the miniature spool itself, rather than the entire electronic apparatus. The invention is a spool with a "top portion" having a circumferential "indentation" for winding thread and a "bottom portion" with an "axle receptacle" to receive an axle from a miniature motor. A defining characteristic is that the spool must have "dimensions such that it is concealable within a pen cap" ('122 Patent, Claim 1). The specification provides exemplary, non-limiting dimensions, such as a top portion diameter of approximately 0.210 inches ('122 Patent, col. 4:50-51).
- Technical Importance: This specific spool design is intended to be easily integrated into a miniaturized, concealed motorized device while ensuring smooth and consistent spooling of the ultra-fine thread ('122 Patent, col. 4:47-51).
Key Claims at a Glance
- The complaint asserts infringement of claims 1-16, with a detailed analysis of independent claim 1 (Compl. ¶34, ¶37).
- Essential elements of independent claim 1 include:
- A miniature spool.
- A top portion with a circumferential indentation for spooling a thread.
- A bottom portion with an axle receptacle for receiving a motor's axle.
- The miniature spool has dimensions rendering it "concealable within a pen cap."
III. The Accused Instrumentality
Product Identification
- The complaint accuses the "Gravity Invisible Thread Reel" and "Gravity Reel by Joao Miranda" (collectively, "Gravity Reel") of infringing the '689 Patent (Compl. ¶13). It accuses products called "Spider Hand" and "Phantom Hand," including their replacement spools, of infringing the '122 Patent (Compl. ¶15, p.28).
Functionality and Market Context
- The Gravity Reel is described as a "Double motor system" that allows a performer to create a "giant HOOP of IT [invisible thread]" (Compl. p.14). It includes programmable features via an "Internal Memory Module," adjustable speed control, and vibration feedback (Compl. p.14-15). The complaint alleges it can be controlled hands-free via a "custom-designed Toe Switch" accessory (Compl. p.23).
- The "Phantom Hand" products are presented as devices for which Defendant sells replacement spools (Compl. p.28). The infringement allegations for the '122 Patent focus on the physical structure of these spools.
IV. Analysis of Infringement Allegations
'689 Patent Infringement Allegations
| Claim Element (from Independent Claim 13) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A miniature spooling apparatus, comprising; a miniature motor... a spool attached with the shaft of the miniature motor... | The "Gravity Reel" is a miniature spooling apparatus containing a "Double motor system" and spools. An image shows a spool displayed with other components. (Compl. p.12). | ¶32c | col. 4:10-14, 20-22 |
| invisible thread wound around the spool, the invisible thread being a thin, monofilament thread; | The accused product's instructional video lists contents including "invisible thread," which a supplier video describes as "one monofilament thread." (Compl. p.17, 19). | ¶32e, ¶32f | col. 4:15-19 |
| an integrated circuit connected with the motor and configured to cause the motor to start winding... and also configured... to stop... | YouTube videos allegedly show the accused product's controller causing the motor to wind in "Live Mode" and "ITR Mode," demonstrating the start/stop functionality. (Compl. p.21). | ¶32g | col. 4:35-39 |
| a toe-switch having a wireless transmitter for transmitting a wireless signal; | Defendant allegedly offers a "toe-switch accessory" for hands-free control of the Gravity Reel. An image shows an insole with a custom-designed switch. (Compl. p.23). | ¶32h | col. 6:10-14 |
| a wireless receiver attached with the integrated circuit for receiving the wireless signal and causing integrated circuit to activate the motor... | The product's "wireless receiver" is identified as the control feature. Videos allegedly demonstrate the controller causing the motor to wind, confirming receipt of a wireless signal to activate the motor. (Compl. p.25). | ¶32i | col. 6:4-9 |
| wherein the toe-switch is operable for causing the integrated circuit to both start and stop winding the invisible thread around the spool. | A video allegedly shows the toe switch in operation, and product documentation states the accessory "allows you to control one motor in LIVE MODE or to start a program," satisfying the start/stop functionality. (Compl. p.23, 27). | ¶32j | col. 6:42-46 |
- Identified Points of Contention:
- Scope Questions: Claim 13 requires a "toe-switch." The complaint alleges this is met by a separate "toe-switch accessory" (Compl. p.23). This raises the question of whether the base Gravity Reel product directly infringes Claim 13, or if infringement only occurs when a consumer combines the base unit with the accessory, potentially shifting the focus to indirect infringement.
- Technical Questions: What evidence demonstrates that the accused product's "Internal Memory Module" and programmable functions perform the specific operations of the claimed "integrated circuit" (e.g., start/stop based on wireless signals), as opposed to other, non-infringing functions?
'122 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A miniature spool, comprising; a top portion, the top portion having an indentation formed circumferentially around the top portion for spooling a thread therein; | The complaint presents an image from Defendant's website of the "Phantom Hand x2-Replacement Spools" packaging, which displays a spool with the claimed feature. (Compl. p.28). | ¶37a, ¶37b | col. 4:1-5 |
| a bottom portion with an axle receptacle formed therein for receiving an axle from a miniature motor; | A photograph, allegedly from an inspection of the accused product, shows a close-up of the spool's bottom portion with a feature for inserting an axle. (Compl. p.31). | ¶37c | col. 4:6-9 |
| and wherein the miniature spool has dimensions such that it is concealable within a pen cap. | The complaint alleges that the "Spool sold by Defendant is small enough to be capable of being concealed in a customary writing pen cap." (Compl. p.33). | ¶37d | col. 4:12-14 |
- Identified Points of Contention:
- Scope Questions: How will the parties define "concealable within a pen cap"? The functional nature of this limitation may be a central point of dispute, raising questions about whether it provides a clear and definite scope for the claim.
- Technical Questions: Does the complaint provide sufficient evidence, beyond a conclusory statement, that the accused spools actually meet the dimensional requirements of the "concealable within a pen cap" limitation? The analysis may turn on a direct comparison of the accused spool's physical measurements against the dimensions of what the court determines to be a "customary writing pen cap."
V. Key Claim Terms for Construction
Patent: '689 Patent
- The Term: "toe-switch"
- Context and Importance: This term is critical because the accused infringing feature is a separately sold accessory (Compl. p.23). The construction of this term will determine whether the accessory falls within the claim scope and will be central to the direct and indirect infringement analyses.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term appears in the claims without a specific structural definition in the specification, which may support a construction covering any switch operated by a user's toe that performs the claimed wireless transmission function.
- Evidence for a Narrower Interpretation: The specification describes a specific embodiment as a "remote-control toe-switch that is attached to the user's sock" and is operated by a "ball switch" looped around the user's toe ('689 Patent, col. 6:10-18). A defendant may argue that the term should be limited to this disclosed structure.
Patent: '122 Patent
- The Term: "dimensions such that it is concealable within a pen cap"
- Context and Importance: This functional limitation defines the size of the claimed spool. Its construction is dispositive for infringement, as the physical size of the accused spool is a core factual question. Practitioners may focus on this term because its potential ambiguity could be a basis for an indefiniteness challenge.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent claims the capability of being concealed, not a specific dimension. Plaintiff may argue this should be interpreted broadly to mean fitting within any of a variety of common pen caps available at the time of the invention.
- Evidence for a Narrower Interpretation: The specification repeatedly links the overall apparatus to being concealed within a writing utensil ('122 Patent, col. 2:32-41). A defendant could argue the term should be limited by the objective physical dimensions of standard pen caps as understood by a person of ordinary skill in the art, potentially narrowing the scope based on specific measurements.
VI. Other Allegations
- Indirect Infringement: The complaint alleges Defendants indirectly infringe both patents by "instructing, directing, and requiring others" to use the products in an infringing manner (Compl. ¶18-19). For the '689 Patent, this is factually supported by allegations that Defendant sells a base unit and a separate "toe-switch" accessory with instructions on how to combine and use them (Compl. p.23).
- Willful Infringement: Willfulness is alleged for both patents based on knowledge of the patents and infringement "since at least the date of the Plaintiff sending a notice of infringement... including by way of this lawsuit" (Compl. ¶24-25). This is a post-suit willfulness allegation intended to support a claim for enhanced damages.
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue for the '689 patent will be one of infringement theory: does the accused "Gravity Reel" directly infringe Claim 13 on its own, or is infringement only completed when a user combines it with the separately sold "toe-switch accessory"? This may frame the dispute as a question of direct infringement versus induced infringement.
- For the '122 patent, a key question will be one of scope and proof: how will the court construe the functional limitation "concealable within a pen cap," and what evidence will be required to prove that the accused spools meet this dimensional requirement?
- A key evidentiary question across both patents will be one of technical mapping: does the accused "Gravity Reel's" programmable control system perform the specific functions recited in Claim 13 of the '689 patent, and do the physical features of the accused "Phantom Hand" spools align with all limitations of Claim 1 of the '122 patent?