DCT
3:20-cv-09295
JJ Acquisition LLC v. Vibease Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: JJ Acquisition, LLC (Delaware / California)
- Defendant: Vibease Inc. (Delaware / California)
- Plaintiff’s Counsel: Akerman LLP
- Case Identification: 3:20-cv-09295, N.D. Cal., 12/22/2020
- Venue Allegations: Venue is asserted based on Defendant's headquarters and regular and established place of business being located within the Northern District of California, where acts of infringement are also alleged to have occurred.
- Core Dispute: Plaintiff alleges that Defendant’s "Emerald" personal massager infringes one utility patent and two design patents related to the functional and ornamental features of personal massage devices.
- Technical Context: The technology relates to personal massagers, specifically those with ergonomic designs intended for intimate use, featuring flexible components and targeted vibration.
- Key Procedural History: The complaint alleges that Plaintiff sent Defendant a cease-and-desist letter on July 15, 2020, providing pre-suit notice of infringement of the '972 design patent.
Case Timeline
| Date | Event |
|---|---|
| 2009-08-26 | Priority Date for '421, '972, and '066 Patents |
| 2011-02-01 | U.S. Patent No. D631,972 ('972 Patent) Issued |
| 2012-04-03 | U.S. Patent No. D657,066 ('066 Patent) Issued |
| 2014-09-02 | U.S. Patent No. 8,821,421 ('421 Patent) Issued |
| 2020-07-15 | Plaintiff's Counsel Sent Cease-and-Desist Letter to Defendant |
| 2020-12-22 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,821,421 - "Massage Device with Flexible Substructure", issued September 2, 2014
The Invention Explained
- Problem Addressed: The patent describes a need for massagers that can be comfortably and effectively applied to various parts of the human body for relaxation or erotic massage, requiring specific shapes to direct force without discomfort (’421 Patent, col. 2:60-67).
- The Patented Solution: The invention is a massager with a handle end, a working end, and a flexible portion connecting them. A key configuration involves a working end with at least two flexible, vibrating members that can be manipulated to stimulate different points simultaneously, enabled by a vibration source located away from the tips (’421 Patent, Abstract; col. 11:16-35). This structure is comprised of an internal "flexible substructure" covered by a softer outer "boot" (’421 Patent, col. 1:40-44).
- Technical Importance: This design architecture allows for a more versatile and ergonomic massager, particularly for intimate use, by enabling the user to manipulate the vibrating tips to stimulate adjacent areas simultaneously, such as the clitoris and vaginal entrance (’421 Patent, col. 11:30-35).
Key Claims at a Glance
- The complaint asserts independent claim 5 (Compl. ¶39).
- The essential elements of independent claim 5 include:
- A first end for being held by a user.
- A second end for body application, comprising at least two flexible members extending from the first end.
- The tip of each member providing vibration from a source located within the second end but "distal from the tips."
- The members being manipulable for simultaneous stimulation at different points.
- A flexible portion connecting the first and second ends, which comprises both a "flexible substructure" and a "boot covering the flexible substructure."
- The complaint does not explicitly reserve the right to assert dependent claims but states infringement of "one or more claims," including "at least claim 5" (Compl. ¶39).
U.S. Design Patent No. D631,972 - "Massage Device", issued February 1, 2011
The Invention Explained
- Problem Addressed: Design patents protect the novel, non-functional, ornamental appearance of an article of manufacture. The challenge is to create a unique and aesthetically pleasing design for a personal massager that is legally distinct from prior designs.
- The Patented Solution: The ’972 Patent claims the specific ornamental design for a massager as depicted in its figures (’972 Patent, Figs. 1-6). The design is characterized by a bifurcated (two-pronged) head seamlessly transitioning into a smooth, rounded body that serves as a handle. The overall visual impression created by these shapes and proportions constitutes the invention.
- Technical Importance: The commercial value of a product can be significantly influenced by its ornamental design. The complaint alleges that Plaintiff's own product embodying this design is one of its "best-selling products" (Compl. ¶9).
Key Claims at a Glance
- Design patents contain a single claim for the ornamental design as shown in the patent's drawings. The complaint alleges infringement of this claim (Compl. ¶16).
U.S. Design Patent No. D657,066 - "Massage Device", issued April 3, 2012
- Patent Identification: U.S. Design Patent No. D657066, "Massage Device", issued April 3, 2012.
- Technology Synopsis: This patent protects the novel ornamental design for a personal massager. The claimed design, which is a division of the application that resulted in the ’972 Patent, features a bifurcated head and a rounded body, presenting a specific overall visual appearance that is asserted to be infringed (’066 Patent, Figs. 1-12).
- Asserted Claims: The single claim for the ornamental design as shown.
- Accused Features: The overall ornamental appearance of the "Emerald" product is alleged to be substantially the same as the patented design (Compl. ¶29).
III. The Accused Instrumentality
Product Identification
- The accused product is the "Emerald" massager, part of Defendant's "Jewel Collection" (Compl. ¶10).
Functionality and Market Context
- The "Emerald" is a personal massager alleged to have a first end for manipulation by hand and a second end with two flexible members for application to the body (Compl. ¶¶41-43). The complaint alleges the product contains an internal vibration source and is constructed with a "flexible substructure" covered by a "light green layer (the boot)" (Compl. ¶¶44, 46-47). The complaint references a photograph from an alleged product teardown (Exhibit G) to support its claims about the internal construction (Compl. ¶44). The complaint suggests the product competes with Plaintiff's own "best-selling" products (Compl. ¶9).
IV. Analysis of Infringement Allegations
'421 Patent Infringement Allegations
| Claim Element (from Independent Claim 5) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A massager, comprising: a first end configured to be held and manipulated by the hand of a user; | The "Emerald" product includes an end configured to be manipulated by a user's hand, as allegedly shown in an image of the product. An image of the accused product is described in Exhibit F of the complaint (Compl. ¶41). | ¶41 | col. 2:51-55 |
| a second end configured for application to a portion of the human body, the second end comprising at least two flexible members extending away from the first end... | The "Emerald" product's second end includes two flexible members extending away from the first end (Compl. ¶43). | ¶42-43 | col. 11:16-20 |
| ...and having the tip of each member providing a point of vibration by way of a source of vibrational motion that is disposed within the second end and distal from the tips, | A teardown photograph of the "Emerald" product allegedly shows a source of vibrational motion located within the second end and distal from the tips, which provides vibration to the tip of each flexible member. The teardown photograph is described as Exhibit G in the complaint (Compl. ¶44). | ¶44 | col. 11:30-34 |
| ...wherein the members can be manipulated to apply stimulation to the same point on the human body and can also be maneuvered to apply simultaneous stimulation in different points; and | The "Emerald" product's flexible members can be manipulated to apply stimulation to a single point or to different points simultaneously (Compl. ¶45). | ¶45 | col. 11:25-28 |
| a flexible portion connecting the first end to the second end, wherein the flexible portion comprises a flexible substructure and | The "Emerald" product includes a flexible portion connecting the two ends that contains a flexible substructure, as allegedly shown in Exhibits G and H (Compl. ¶46). | ¶46 | col. 3:26-30 |
| wherein the flexible portion comprises a boot covering the flexible substructure. | The "Emerald" product's flexible portion includes a "light green layer (the boot)" that covers the flexible substructure. The complaint alleges this is visible in Exhibit F and that Exhibit G shows the substructure with the boot removed (Compl. ¶47). | ¶47 | col. 1:40-42 |
'972 Patent Infringement Allegations
| Claim Element (from the Design Claim) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a massage device, as shown and described. | The complaint alleges that the ornamental design of the "Emerald" product is "substantially the same" as the patented design to an ordinary observer (Compl. ¶16). | ¶16 | '972 Patent, Figs. 1-6 |
Identified Points of Contention
- Scope Questions: A potential issue for the '421 Patent is the scope of the term "distal from the tips." The infringement analysis may depend on the specific location of the vibration source in the accused product and whether that placement meets the "distal" requirement as understood from the patent's specification.
- Technical Questions: For the '421 Patent, a key question is whether the accused product's construction embodies a distinct "flexible substructure" and a separate "boot covering" it. The complaint’s reliance on teardown photographs suggests this structural distinction will be a central factual dispute, questioning whether the accused product uses an integrated component rather than the claimed two-part structure. For the design patents, the dispute will center on the overall visual appearance and whether alleged similarities outweigh any differences from the perspective of an ordinary observer.
V. Key Claim Terms for Construction
- Term for Construction: "a boot covering the flexible substructure" (’421 Patent, Claim 5)
- Context and Importance: This limitation appears to require a two-part construction for the device's flexible body. Practitioners may focus on this term because the infringement case could turn on whether the accused product's single "light green layer" can be considered a "boot" that covers a distinct "substructure," or if it is a unitary component performing both functions.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent describes the boot as being "fitted over the assembled internal components," which could be argued to apply to any separate outer layer placed over an inner frame (’421 Patent, col. 5:58-61).
- Evidence for a Narrower Interpretation: The specification distinguishes the materials of the two components, noting the boot is preferably made of a softer material (silicone or TPE) while the substructure has a higher durometer value (’421 Patent, col. 5:57-58; col. 9:16-19). This explicit differentiation between the two components in both form and material properties could support a narrower construction requiring two physically and functionally distinct elements.
VI. Other Allegations
- Indirect Infringement: The complaint makes a conclusory allegation of indirect infringement for the ’421 Patent (Compl. ¶39). However, it does not plead specific facts to support the requisite knowledge and intent for induced infringement (e.g., allegations that user manuals instruct infringing use) or facts to support contributory infringement.
- Willful Infringement: The complaint alleges willful infringement for all three patents. For the ’972 Patent, willfulness is based on alleged pre-suit knowledge from a July 15, 2020 cease-and-desist letter and Defendant’s subsequent failure to cease infringement (Compl. ¶¶ 18, 21). For the ’066 and ’421 Patents, the willfulness allegation is based on knowledge acquired upon service of the complaint, making it a claim for post-suit willfulness (Compl. ¶¶ 31, 48).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue for the utility patent will be one of structural correspondence: does the accused "Emerald" product embody the specific two-part construction of a "flexible substructure" covered by a "boot" as required by the '421 patent, or does it utilize a different, integrated design? The complaint's reference to teardown evidence suggests this will be a key factual battleground.
- The core question for the design patents will be the application of the ordinary observer test: after filtering out any purely functional aspects, is the overall ornamental appearance of the "Emerald" product substantially the same as the designs claimed in the ’972 and ’066 patents, such that an ordinary observer would be deceived?
- A key damages question will be the basis and timing of willfulness. The court will have to consider whether the pre-suit notice for the '972 patent was sufficient to establish willful conduct, while any finding of willfulness for the other two patents will depend entirely on Defendant's actions after the lawsuit was filed.