DCT
3:24-cv-03366
Shenzhen Ouruiyu Technology Co Ltd v. Performance Solutions LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Shenzhen Ouruiyu Technology Co Ltd (China)
- Defendant: Performance Solutions LLC (Massachusetts)
- Plaintiff’s Counsel: Apex Attorneys At Law LLP
- Case Identification: 4:24-cv-03366, N.D. Cal., 06/04/2024
- Venue Allegations: Plaintiff alleges venue is proper because Defendant used Amazon's patent enforcement process to target Plaintiff's business activities and product listings, which are available for sale in and have been sold into the Northern District of California.
- Core Dispute: Plaintiff seeks a declaratory judgment that its foam roller products do not infringe Defendant’s patent related to therapeutic and fitness devices, and further alleges a specific claim of the patent is invalid.
- Technical Context: The technology concerns therapeutic foam rollers with textured surfaces designed for deep tissue massage and physical fitness, a product category within the consumer health and wellness market.
- Key Procedural History: This is a declaratory judgment action filed by the accused infringer. The complaint alleges that Defendant previously asserted a related patent (U.S. Patent No. 9,539,167) against Plaintiff in an Amazon Patent Evaluation Program (APEP) proceeding, which concluded in Plaintiff's favor. Plaintiff argues this prior outcome put Defendant on notice that its current infringement allegations regarding the patent-in-suit are baseless.
Case Timeline
| Date | Event |
|---|---|
| 2006-07-18 | Priority Date for U.S. Patent No. 9,656,112 |
| 2017-05-23 | Issue Date for U.S. Patent No. 9,656,112 |
| 2021 | Plaintiff’s Accused Product Launched on Amazon |
| 2023-02-10 | Defendant filed Amazon infringement claim re: related ’167 Patent |
| 2023-05-03 | Amazon dispute regarding ’167 Patent ended in Plaintiff’s favor |
| 2024-01-31 | Defendant filed Amazon infringement claim re: ’112 Patent |
| 2024-02-02 | Additional Accused Products delisted from Amazon |
| 2024-06-04 | Complaint for Declaratory Judgment Filed |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 9,656,112, "Therapeutic, Fitness, and Sports Enhancement Device," issued May 23, 2017.
U.S. Patent No. 9,656,112 - "Therapeutic, Fitness, and Sports Enhancement Device"
The Invention Explained
- Problem Addressed: The patent's background section asserts that conventional, smooth cylindrical foam rollers are of limited effectiveness for tissue mobilization and can be unstable, causing users to fall (U.S. Patent No. 9,656,112, col. 1:35-44). It further states that such rollers "cannot effectively break up collagenous fibers" in the soft tissue (U.S. Patent No. 9,656,112, col. 1:52-56).
- The Patented Solution: The invention is a therapeutic device, such as a foam roller, with a "cylindrically shaped body" that includes a "plurality of projections of a predetermined shape" ('112 Patent, Abstract). The patent describes that by combining a specific density, diameter, and projection shape, the device can "optimize mobilization of soft tissue structures of the human body" ('112 Patent, col. 1:45-48).
- Technical Importance: The invention sought to advance beyond basic foam rollers by introducing specific surface geometries intended to provide more effective deep tissue massage and enhanced stability during therapeutic or fitness use ('112 Patent, col. 2:1-10).
Key Claims at a Glance
- The complaint’s non-infringement and invalidity counts center on independent Claim 1 and dependent Claim 14.
- Independent Claim 1:
- A two-piece therapeutic, fitness, and sports enhancement device comprising:
- a first piece including an entirely cylindrically shaped core made of closed cell foam, rubber or plastic and having a diameter of about 3 inches to about 15 inches; and
- a second piece including an overlay completely surrounding the core, the overlay including a plurality of solid projections configured to extend into a user's soft tissue.
- Dependent Claim 14: "The device of claim 1 further including a lumen extending through the body."
- The complaint notes that claims 2-13 depend from Claim 1 (Compl. ¶26).
III. The Accused Instrumentality
Product Identification
- Plaintiff’s "5-in-1 Foam Roller Set," referred to in the complaint as the "Accused Product" (Compl. ¶¶11, 17).
Functionality and Market Context
- The central component of the accused set is a foam roller described as a "hollow foam roller" that "includes an inner tube and an outer layer" (Compl. ¶14). The inner tube is made of PVC and the outer layer is made of EVA foam with surface projections (Compl. ¶14). A photograph depicts the accused 5-in-1 Foam Roller Set, showing a hollow, orange-colored roller with surface projections, along with a storage bag and other accessories (Compl. p. 4). The complaint alleges the product was released on Amazon in 2021 and is one of Plaintiff's "successful products" (Compl. ¶11).
IV. Analysis of Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement. The Plaintiff’s core non-infringement theory is summarized below.
’112 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a first piece including an entirely cylindrically shaped core made of closed cell foam, rubber or plastic... | Plaintiff alleges its product does not meet this limitation because it has a "hollow tube," which it argues is distinct from the "solid entirely cylindrically shaped core" required by the claim. | ¶¶29, 31 | col. 9:20-24 |
| a second piece including an overlay completely surrounding the core, the overlay made of closed cell foam, rubber, or plastic... | The complaint describes the accused product as having an outer layer made of EVA foam over an inner PVC tube. | ¶14 | col. 9:25-28 |
| ...including a plurality of solid projections having a predetermined shape configured to extend into soft tissue of a user... | The complaint acknowledges the accused roller has "large massage blocks" on its surface to "relieve pain all over the body." | ¶12 | col. 9:28-34 |
- Identified Points of Contention:
- Scope Questions: The central dispute is whether the claim term "entirely cylindrically shaped core" requires a solid structure. The Plaintiff argues that it does, contrasting it with their product's "hollow tube" structure (Compl. ¶31). The complaint includes FIG. 3 from the related '167 patent, which it alleges depicts a solid cylinder to contrast with its own hollow product (Compl. p. 5).
- Technical Questions: A key factual question will be whether the Plaintiff's PVC "inner tube" and EVA foam "outer layer" (Compl. ¶14) correspond to the claimed "core" and "overlay" structure. The non-infringement case hinges on the argument that a hollow tube cannot be a "core" as claimed.
V. Key Claim Terms for Construction
- The Term: "entirely cylindrically shaped core" (Claim 1)
- Context and Importance: The construction of this term is dispositive for the non-infringement analysis. If the term is construed to require a solid structure, Plaintiff's "hollow" product may not infringe. If it is construed to encompass hollow structures, Defendant's infringement allegation may be strengthened. Practitioners may focus on this term because Plaintiff's entire non-infringement argument is built on the premise that its "hollow tube" is not a "solid core" (Compl. ¶¶29, 31).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specification does not explicitly define "core" as being solid. The term "core" generally means a central part, which could be hollow. The claims state the core is made of "foam, rubber or plastic," materials which can be formed into either solid or hollow shapes ('112 Patent, col. 9:22-23). An argument could be made that "cylindrically shaped" refers only to the external geometry, not its internal structure.
- Evidence for a Narrower Interpretation: The doctrine of claim differentiation may support a narrower reading. Dependent Claim 14 explicitly adds "a lumen extending through the body" ('112 Patent, col. 11:10-12). If the "core" in independent Claim 1 could already be hollow (i.e., possess a lumen), then Claim 14 might be rendered redundant or superfluous. This suggests that the "core" of Claim 1 was intended to be solid, and a hollow version is a distinct embodiment captured only by dependent Claim 14.
VI. Other Allegations
- Invalidity: Plaintiff brings a specific count (Count II) for a declaratory judgment that Claim 14 is invalid under 35 U.S.C. § 112 (Compl. ¶¶38-44). The theory is that if Claim 1 is construed to require a solid core, then Claim 14, by adding a "lumen," improperly broadens the independent claim instead of narrowing it, thus violating the rules of claim dependency (Compl. ¶41).
- Exceptional Case: The complaint does not allege willful infringement by the Plaintiff. Instead, it alleges that Defendant’s assertion of the '112 patent constitutes bad faith, rising to the level of an "exceptional case" under 35 U.S.C. § 285 (Compl. ¶¶37, 44). This allegation is based on Defendant having received an unfavorable ruling on a "very much the same" claim from a related patent in a prior Amazon APEP proceeding, which Plaintiff claims put Defendant on notice that its infringement allegations were baseless (Compl. ¶¶20, 36).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction and differentiation: Does the term "entirely cylindrically shaped core" in Claim 1 require a solid structure? The answer will heavily depend on how the court applies the doctrine of claim differentiation in light of dependent Claim 14, which explicitly adds a "lumen."
- A related question will be the validity of Claim 14: Can Claim 14, which adds a hollow-defining "lumen," survive an invalidity challenge under 35 U.S.C. § 112 if it is found to improperly broaden—rather than narrow—a claim that is construed to be solid?
- A key procedural and financial issue will be one of litigation conduct: Did Defendant’s decision to assert the '112 patent, after a prior unfavorable outcome on a related patent in the APEP forum, constitute bad faith conduct sufficient to deem this an "exceptional case" and warrant an award of attorneys' fees to the Plaintiff?