DCT
4:24-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 engaged in extra-judicial enforcement activities through Amazon's patent enforcement program, which were purposefully directed at Plaintiff's business and product sales in 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 seeks to invalidate one of the patent's dependent claims.
- Technical Context: The technology concerns therapeutic foam rollers with surface projections designed for muscle massage, physical therapy, and exercise.
- Key Procedural History: The complaint alleges that Defendant previously asserted a related patent (U.S. Patent No. 9,539,167) against Plaintiff through the Amazon Patent Evaluation Program, which resulted in a finding that Defendant was "unlikely to be able to prove" infringement. Plaintiff alleges that Defendant's subsequent assertion of the patent-in-suit, which has a nearly identical claim, constitutes bad faith.
Case Timeline
| Date | Event |
|---|---|
| 2006-07-18 | Earliest Priority Date for U.S. Patent No. 9,656,112 |
| 2017-05-23 | U.S. Patent No. 9,656,112 Issued |
| 2021-01-01 | Plaintiff's Accused Product Released on Amazon (approx.) |
| 2023-02-10 | Defendant Initiates Amazon Infringement Claim on a Related Patent |
| 2023-05-03 | Amazon Program Finds in Plaintiff's Favor on Related Patent |
| 2024-01-31 | Defendant Initiates Amazon Infringement Claim on the '112 Patent |
| 2024-02-02 | Additional Accused Products Delisted from Amazon |
| 2024-06-04 | Complaint 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.
- The Invention Explained:
- Problem Addressed: The patent's background describes conventional, smooth cylindrical foam rollers as being minimally effective for tissue mobilization and causing users to fall off easily during balance exercises. It also notes that existing devices are often limited to a single density and projection shape, failing to effectively mobilize different types of soft tissue structures. (’112 Patent, col. 1:24-62).
- The Patented Solution: The invention is a therapeutic device, such as a foam roller, featuring a body with a plurality of projections of a specific, predetermined shape. The patent proposes that by combining a predetermined density, diameter, and projection shape, the device can "optimize mobilization of soft tissue structures," "optimize body core strength," and "effectively break up collagenous fibers." (’112 Patent, Abstract; col. 2:41-48). The patent describes both single-piece and two-piece embodiments, the latter comprising a core and an outer overlay with the projections. (’112 Patent, col. 9:16-31).
- Technical Importance: The claimed invention aims to provide a more versatile and effective tool for self-myofascial release and balance training by moving beyond a simple smooth cylinder to a configurable, textured surface. (’112 Patent, col. 2:2-23).
- Key Claims at a Glance:
- The complaint’s non-infringement and invalidity counts focus on independent Claim 1 and dependent Claim 14.
- Independent Claim 1 of the ’112 Patent recites:
- 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 made of closed cell foam, rubber, or plastic and including a plurality of solid projections having a predetermined shape configured to extend into soft tissue of a user.
- The complaint notes that claims 2-13 depend from Claim 1 and that it seeks a declaration of non-infringement for all claims of the patent. (Compl. ¶¶ 26, 32).
III. The Accused Instrumentality
- Product Identification: Plaintiff’s "5-in-1 Foam Roller Set," referred to as the "Accused Product." (Compl. ¶¶ 11, 17).
- Functionality and Market Context:
- The accused instrumentality is a product set that includes a primary hollow foam roller, a yoga stick, a massage ball, a stretching band, and a storage bag. (Compl. ¶11). The complaint includes a photograph of the complete set. (Compl. p. 4). The central component for the infringement dispute is the foam roller, which is described as having a hollow structure comprised of an "inner tube" made of PVC and an "outer layer" made of EVA foam that features "large massage blocks." (Compl. ¶¶ 12, 14).
- The complaint alleges the product is "successful" and was first released for sale on Amazon in 2021. (Compl. ¶11).
IV. Analysis of Infringement Allegations
As this is a declaratory judgment action, the following chart summarizes the Plaintiff's allegations of non-infringement.
'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 have a "solid entirely cylindrically shaped core," but instead has a "hollow tube" made of PVC. | ¶14, ¶31 | col. 9:19-24 |
| a second piece including an overlay completely surrounding the core...including a plurality of solid projections... | The Accused Product has an outer EVA foam layer with massage blocks that surrounds the inner PVC tube. | ¶14 | col. 9:25-31 |
- Identified Points of Contention:
- Scope Questions: The central dispute revolves around the meaning of "entirely cylindrically shaped core." The Plaintiff argues this term, as used in Claim 1, requires a solid cylinder, which its hollow product lacks. (Compl. ¶29). A primary question for the court will be whether the claim language, interpreted in light of the specification and the existence of a dependent claim adding a "lumen," limits the scope of "core" to solid structures.
- Technical Questions: The complaint alleges that evidence from the patent's prosecution history proves the "core" must be solid. (Compl. ¶19). A key question will be what evidence, if any, the prosecution history provides to support this interpretation, as the complaint itself does not include the file history. The complaint also references a patent figure depicting what it asserts is a solid cylinder. (Compl. ¶19, referencing '167 Patent's FIG. 3).
V. Key Claim Terms for Construction
- The Term: "entirely cylindrically shaped core"
- Context and Importance: The construction of this term is dispositive for the non-infringement analysis. Plaintiff's entire case for non-infringement rests on its argument that this term means a "solid cylinder," a feature its "hollow tube" product does not possess. (Compl. ¶¶ 29, 31). Practitioners may focus on this term because the doctrine of claim differentiation, based on dependent Claim 14, provides a strong textual argument for a narrow construction.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A defendant might argue that "entirely cylindrically shaped" refers only to the external geometry of the core, not its internal state (i.e., solid vs. hollow). The specification uses the term "cylindrically shaped body" broadly without an explicit "solid" limitation. (’112 Patent, col. 5:40-42).
- Evidence for a Narrower Interpretation: Plaintiff argues that dependent Claim 14, which adds "a lumen extending through the body," would be rendered superfluous if independent Claim 1 already encompassed hollow cores. (’112 Patent, col. 12:9-11; Compl. ¶¶ 40-41). This argument invokes the doctrine of claim differentiation. Additionally, figures in the patent family, such as FIG. 3 of the related '167 patent referenced in the complaint, depict a device that appears to be solid. (Compl. ¶19).
VI. Other Allegations
- Indirect Infringement: The complaint seeks a declaratory judgment of non-infringement for indirect infringement but does not provide sufficient detail for analysis of this element. (Compl. ¶32).
- Willful Infringement: This is a declaratory judgment action where the Plaintiff alleges Defendant's enforcement actions constitute bad faith and an "exceptional case" under 35 U.S.C. § 285. (Compl. ¶37). The allegation is based on Defendant's knowledge of a prior favorable outcome for the Plaintiff in an Amazon proceeding involving a related patent ('167 Patent) with what Plaintiff characterizes as an "essentially the same" claim. (Compl. ¶¶ 20, 29, 36).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "entirely cylindrically shaped core" in Claim 1 be construed to read on Plaintiff's product, which contains a hollow inner tube? The court's decision on this point, likely guided by the doctrine of claim differentiation in view of dependent Claim 14, may be dispositive of the non-infringement claim.
- A second key question concerns patent validity: is dependent Claim 14, which adds a "lumen," invalid under 35 U.S.C. § 112 for improperly broadening or contradicting independent Claim 1, as Plaintiff alleges? This challenges the fundamental relationship between the claims.
- Finally, a significant issue will be whether Defendant’s enforcement actions via Amazon's platform, following a prior adverse finding on a related patent, rise to the level of bad faith conduct that would warrant finding this an exceptional case and awarding attorney's fees to the Plaintiff.