DCT

3:11-cv-00160

Fitness Iq LLC v. HSM Ideatv Corp

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:11-cv-00160, S.D. Cal., 01/25/2011
  • Venue Allegations: Venue is alleged to be proper in the Southern District of California because a substantial portion of the events giving rise to the claim occurred in the district and the defendant is deemed to reside there through its business activities.
  • Core Dispute: Plaintiff alleges that Defendant’s "Fitness Shake" dumbbell infringes its design patent and trade dress for the proprietary SHAKE WEIGHT® dumbbell.
  • Technical Context: The dispute concerns manually-operated exercise equipment, specifically oscillating dumbbells marketed for at-home upper body workouts.
  • Key Procedural History: The complaint states that Plaintiff sent a cease and desist letter to Defendant on December 15, 2010. Defendant allegedly responded on December 17, 2010, claiming it had ceased all activities related to the accused product, a representation Plaintiff alleges was false.

Case Timeline

Date Event
2009-07-25 Plaintiff began marketing its SHAKE WEIGHT® products
2009-08-05 Priority Date: Application for D'660 Patent filed
2010-12-07 U.S. Design Patent No. D'628,660 issues
2010-12-15 Plaintiff sends cease and desist letter to Defendant
2011-01-25 Complaint filed

II. Technology and Patent(s)-in-Suit Analysis

  • Patent Identification: U.S. Design Patent No. D628,660, "Exercise device," issued December 7, 2010 (the "’660 Patent"). (Compl. ¶22).

The Invention Explained

  • Problem Addressed: As a design patent, the ’660 Patent does not claim to solve a functional or technical problem. Rather, it protects the specific, non-functional ornamental appearance of an exercise device. The complaint emphasizes the "unique and distinctive design" of its product. (Compl. ¶31).
  • The Patented Solution: The patent protects the ornamental design for an exercise device as depicted in its figures. (D'660 Patent, CLAIM). The claimed design consists of the visual characteristics shown in solid lines, which include two large, cylindrical end weights and the flexible, bellows-like boots connecting them to a central handle region. (D'660 Patent, FIG. 1, 2). The patent explicitly disclaims the handle portion and the center of the end-caps, which are illustrated in broken lines and "form no part of the claimed design." (D'660 Patent, DESCRIPTION).
  • Technical Importance: The complaint alleges that the commercial embodiment of the design, the SHAKE WEIGHT® dumbbell, achieved significant popularity, generating over $60 million in sales and extensive media exposure, thereby developing substantial secondary meaning in its design. (Compl. ¶14-22).

Key Claims at a Glance

  • Design patents contain a single claim. The asserted claim is: "The ornamental design for an exercise device, as shown and described." (D'660 Patent, CLAIM).
  • The scope of this claim is defined by the visual representations in Figures 1-3 of the patent, limited to the elements shown in solid lines.

III. The Accused Instrumentality

Product Identification

The accused product is the "Fitness Shake" dumbbell. (Compl. ¶27).

Functionality and Market Context

The complaint describes the "Fitness Shake" dumbbell as a "clear knock-off" of the Plaintiff's SHAKE WEIGHT® product, alleging it is approximately the same size and weight. (Compl. ¶27). Plaintiff alleges that Defendant is marketing the "Fitness Shake" as a "cheaper" alternative and selling it to retailers who were prospective customers for Plaintiff's product. (Compl. ¶25).

IV. Analysis of Infringement Allegations

Design patent infringement is determined by the "ordinary observer" test, which asks whether an ordinary observer, familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented design. The complaint does not contain a formal claim chart, but summarizes its infringement theory by directly comparing the accused product to Plaintiff's commercial product.

The complaint alleges that the "overall appearance of the 'Fitness Shake' dumbbells are deceptively similar to the overall appearance of Plaintiff's proprietary SHAKE WEIGHT® dumbbells." (Compl. ¶31). To support this, the complaint alleges that the accused "Fitness Shake" dumbbell consists of features that mirror those of the Plaintiff's product, including a "contoured handle, stylized indentations in the handle, two flexible boots...two cylindrical end weights that feature an inner circle on their ends and an outer ring surface, and reflective surfaces on the end weights." (Compl. ¶27).

No probative visual evidence provided in complaint.

Identified Points of Contention

  • Scope Questions: A central issue may be the legal effect of the patent's disclaimer. The complaint alleges similarities in the "contoured handle" and "stylized indentations in the handle" of the accused product. (Compl. ¶27). However, the ’660 Patent explicitly disclaims the handle via broken lines, stating it forms "no part of the claimed design." (D'660 Patent, DESCRIPTION). This raises the question of whether alleged similarities in a disclaimed region can support a finding of infringement, or if the infringement analysis must be confined strictly to the claimed portions (the end weights and boots).
  • Technical Questions: The infringement analysis will depend on a visual comparison. The complaint concedes at least one "perceivable difference": the indentations in the handle of the "Fitness Shake" dumbbell allegedly run "parallel, rather than perpendicular, to the end weights." (Compl. ¶15-16). The court will have to determine whether this and any other differences are sufficient to distinguish the accused design from the patented design in the eyes of an ordinary observer, when weighed against the alleged similarities in the claimed portions.

V. Key Claim Terms for Construction

Formal claim construction of written terms is not typically a central feature of design patent litigation. The "claim" is understood through the patent's drawings. However, the interpretation of the drawings themselves, particularly the distinction between claimed and unclaimed elements, will be critical.

  • The Term: The scope of the "ornamental design" as defined by the solid and broken lines in the patent's figures.
  • Context and Importance: The case will likely turn on the scope of what the patent actually protects. Practitioners may focus on the legal effect of the broken lines used for the handle, as this directly controls which features of the accused product are relevant to the infringement comparison. The infringement test compares the accused product to the claimed design, not to the plaintiff's commercial embodiment.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A party could argue that while the handle is disclaimed, its general shape and placement are part of the overall visual context and contribute to the "deceptively similar" impression perceived by an ordinary observer.
    • Evidence for a Narrower Interpretation: The patent specification provides an explicit and unambiguous disclaimer: "The broken lines illustrate environmental elements of an exercise device that form no part of the claimed design." (D'660 Patent, DESCRIPTION). This language strongly supports the view that any features of the accused product corresponding to the disclaimed handle are legally irrelevant to the infringement analysis.

VI. Other Allegations

  • Indirect Infringement: The complaint does not allege indirect infringement of the ’660 Patent. It alleges direct infringement under 35 U.S.C. § 271(a). (Compl. ¶32).
  • Willful Infringement: The complaint alleges that Defendant’s infringement was "knowing, intentional, wanton, and willful." (Compl. ¶34). The factual basis for this allegation is Defendant’s alleged continuation of infringing activities after receiving a cease and desist letter from Plaintiff on December 15, 2010, which provided actual notice of the ’660 Patent. (Compl. ¶23-25).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A central factual question will be the application of the ordinary observer test: setting aside any disclaimed elements, are the claimed ornamental features of the ’660 Patent—the end-weights and flexible boots—substantially the same as the corresponding features of the accused "Fitness Shake" dumbbell such that a typical purchaser would be deceived?
  • A key legal and factual issue will be the impact of the disclaimed handle: can the alleged similarities in the handle area, which the patent expressly states "form no part of the claimed design," be considered in the overall infringement analysis? The court's treatment of the disclaimed subject matter will be fundamental to determining the scope of the patent's protection and the outcome of the infringement claim.