DCT
1:18-cv-02718
Sporn Pet Products Inc v. PetSmart Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Sporn Pet Products, Inc. (New York)
- Defendant: PetSmart, Inc. (Delaware)
- Plaintiff’s Counsel: Hanes & Bartels LLC
- Case Identification: 1:18-cv-02718, D. Colo., 10/24/2018
- Venue Allegations: Venue is based on Defendant operating a number of regular and established places of business within the District of Colorado.
- Core Dispute: Plaintiff alleges that Defendant’s "NEW FIT HARNESS" for dogs infringes a patent related to an adjustable harness design.
- Technical Context: The technology resides in the field of pet accessories, specifically focusing on the mechanical design of dog harnesses to improve adjustability and fit across different dog sizes.
- Key Procedural History: The complaint alleges a prior commercial relationship where Defendant purchased the patented product from Plaintiff before switching to an allegedly identical product from the same manufacturer. Plaintiff also alleges it provided Defendant with the patent application pre-issuance and sent a notice letter post-issuance, which may be relevant to claims of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2014-09-04 | '458 Patent Priority Date (Application Filing) |
| 2014-12-01 | PetSmart begins purchasing Harness from Sporn |
| 2016-11-23 | Sporn sends patent application to PetSmart at its request |
| 2017-01-01 | PetSmart allegedly stops buying Harness from Sporn (stated as "In 2017") |
| 2017-06-06 | U.S. Patent No. 9,668,458 Issues |
| 2017-06-26 | Sporn's counsel sends notice letter to PetSmart |
| 2018-10-24 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 9,668,458, “Dog Harness,” issued June 6, 2017.
The Invention Explained
- Problem Addressed: The patent addresses the need to improve upon existing dog harness fasteners to better accommodate dogs of varying shoulder breadths and provide a more stable fit that does not change based on pulling force from a leash ('458 Patent, col. 1:11-17).
- The Patented Solution: The invention is a harness constructed from two main loops (a prosternum loop and a sternum loop) that are interconnected at an angle over the dog's shoulders to form two apexes ('458 Patent, col. 1:41-54). A fastener assembly connects these two apexes. This assembly features web members that form adjustable loops using "sliplock buckles" to set the overall size, and, critically, a "side release buckle" that slidingly connects the inner portions of these web loops, allowing the distance between the shoulder apexes to be adjusted ('458 Patent, Abstract; col. 2:1-7).
- Technical Importance: This design allows for a "simple and fixed adjustment of the spacing between the harness apexes" that, once set, will not vary as a function of leash tension, providing a more secure and customized fit ('458 Patent, col. 2:19-22).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 2 ('Compl. ¶16).
- Independent Claim 2 includes the following essential elements:
- An open prosternum loop and an open sternum loop.
- Left and right "inverted V shaped" shoulder apexes formed by interconnecting the ends of the prosternum and sternum loops.
- A fastener assembly with first and second web members.
- A sliplock buckle on each web member, where the web members are secured to the apexes and form web loops whose distal ends are secured to the middle bars of the sliplock buckles.
- A side release buckle "slidingly interconnecting" the inner runs of the web loops at a point between the end of the loop and the sliplock buckle.
III. The Accused Instrumentality
Product Identification
- The accused product is the "NEW FIT HARNESS" sold by PetSmart (Compl. ¶15).
Functionality and Market Context
- The complaint alleges that the accused NEW FIT HARNESS is "virtually the same Harness" that PetSmart previously purchased from the plaintiff, Sporn (Compl. ¶8, 10). It further alleges that PetSmart began sourcing this harness from the "same Chinese manufacturer used by Sporn" (Compl. ¶10). The complaint provides a claim chart that visually maps the asserted claim limitations to the accused product (Compl. p. 4). The complaint does not otherwise provide a detailed technical description of the accused product's operation, relying instead on the allegation that it is a direct copy.
IV. Analysis of Infringement Allegations
’458 Patent Infringement Allegations
| Claim Element (from Independent Claim 2) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an open prosternum loop having first and second ends, an open sternum loop having first and second ends, | The complaint alleges the NEW FIT HARNESS possesses these features. | ¶16 | col. 2:59-61 |
| left and right inverted V shaped shoulder covering apexes each respectively formed by angularly interconnecting the first end of the prosternum loop and the first end of the sternum loop and angularly interconnecting the second end of the prosternum loop and the second end of the sternum loop, | The complaint alleges the NEW FIT HARNESS possesses these features. | ¶16 | col. 2:62-67 |
| a fastener assembly comprising, first and second web members each having proximal and distal ends, | The complaint alleges the NEW FIT HARNESS possesses these features. | ¶16 | col. 3:1-2 |
| a sliplock buckle having a middle bar carried by each of the web members, where the proximal ends of the web members are secured to the respective apexes and where the web members each form a web loop having inner and outer runs and where the distal ends of the web members are secured to the middle bars of the respective sliplock buckles, | The complaint alleges the NEW FIT HARNESS possesses these features. | ¶16 | col. 1:59-65 |
| a side release buckle slidingly interconnecting the inner runs of the first and second web members at a point intermediate the closed end of the web loop and the sliplock buckle. | The complaint alleges this feature is present in the NEW FIT HARNESS under the doctrine of equivalents. | ¶16 | col. 2:1-7 |
Identified Points of Contention
- Equivalence Question: The complaint explicitly alleges infringement of the final limitation—the "side release buckle slidingly interconnecting" the web members—under the doctrine of equivalents by marking it "EQUIV" in its claim chart (Compl. p. 4). This suggests the accused product may not literally meet this element, raising the question of whether its buckle performs a substantially similar function in a substantially similar way to achieve a substantially similar result.
- Technical Question: The core technical dispute will likely be the nature of the interconnection by the side release buckle in the accused harness. The primary question is what structural or functional difference in the accused product prevents it from "slidingly interconnecting" the web members and whether that difference is substantial.
V. Key Claim Terms for Construction
- The Term: "slidingly interconnecting"
- Context and Importance: This term is critical because the Plaintiff has conceded it must rely on the doctrine of equivalents for this limitation (Compl. p. 4). The definition of "slidingly" will determine the scope of literal infringement and frame the subsequent equivalents analysis. Practitioners may focus on this term because the patent contrasts the adjustability it provides with the "fixed adjustment" of other components.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself does not specify a degree of sliding force or freeness of movement. A party might argue that any interconnection that is not permanently fixed in place meets the "slidingly" requirement, even if it requires significant force to move.
- Evidence for a Narrower Interpretation: The specification states that the buckle "can freely slide on the inner runs of the web members" ('458 Patent, col. 2:5-7). The patent also notes that the overall fastener assembly allows for a "fixed adjustment of the spacing between the harness apexes," suggesting the "sliplock buckles" provide the fixed positioning while the "side release buckle" provides a different, more dynamic type of sliding connection ('458 Patent, col. 2:19-22).
VI. Other Allegations
- Indirect Infringement: The complaint makes conclusory allegations of induced and contributory infringement, based on PetSmart's acts of "making, using, having made, importing, offering for sale and selling" the accused harness (Compl. ¶15). The complaint does not plead specific facts regarding intent to induce infringement by end-users, such as by referencing user manuals or instructions.
- Willful Infringement: The complaint alleges that the infringement was "knowing, intentional, willful and deliberate" (Compl. ¶18). This allegation is supported by specific factual claims, including that: (1) PetSmart requested and received a copy of the patent application in 2016, providing pre-suit knowledge of the technology (Compl. ¶9); (2) PetSmart allegedly switched from purchasing the authentic product from Sporn to a "virtually the same Harness" from the same manufacturer (Compl. ¶10); and (3) Sporn's counsel sent PetSmart a notice letter after the patent issued, establishing actual knowledge of the asserted patent (Compl. ¶12).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of infringement by equivalence: Does the accused harness's side-release buckle, which the complaint concedes does not literally infringe, perform substantially the same function (interconnecting the web members) in substantially the same way (by sliding) to achieve substantially the same result (an adjustable fit across the withers) as the patented invention? The complaint’s own "EQUIV" allegation places this question at the center of the dispute.
- A key factual and legal question will be willfulness: The complaint alleges a timeline of events—a prior business relationship, knowledge of the pending patent application, a switch to the patentee's own manufacturer for an allegedly identical product, and post-issuance notice. The court will have to determine whether this conduct, if proven, constitutes the type of egregious behavior that warrants enhanced damages under 35 U.S.C. § 284.