DCT
1:20-cv-00144
Sankyo Riken Corp v. Schylling Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Sankyo Riken Corporation (Japan)
- Defendant: Schylling, Inc. (Delaware)
- Plaintiff’s Counsel: Dilworth Paxson LLP
- Case Identification: 1:20-cv-00144, D. Del., 01/30/2020
- Venue Allegations: Venue is asserted in the District of Delaware based on Defendant Schylling, Inc. being a Delaware corporation.
- Core Dispute: Plaintiff alleges that Defendant’s "tongue squeak animals" toy products infringe a patent related to a toy flute mechanism designed to be installed within a hollow toy body.
- Technical Context: The technology concerns air-activated noisemakers for use in compressible toys, a common feature in the toy industry designed to enhance play value.
- Key Procedural History: The complaint alleges that Plaintiff, through an agent, initiated contact with Defendant in early 2019 regarding the infringing activities. In response, Defendant provided a copy of a third-party patent (the "Foluck Patent"). Plaintiff subsequently sent a detailed cease-and-desist letter on July 17, 2019, explaining why the Foluck Patent, which has a later priority date, does not provide a defense. Plaintiff alleges it received no further response, a fact which may be material to its claims of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2011-09-27 | ’582 Patent Priority Date |
| 2013-01-01 | Foluck Patent (non-asserted) effective filing date |
| 2017-02-28 | ’582 Patent Issue Date |
| 2019-02-01 | Plaintiff's agent initiates contact with Defendant (approx.) |
| 2019-07-17 | Plaintiff sends cease-and-desist letter to Defendant |
| 2020-01-30 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,579,582 - "Toy Flute," issued February 28, 2017
The Invention Explained
- Problem Addressed: The patent background describes prior art toy flutes that are installed at the center of a hollow, spherical toy. This central placement is described as being structurally complex, costly to manufacture, and having a tendency to muffle the sound produced by the flute (’582 Patent, col. 2:5-13).
- The Patented Solution: The invention solves this problem by positioning the flute mechanism at an opening on the surface of the hollow body, rather than at its center. This configuration simplifies manufacturing and allows the opening to serve as an air passage, which purportedly results in a clearer sound (’582 Patent, col. 5:1-11). The core of the invention is a cylindrical housing containing a "reciprocating body" and a "flute section." When the hollow toy is compressed or expands, airflow through the housing causes the reciprocating body to move and the flute to generate sound, which then "reverberates" within the cylindrical body (’582 Patent, Abstract; col. 2:32-44).
- Technical Importance: This design offers a method to create an air-activated sound effect in a squeezable toy that is alleged to be simpler and less expensive to produce, while also improving the acoustic quality compared to prior art designs (’582 Patent, col. 5:1-8).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 (Compl. ¶13).
- Independent Claim 1 requires:
- A flute toy comprising a reciprocating body accommodated inside a cylindrical body in a reciprocating manner.
- The cylindrical body is installed at an inner side of an opening in a hollow body.
- A vent hole on the cylindrical body communicates with the opening.
- A flute is installed in the cylindrical body.
- Airflow between the opening and another vent hole causes sound to occur and to reverberate inside the cylindrical body.
- The complaint does not explicitly reserve the right to assert dependent claims, but infringement allegations are made as to "one or more claims" (Compl. ¶19).
III. The Accused Instrumentality
Product Identification
- The complaint identifies Schylling's "tongue squeak animals" as the Accused Product (Compl. ¶20).
Functionality and Market Context
- The Accused Products are animal-shaped, hollow, compressible toys (Compl. p. 9). When squeezed, the toys emit a sound and a "tongue" element protrudes from the animal's mouth. The complaint alleges these products contain an internal sound-making assembly comprising a cylindrical body, a reciprocating body, and a flute or soundmaker (Compl. ¶24). An annotated image in the complaint shows the disassembled sound-making mechanism, labeling its components as the "Cylindrical Body," "Reciprocating Body," and "Flute (soundmaker)" (Compl. p. 9, "Reciprocating Body - 1"). The complaint does not contain specific allegations regarding the product's market share or commercial importance beyond its sale in the United States (Compl. ¶9).
IV. Analysis of Infringement Allegations
’582 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A flute toy, wherein a reciprocating body is accommodated inside a cylindrical body in a reciprocating manner; | The Accused Product contains a "reciprocating body (1)" situated within a "cylindrical body (2)" that is alleged to reciprocate within that body. It also contains a "flute (3), or sounding mechanism." | ¶24 | col. 8:32-38 |
| the cylindrical body is installed at an inner side of an opening provided in a hollow body in such a manner that a vent hole at one side from among two vent holes provided at the cylindrical body can communicate with the opening; | The product has a "cylindrical body (1)" installed at the "inner side of an opening (2)" inside a "hollow body (3)." It is alleged that a "vent hole" from among two vent holes communicates with the opening. The complaint provides an annotated image of the product's components to illustrate this structure. | ¶25 | col. 8:29-34 |
| and a flute is installed at the cylindrical body in such a manner that airflow flowing between the opening and a vent hole at another side from among the two vent holes causes sound to occur and reverberates inside the cylindrical body. | The product has a "flute (1)" installed inside a "cylindrical body (2)." It is alleged that airflow between an "opening (3)" and a "vent hole (4)" causes sound from the flute to occur and reverberate inside the cylindrical body. | ¶26 | col. 8:65-68 |
Identified Points of Contention
- Scope Questions: A primary question may be whether the Accused Product’s sound-making mechanism, described as a "squeaker" on its packaging, qualifies as a "flute toy" as that term is used in the patent. The defense may argue for a narrower definition of "flute" that does not read on the accused mechanism.
- Technical Questions: The complaint alleges that sound "reverberates inside the cylindrical body," a specific functional requirement of claim 1 (Compl. ¶26). A key technical question will be whether the Accused Product's operation produces this reverberation effect, or if it simply generates sound that is immediately expelled. The complaint provides a conclusory allegation but does not detail the evidence supporting this specific acoustic phenomenon.
V. Key Claim Terms for Construction
- The Term: "reverberates inside the cylindrical body"
- Context and Importance: This functional language is critical because it defines how the sound must behave after it is generated. The infringement analysis will depend on whether the sound produced by the accused device is merely created and expelled, or if it persists and reflects within the cylindrical housing as the claim requires. Practitioners may focus on this term because proving this specific acoustic effect could require expert testimony and testing, making it a potential point of factual dispute.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not provide a specific technical definition of "reverberate." A party could argue for its plain and ordinary meaning of sound persisting due to reflection. The specification’s description of creating "variegated sounds" in a "reverberation space" could support an interpretation that any change in sound quality due to the enclosed space meets the limitation (’582 Patent, col. 2:54-59).
- Evidence for a Narrower Interpretation: A party could argue that the term implies a specific, measurable acoustic phenomenon distinct from simple sound production. The patent’s repeated emphasis on how the size of the "reverberation space" changes to alter the "tone of the flute" suggests that "reverberates" requires more than just sound being present inside the cylinder; it requires an interactive acoustic effect that shapes the sound (’582 Patent, col. 6:7-11).
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement, stating that Schylling provides "instructional and/or promotional materials," including "user manuals," that instruct and encourage purchasers to use the Accused Products in a manner that infringes the ’582 Patent (Compl. ¶29).
- Willful Infringement: The complaint alleges willful infringement based on pre-suit knowledge. The allegations state that Schylling had actual notice of the ’582 Patent no later than its receipt of a cease-and-desist letter dated July 17, 2019, and likely earlier based on communications that began in "early 2019" (Compl. ¶10, ¶11, ¶21, ¶28). The complaint further alleges that Schylling's response with the Foluck Patent demonstrates awareness of the patent issue, and its subsequent failure to respond to the detailed letter constitutes willful blindness (Compl. ¶11, ¶21).
VII. Analyst’s Conclusion: Key Questions for the Case
A core issue will be one of claim construction: does the term "flute toy" encompass the "tongue squeak animals" at issue, and what is the specific technical meaning of the requirement that sound "reverberates inside the cylindrical body"? The outcome of the case may hinge on whether the accused device's simple sound-making function meets the patent's more specific acoustic description.
A second central question will be factual and evidentiary: can Plaintiff prove, likely through expert analysis, that the accused device's operation meets the functional limitations of the claims? Specifically, Plaintiff must demonstrate not only that the components are structurally equivalent but also that the claimed reverberation effect actually occurs.
Finally, the pre-suit history raises a significant question regarding willfulness: did Defendant's alleged failure to respond to a detailed cease-and-desist letter, after having previously engaged on the subject by proffering the Foluck patent, constitute objective recklessness sufficient to support a finding of willful infringement?