DCT
1:24-cv-01059
Shenzhenshi Leiming Shangmaozhongxin v. Novoluto GmbH
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Shenzhenshi Leiming Shangmaozhongxin (China)
- Defendant: Novoluto GmbH (Germany)
- Plaintiff’s Counsel: Rimon, P.C.
- Case Identification: 1:24-cv-01059, D. Del., 09/23/2024
- Venue Allegations: Plaintiff alleges venue is proper because Defendant is subject to personal jurisdiction in Delaware. This jurisdiction is based on Defendant's submission of an infringement complaint to Amazon.com, which would affect customers in the district, and on Defendant's prior conduct in a separate Delaware case where it allegedly availed itself of the court's jurisdiction by asserting the same patent.
- Core Dispute: Plaintiff, a seller of sexual wellness products, seeks a declaratory judgment that its product does not infringe Defendant's patent, a move prompted by an infringement notice Defendant filed through Amazon's intellectual property program.
- Technical Context: The technology concerns handheld stimulation devices that generate a modulated pressure field of both positive and negative air pressure for sexual stimulation, as an alternative to direct-contact vibrators or simple vacuum devices.
- Key Procedural History: This action for a declaratory judgment was filed in response to an infringement report Defendant submitted to Amazon.com. The complaint notes that the patent-in-suit was previously subject to an inter partes review (IPR) proceeding, IPR2019-01444, which concluded with a certificate confirming the patentability of claims 1-6. The complaint also alleges that Defendant previously asserted the patent-in-suit in counterclaims filed in separate litigation in the same district, EIS, Inc. v. IntiHealth Ger GmbH et al., 1:19-cv-1227 (D. Del.).
Case Timeline
| Date | Event |
|---|---|
| 2013-09-23 | ’851 Patent Priority Date |
| 2017-09-19 | ’851 Patent Issue Date |
| 2019-07-31 | IPR Filed for ’851 Patent (IPR2019-01444) |
| 2023-10-06 | IPR Certificate Issued, Confirming Patentability of Claims 1-6 |
| 2024-09-04 | Defendant submits infringement complaint to Amazon.com |
| 2024-09-23 | Complaint for Declaratory Judgment Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,763,851 - "Stimulation Device"
The Invention Explained
- Problem Addressed: The patent identifies shortcomings in prior art stimulation devices. It notes that direct-contact devices like vibrators can cause skin irritation and lead to habituation effects, while conventional vacuum-based devices can be complex, unhygienic, dehydrate the skin, and also cause habituation due to their reliance on constant negative pressure ('851 Patent, col. 1:19-34, col. 2:14-58).
- The Patented Solution: The invention proposes a device that generates a "temporally modifiable field of media pressures" consisting of both positive and negative pressure pulses relative to an ambient reference pressure ('851 Patent, col. 4:5-9). This is achieved through a pressure field generator with two chambers connected by a channel. A drive unit rhythmically changes the volume of the first chamber, causing a corresponding flow of a medium (like air) that creates pressure variations in the second chamber, which is placed on the skin ('851 Patent, Abstract; Fig. 3). The design aims to be a simple, hygienic, and "true-to-life imitation of the natural act of cohabitation" by avoiding direct contact with a solid vibrator and the constant suction of traditional vacuum pumps ('851 Patent, col. 4:45-51, col. 5:35-38).
- Technical Importance: The claimed approach of using modulated positive and negative air pressure sought to provide a novel form of stimulation that could avoid the habituation effects, hygiene risks, and potential for irritation associated with existing technologies in the sexual wellness market ('851 Patent, col. 4:45-51).
Key Claims at a Glance
- The complaint identifies independent claims 1 and 8 as the basis for the infringement dispute (Compl. ¶18).
- Independent Claim 1 of the ’851 Patent recites the following essential elements:
- A pressure field generator comprising a first chamber, a second chamber for placing over the clitoris, and a "straight channel" connecting them.
- A drive unit that changes the volume of the first chamber to generate a "stimulating pressure field" in the second chamber.
- A control device for the drive unit and a housing for the components.
- A "wherein" clause imposing several negative and positive limitations, including that:
- the pressure field consists of a "pattern of negative and positive pressures."
- the first chamber is connected to the second "solely by the connection element."
- the device has "no valves."
- the device is a "portable hand-held device with a battery."
- the connection element is "rigid" and aligned to create a "nozzle effect."
- The complaint notes that independent claim 8 recites "similar limitations" to claim 1 (Compl. ¶20) and seeks a declaration of noninfringement for all claims of the patent (Compl. ¶24).
III. The Accused Instrumentality
Product Identification
- The "QUZAR 3 IN 1 Thrusting Dildo Vibrator," sold on Amazon.com under ASIN B0BNHW2VMV (Compl. ¶6).
Functionality and Market Context
- The complaint provides no technical description of how the Accused Product operates. It identifies the product only by its name and its Amazon listing (Compl. ¶6). The product's name suggests its primary functions are mechanical "thrusting" and "vibration," which typically involve direct physical contact with a moving or oscillating element. The complaint alleges that nearly 100% of the Accused Product's sales occur on Amazon.com (Compl. ¶10).
IV. Analysis of Infringement Allegations
As this is a complaint for a declaratory judgment of non-infringement, it does not contain affirmative infringement allegations or a traditional claim chart. Instead, it asserts that the Accused Product does not meet all the limitations of the patent's claims (Compl. ¶¶ 21-22). The following table outlines the key limitations of claim 1, which will be central to the dispute.
No probative visual evidence provided in complaint.
’851 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a pressure field generator comprising: a first chamber... a second chamber... and a connection element... | The complaint does not allege this element is met. Plaintiff seeks a declaratory judgment of non-infringement, stating the Accused Product lacks claimed features. | ¶21 | col. 14:18-25 |
| a drive unit that changes a volume of the first chamber...that a stimulating pressure field is generated... | The complaint does not allege this element is met. | ¶21 | col. 14:26-29 |
| wherein: the pressure field generated in the second chamber consists of a pattern of negative and positive pressures... | The complaint does not allege this element is met. | ¶21 | col. 14:32-35 |
| the stimulation device has no valves | The complaint does not allege this element is met. | ¶21 | col. 14:38 |
| the connection element is rigid and...aligned...so that a media flow during a compression of the first chamber is directed to the clitoris through the straight channel with a nozzle effect | The complaint does not allege this element is met. | ¶21 | col. 14:41-46 |
- Identified Points of Contention:
- Technical Questions: A principal question for the court will be one of technical operation: does the "QUZAR 3 IN 1 Thrusting Dildo Vibrator" function by generating a modulated air pressure field as claimed, or does it operate exclusively through direct mechanical contact (i.e., vibration and thrusting)? The complaint provides no evidence on the product's actual mechanism, but its name suggests a fundamental mismatch with the patent's technology.
- Scope Questions: The dispute may turn on whether any structure within the accused device can be construed as the claimed "pressure field generator," with its distinct "first chamber," "second chamber," and "connection element." Further, the court may need to determine if the device produces a "pattern of negative and positive pressures" and operates with "no valves," as strictly required by the claims.
V. Key Claim Terms for Construction
The Term: "pressure field generator"
Context and Importance: This term encapsulates the core of the invention. The Plaintiff's case for non-infringement will likely depend on establishing that its product, described as a "Thrusting Dildo Vibrator," lacks any such structure. The patentee, Novoluto, would have to demonstrate that the accused device contains a system that meets the structural and functional requirements of this term.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specification describes the invention in general terms as having "at least one first chamber and at least one second chamber" connected in a way that allows a pressure field to be created by modifying the volume of the first chamber ('851 Patent, col. 3:57-63).
- Evidence for a Narrower Interpretation: The specification repeatedly distinguishes the invention from conventional vibrators and vacuum pumps ('851 Patent, col. 1:19-34, col. 2:14-44). The claims further narrow the term by requiring that the generator produce a "pattern of negative and positive pressures" and be part of a system with "no valves" ('851 Patent, col. 14:32-38). The embodiments consistently show a two-chamber pneumatic system (e.g., Fig. 3).
The Term: "no valves"
Context and Importance: This negative limitation is critical for distinguishing the invention from prior art devices that used valves to regulate vacuum or pressure. Practitioners may focus on this term because if any component in the accused product can be characterized as a "valve," infringement would be avoided. The Plaintiff may argue this limitation highlights the patent's specific, simple design, which its product does not share.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue this term refers only to formal, one-way check valves and does not exclude other components that might incidentally regulate airflow.
- Evidence for a Narrower Interpretation: The patent presents the valveless design as a key advantage for simplicity, hygiene, and reliability, contrasting it with prior art that is "relatively complex" and includes "a plurality of valves" ('851 Patent, col. 2:44-45, col. 5:49-51). This context suggests an intent to exclude any component that serves the flow-control function of a valve.
VI. Other Allegations
- Indirect Infringement: The complaint includes a boilerplate request for a declaration of non-infringement of any claim "either literally or under the doctrine of equivalents," which encompasses indirect infringement, but alleges no specific facts related to this issue (Compl. ¶24).
- Willful Infringement: Willfulness is not at issue. However, the Plaintiff affirmatively requests that the court declare this an "exceptional case" under 35 U.S.C. § 285, which would entitle it to an award of attorney's fees (Compl. ¶25). The complaint does not state the explicit basis for this request, but it may be inferred from the allegations that Defendant is a "foreign patent assertion entity" (Compl. ¶5) that initiated an infringement action via Amazon's platform against a product whose name suggests it does not practice the claimed technology.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of technological mismatch: does the accused "QUZAR 3 IN 1 Thrusting Dildo Vibrator" operate using the claimed pneumatic "pressure field generator," or does it function solely via direct mechanical stimulation (thrusting, vibration), placing its mechanism of action entirely outside the scope of the patent's claims? The resolution will depend on evidence revealing the actual construction and operation of the accused product.
- A second key issue will be personal jurisdiction and exceptional case status: can a foreign entity that does not manufacture or sell products be subject to personal jurisdiction in Delaware solely for using Amazon's IP reporting tool and for its litigation conduct in a prior case? Relatedly, does the act of reporting a product whose commercial name suggests non-infringement constitute a baseless or bad-faith assertion that makes this an "exceptional case" warranting an award of fees?
- Finally, a key evidentiary question will be whether the accused device meets the strict negative limitation of having "no valves." The presence of any component that regulates airflow could be a straightforward basis for a finding of non-infringement, making the construction of this term and the analysis of the product's internal components critical.