DCT

3:22-cv-00797

Sgromo v. Ja Ru Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:22-cv-00797, M.D. Fla., 03/21/2023
  • Venue Allegations: Venue is predicated on the Defendant's principal place of business being in Jacksonville, Florida, and the allegation that the breach of a non-disclosure agreement occurred in Florida.
  • Core Dispute: Plaintiff alleges that Defendant’s toy products infringe patents related to bubble toys with optical effects and that their sale constitutes a breach of a non-disclosure agreement assumed by Defendant.
  • Technical Context: The patents-in-suit relate to technologies for enhancing visual play experiences, one involving the projection of holographic images onto toy bubbles and the other involving the creation of 3D images from colored 2D drawings.
  • Key Procedural History: The complaint describes a complex history between the Plaintiff and Defendant’s predecessor-in-interest, Imperial Toy, LLC. This history includes a non-disclosure agreement (NDA), non-exclusive license agreements, prior litigation in Canada and the Eastern District of Texas, and proceedings related to Imperial Toy’s bankruptcy. Plaintiff alleges Defendant JA-RU Inc. assumed the NDA through the bankruptcy but is selling products based on Plaintiff's inventions without authorization and is making false claims regarding ownership of the patents-in-suit.

Case Timeline

Date Event
2009-03-23 ’243 Patent Priority Date
2009-10-06 ’422 Patent Priority Date
2014-02-18 ’422 Patent Issue Date
2015-06-30 ’243 Patent Issue Date
2017-02-01 Plaintiff alleges discovery of predecessor's launch of "LUB-T"
2017-08-01 Plaintiff alleges discovery of predecessor's launch of "Glow Bubbles"
2023-03-21 Complaint Filing Date

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

U.S. Patent No. 8,654,422 - "Holographic Bubble Generating System" (issued Feb. 18, 2014)

The Invention Explained

  • Problem Addressed: The patent background implies a need for more immersive and visually engaging play experiences beyond traditional toys, referencing the creation of "virtual and fantasy environments and games" (’422 Patent, col. 2:11-13).
  • The Patented Solution: The invention is a system that combines a bubble generating device with a separate "holographic viewing device," such as a pair of eyeglasses with holographic images embedded in the lenses (’422 Patent, col. 2:23-28). When a user wearing the device views bubbles that are lit by a light source (e.g., sunlight), the holographic images appear to be projected onto the surface of the bubbles, creating an optical effect (’422 Patent, Abstract; col. 3:11-15). The system is depicted in Figure 1, showing a user (110) with eyeglasses (120) viewing bubbles (160) from a generator (130).
  • Technical Importance: This technology sought to merge a physical, transient object (a bubble) with a persistent optical illusion (a hologram) to create a novel interactive toy experience.

Key Claims at a Glance

  • The complaint does not explicitly assert any specific claims. Independent claim 1 is representative of the core system.
  • Essential Elements of Claim 1:
    • An optical effect viewing device comprising one or more holographic images;
    • A bubble generating device for generating one or more bubbles; and
    • Wherein the generated bubbles appear to have the holographic images thereon when lit by a light source and viewed through the optical effect viewing device.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 9,069,243 - "System and Method for Generating a Three-Dimensional Image on a Pre-Printed Lined Substrate" (issued Jun. 30, 2015)

The Invention Explained

  • Problem Addressed: The patent describes traditional drawing and coloring activities as being limited to two-dimensional results, which provide "minimal play value in viewing the created artwork" and lack an "enhanced level of play" (’243 Patent, col. 1:41-45).
  • The Patented Solution: The invention is a system for creating a perceived three-dimensional image from a two-dimensional medium. A user applies specific colors to defined regions of a pre-printed drawing on a substrate, such as paper (’243 Patent, col. 2:62-65). When this colored substrate is viewed through a stereoscopic viewer (e.g., glasses with different colored lenses), the specially designed and colored 2D image produces a 3D visual effect (’243 Patent, Abstract). The patent notes that a predominantly black background enhances this effect (’243 Patent, col. 3:4-7).
  • Technical Importance: This invention combines the creative, hands-on activity of coloring with the optical principles of stereoscopy to transform a user's 2D artwork into a 3D experience.

Key Claims at a Glance

  • The complaint does not explicitly assert any specific claims. Independent claim 1 is representative of the core system.
  • Essential Elements of Claim 1:
    • A two-dimensional substrate with a pre-printed image having blank regions and black lines, designed to produce a 3D image when colored;
    • The image has a predominantly dark background;
    • A stereoscopic viewer for perceiving a three-dimensional image from the combination of colored regions and black lines.
  • The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

The complaint identifies the accused products as the "LUB-T" (Light-Up Bubble Toy) and "Glo Bubble Toys" (Compl. p. 4; ¶¶5, 10).

Functionality and Market Context

The complaint provides minimal technical detail on the accused products. It describes the "LUB-T" as a "Light-Up Bubble Toy" and the "Glo Bubble Toys" as a "glow in the dark ('GITD')" bubble toy invention (Compl. ¶¶5, 10). Based on these descriptions, the accused products are toys that generate bubbles which are either illuminated by an internal light source or are formulated to glow in the dark. The complaint alleges that Defendant Ja-Ru Inc. "continues to sell" these products (Compl. p. 6). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint does not follow the structure of a typical patent infringement pleading and does not contain claim charts or specific allegations mapping patent claim elements to features of the accused products. The narrative theory of wrongdoing focuses on breach of a non-disclosure agreement and unauthorized use of patented inventions following Defendant’s assumption of contractual obligations from a bankrupt predecessor (Compl. p. 6). The complaint alleges that Plaintiff disclosed the concepts for the accused products under an NDA and that the patents-in-suit cover these inventions (Compl. ¶¶4-10). The core of the patent-related claim is that Defendant is selling products embodying the patented inventions without authority or a license (Compl. p. 6).

  • Identified Points of Contention:
    • Pleading Sufficiency: A threshold issue is whether the complaint, which centers on contractual and ownership disputes, provides sufficient factual detail to state a plausible claim for patent infringement under the federal pleading standards, given the lack of specific element-by-element infringement allegations.
    • Technical Mismatch (’243 Patent): The complaint alleges infringement of the ’243 Patent by bubble toys. However, the ’243 Patent is directed to a system for creating 3D images on a colored two-dimensional substrate (like paper) viewed with a stereoscopic viewer. This raises a fundamental question about the technical applicability of this patent to the accused bubble-generating products.
    • Scope of System Claims (’422 Patent): The independent claims of the ’422 Patent recite a system comprising both a bubble generator and an "optical effect viewing device" (e.g., holographic glasses). The complaint does not allege that the accused "LUB-T" or "Glo Bubble Toys" are sold with or used in conjunction with such a viewing device. This raises the question of how the accused products could directly infringe a system claim requiring this additional component.

V. Key Claim Terms for Construction

  • Term from the ’422 Patent: "optical effect viewing device"

    • Context and Importance: This term is a required element of the claimed system. Whether the accused products infringe will depend on whether this device is supplied by the Defendant or its use is induced. Practitioners may focus on this term because the complaint makes no mention of the accused products including any such device, making its definition critical to any potential infringement theory.
    • Intrinsic Evidence for a Broader Interpretation: The claim language itself is general, reciting a "viewing device," which a party might argue is not strictly limited to a specific form factor (’422 Patent, col. 3:36-37).
    • Intrinsic Evidence for a Narrower Interpretation: The specification consistently describes the device as "a pair of eyeglasses" and the accompanying figures exclusively depict eyeglasses, which may support a construction limited to eyewear (’422 Patent, col. 2:25-26; Fig. 1).

  • Term from the ’243 Patent: "two-dimensional substrate"

    • Context and Importance: This term defines the medium upon which the patented 3D effect is created. Its construction is central to determining if there is any plausible basis for the infringement allegation against bubble toys.
    • Intrinsic Evidence for a Broader Interpretation: The complaint does not provide a basis to suggest a broad interpretation that would encompass a bubble.
    • Intrinsic Evidence for a Narrower Interpretation: The specification describes the substrate as a medium for a "pre-printed lined drawing" and provides examples such as "paper, fabric and the like," suggesting a solid, printable medium, not a transient, spherical liquid film (’243 Patent, col. 3:1-2).

VI. Other Allegations

  • Indirect Infringement: The complaint does not plead specific facts to support claims of induced or contributory infringement, such as allegations regarding user manuals, advertisements, or other materials instructing users on how to infringe.
  • Willful Infringement: While the complaint does not explicitly use the term "willful," it alleges a long history of business dealings and legal disputes with Defendant's predecessor concerning the inventions and patents-in-suit (Compl. ¶¶17-29). It further alleges that Ja-Ru continues to sell the accused products without permission, which suggests knowledge that could form the basis for a willfulness argument if infringement is properly pleaded and proven (Compl. p. 6).

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

  • Pleading and Subject Matter: A primary threshold issue is one of jurisdiction and pleading sufficiency: does the complaint, which is centered on allegations of a breach of an NDA and disputes over patent ownership, state a cognizable claim for patent infringement, or is it fundamentally a state-law contract dispute?
  • Technical Applicability: A core substantive question is one of technical mismatch: is there a plausible factual basis to connect the accused bubble toys to the ’243 Patent, which is directed to creating 3D images from colored two-dimensional substrates, a seemingly unrelated technology?
  • Claim Scope: For the ’422 Patent, a key infringement question will be one of definitional scope: can the claimed "system," which expressly requires an "optical effect viewing device," be infringed by the accused bubble generators alone, absent allegations that Defendant supplies or encourages the use of the required viewer?