DCT
8:20-cv-00443
Wanna Play Products Inc v. Emery
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Wanna Play Products Inc. dba Calmeroos (Canadian Corporation)
- Defendant: Robert Emery, Jason Bakke, Snuggle Pet Products, LLC dba SmartPetLove (Michigan LLC)
- Plaintiff’s Counsel: ATLAWIP LLC
- Case Identification: 8:20-cv-00443, M.D. Fla., 08/21/2020
- Venue Allegations: Venue is alleged to be proper in the Middle District of Florida based on Defendant Robert Emery’s residence within the jurisdiction and Defendant Snuggle Pet Products, LLC’s transaction of business in the district.
- Core Dispute: Plaintiff seeks a declaratory judgment that its pet-calming plush toys do not infringe Defendant’s patent and that the patent is invalid, in response to Defendant’s allegations of infringement made through Amazon’s intellectual property complaint system.
- Technical Context: The technology involves pet-calming companion toys designed to soothe animals, particularly puppies and kittens, by simulating the presence of a mother through features like warmth and sound.
- Key Procedural History: The complaint alleges that Defendants previously filed infringement reports on Amazon against Plaintiff, citing various patent numbers, including Taiwanese, Chinese, and expired U.S. patents. After Plaintiff filed an initial lawsuit in Georgia, which was voluntarily dismissed, Defendants allegedly asserted U.S. Patent No. 10,314,292, prompting this declaratory judgment action.
Case Timeline
| Date | Event |
|---|---|
| 2014-09-30 | U.S. Patent 10,314,292 Priority Date |
| 2019-06-11 | U.S. Patent 10,314,292 Issue Date |
| 2019-11-27 | Plaintiff’s Calmeroos Puppy first sold on Amazon |
| 2019-12-03 | Defendant allegedly files Amazon infringement complaints |
| 2020-08-21 | First Amended Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,314,292 - “Pet Calming and Soothing System”
The Invention Explained
- Problem Addressed: The patent addresses the separation anxiety, stress, and hyperactivity that young pets, such as puppies, experience when separated from their mothers and littermates, which can lead to behavioral issues like whining and sleeplessness (’292 Patent, col. 4:22-33).
- The Patented Solution: The invention proposes a system, such as a stuffed toy animal, containing a removable modular simulator. This simulator generates "rhythmic soothing acoustic sounds that simulate the actual breathing of the animal's mother" to calm the pet (’292 Patent, Abstract). The specification describes embodiments where the simulator is activated by a pressure-sensitive switch when the pet lies on the toy, creating a calming effect through sound therapy principles (’292 Patent, col. 4:5-11, 32-37).
- Technical Importance: The invention aims to build upon prior art devices, which simulated a heartbeat, by incorporating simulated breathing sounds to empower a "relaxation response" in the animal (’292 Patent, col. 4:1-8).
Key Claims at a Glance
- The complaint seeks a declaratory judgment of invalidity and non-infringement as to all claims of the patent (’292 Patent, Compl. ¶¶ 245-258). Independent claims 1, 12, and 13 are representative of the core technology.
- Independent Claim 1 requires:
- A pouch.
- A modular simulator within the pouch comprising a sound generator.
- The sound generator creates "rhythmic soothing acoustic sounds that simulate actual animal breathing."
- The simulator includes a switch arrangement.
- The switch arrangement includes a "pressure sensitive switch" activated by pressure.
III. The Accused Instrumentality
Product Identification
- The "Calmeroos Puppy" and "Calmeroos Kitty" products, which are plush toys sold as pet anxiety aids (Compl. ¶¶ 117, 119).
Functionality and Market Context
- The Calmeroos products are plush toys that contain two disposable heat packs and a removable, heart-shaped device (Compl. ¶¶ 113, 117). The complaint alleges this heart device produces a simulated heartbeat, not a simulated breathing sound (Compl. ¶ 233).
- A key technical feature alleged in the complaint is that the Calmeroos heart device is activated by a manual "sliding on/off toggle switch" located on its back, rather than a pressure-sensitive switch (Compl. ¶ 236).
- The complaint includes a photograph comparing the Calmeroos Kitty and Puppy, stating that besides the plush exterior, the products are the same (Compl. p. 42).
- Plaintiff positions the Calmeroos product as an improvement over Defendant's "22-year-old design," with features like longer-lasting heat packs and increased battery efficiency for the heart device (Compl. ¶¶ 100, 113).
IV. Analysis of Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement. The following table summarizes the key non-infringement arguments for the representative claims.
’292 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a sound generator generating rhythmic soothing acoustic sounds that simulate actual animal breathing | The Calmeroos products (Puppy and Kitty) do not contain a sound generator that simulates animal breathing; they are alleged to contain a device that simulates a heartbeat (Compl. ¶ 233). | ¶233 | col. 4:19-22 |
| said switch arrangement further comprising a pressure sensitive switch...activated by pressure acting against said pressure sensitive switch | The Calmeroos heart device is not activated by a pressure-sensitive switch. Instead, it uses a manual "sliding on/off toggle switch" on the back of the device. The complaint includes a photograph comparing the Calmeroos sliding switch with the Defendant's pressure-sensitive switch (Compl. p. 73). | ¶236 | col. 4:32-37 |
| a harness, the harness comprising a looped webbing encircling the neck, shoulders, and back of an animal | No Calmeroos product incorporates a harness with looped webbing as required by independent claim 12 (Compl. ¶ 232). | ¶232 | col. 6:25-28 |
- Identified Points of Contention:
- Technical Questions: The primary dispute appears to center on two clear technical distinctions alleged by the Plaintiff: (1) Does the Calmeroos device produce a sound that "simulate[s] actual animal breathing," or is a heartbeat sound functionally and legally distinct? (2) Does the manual "sliding on/off toggle switch" on the Calmeroos product meet the "pressure sensitive switch" limitation of the claims?
- Scope Questions: A core question for the court will be whether the claim term "sounds that simulate actual animal breathing" can be interpreted broadly enough to encompass the heartbeat sound of the accused product. The complaint also raises questions about whether the Defendants' assertions of infringement via Amazon's streamlined reporting form, without detailed claim charts, created a sufficient controversy for this declaratory judgment action (Compl. ¶¶ 45-51).
V. Key Claim Terms for Construction
The Term: "rhythmic soothing acoustic sounds that simulate actual animal breathing"
Context and Importance: This term is central to the non-infringement argument. Plaintiff contends its product simulates a heartbeat, not breathing (Compl. ¶ 233). The construction of this phrase may determine whether the accused products meet this limitation. Practitioners may focus on whether "simulate" requires mimicking the sound of respiration specifically, or more broadly mimicking a vital sign of a living animal.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that the patent’s discussion of "sound therapy" and inducing a "relaxation response" supports a broader reading where any rhythmic, biological sound (like a heartbeat) could achieve the same goal and thus falls within the spirit of the invention (’292 Patent, col. 4:5-8).
- Evidence for a Narrower Interpretation: The patent specification repeatedly and consistently refers specifically to "breathing sound" and simulating the breathing of a "mother" ('292 Patent, Abstract; col. 4:17-18, 61-63). This consistent and specific language may support a narrower construction limited to sounds that mimic respiration.
The Term: "pressure sensitive switch"
Context and Importance: This term is critical because the Plaintiff's product allegedly uses a simple manual sliding switch (Compl. ¶ 236). If this term is construed to mean a switch activated by the pet's weight, as Plaintiff argues, then there is a clear basis for non-infringement.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that any switch that responds to physical pressure (including a finger) is technically "pressure sensitive."
- Evidence for a Narrower Interpretation: The specification provides explicit context, describing "a pressure sensitive switch for activation thereof when the animal places its weight upon the exterior of said toy structure" (’292 Patent, col. 4:32-35). This language provides strong evidence that the term was intended to mean a switch that operates automatically in response to the pet's body weight, not a manual toggle switch. The complaint's visual evidence highlights this alleged distinction (Compl. p. 73).
VI. Other Allegations
- Indirect Infringement: The complaint seeks a declaratory judgment that Plaintiff has not "contributed to the infringement of, or induced infringement of" any valid and enforceable claim of the ’292 Patent (Compl. ¶ 251).
- Willful Infringement: This is not applicable, as this is a declaratory judgment action filed by the accused infringer. However, the complaint includes extensive allegations that may support a finding of an exceptional case under 35 U.S.C. § 285. Plaintiff alleges Defendants engaged in bad faith by filing baseless infringement reports on Amazon using expired, irrelevant, and foreign patents before asserting the ’292 patent, and then refused to provide a covenant not to sue, forcing Plaintiff to file suit (Compl. ¶¶ 140-151, 49-51). These allegations are also central to Plaintiff's separate counts for patent misuse and unfair competition (Compl. Counts VIII, XIV).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of technical and functional differentiation: Does the Calmeroos product's alleged use of a heartbeat simulator and a manual sliding switch place it outside the literal scope of the ’292 Patent’s claims, which recite "sounds that simulate actual animal breathing" and a "pressure sensitive switch"? The case may turn on the court's construction of these specific terms, guided by the patent's specification.
- A second key issue will be the patentee's pre-litigation conduct. The Plaintiff’s detailed allegations regarding the Defendants' use of Amazon’s IP reporting system to assert a series of allegedly irrelevant patents will be central to its claims for patent misuse and its request for attorney's fees. The court will need to evaluate whether this conduct constitutes the type of bad faith or litigation misconduct that renders a case exceptional.