DCT

8:23-cv-02743

Spin Balls LLC v. Five Below Inc

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 8:23-cv-02743, M.D. Fla., 12/01/2023
  • Venue Allegations: Plaintiff alleges venue is proper based on Defendants’ sales of infringing products from retail stores located within the judicial district, as well as sales through an interactive commercial website accessible to consumers in the district.
  • Core Dispute: Plaintiff alleges that Defendants’ toy products infringe four patents related to a transformable geometric toy and a tethered illuminating ball, in addition to asserting claims for trademark and trade dress infringement.
  • Technical Context: The dispute involves two distinct technologies in the toy market: magnetically interconnecting, reconfigurable geometric puzzles and handheld, illuminated tethered balls used for performance art (poi).
  • Key Procedural History: Plaintiff alleges it placed Defendants on express written notice of infringement via cease and desist letters on October 23, 2023, and again on November 16, 2023, prior to filing the complaint. These notices are cited as the basis for allegations of willful infringement.

Case Timeline

Date Event
2011-03-24 Earliest Priority Date for ’331 and ’398 Patents
2014-09-16 Earliest Priority Date for ’964 and ’547 Patents
2015-01-06 U.S. Patent No. 8,926,331 Issues
2016-05-10 U.S. Patent No. 9,333,398 Issues
2021-02-16 U.S. Patent No. 10,918,964 Issues
2022-03-01 Alleged Infringement of KARMAGAMI Trade Dress Begins (approx.)
2023-05-30 U.S. Patent No. 11,660,547 Issues
2023-10-23 Plaintiff Sends First Notice and Demand to Defendants
2023-11-16 Plaintiff Sends Second Notice and Demand to Defendants
2023-12-01 Complaint Filed

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

U.S. Patent No. 10,918,964 - "Three-Dimensional Geometric Art Toy"

  • Issued: February 16, 2021

The Invention Explained

  • Problem Addressed: The patent background describes the challenge of creating reconfigurable toys from basic geometric shapes, like tetrahedrons, that can be stably maintained in various complex polygonal configurations for educational, puzzle, or artistic display purposes (U.S. Patent No. 10,918,964, col. 1:12-24).
  • The Patented Solution: The invention is a "geometric art toy" comprising two sets of tetrahedral "toy members" that are movably coupled to one another (e.g., hinged) (’964 Patent, col. 1:36-40). Each member in the first set contains magnets oriented to exhibit a "first polarity," while each member in the second set contains magnets with a "substantially opposite" second polarity, allowing the toy to be selectively and stably positioned in multiple different configurations, such as a cube or star (’964 Patent, Abstract; col. 3:23-35).
  • Technical Importance: This approach allows for a single, interconnected device to transform into numerous distinct geometric shapes that hold their form magnetically, creating a dynamic puzzle and art object from a fixed number of components (’964 Patent, col. 3:23-44).

Key Claims at a Glance

  • The complaint asserts independent claim 7 (Compl. ¶169).
  • Essential Elements of Claim 7:
    • A geometric art toy comprising:
    • six first toy members formed as tetrahedrons, each with less than three first magnets;
    • six second toy members formed as tetrahedrons, each with less than three second magnets;
    • wherein the second magnets have a polarity that is not specified relative to the first magnets;
    • wherein each first toy member is directly and movably coupled to another first toy member and to one of the second toy members;
    • such that each first toy member is configured to magnetically couple with the second toy member to which it is directly and movably coupled, but not with the other first toy member to which it is directly and movably coupled.
  • The complaint notes that Plaintiff may assert additional claims (Compl. ¶173).

U.S. Patent No. 11,660,547 - "Three-Dimensional Geometric Art Toy"

  • Issued: May 30, 2023

The Invention Explained

  • Problem Addressed: The '547 patent, which shares a specification with the '964 patent, addresses the same technical problem of creating a stable, multi-configuration geometric toy from tetrahedral components (U.S. Patent No. 11,660,547, col. 1:12-24).
  • The Patented Solution: The solution is again a geometric toy made of first and second sets of tetrahedral members with distinct magnetic properties that allow them to be reconfigured. The claims of the ’547 Patent are directed to a "puzzle" comprising twelve tetrahedral bodies coupled by hinges, where magnets within the bodies are configured to magnetically couple with only one of the two bodies to which it is directly hinged (’547 Patent, col. 14:12-32).
  • Technical Importance: This patent further protects the concept of using selective magnetic coupling within a hinged, closed-loop structure of geometric shapes to enable complex transformations (’547 Patent, col. 3:23-35).

Key Claims at a Glance

  • The complaint asserts independent claim 12 (Compl. ¶180).
  • Essential Elements of Claim 12:
    • A puzzle comprising:
    • twelve tetrahedral bodies coupled together by hinges;
    • each body comprises six edges and is coupled along two edges to two different bodies;
    • each body comprises at least one and up to three magnets, which are the only magnets of that body;
    • each magnet has a polarity and position configured to magnetically couple with at least one magnet of at least one other body;
    • wherein in a first configuration, each body magnetically couples with only one of the two bodies to which it is coupled along its edges.
  • The complaint notes that Plaintiff may assert additional claims (Compl. ¶184).

Multi-Patent Capsule: U.S. Patent No. 8,926,331

  • Patent Identification: U.S. Patent No. 8,926,331, "Tethered LED Illuminating Ball," issued January 6, 2015.
  • Technology Synopsis: The patent describes a tethered, light-up ball toy, often used for "poi" performance art. The invention features a tether assembly, a spherical ball with retention apertures for a cord, and an illumination assembly positioned within the ball between the cord's anchor points (U.S. Patent No. 8,926,331, Abstract).
  • Asserted Claims: Independent claim 1 is asserted (Compl. ¶191).
  • Accused Features: The "LED Poi Balls" product is accused of infringement (Compl. ¶161).

Multi-Patent Capsule: U.S. Patent No. 9,333,398

  • Patent Identification: U.S. Patent No. 9,333,398, "Handheld Tethered Ball Device," issued May 10, 2016.
  • Technology Synopsis: This patent, related to the ’331 Patent, also discloses a handheld tethered ball device. It describes features such as a handle, a cord, a swivel, and a ball unit with an internal illumination assembly that is secured by a cover requiring a tool to open, which is presented as a safety feature (U.S. Patent No. 9,333,398, Abstract).
  • Asserted Claims: Independent claim 1 is asserted (Compl. ¶202).
  • Accused Features: The "LED Poi Balls" product is accused of infringement (Compl. ¶162).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are the "Magnetic Magic Cube" and the "LED Poi Balls" (Compl. ¶¶ 154, 157, 190).

Functionality and Market Context

  • Magnetic Magic Cube: The complaint describes this product as a puzzle toy comprising twelve tetrahedral modules connected by "adhesive stickers" (Compl. ¶155). It contains twenty-four magnets, identified as "twelve rare earth magnets and twelve metal magnets," allowing it to be manipulated into various configurations, including "star" and "cube" shapes (Compl. ¶¶ 155-156). Figure 1 of the complaint provides a side-by-side visual comparison of the plaintiff's "SHASHIBO" product with the accused "Magic Cube," highlighting similarities in packaging and product form (Compl. p. 40). The complaint alleges the product is of "grossly inferior quality" compared to Plaintiff's product (Compl. ¶104).
  • LED Poi Balls: This product is described as a translucent ball with an internal, battery-powered LED light source that provides multiple color and effect modes (e.g., strobe, morph) (Compl. ¶158). A retention cord extends from the ball and is coupled to a tether by a swivel (Compl. ¶158). Figure 3 of the complaint compares the packaging and appearance of the plaintiff's "SPINBALLS" product with the accused "LED POI BALLS" (Compl. p. 45).

IV. Analysis of Infringement Allegations

U.S. Patent No. 10,918,964 Infringement Allegations

Claim Element (from Independent Claim 7) Alleged Infringing Functionality Complaint Citation Patent Citation
six first toy members formed as tetrahedrons... and six second toy members formed as tetrahedrons... The Magic Cube is a puzzle that includes twelve tetrahedral modules. ¶155 col. 14:9-15
each first toy member including less than three first magnets... [and] each second toy member including less than three second magnets... The Magic Cube includes twenty-four magnets, which averages to two per module. ¶156 col. 14:10-18
wherein each first toy member is directly and movably coupled to another first toy member and to one of the second toy members... The twelve tetrahedral modules are hingedly coupled to each other by adhesive stickers. ¶155 col. 14:19-22
such that each first toy member is configured to magnetically couple with the second toy member to which it is directly and movably coupled, but not with the other first toy member... The Magic Cube can be manipulated between numerous configurations, including the same "star" and "cube" configurations, which relies on selective magnetic coupling. ¶155 col. 14:22-27

U.S. Patent No. 11,660,547 Infringement Allegations

Claim Element (from Independent Claim 12) Alleged Infringing Functionality Complaint Citation Patent Citation
A puzzle, comprising: twelve tetrahedral bodies coupled together by hinges... The Magic Cube is a puzzle that includes twelve tetrahedral modules hingedly coupled to each other by adhesive stickers. ¶155 col. 14:12-13
each tetrahedral body... is coupled along two edges of the six edges by a plurality of the hinges to two different tetrahedral bodies... The complaint does not specify the exact coupling arrangement but alleges the modules are "hingedly coupled." ¶155 col. 14:13-16
each tetrahedral body comprises at least one and up to three magnets, wherein the at least one and up to three magnets are the only magnets of each tetrahedral body... The Magic Cube includes twenty-four magnets in twelve modules, which is two per module on average. ¶156 col. 14:17-20
wherein in a first configuration, each tetrahedral body magnetically couples with only one of the two tetrahedral bodies to which it is coupled along the two edges. The complaint alleges the Magic Cube can form stable "star" and "cube" configurations, which implies selective magnetic coupling. ¶155 col. 14:26-30

Identified Points of Contention

  • Scope Questions: A central question may be whether the accused product's use of "twelve rare earth magnets and twelve metal magnets" (Compl. ¶156) meets the claim limitation requiring "second magnets" with a specific "polarity" (’964 Patent, col. 14:15-18) or simply "magnets" (’547 Patent, col. 14:18). The analysis may turn on whether a piece of metal, which is magnetically attractable but may not be a permanent magnet with its own polarity, can be construed as a "magnet" as claimed.
  • Technical Questions: The complaint alleges the tetrahedral modules are "hingedly coupled to each other by adhesive stickers" (Compl. ¶155). A point of contention may be whether a flexible "adhesive sticker" constitutes the "movably coupled" or "hinge" structure required by the claims and described in the patent specifications.

V. Key Claim Terms for Construction

  • The Term: "magnets" (as used in reference to both the "first magnets" and "second magnets" in the '964 and '547 patents)
  • Context and Importance: The construction of this term is critical because the complaint alleges the accused product contains both "rare earth magnets" and "metal magnets" (Compl. ¶156). The case may depend on whether a piece of metal, which is magnetically receptive but not necessarily a polarized magnet itself, falls within the scope of the term "magnet" as used in the claims. Practitioners may focus on this term because if "magnet" is construed to require an element with its own permanent magnetic field and distinct polarity, the infringement allegation against the "metal magnet" components could be challenged.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification's focus is on the interaction that allows the toy to be "stably maintained" in different configurations (’964 Patent, col. 1:47-50). An argument could be made that any component creating the necessary magnetic attraction to achieve this stability, including a magnet-and-metal pairing, falls within the intended scope.
    • Evidence for a Narrower Interpretation: The patent repeatedly and distinctly refers to "first magnets" and "second magnets," each "oriented to exhibit a... polarity" that is "substantially opposite" to the other set (’964 Patent, Abstract; col. 1:36-40). This language suggests the inventor contemplated two sets of actual magnets with opposing polarities, not one set of magnets and one set of magnetically attractable material.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement for all four patents-in-suit. The allegations state that with knowledge from the October 23, 2023 notice letter, Defendants induced suppliers and customers to infringe and contributed to infringement by selling the accused products, which are alleged to be a material part of the patented inventions (Compl. ¶¶ 173-174, 184-185, 195-196, 206-207).
  • Willful Infringement: Willfulness is alleged for all four patents based on Defendants' continued manufacturing and selling of the accused products after receiving actual notice of the patents and infringement allegations in the cease and desist letters dated October 23, 2023, and November 16, 2023 (Compl. ¶¶ 171, 182, 193, 204).

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

  • A core issue will be one of definitional scope: can the term "magnet," particularly as used in the context of requiring a "second polarity," be construed to cover the "metal magnets" (i.e., magnetically receptive metal pieces) allegedly used in the accused "Magic Cube"? The resolution of this claim construction issue may be determinative for infringement of the '964 and '547 patents.
  • A second key question will be one of structural equivalence: do the "adhesive stickers" that allegedly connect the modules of the accused "Magic Cube" meet the claim requirement of being "movably coupled" or functioning as "hinges" as contemplated by the patent?
  • A central evidentiary question for damages will be one of willfulness: what evidence will demonstrate that Defendants' decision to continue selling the accused products after receiving detailed notice letters was objectively reckless, thereby justifying enhanced damages?