DCT

0:18-cv-61041

Atmos Technology LLC v. Yariv Alima

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 0:18-cv-61041, S.D. Fla., 05/09/2018
  • Venue Allegations: Venue is asserted in the Southern District of Florida on the basis that all parties are residents of, or maintain their principal places of business in, Broward County, Florida.
  • Core Dispute: Plaintiffs seek a declaratory judgment to correct the inventorship of nineteen utility and design patents related to vaporizer technology, alleging that Defendant falsely named himself as an inventor without contributing to the conception of the claimed inventions.
  • Technical Context: The patents relate to the field of portable electronic vaporizers and e-cigarettes, a market segment focused on alternatives to traditional combustion-based smoking products.
  • Key Procedural History: The complaint alleges that Plaintiffs discovered in 2015 that Defendant, a former member of the business, had incorrectly listed himself as an inventor on the patents-in-suit while acting as a liaison with patent counsel. The filing was precipitated by an August 16, 2016 letter from Defendant’s counsel which asserted inventorship and ownership over sixteen of the patents and demanded that the Plaintiff companies cease their commercial activities, thereby creating an alleged actual controversy between the parties.

Case Timeline

Date Event
2010-00-00 Atmos business formed
2011-12-14 Priority Date for U.S. Patent No. 9,498,588
2012-12-14 Priority Date for U.S. Patent No. D695,450
2013-02-05 Priority Date for U.S. Patent Nos. 9,375,034; 9,379,364; 9,271,529
2013-07-12 Priority Date for U.S. Patent Nos. D720,499; D722,956; D745,213
2013-08-22 Priority Date for U.S. Patent No. D724,265
2013-09-03 Priority Date for U.S. Patent No. D710,488
2013-10-04 Priority Date for U.S. Patent Nos. D720,094; D720,095
2013-12-10 Issue Date for U.S. Patent No. D695,450
2014-03-28 Priority Date for U.S. Patent Nos. D717,994; D720,496; D752,281
2014-04-02 Priority Date for U.S. Patent Nos. D720,497; D743,622
2014-08-05 Issue Date for U.S. Patent No. D710,488
2014-09-03 Priority Date for U.S. Patent No. D723,732
2014-09-05 Priority Date for U.S. Patent No. 9,451,792
2014-11-18 Issue Date for U.S. Patent No. D717,994
2014-12-23 Issue Date for U.S. Patent Nos. D720,094; D720,095
2014-12-30 Issue Date for U.S. Patent Nos. D720,496; D720,497; D720,499
2015-00-00 Plaintiffs allegedly discover inventorship error
2015-02-24 Issue Date for U.S. Patent No. D722,956
2015-03-03 Issue Date for U.S. Patent No. D723,732
2015-03-10 Issue Date for U.S. Patent No. D724,265
2015-11-17 Issue Date for U.S. Patent No. D743,622
2015-12-08 Issue Date for U.S. Patent No. D745,213
2016-03-01 Issue Date for U.S. Patent No. 9,271,529
2016-03-22 Issue Date for U.S. Patent No. D752,281
2016-03-31 Defendant Alima terminated from positions at Atmos
2016-06-28 Issue Date for U.S. Patent Nos. 9,375,034; 9,379,364
2016-08-16 Defendant’s counsel sends letter asserting inventorship rights
2016-09-27 Issue Date for U.S. Patent No. 9,451,792
2016-11-22 Issue Date for U.S. Patent No. 9,498,588
2018-05-09 Complaint Filing Date

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

U.S. Design Patent No. D695,450 - "Portable Pen Sized Herb Vaporizer," issued December 10, 2013

The Invention Explained

  • Problem Addressed: Design patents do not articulate a technical problem in a background section. Their purpose is to protect the novel, non-obvious, and ornamental appearance of an article of manufacture (Compl. Ex. A).
  • The Patented Solution: The patent claims the specific ornamental design for a portable, pen-shaped herb vaporizer (Compl. Ex. A, p. 12, CLAIM). The design features a slender, cylindrical body with distinct sections, a tapered mouthpiece, and a specific button and indicator light configuration, as depicted in the patent's figures (Compl. Ex. A, pp. 13-19, FIGS. 1-7). Figure 1 of the '450 Patent shows a perspective view of the overall pen-like form factor of the vaporizer (Compl. Ex. A, p. 13).
  • Technical Importance: The claimed design contributes to the overall aesthetic and visual identity of a portable vaporizer product in the consumer electronics market.

Key Claims at a Glance

  • The patent asserts a single claim to the ornamental design as shown in the drawings (Compl. Ex. A, p. 12, CLAIM).
  • The essential elements are the visual characteristics of the vaporizer, including:
    • Its overall pen-like cylindrical shape and proportions.
    • The specific arrangement of segmented body parts.
    • The shape and placement of the activation button and indicator lights.
    • The tapered design of the mouthpiece.

U.S. Design Patent No. D710,488 - "Vaporizer Adapter," issued August 5, 2014

The Invention Explained

  • Problem Addressed: As a design patent, the '488 Patent addresses the challenge of creating a new and ornamental design for a functional object, in this case a vaporizer component (Compl. Ex. B).
  • The Patented Solution: The patent protects the ornamental design for a vaporizer adapter, which features a series of stacked cylindrical and frustoconical shapes of varying diameters (Compl. Ex. B, p. 21, CLAIM). The visual design, illustrated from multiple perspectives, establishes a distinct appearance for the adapter component (Compl. Ex. B, pp. 22-30, FIGS. 1-9). Figure 9 of the '488 Patent provides a cross-sectional view that reveals the ornamental internal shaping of the adapter (Compl. Ex. B, p. 30).
  • Technical Importance: This design provides a specific aesthetic for an interchangeable or connecting component within a vaporizer system.

Key Claims at a Glance

  • The patent asserts a single claim covering the ornamental design for the vaporizer adapter as depicted in the patent's figures (Compl. Ex. B, p. 21, CLAIM).
  • The essential elements are the visual design features, including:
    • The overall stepped, cylindrical profile.
    • The proportional relationship between the sections of different diameters.
    • The specific curvatures and transitions between sections.

U.S. Design Patent No. D717,994 - "Spoon Vaporizer," issued November 18, 2014

  • Technology Synopsis: This patent protects the ornamental design of a "spoon vaporizer," an accessory for a vaporizer device. The design features an elongated, contoured handle with fluted details and a spoon-shaped tip (Compl. Ex. C, p. 33, FIG. 1).
  • Asserted Claims: The single claim is for the ornamental design shown in the drawings (Compl. Ex. C, p. 32).
  • Subject of Inventorship Dispute: Plaintiffs allege that Yariv Alima did not contribute to the conception of this design (Compl. ¶¶ 15-18).

U.S. Design Patent No. D720,094 - "Vaporizer," issued December 23, 2014

  • Technology Synopsis: The patent claims the ornamental design of a vaporizer with a rocket-like, tapered body. The design includes a circular arrangement of air holes, a specific power button design, and a tapered mouthpiece (Compl. Ex. D, p. 43, FIG. 1).
  • Asserted Claims: The single claim is for the ornamental design shown in the drawings (Compl. Ex. D, p. 42).
  • Subject of Inventorship Dispute: Plaintiffs allege that Yariv Alima did not contribute to the conception of this design (Compl. ¶¶ 15-18).

U.S. Design Patent No. D720,095 - "Mini Vaporizer," issued December 23, 2014

  • Technology Synopsis: This patent protects the ornamental appearance of a "mini vaporizer." The design is a compact, cylindrical device with a distinct mouthpiece shape and a power button arrangement similar to that of the '450 Patent (Compl. Ex. E, p. 54, FIG. 1).
  • Asserted Claims: The single claim is for the ornamental design shown in the drawings (Compl. Ex. E, p. 53).
  • Subject of Inventorship Dispute: Plaintiffs allege that Yariv Alima did not contribute to the conception of this design (Compl. ¶¶ 15-18).

Additional Patents-in-Suit: The complaint also seeks to correct inventorship for U.S. Patent Nos. D720,496; D720,497; D720,499; D722,956; D723,732; D724,265; D743,622; D745,213; D752,281; 9,375,034; 9,379,364; 9,498,588; 9,451,792; and 9,271,529, alleging similar facts regarding Defendant's lack of inventive contribution (Compl. ¶¶ 14-18).

III. Core Allegations Regarding Inventorship

The central allegations of the complaint concern the legal standard of inventorship. Plaintiffs seek a declaratory judgment to remove Defendant Yariv Alima from nineteen U.S. patents and name Plaintiffs Eli Eroch and Charly Benassayag as the proper inventors (Compl. ¶ 1, pp. 8-10).

  • Defendant's Alleged Role: The complaint alleges that Defendant Alima’s role at the company was primarily clerical and financial, and that he acted as a "liaison" between the alleged true inventors (Eroch and Benassayag) and the patent attorneys prosecuting the applications (Compl. ¶¶ 11-13). It is explicitly alleged that Alima "was never involved in the engineering or design that contributed to Atmos's issued patents" (Compl. ¶ 13).

  • Allegations of Improper Naming: Plaintiffs allege that while acting in this liaison capacity, Alima "illegitimately and incorrectly listed himself as owner and inventor" on all the patents-in-suit without the knowledge of the other company members (Compl. ¶ 19). The complaint characterizes this action as an "insurance policy" taken by Alima in the event he was removed from the company's management (Compl. ¶ 19).

  • Attribution of Inventorship: The complaint asserts that Plaintiff Eroch is the sole inventor of all the utility patents and all design patents except for the '450 Patent (Compl. ¶ 15, 16). It alleges that Plaintiff Benassayag is a co-inventor with Eroch on only the '450 Patent (Compl. ¶ 17). It is affirmatively stated that Alima "provided no contribution to the claims of any patents" (Compl. ¶ 18).

  • Existence of Controversy: The complaint asserts that a "substantial and actual controversy" exists between the parties, as required for a declaratory judgment action. This is primarily supported by reference to an August 16, 2016 letter from Alima's counsel, which allegedly claimed inventorship and ownership of sixteen of the patents and demanded that Plaintiffs cease violating Alima's exclusive rights (Compl. ¶¶ 23, 27, Ex. T).

  • Intentional Malfeasance: Plaintiffs characterize the case as "exceptional" and allege that the need for correction arises not from a simple mistake but from "a parties' intentional malfeasance" (Compl. ¶ 24).

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

As this is an action to correct inventorship rather than a claim of infringement, the central issues are factual and historical, not technical questions of claim construction or infringement. The case will likely turn on the evidence presented to establish who meets the legal standard for inventorship.

  • A primary question will be one of conception: What evidence exists to corroborate who conceived of the claimed inventions? Under U.S. patent law, inventorship is tied to the "formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention." The court will need to determine if Plaintiffs can prove that Eroch and Benassayag alone conceived of the inventions, and conversely, whether Alima can produce evidence of his contribution to that conception.

  • A second core issue will be one of evidence and corroboration: Given the allegation that Alima was merely a liaison, the case will depend heavily on documentary evidence and testimony. Key evidence may include lab notebooks, design drawings, emails, prototypes, and testimony from the patent attorneys involved, all of which would need to be assessed to determine who contributed to the conception of each claimed invention.

  • A final question relates to intent: While not strictly necessary to correct inventorship, Plaintiffs' allegation of "intentional malfeasance" raises the stakes. Evidence regarding Alima's motive and knowledge at the time of filing the patent applications will be central to this aspect of the dispute and could influence whether the court deems the case "exceptional" for the purposes of awarding attorney fees.