DCT

1:17-cv-22405

Roland Corp v. Inmusicbrands Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:17-cv-22405, S.D. Fla., 11/02/2018
  • Venue Allegations: Plaintiff alleges venue is proper in the Southern District of Florida because Defendant has a continuous presence and sells the accused electronic percussion instruments in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s electronic percussion instruments, sold under the “Alesis” brand, infringe eight U.S. patents related to the design and function of electronic drum pads, cymbal pads, and hi-hat sensors.
  • Technical Context: The technology relates to electronic percussion instruments, specifically the physical pads that musicians strike, which are designed to replicate the feel of acoustic drums and cymbals while minimizing acoustic noise.
  • Key Procedural History: The complaint alleges that Plaintiff provided Defendant with notice of potential infringement on at least two occasions prior to the filing of the amended complaint: a letter on March 11, 2011, identifying the ’885 and ’989 patents, and a cease and desist letter on February 3, 2015, identifying seven of the eight asserted patents. This history forms the primary basis for the allegations of willful infringement.

Case Timeline

Date Event
1996-07-04 Priority Date for ’135, ’857, ’535, ’458, ’538 Patents
2000-08-22 Priority Date for ’885, ’989 Patents
2000-09-19 U.S. Patent No. 6,121,538 Issues
2001-08-07 U.S. Patent No. 6,271,458 Issues
2003-10-14 U.S. Patent No. 6,632,989 Issues
2003-11-10 Priority Date for ’626 Patent
2004-06-29 U.S. Patent No. 6,756,535 Issues
2005-04-19 U.S. Patent No. 6,881,885 Issues
2005-07-26 U.S. Patent No. 6,921,857 Issues
2008-06-10 U.S. Patent No. 7,385,135 Issues
2008-12-02 U.S. Patent No. 7,459,626 Issues
2011-03-11 Plaintiff sends notice letter to Defendant regarding ’885 and ’989 Patents
2015-02-03 Plaintiff sends cease and desist letter to Defendant regarding seven asserted patents
2018-11-02 First Amended Complaint Filed

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

U.S. Patent No. 7,385,135: “ELECTRONIC PERCUSSION INSTRUMENTAL SYSTEM AND PERCUSSION DETECTING APPARATUS THEREIN” (Issued June 10, 2008)

The Invention Explained

  • Problem Addressed: The patent’s background describes two problems with prior art electronic drum pads: poor “percussion feeling” due to excessive stick rebound from materials like soft high-molecular compounds, and significant acoustic noise generated by the physical strike, which can disturb a performance (’135 Patent, col. 1:46-56).
  • The Patented Solution: The invention uses a "net-like raw material" for the drum head, which allows air to pass through its openings, thereby dramatically reducing the acoustic sound of a stick impact (’135 Patent, col. 2:45-48). This mesh material is also described as having an elasticity that provides an "extremely good percussion feeling" similar to that of an acoustic drum (’135 Patent, col. 2:41-45). A percussion sensor is placed beneath the mesh head to detect the strike and generate an electronic signal (’135 Patent, Abstract).
  • Technical Importance: This "mesh head" approach represented a significant development in electronic drums, offering a more realistic and quieter playing experience compared to the solid rubber pads that were common at the time (’135 Patent, col. 2:41-48).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶23).
  • Claim 1 requires:
    • a housing;
    • a head composed of a flexible material having openings therethrough and supported by the housing to define a percussion surface; and
    • a percussion detector having a cushioning material and a transducer for detecting a percussion impact on the percussion surface and producing an electric signal responsive to the percussion impact.
  • The complaint also asserts process claim 28 (Compl. ¶29).

U.S. Patent No. 6,921,857: “ELECTRONIC PERCUSSION INSTRUMENTAL SYSTEM AND PERCUSSION DETECTING APPARATUS THEREIN” (Issued July 26, 2005)

The Invention Explained

  • Problem Addressed: Similar to the ’135 Patent, this patent addresses the poor percussion feel and excessive acoustic noise of conventional electronic drum pads (’857 Patent, col. 1:40-50).
  • The Patented Solution: The invention refines the mesh head concept by detailing a specific structural arrangement. It claims a system with a barrel section, a tensioned head material through which air can pass, a cushioning member that is "in communication with" the head's second surface, and a transducer "in communication with" the cushioning member (’857 Patent, Claim 1). This configuration is designed to allow air to pass through the head for quiet operation while ensuring the percussion impact is reliably transmitted from the head, through the cushion, to the transducer (’857 Patent, col. 2:30-42).
  • Technical Importance: This patent provides a more detailed architecture for a mesh head drum, specifying the functional relationship between the components needed to achieve both a quiet playing experience and accurate triggering of electronic sounds.

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶31).
  • Claim 1 requires:
    • a barrel section having a generally hollow interior and an open first end;
    • a head disposed in a tensioned state across the barrel's first end, made of a material through which air may pass;
    • a cushioning member in communication with the head's second surface, while allowing air to pass through the head; and
    • a transducer in communication with the cushioning member to receive percussion impact signals.
  • The complaint also asserts process claim 14 (Compl. ¶36).

U.S. Patent No. 6,756,535

  • Patent Identification: U.S. Patent No. 6,756,535, “ELECTRONIC PERCUSSION INSTRUMENTAL SYSTEM AND PERCUSSION DETECTING APPARATUS THEREIN,” Issued June 29, 2004 (Compl. ¶11).
  • Technology Synopsis: This invention discloses an electronic percussion system where a cushioning member contacts only a portion of, but less than the entire surface area of, the underside of a mesh drum head. This partial contact is intended to ensure that a portion of the head remains out of contact with the cushion, explicitly allowing air to pass through the head's openings to maintain quiet operation (Compl. ¶38). A provided photograph of a disassembled accused product identifies the "Cushioning Member," which appears to contact only the central area of the head (Compl. p. 12).
  • Asserted Claims: Independent claim 1 and process claim 7 (Compl. ¶¶38, 43).
  • Accused Features: The accused electronic drum pads are alleged to have a transducer assembly with a cushion that touches only a portion of the mesh head's surface (Compl. ¶39).

U.S. Patent No. 6,271,458

  • Patent Identification: U.S. Patent No. 6,271,458, “ELECTRONIC PERCUSSION INSTRUMENTAL SYSTEM AND PERCUSSION DETECTING APPARATUS THEREIN,” Issued August 7, 2001 (Compl. ¶12).
  • Technology Synopsis: This patent describes an electronic percussion instrument comprising a "generally hollow body" and a flexible, "net-like material" tensioned across an opening of the body. The net-like material has openings sufficient to allow air to pass through upon impact, and a sensor is supported by the hollow body to generate a signal in response to a strike (Compl. ¶45).
  • Asserted Claims: Independent claim 6 and process claim 11 (Compl. ¶¶45, 50).
  • Accused Features: The accused products are alleged to have a generally hollow body with a flexible, net-like material tensioned across the opening, where a sensor inside the body provides an electronic signal in response to impact (Compl. ¶46). The complaint provides a photograph labeling the accused product's "Net-Like Material" and "Generally Hollow Body" (Compl. p. 15).

U.S. Patent No. 6,121,538

  • Patent Identification: U.S. Patent No. 6,121,538, “ELECTRONIC PERcussion INSTRUMENTAL SYSTEM AND PERCUSSION DETECTING APPARATUS THEREIN,” Issued September 19, 2000 (Compl. ¶13).
  • Technology Synopsis: This patent focuses on the specific arrangement of components inside a drum pad. It claims a system with a drum head, a barrel section with tensioning pins, a "supporting material" disposed within the barrel but spaced from the head, a cushioning member in contact with the head, and a transducer supported by the supporting material. Critically, the claim specifies the transducer is located between the head and the supporting material, and the cushioning member is located between the head and the transducer (Compl. ¶52).
  • Asserted Claims: Independent claim 1 and process claim 29 (Compl. ¶¶52, 57).
  • Accused Features: The accused products are alleged to have the claimed arrangement of a head, barrel, supporting material, cushion, and transducer (Compl. ¶53). A photograph is provided with labels for each of these components in their alleged infringing configuration (Compl. p. 17).

U.S. Patent No. 6,881,885

  • Patent Identification: U.S. Patent No. 6,881,885, “ELECTRONIC PAD WITH VIBRATION ISOLATION FEATURES,” Issued April 19, 2005 (Compl. ¶14).
  • Technology Synopsis: This patent is directed to an electronic pad, such as for a cymbal, designed for mounting on a stand. The invention comprises a frame, a cover defining a striking surface, a sensor, a support structure that "pivotally" supports the frame on a stand, and a "rotation stopper" to inhibit the frame from rotating around the stand's axis during pivotal motion (Compl. ¶59). This design aims to mimic the natural swinging motion of an acoustic cymbal while preventing it from spinning freely.
  • Asserted Claims: Independent claim 30, dependent claim 31, and method claim 43 (Compl. ¶¶59, 68, 73).
  • Accused Features: Various accused electronic cymbal and hi-hat pads are alleged to possess a frame, cover, sensor, pivotal support structure, and a rotation stopper for stand mounting (Compl. ¶60).

U.S. Patent No. 6,632,989

  • Patent Identification: U.S. Patent No. 6,632,989, “ELECTRONIC PAD WITH VIBRATION ISOLATION FEATURES,” Issued October 14, 2003 (Compl. ¶15).
  • Technology Synopsis: This invention also relates to a mountable electronic pad. It claims a combination of a first frame with a sensor, a second frame supporting the first, an attachment hole with a pivotal joint, and a rotation stopper. The claim further specifies that the pivotal joint is "rockably fitted" into the rotation stopper member "with resulting play," suggesting a design that allows for a specific type of controlled, loose movement to simulate a real cymbal's feel (Compl. ¶79). A photograph is provided which identifies a "First Frame," "Second Frame," and "Rotation Stopper Member" in an accused cymbal pad (Compl. p. 27).
  • Asserted Claims: Independent claim 1 (Compl. ¶79).
  • Accused Features: The accused cymbal pads are alleged to have the claimed two-frame structure with a rockably fitted pivotal joint and rotation stopper (Compl. ¶80).

U.S. Patent No. 7,459,626

  • Patent Identification: U.S. Patent No. 7,459,626, “APPARATUS AND METHOD FOR DETECTING DISPLACEMENT OF A MOVABLE MEMBER OF AN ELECTRONIC INSTRUMENT,” Issued December 2, 2008 (Compl. ¶16).
  • Technology Synopsis: This patent describes a sensor for detecting the displacement of a movable object, such as the opening and closing of an electronic hi-hat cymbal pair. The invention claims a device with a member that provides a detectable electrical characteristic and a spring that, upon displacement of the object, is compressed and acts with the member to cause the value of the electrical characteristic to change (Compl. ¶90).
  • Asserted Claims: Independent claim 3 and process claim 20 (Compl. ¶¶90, 94).
  • Accused Features: The accused "Pro X Hi-Hat Cymbal" is alleged to infringe by including a sensor device with a spring and a member whose electrical characteristic changes in response to the cymbal's displacement (Compl. ¶91). The complaint includes a photograph of the accused hi-hat's components, labeling the "Moveable Object," "Spring," and the "Member Providing Detectable Electrical Characteristic" (Compl. p. 30).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are various electronic percussion products sold by Defendant under the "Alesis" brand, including the Crimson Mesh Kit, Command Kit, DM10 X Mesh Kit, various individual mesh head drum and bass pads, DMPad electronic cymbal pads, and the Pro X Hi-Hat Cymbal (Compl. ¶¶24, 32, 60, 80, 91).

Functionality and Market Context

  • The complaint describes the accused products as electronic percussion instruments that generate sound signals in response to being struck by a user (Compl. ¶17). The drum pads are alleged to utilize mesh heads stretched over a housing or barrel, with an internal sensor assembly to detect impacts (Compl. ¶¶24, 32). The cymbal pads are alleged to include mounting hardware that allows for pivotal, swinging motion while a rotation stopper prevents unwanted spinning (Compl. ¶60). The hi-hat system is alleged to incorporate a sensor to detect the vertical displacement between the top and bottom cymbals (Compl. ¶91). The complaint alleges these products were sold and offered for sale on the website www.alesis.com (Compl. ¶24).

IV. Analysis of Infringement Allegations

’135 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a housing The accused products include a drum shell or body that contains the other components. A photograph in the complaint labels this component as the "Housing." (Compl. p. 7). ¶24 col. 5:41-42
a head composed of a flexible material having openings therethrough and supported by the housing to define a percussion surface The accused products use a woven mesh material as the drum head, which is flexible and has openings that allow air to pass through. The complaint's photograph labels this as the "Head." (Compl. p. 7). ¶24 col. 5:58-65
a percussion detector having a cushioning material and a transducer for detecting a percussion impact on the percussion surface and producing an electric signal responsive to the percussion impact The accused products contain an internal sensor assembly that includes a transducer to convert physical vibrations into an electrical signal and a cushioning material between the transducer and the head. This assembly is labeled "Percussion Detector." (Compl. p. 7). ¶24 col. 6:55-64
  • Identified Points of Contention:
    • Scope Questions: A potential issue may be the scope of "flexible material having openings therethrough." Defendant may argue that this term, in the context of the patent, is limited to the specific two-layer, obliquely woven mesh detailed in the specification (’135 Patent, Abstract), whereas the Plaintiff's allegations appear to read the term on any drum head made of a mesh-like fabric.
    • Technical Questions: The complaint's allegations are based on a visual inspection of the accused products' components. A factual question for the court will be whether the component identified as the "percussion detector" in the accused products in fact contains both a "cushioning material" and a "transducer" that function as required by the claim.

’857 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a barrel section having a generally hollow interior and a first end open to the generally hollow interior The accused drum pads feature a cylindrical, hollow drum shell, which the complaint identifies as the "barrel section." A photograph in the complaint explicitly labels this part. (Compl. p. 10). ¶32 col. 5:41-42
a head disposed in a tensioned state across the first end of the barrel section to define a percussion surface ... the head having a head material through which air may pass The accused products use a tensioned mesh head stretched over the open end of the barrel section, which allows air to pass through. ¶32 col. 5:58-65
a cushioning member in communication with the second surface of the head, while allowing air to pass through the head A cushion is allegedly positioned to be in communication with the underside of the mesh head in a manner that still permits airflow. The complaint's photograph labels the "Cushioning Member." (Compl. p. 10). ¶32 col. 7:8-12
a transducer disposed in communication with the cushioning member, to receive percussion impact signals through the cushioning member A transducer is allegedly positioned to receive vibrations transmitted through the cushioning member. The complaint's photograph labels the "Transducer." (Compl. p. 10). ¶32 col. 7:5-7
  • Identified Points of Contention:
    • Scope Questions: The term "in communication with" may be a central point of claim construction. The parties may dispute whether this requires direct physical bonding, simple contact, or merely the ability to transmit vibrations. The patent specification discloses bonding with double-coated tape, which a defendant might argue limits the scope of the term (’857 Patent, col. 6:59-62).
    • Technical Questions: The claim includes the functional limitation that the cushioning member allows air to pass through the head while being in communication with it. A technical question will be whether the accused design achieves this function, or if the communication between the cushion and the head (e.g., during impact) substantially obstructs airflow in a way that is inconsistent with the claim.

V. Key Claim Terms for Construction

  • Patent: ’135 Patent

    • The Term: "flexible material having openings therethrough"
    • Context and Importance: This term defines the core of the mesh head technology. Its construction will determine whether the claim covers a broad category of mesh heads or is limited to the specific structures disclosed in the patent. Practitioners may focus on this term because the infringement analysis hinges on whether the accused single-layer mesh heads fall within a claim whose specification heavily emphasizes a two-layer, obliquely-woven mesh embodiment.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The plain language of claim 1 does not specify the number of layers, the material type beyond "flexible," or the pattern of the openings.
      • Evidence for a Narrower Interpretation: The abstract and detailed description repeatedly highlight an embodiment where the material is composed of two laminated nets with weave patterns that "intersect obliquely" as the solution to the technical problem of non-uniform tension (’135 Patent, Abstract; col. 6:1-9).

  • Patent: ’857 Patent

    • The Term: "in communication with"
    • Context and Importance: This term appears twice in claim 1 and governs the functional relationship between the head and the cushion, and the cushion and the transducer. The viability of the infringement allegation depends on whether the physical arrangement in the accused products meets the required level of "communication."
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The ordinary meaning of the term suggests an arrangement that allows for the transmission of force or signals, which could include simple physical contact.
      • Evidence for a Narrower Interpretation: The specification discloses an embodiment where the head sensor is "bonded to the top of the head sensor supporting material... by means of a cushioning double-coated tape" (’857 Patent, col. 6:59-62). A defendant may argue this disclosure limits "communication" to a more direct and fixed connection.

VI. Other Allegations

  • Indirect Infringement: Plaintiff alleges induced infringement of method claim 43 of the ’885 Patent, stating that Defendant provides instructions to customers on how to assemble disassembled products into an infringing configuration (Compl. ¶¶67-69). Plaintiff also alleges contributory infringement of the ’885 and ’989 Patents, asserting that Defendant sells components like the "DM Pad 12” Cymbal" that are not staple articles of commerce and are especially made and adapted for use in an infringing manner (Compl. ¶¶72-77, 84-88).
  • Willful Infringement: The complaint alleges willful infringement for all eight asserted patents. The basis for willfulness is Defendant's alleged pre-suit knowledge of the patents and its infringing activity, stemming from notice letters sent by Plaintiff on March 11, 2011 and February 3, 2015 (Compl. ¶¶18-19). The complaint alleges that Defendant's continued infringement after receiving these notices constitutes an "egregious case of culpable conduct" with reckless disregard for Plaintiff's patent rights (e.g., Compl. ¶¶26, 34).

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

  • A core issue will be one of claim scope versus disclosure: for the mesh head patents ('135, '857, '535, '458, '538), the case will likely turn on whether the broadly worded claims are interpreted to cover any electronic drum with a permeable mesh head, or if they will be narrowed to the specific multi-layer, obliquely-woven, and component-spacing embodiments heavily detailed in the patent specifications.
  • A second central question will be one of intent and willfulness: given the allegations of pre-suit notice letters sent as early as 2011, the court will need to determine if Defendant’s alleged conduct after being notified rises to the level of "egregious" behavior required to support a finding of willful infringement and potential enhanced damages.
  • For the patents related to cymbal and hi-hat mechanics ('885, '989, '626), a key evidentiary question will be one of functional and structural equivalence: the dispute will focus on detailed technical comparisons, such as whether the movement in the accused cymbal mount provides the specific "resulting play" required by claim 1 of the '989 patent, or if the accused hi-hat sensor functions via the same spring-and-member mechanism claimed in the '626 patent.