DCT

9:23-cv-80868

Better Way Inventions LLC v. Swift Global LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 9:23-cv-80868, S.D. Fla., 08/21/2023
  • Venue Allegations: Venue is asserted based on the allegation that a substantial part of the events giving rise to the claims, including the marketing and sale of the accused products, occurred in the Southern District of Florida.
  • Core Dispute: Plaintiff alleges that Defendants' "Go Yoga Weighted Bracelet Bands" infringe patents covering the ornamental design and utility of wearable, variable-weight fitness straps.
  • Technical Context: The technology resides in the personal fitness equipment market, specifically concerning wearable wrist and ankle weights that allow for progressive resistance through the addition or removal of individual weighted elements.
  • Key Procedural History: The complaint alleges a multi-year business relationship where Defendant NBC featured Plaintiff's patented products on its "The Today Show" in 2020 and 2022. Plaintiff claims it provided NBC with actual notice of its patent rights as early as October 2019. The current dispute arose after NBC allegedly rejected Plaintiff's product for a January 2023 show segment and instead featured the accused infringing product from Defendant Spencer Sports. A cease-and-desist letter was reportedly sent to both Defendants on January 19, 2023. These allegations are central to the claims for willful infringement.

Case Timeline

Date Event
2012-03-12 Earliest Priority Date for ’141, ’431, and ’796 Patents
2016-04-05 U.S. Patent No. 9,302,141 Issued
2017-07-18 U.S. Patent No. 9,707,431 Issued
2017-07-25 U.S. Design Patent No. D792,796 Issued
2019-10-29 Plaintiff allegedly first informed NBC of patented status
2023-01-06 Accused products allegedly first aired and offered for sale by Defendants
2023-01-19 Plaintiff allegedly sent cease-and-desist letter to Defendants
2023-08-21 First Amended Complaint Filed

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

U.S. Patent No. 9,707,431 - "Variable Weight Toning Strap"

The Invention Explained

  • Problem Addressed: The patent identifies shortcomings with conventional wrist and ankle weights, noting they are often too heavy for beginners, can cause joint stress, are cumbersome, and do not allow for gradual, progressive increases in resistance ('431 Patent, col. 2:7-34).
  • The Patented Solution: The invention is a flexible, wearable strap designed to look like a bracelet, featuring a series of raised, transverse "ridged-sections." Each section contains a channel designed to frictionally hold a removable weight bar. This allows a user to start with a minimal load and incrementally add weight as their strength improves. A key structural feature is the inclusion of "discontinuous upper and lower slits" between the sections, which are designed to increase the strap's flexibility and comfort during a wide range of motion ('431 Patent, Abstract; col. 9:1-17).
  • Technical Importance: The design provides a method for progressive resistance training in a compact, wearable format, making it more convenient and sustainable for users compared to traditional, static-weight accessories ('431 Patent, col. 2:40-52).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶63, ¶73).
  • Essential elements of claim 1 include:
    • A flexible member with defined surfaces and ends.
    • A plurality of generally rectangular sections disposed transversely along the member.
    • A "discontinuous upper slit" defined by the sidewalls of adjacent sections, which spans the section width and terminates in a "valley."
    • At least one "discontinuous lower slit" defined by the bottom surface of the member.
    • Each section defining a "channel" that spans transversely.
    • A plurality of weights, with one weight removably retained within each channel.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 9,302,141 - "Variable Weight Toning Strap and Kit"

The Invention Explained

  • Problem Addressed: Similar to its continuation ('431 patent), this patent addresses the lack of adjustability and potential for joint strain associated with traditional wrist weights, as well as the difficulty users face in adhering to exercise regimens ('141 Patent, col. 1:12-25, col. 2:5-17).
  • The Patented Solution: The invention describes a variable weight toning "system" or "kit." The primary components are a flexible strap with sockets for receiving removable weight bars and, critically, a dedicated "storage unit." This storage unit is depicted as a cylindrical case with a central post for holding the strap and peripheral apertures for organizing and storing the individual weight bars when not in use ('141 Patent, Abstract; Fig. 5; col. 4:6-31).
  • Technical Importance: By providing an integrated kit with a dedicated storage solution, the invention aimed to create a complete, organized, and convenient system for users to engage in progressive resistance training ('141 Patent, col. 2:41-47).

Key Claims at a Glance

  • The complaint asserts the '141 Patent in its indirect infringement claim against NBC, without specifying claims (Compl. ¶82-87). Independent claim 1 is representative.
  • Essential elements of claim 1 include:
    • A flexible member with a buckle and tab.
    • At least three generally rectangular sections, each with at least two sockets.
    • At least one elongated bar configured to be removably received in a socket.
    • A "storage unit for removably receiving said elongated flexible member and for separately removably receiving a plurality of bars."
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Design Patent No. D792,796 - "Weighted Bracelet"

  • Technology Synopsis: This patent protects the specific ornamental, non-functional design of a weighted bracelet. The claimed design consists of a strap with a series of raised, rectangular segments separated by distinct grooves, a buckle-style fastener, and a tab end with adjustment holes.
  • Asserted Claims: Design patents contain a single claim for the ornamental design as shown in the patent's figures (Compl. ¶63).
  • Accused Features: The complaint alleges that the overall visual appearance of the Defendants' "Go Yoga Weighted Bracelet Bands" is substantially identical to the ornamental design protected by the ’796 Patent (Compl. ¶64).

III. The Accused Instrumentality

Product Identification

  • The "Spencer Sports Go Yoga Weighted Bracelet Bands ½ lb per band," referred to as the "Infringing Products" (Compl. ¶33-34).

Functionality and Market Context

  • The accused products are weighted fitness bracelets sold by Spencer Sports and marketed and sold by NBC through its "Steals & Deals Segment of The Today Show" (Compl. ¶33, ¶73). The complaint alleges these products have a "substantially identical function, purpose, [and] equivalent structure" to the patented products, implying they are also variable-weight bracelets (Compl. ¶64). The complaint includes a visual from Defendant Spencer Sports' website that depicts the accused product alongside a photograph of Plaintiff's founders' minor daughter wearing Plaintiff's patented product, an allegation central to claims of willfulness and unfair competition (Compl. p. 11). The complaint alleges the products were sold using a deceptively inflated list price to create the appearance of a significant "flash sale" discount (Compl. ¶35-39).

IV. Analysis of Infringement Allegations

’431 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A flexible member having an upper surface, a bottom surface, a first end, a second end... The body of the accused "Go Yoga Weighted Bracelet Bands" itself. ¶33, ¶63 col. 10:46-54
a plurality of generally rectangular sections... each disposed transversely along the flexible member length... The visible, raised segments that form the body of the accused bracelets. A side-by-side comparison shows Defendant's product listings using Plaintiff's marketing images (Compl. p. 9). ¶65 col. 10:55-57
each including a top surface..., at least one perpendicular sidewall..., a front face, a rear face... The outer surfaces and sides of the individual segments on the accused bracelets. ¶65 col. 10:58-65
having a discontinuous upper slit defined by the at least one perpendicular sidewall of each of the plurality of generally rectangular sections flanking the upper slit... and terminating into a valley... The complaint makes a conclusory allegation of literal infringement but does not provide specific facts or visual evidence detailing this specific slit-and-valley structure on the accused product. ¶65 col. 10:66-11:7
at least one discontinuous lower slit defined by the bottom surface of the flexible member... The complaint does not provide specific factual allegations or evidence corresponding to this limitation. ¶65 col. 11:8-11
each defining a channel spanning transversely... and a plurality of weights, with one of the plurality of weights each selectively and removably retained within each respective channel... The complaint alleges the accused products are "weighted fitness bracelets" that infringe, which implies the presence of weights and channels, but does not provide direct evidence of their internal construction or removability. ¶63, ¶65 col. 11:12-20

Identified Points of Contention

  • Technical Questions: A primary question is evidentiary: does the accused bracelet actually incorporate the specific structural limitations of claim 1 of the ’431 Patent, particularly the "discontinuous upper slit", "valley", and "discontinuous lower slit"? The complaint's allegations are based on external appearance and function but lack a technical breakdown or cross-sectional view of the accused product that would confirm these more nuanced, and potentially distinguishing, features.
  • Scope Questions ('141 Patent): The infringement allegation against the ’141 Patent (asserted only indirectly against NBC) raises a significant scope question. Claim 1 of the ’141 Patent recites a "system" that expressly includes a "storage unit" for the strap and bars. The complaint makes no allegation that Defendants sell or provide such a storage unit. The viability of this infringement claim may depend on whether Plaintiff can prove the accused product is sold as part of a system that meets this limitation.

V. Key Claim Terms for Construction

The Term: "storage unit" (from ’141 Patent, Claim 1)

  • Context and Importance: The infringement claim for the '141 Patent's "system" hinges on this term. If the accused product is sold without an accompanying component that meets this definition, there may be no direct infringement for NBC to have indirectly infringed. Practitioners may focus on this term as it appears to be a dispositive element based on the facts alleged.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The term is not explicitly defined, so a party could argue it should be given its plain and ordinary meaning, which might encompass simple product packaging.
    • Evidence for a Narrower Interpretation: The specification describes and depicts a specific, non-disposable embodiment: a cylindrical container with a central post to hold the strap and multiple vertical apertures to hold the individual weight bars ('141 Patent, Fig. 5-6; col. 4:6-31). A party would argue this detailed disclosure limits the term's scope to a dedicated, reusable container with features for organizing both the strap and the bars, not just any packaging.

The Term: "discontinuous upper slit ... terminating in a valley" (from ’431 Patent, Claim 1)

  • Context and Importance: This term describes a specific structural arrangement intended to enhance flexibility. Its construction will be critical for determining literal infringement, as it represents a key technical feature beyond a simple segmented appearance.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A party could argue that any groove or separation between segments constitutes a "slit" and "valley."
    • Evidence for a Narrower Interpretation: The specification explains that the slits and valleys allow the flexible sections to navigate into one another to provide comfort and a wide range of motion ('431 Patent, col. 9:31-52). A party would argue the term requires a structure deep and wide enough to perform this specific, disclosed function, rather than being merely ornamental.

VI. Other Allegations

  • Indirect Infringement: Count III alleges that NBC induced infringement by "review[ing], accept[ing], featur[ing], and market[ing]" Spencer Sports' products on its "Steals & Deals" platform (Compl. ¶89). The complaint alleges NBC had knowledge of the patents due to a prior multi-year business relationship, direct communications where Plaintiff identified its products as patented, and receipt of a cease-and-desist letter (Compl. ¶90).
  • Willful Infringement: Willfulness is alleged against both Defendants. The claim against Spencer Sports is based on its alleged copying of Plaintiff's marketing materials and receipt of the cease-and-desist letter (Compl. ¶66). The claim against NBC is based on its alleged pre-suit knowledge stemming from the prior business relationship and direct notice from Plaintiff beginning in 2019 (Compl. ¶76).

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

  • A key evidentiary question will be one of structural identity: Can Plaintiff demonstrate through discovery that the accused bracelets contain the specific internal and external structures recited in claim 1 of the ’431 patent, such as the "discontinuous upper slit" and "valley", which are not confirmed by the visual evidence in the complaint?
  • A core issue will be one of claim scope: Can the "system" claim of the ’141 patent be infringed if the accused product is not sold with a "storage unit" matching the patent's description? The resolution of this question may determine the viability of the entire infringement claim related to the ’141 patent.
  • The case will likely focus on the question of knowing misconduct: Given the extensive allegations of a prior business relationship and direct notice, a central issue for the court will be assessing the state of mind of both Defendants, particularly NBC, to determine if the alleged infringement rises to the level of willfulness.