DCT
1:18-cv-02915
Mattress Safe Inc v. JT Eaton & Co Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Mattress Safe, Inc. (Georgia)
- Defendant: J. T. Eaton & Co., Inc. (Ohio)
- Plaintiff’s Counsel: Thomas Horstemeyer L.L.P.
- Case Identification: 1:18-cv-02915, N.D. Ga., 09/14/2018
- Venue Allegations: Plaintiff alleges venue is proper based on the parties' contractual consent to jurisdiction and venue in the district, as well as Defendant's continuous and systematic contacts with Georgia.
- Core Dispute: Plaintiff alleges that Defendant’s mattress encasement products infringe a patent related to a zipper anchor mechanism, and that this conduct also constitutes a breach of a prior settlement agreement between the parties concerning the same patent.
- Technical Context: The technology concerns protective mattress covers that use zippers, with a specific focus on mechanical locking features designed to prevent the ingress or egress of pests and allergens.
- Key Procedural History: The parties have a significant litigation history. Plaintiff previously sued Defendant for infringing the same patent in 2011 ("Round I"), which concluded with a settlement agreement in 2012. The current complaint alleges this is the third instance of infringement ("Round III"), following the settlement and a subsequent alleged breach in 2014 ("Round II"). The complaint anticipates that Defendant will challenge the patent's scope based on prosecution history estoppel or disclaimer.
Case Timeline
| Date | Event |
|---|---|
| 2007-04-10 | ’543 Patent Priority Date |
| 2010-12-14 | ’543 Patent Issue Date |
| c. 2011-11 | Prior Lawsuit ("Round I") Filed |
| c. 2012-10 | Settlement Agreement Executed |
| c. 2014-10 | Alleged First Breach/Infringement ("Round II") |
| c. 2018-05-18 | Alleged Second Breach/Resumed Infringement ("Round III") |
| 2018-09-14 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,849,543 - “Encasement Systems” (December 14, 2010)
The Invention Explained
- Problem Addressed: The patent addresses the problem of zippers on fabric mattress encasements unintentionally shifting from a closed position due to user movement, which can compromise the integrity of a seal designed to block allergens or pests like bed bugs (’543 Patent, col. 1:18-24).
- The Patented Solution: The invention proposes a mechanical locking system for the zipper. It consists of a "zipper anchor," such as a hook, fixed to the mattress cover, which engages an aperture or "eye" on the zipper pull when it is in the closed position (’543 Patent, col. 2:36-45). This engagement physically prevents the zipper pull from traveling along the zipper teeth, thus securing the encasement (’543 Patent, Fig. 2-3). The system may also include a "zipper termination shroud" to further seal the end of the zipper path (’543 Patent, col. 3:11-17).
- Technical Importance: The solution provides a reliable, mechanical means to ensure a mattress encasement remains fully sealed, enhancing its effectiveness as a barrier against microbiological waste, organisms, and allergens (’543 Patent, col. 2:23-31).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 10 (Compl. ¶46).
- Independent Claim 1 requires:
- A fabric cover configured to substantially surround a mattress.
- A zipper coupled to the cover, with a zipper pull for opening and closing.
- A zipper anchor configured to secure the zipper pull in a substantially closed position, with the anchor being "aligned with a longitudinal axis of the zipper."
- A "zipper termination shroud" coupled to the cover, with specific portions configured to surround and seal the inner and outer parts of the zipper's termination point.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- Defendant’s "bedding products consisting of mattress protectors, box spring protectors, and encasement products with the 'Zipper Lock' closure mechanism sold under the name 'Lock Up' and/or 'Total Encasement'" (Compl. ¶46).
Functionality and Market Context
- The complaint alleges that the accused products have reverted to a design that was the subject of the prior litigation, featuring "a zipper anchor placed substantially along the longitudinal axis of a zipper" (Compl. ¶26). It is further alleged that the currently accused products are "substantially similar, if not identical, to the accused J.T. Eaton Products as defined in the Settlement Agreement" from the first lawsuit (Compl. ¶39). The complaint frames the ongoing sales of these products as a direct cause of lost sales and damage to Plaintiff's goodwill (Compl. ¶¶ 33-34).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint references a claim chart (Exhibit F) that was not attached to the filed document; the following summary is based on the narrative allegations.
’543 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a fabric cover configured to substantially surround a mattress; | Defendant’s mattress protectors, box spring protectors, and encasement products are alleged to be fabric covers. | ¶46 | col. 4:58-59 |
| a zipper coupled to the fabric cover, the zipper configured to provide an opening... the zipper further having a zipper pull...; | The accused products are alleged to include a "Zipper Lock" closure mechanism. | ¶46 | col. 4:60-63 |
| a zipper anchor, the zipper anchor configured to secure the zipper pull in a position causing the zipper to be substantially closed, the zipper anchor further being aligned with a longitudinal axis of the zipper; | The complaint alleges Defendant has reverted to a design with "a zipper anchor placed substantially along the longitudinal axis of a zipper." | ¶26 | col. 4:4-8 |
| a zipper termination shroud coupled to the fabric cover... | The complaint alleges the current products are "substantially similar, if not identical" to the originally accused products, implying the presence of this element. | ¶39 | col. 4:9-19 |
- Identified Points of Contention:
- Scope Questions: The primary dispute appears to center on the claim term "aligned with a longitudinal axis of the zipper." Given the litigation history involving a settlement and an alleged product redesign (Compl. ¶14), a central question will be whether the accused product's anchor, in its current placement, falls within the scope of this limitation as construed by the court.
- Technical Questions: The complaint does not provide specific factual allegations detailing the structure of the "zipper termination shroud" on the accused products. A potential point of contention may be whether the accused products contain a structure that meets all the limitations describing the "first portion" and "second portion" of the claimed shroud.
V. Key Claim Terms for Construction
- The Term: "aligned with a longitudinal axis of the zipper"
- Context and Importance: Practitioners may focus on this term because the entire dispute, including the prior settlement and alleged breach, appears to revolve around its meaning. Defendant likely agreed to redesign its products to move the anchor to a position it considered not "aligned," while Plaintiff now alleges the current products are once again "aligned." The complaint's specific mention of a potential prosecution history estoppel defense suggests this term may have been narrowed during patent prosecution to overcome prior art (Compl. ¶42).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the anchor as being able to "prevent the zipper pull 201 from traveling" and being "coupled directly to a mattress encasement" (’543 Patent, col. 2:40-41, 53-54). A party could argue this functional language supports a construction that is not strictly limited to perfect co-linearity but covers any arrangement that achieves the anchoring function along the zipper's path.
- Evidence for a Narrower Interpretation: The patent figures, particularly Figure 3, depict a clear and direct linear alignment between the anchor and the zipper path (’543 Patent, Fig. 3). A party could argue that these embodiments define the term, especially if narrowing statements were made during prosecution. The phrase itself, in its plain geometric sense, suggests a parallel or co-linear relationship, which could support a more restrictive definition.
VI. Other Allegations
- Indirect Infringement: The complaint makes a general allegation of indirect infringement (Compl. ¶46) but does not plead specific facts to support a theory of either inducement (e.g., instructions encouraging infringement) or contributory infringement (e.g., knowledge that a component is especially made for infringement and not a staple article of commerce).
- Willful Infringement: The complaint alleges willfulness based on Defendant's knowledge of the ’543 patent stemming from the prior litigation ("Round I") and the subsequent settlement agreement (Compl. ¶50). This allegation is based on clear pre-suit knowledge of the patent and the specific infringement contentions.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope and estoppel: Can the claim phrase "aligned with a longitudinal axis of the zipper" be construed to cover the configuration of the anchor in Defendant's current products? The interpretation of this term will likely be heavily influenced by the patent's prosecution history, which the complaint anticipates will be a key issue for the court.
- A central question will be the interplay between contract and patent law: How will the terms of the 2012 settlement agreement—which are heavily redacted in the complaint—affect the infringement analysis? The case presents parallel claims for patent infringement and breach of contract, and the resolution of both may depend on the same underlying technical and legal determinations regarding the accused product's design.
- A key evidentiary question will be one of design history and intent: What evidence exists regarding Defendant's product design changes following the 2012 settlement? The allegation that Defendant reverted to a prior, allegedly infringing design (Compl. ¶26) raises significant questions for the willfulness analysis, making Defendant's post-settlement conduct a critical focus of discovery.