DCT
1:17-cv-00217
Aoren Endeavors LLC v. Catch 40 Winks LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Aoren Endeavors LLC (Hawaii)
- Defendant: Catch 40 Winks, LLC (California)
- Plaintiff’s Counsel: Holland & Hart LLP
- Case Identification: 1:17-cv-00217, D. Haw., 05/17/2017
- Venue Allegations: Venue is alleged to be proper in the District of Hawaii because the defendant has personal jurisdiction in the district, having transacted business, offered for sale, and placed the accused products into the stream of commerce in Hawaii.
- Core Dispute: Plaintiff alleges that Defendant’s travel neck pillow product infringes a patent related to a counterweight pillow and sling design for supporting a person's head while seated.
- Technical Context: The technology relates to personal comfort devices, specifically travel pillows intended to improve sleep quality for individuals in seated positions, such as on airplanes.
- Key Procedural History: The complaint does not mention any prior litigation, licensing history, or administrative proceedings related to the patent-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2013-03-15 | ’471 Patent Priority Date |
| 2013-10-16 | ’471 Patent Application Filing Date |
| 2016-08-09 | ’471 Patent Issue Date |
| 2017-05-17 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,408,471 - “Counterweight Pillow Sling Sleeping Aid”
- Patent Identification: U.S. Patent No. 9,408,471, “Counterweight Pillow Sling Sleeping Aid,” issued August 9, 2016.
The Invention Explained
- Problem Addressed: The patent’s background section identifies the difficulty of sleeping comfortably in a seated position, such as on an airplane, where the head tends to fall to the side unsupported (’471 Patent, col. 1:49-62). It critiques conventional "U"-shaped pillows for not adequately supporting a side-tilted head and other counterweight devices for being uncomfortable or improperly balanced (’471 Patent, col. 2:6-27, col. 2:36-50).
- The Patented Solution: The invention is a sleeping aid device comprising a pillow placed on one shoulder and a connected "sling strap" that loops across the user's body (’471 Patent, col. 3:24-34). The user rests one or both forearms in a lower portion of the sling strap; the weight of the arms acts as a counterweight, creating tension that pulls the pillow firmly against the side of the head and neck to provide stable support in a side-tilted sleeping posture (’471 Patent, col. 4:48-60; Fig. 5).
- Technical Importance: The design proposes using the traveler's own arm weight as an active counterweight to stabilize the head, aiming to replicate the forces and posture of side-sleeping more effectively than static pillows (’471 Patent, col. 3:13-22).
Key Claims at a Glance
- The complaint asserts direct infringement of at least independent Claim 1 (Compl. ¶17).
- Essential elements of independent Claim 1 include:
- A pillow configured to be placed on one shoulder of the person to provide support against one side of the person's head and/or neck.
- A sling strap connected to opposite ends of the pillow and configured to be positioned around the one shoulder on front and back sides of the person to form a loop.
- The sling strap having a lower sling portion configured to stably support at least one of the person's forearms so that opposing forces disperse across a non-localized area.
- A functional relationship wherein the pillow and sling strap are operable together such that the weight of the forearm resting in the sling generates a force on the pillow that is transferred to the neck, head, and/or shoulders.
- The complaint does not explicitly reserve the right to assert other claims.
III. The Accused Instrumentality
Product Identification
- The "40 Winks Travel Neck Pillow" (’471 Patent, ¶11).
Functionality and Market Context
- The complaint alleges the accused product is a travel pillow that provides support to one side of the head and neck (Compl. ¶12). It is alleged to have a strap connected to opposite ends of the pillow, forming a loop that can be positioned around a shoulder, with a lower portion configured to support a user's forearm as a sling (Compl. ¶12). The complaint provides a screenshot of the accused "40 Winks Travel Neck Pillow" offered for sale on Amazon.com (Compl. ¶11, Ex. B). Plaintiff alleges that the accused product is in direct competition with its own "Dream Sling" travel pillow, which practices the ’471 Patent (Compl. ¶¶8, 11).
IV. Analysis of Infringement Allegations
’471 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a pillow configured to be placed on one shoulder of the person to provide support against one side of the person's head and/or neck in a direction toward the one shoulder | The Infringing Product supports one side of the head or neck in a direction toward the one shoulder. | ¶12 | col. 5:20-24 |
| a sling strap having a length between respective ends thereof, the sling strap being connected to opposite ends of the pillow and configured to be positioned around the one shoulder on front and back sides of the person to form a loop | The product has a strap having a length between respective ends, the strap being connected to opposite ends of the pillow, and is positionable around the one shoulder on front and back sides of the person to form a loop. | ¶12 | col. 3:29-34 |
| the sling strap having a lower sling portion configured to stably support at least one of the person's forearms so that opposing forces acting on the at least one forearm through the sling strap disperse across a non-localized area of the at least one forearm | The Infringing Product further has a lower sling portion configured to support at least one of the person's forearms as a sling, dispersing forces across a non-localized area of the at least one forearm. | ¶12 | col. 3:35-40 |
| wherein, the pillow and the sling strap are operable together so that when the at least one forearm rests on the lower sling portion and the pillow is placed against the side of the head and/or neck... the weight of the at least one forearm generates a force on the pillow that is transferred to the neck, head, and/or shoulders of the person | The pillow and strap of the Infringing Product operate together so that when the forearm rests on the lower sling portion and the pillow is placed against the side of the head and/or neck... the weight of the forearm generates a force on the pillow that is transferred to the neck, head, and/or shoulders of the person. | ¶12 | col. 4:48-60 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether the accused product's strap meets the definition of a "sling strap" with a "lower sling portion configured to stably support" a forearm. The analysis could depend on whether this requires a specific width, padding, or shape, as opposed to a simple connecting strap that a forearm could rest upon.
- Technical Questions: The complaint alleges the accused product performs the functional limitation where the forearm's weight "generates a force on the pillow." (Compl. ¶12). A key factual dispute may arise over whether the accused product is designed to and actually operates via this specific counterweight mechanism, or if any such force transfer is merely incidental and not equivalent to the claimed function.
V. Key Claim Terms for Construction
The Term: "sling strap"
- Context and Importance: This term is central to the invention's counterweight mechanism. The distinction between a simple connecting strap and a "sling strap" as claimed will be critical for infringement. Practitioners may focus on this term because its construction could determine whether the accused product's strap, as a whole, falls within the scope of the claims.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself describes the strap by its connections (to opposite ends of the pillow) and its position (around the shoulder to form a loop), which might support a construction that does not require additional structural features (’471 Patent, col. 9:5-9).
- Evidence for a Narrower Interpretation: The specification describes the sling strap as having a "wider portion" at its lower sling portion, specifying a width "in the range of 4 inches to 6 inches" to "stably retain the crossed forearms" (’471 Patent, col. 7:42-47). It also describes the sling as "padded" to "disperse across a larger area of the forearms" (’471 Patent, col. 4:38-44). This may support a narrower construction requiring a specifically widened and/or padded structure designed for arm support.
The Term: "operable together so that... the weight of the at least one forearm generates a force on the pillow"
- Context and Importance: This functional language defines the core causal relationship of the invention. Proving infringement requires showing that the accused product exhibits this specific cause-and-effect functionality.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The language could be interpreted to cover any device where placing an arm in the strap creates tension that pulls on the pillow, regardless of the magnitude or primary purpose of that force.
- Evidence for a Narrower Interpretation: The specification repeatedly describes the forces as achieving a "state of equilibrium" and acting as a "counterweight" mechanism (’471 Patent, col. 3:45-49). A defendant may argue this requires a specific, balanced, and intentional force-transfer system, not just any incidental tension created on the pillow.
VI. Other Allegations
- Willful Infringement: The complaint alleges that the defendant, "40 Winks," has knowledge of the ’471 Patent and that its infringement has been and continues to be "willful, intentional, and purposeful" (Compl. ¶20). The allegation is made on "information and belief" without specifying the basis for pre-suit knowledge (Compl. ¶20).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: does the term "sling strap," as used in the patent, require specific structural features for stable forearm support (such as the increased width and padding described in the specification), or can it be construed to cover a more generic strap that is part of the accused pillow?
- A key evidentiary question will be one of functional operation: does the accused "40 Winks Travel Neck Pillow" actually operate by using forearm weight as a counterweight to "generate a force on the pillow" in the manner claimed, or is there a fundamental mismatch in the technical mechanism of support compared to that described in the ’471 Patent?