DCT
1:20-cv-00152
NALU KAI Inc v. Girardin
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: NALU KAI INCORPORATED dba NAISH SAILS HAWAII (Delaware)
- Defendant: DAMIEN GIRARDIN dba REEDIN KITEBOARDING (Hawaiʻi)
- Plaintiff’s Counsel: Cades Schutte LLP
- Case Identification: 1:20-cv-00152, D. Haw., 04/09/2020
- Venue Allegations: Venue is alleged to be proper as the Defendant resides in the judicial district and has allegedly committed acts of infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s kiteboarding control bar systems infringe a patent related to a "push-to-release" safety loop mechanism.
- Technical Context: The technology concerns safety release systems for the sport of kitesurfing, where quickly and reliably detaching from a powerful kite can be critical to avoiding injury.
- Key Procedural History: The complaint alleges that the Defendant’s principal, Damien Girardin, was formerly Plaintiff’s head kite design engineer. It also states that the patent-in-suit, U.S. Patent No. 6,988,694, survived an ex parte reexamination where its key independent claim was confirmed. The complaint further alleges that Defendant sought a license to the patented technology, which was not granted, prior to the initiation of this lawsuit.
Case Timeline
| Date | Event |
|---|---|
| 2002-05-14 | '694 Patent Priority Date |
| 2006-01-24 | '694 Patent Issue Date |
| 2006-08-10 | Ex Parte Reexamination of '694 Patent Requested |
| 2008-09-09 | Ex Parte Reexamination Certificate Issued |
| 2019-07 | Damien Girardin resigns from Plaintiff Nalu Kai |
| 2020-01-28 | Defendant Reedin allegedly requests license to patent |
| 2020-04-09 | Complaint Filing Date |
| 2020-04-30 | Alleged start of shipping for accused products |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 6,988,694, “Push Release Loop,” issued January 24, 2006 (the "'694 Patent").
The Invention Explained
- Problem Addressed: The patent describes prior art quick-release systems for kitesurfing as potentially unreliable and difficult to operate in an emergency ('694 Patent, col. 2:46-55). Locating and pulling a special handle, especially with cold or wet hands or while being dragged through the water, could fail or be too slow, leading to serious injury from an out-of-control kite ('694 Patent, col. 2:25-44).
- The Patented Solution: The invention is a release mechanism designed to be activated by a simple, intuitive motion: pushing a component away from the user’s body and toward the kite ('694 Patent, Abstract). As illustrated in the patent's figures, a slidable "sleeve" holds a releasable loop assembly in a closed, load-bearing position. Pushing this sleeve outwardly along the control lines exposes the release mechanism, allowing the loop to open and disconnect the user from the kite's pull ('694 Patent, Fig. 11; col. 6:29-41).
- Technical Importance: The invention proposed a standardized, ambidextrous release action intended to be more reliable and less prone to accidental activation than prior art systems ('694 Patent, col. 5:1-20).
Key Claims at a Glance
- The complaint does not specify which claims are asserted, but analysis centers on the patent's broadest independent apparatus claim, Claim 1.
- Essential elements of Independent Claim 1 include:
- A kite device comprising a kite structure, control bar, flying lines, and an attachment strap.
- A "trim line" extending from the attachment strap through the control bar.
- A "retainer" that holds the user end of the trim line against an intermediate portion of the line to form a loop.
- The retainer is "slidable along the trim line away from the user end."
- "pushing the retainer away from such user end" releases the user end of the trim line from the retainer, causing the loop to open.
- The complaint reserves the right to assert infringement of other claims of the patent (Compl. ¶33).
III. The Accused Instrumentality
Product Identification
- The Reedin "DreamStick" kite control system (Compl. ¶22).
Functionality and Market Context
- The complaint alleges the "DreamStick" system incorporates a "Quick Release System" (Compl. ¶23). The complaint includes a screenshot from the Defendant's website, attached as Exhibit E, which allegedly depicts the accused "DreamStick" control system (Compl. ¶7, ¶22). The functionality is described as performing "substantially the same function in substantially the same way to achieve substantially the same result as Plaintiff's patented Invention" (Compl. ¶23). The product is allegedly marketed and offered for sale to U.S. consumers through the website www.reedinkitesusa.com and through distributors (Compl. ¶22, ¶28).
IV. Analysis of Infringement Allegations
The complaint does not contain a formal claim chart. The following table synthesizes the allegations in the complaint against the elements of the representative independent claim.
'694 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A kite device, comprising: a kite structure... a control bar... flying lines... a trim line... | The accused "DreamStick" is identified as a kite control system, which is a component of a larger kite device. | ¶22 | col. 7:41-8:13 |
| a retainer that retains the user end of the trim line abutting against an intermediate portion of the trim line... whereby a loop is formed in the trim line | The complaint alleges the accused product incorporates a "Quick Release System" that forms part of the connection between the user and the kite. | ¶23 | col. 8:14-19 |
| wherein the retainer is slidable along the trim line away from the user end | The complaint does not provide specific technical details on the operation of the accused release system, but alleges it infringes the patent's claims. | ¶21, ¶33 | col. 8:20-21 |
| whereby pushing the retainer away from such user end along the trim line releases the user end of the trim line from the retainer | The complaint alleges the accused "Quick Release System" cancels the need to lift a handle, suggesting a different, hands-on activation method. | ¶23 | col. 8:22-26 |
- Identified Points of Contention:
- Technical Questions: A primary factual question will be how the accused "DreamStick" Quick Release System mechanically operates. The complaint's allegations are high-level and do not describe the specific structure or action of the accused release mechanism. Evidence will be needed to determine if its components and function correspond to the claimed "slidable retainer" that is activated by "pushing."
- Scope Questions: The dispute may raise the question of whether the term "retainer," as described in the patent, can be construed to read on the specific components of the accused "DreamStick" system. The analysis will depend on whether the accused device's release mechanism, once revealed, functions in a manner consistent with the claims.
V. Key Claim Terms for Construction
The Term: "retainer"
Context and Importance: This term is the central component of the claimed invention. Its construction will likely determine the scope of the claim and whether the accused product's release mechanism infringes. Practitioners may focus on this term because its definition will be pivotal in distinguishing the claimed invention from both the prior art and the accused device.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims themselves and the specification use the general term "retainer" ('694 Patent, col. 8:14). The specification also notes that the "sleeve" shown in embodiments "can be any appropriate shape, such as a ring, which is merely a truncated sleeve," which may suggest the term is not limited to a specific form ('694 Patent, col. 5:19-21).
- Evidence for a Narrower Interpretation: The patent's detailed description and figures consistently depict the "retainer" as a "sleeve" (107) that slides over a frame (104) and a pivot pin (101) to hold a loop closed ('694 Patent, Fig. 11; col. 6:15-28). A party could argue that the term "retainer" should be construed as being limited to this specific structural configuration.
The Term: "pushing the retainer away from such user end"
Context and Importance: This phrase defines the specific, novel action that activates the release. It is the key functional limitation that distinguishes the invention from prior art "pull-to-release" systems.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent's objective is to provide an intuitive release, which might support construing "pushing...away" to cover any user action that is primarily directed away from the body, even if not perfectly linear.
- Evidence for a Narrower Interpretation: The specification repeatedly emphasizes the direction of activation as "outwardly towards the kite" ('694 Patent, col. 5:3-4), and the patent's background criticizes prior art for allowing release from pulls in various directions ('694 Patent, col. 3:6-12). This could support a narrower construction requiring a specific vector of force for activation.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendant has indirectly infringed, including by offering to sell an apparatus for practicing a patented process (Compl. ¶25, ¶33). The factual basis appears to rest on Defendant’s marketing of the "DreamStick" system to U.S. consumers, allegedly with knowledge of its infringing use (Compl. ¶18, ¶22).
- Willful Infringement: The complaint includes a separate count for willful infringement (Compl. ¶¶36-39). It alleges that the Defendant's principal, Damien Girardin, was a former head engineer for Plaintiff and therefore had direct knowledge of the patented technology (Compl. ¶¶17-18). The complaint further alleges that Defendant sought and was denied a license to the '694 patent before launching the accused product, providing a basis for alleging pre-suit knowledge of infringement (Compl. ¶¶19-21).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of technical-factual correspondence: Does the accused "DreamStick" Quick Release System actually operate via a "slidable retainer" that is activated by "pushing," as required by the patent's claims? The resolution of this question, which will depend on evidence regarding the accused product's design and function, will be central to the literal infringement analysis.
- The case may also turn on claim construction: How will the court define the scope of the term "retainer"? Whether it is construed broadly to cover any component that holds the loop closed or narrowly to the specific sleeve-and-pin embodiment shown in the patent could be dispositive.
- A third key area will be willfulness and damages, hinging on the alleged history between the parties. The court will examine the evidence concerning the Defendant's principal's prior employment with the Plaintiff and the alleged pre-suit licensing negotiations to determine if any infringement was willful, which could expose the Defendant to enhanced damages.