DCT
1:15-cv-02193
Critsuccess v. Scates
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: CritSuccess LLC (Washington D.C.)
- Defendant: Rex Scates, d/b/a BCMarketplace.com, Almost Forever Jewelry, and ScaleObjects.com (California)
- Plaintiff’s Counsel: Ladas & Parry, LLP
- Case Identification: 1:15-cv-02193, N.D. Ill., 03/18/2015
- Venue Allegations: Plaintiff alleges venue is proper because Defendant has committed acts of infringement in the Northern District of Illinois, transacted business in the district, and offers products for sale to residents of the district through interactive websites.
- Core Dispute: Plaintiff alleges that Defendant’s "Dice Rings" and other functional jewelry products infringe a patent related to wearable, random-result generating devices.
- Technical Context: The technology occupies a niche within the tabletop gaming accessories market, offering a portable alternative to traditional random-number generators like dice.
- Key Procedural History: The patent-in-suit was issued on January 13, 2015, approximately two months before the complaint was filed. The complaint does not mention any prior litigation, licensing history, or post-grant proceedings.
Case Timeline
| Date | Event |
|---|---|
| 2013-03-15 | Priority Date for U.S. Patent No. 8,931,778 |
| 2015-01-13 | U.S. Patent No. 8,931,778 Issued |
| 2015-03-18 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,931,778 - "Functional Jewelry"
- Patent Identification: U.S. Patent No. 8,931,778 ("Functional Jewelry"), issued January 13, 2015.
The Invention Explained
- Problem Addressed: The patent's background describes the shortcomings of conventional gaming tools. For instance, dice can roll off tables or be bumped, losing a tracked value, and playing cards can be damaged by spills or marked (’778 Patent, col. 1:17-27).
- The Patented Solution: The invention is a "dice ring" designed to be worn on a finger. It consists of a stationary inner "base ring" with a groove, and at least one outer "spinning band" that fits within the groove and rotates freely. The spinning band is marked with a pattern of faces (e.g., numbers, symbols), and the base ring has a fixed "indicator" (such as an arrow) that points to a specific face when the band stops spinning, thereby generating a random result (’778 Patent, Abstract; col. 2:35-42, col. 3:51-57; Fig. 1).
- Technical Importance: The design provides a self-contained, portable, and durable random-result generator that aims to mitigate the physical inconveniences of traditional dice used in tabletop games (’778 Patent, col. 1:28-34).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶10).
- Independent Claim 1 Elements:
- A random result generating device comprising:
- a base ring comprising at least one base ring component; and
- at least one spinning band;
- wherein the base ring has at least one groove;
- wherein the spinning band fits into the at least one groove of the base ring;
- wherein the at least one spinning band is spinnable inside the at least one grooved base ring;
- wherein the base ring is marked with an indicator that designates a result of spinning the at least one spinning band;
- wherein each of the at least one spinning bands is marked with a pattern covering the outer circumference of the at least one spinning band;
- wherein the pattern comprises at least two faces;
- wherein the random result generated is one of the faces of the pattern on each of the at least one spinning bands;
- wherein the random result is designated by the indicator mark on the base ring; and
- wherein the random result generating device is sized as wearable jewelry.
- The complaint notes that discovery may uncover infringement of additional claims (’778 Patent, col. 9:26-48; Compl. ¶10).
III. The Accused Instrumentality
Product Identification
- The complaint identifies "gaming and jewelry products in the form of rings, including, but not limited to, Dice Rings" sold by the Defendant (Compl. ¶3).
Functionality and Market Context
- The complaint alleges Defendant manufactures, uses, sells, or imports these "Dice Rings" through various online storefronts, including BCMarketplace.com, ScaleObjects.com, and third-party sites like Amazon.com and Newegg.com (Compl. ¶2-3, 7).
- The complaint does not provide specific technical details on the operation of the accused products, instead alleging globally that they "practice one or more claims in the '778 patent" and contain "each and every element thereof, recited in at least device claim 1" (Compl. ¶8, 10). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’778 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A random result generating device comprising: a base ring comprising at least one base ring component; and at least one spinning band | The complaint alleges the accused "Dice Rings" are devices comprising a base ring and a spinning band (Compl. ¶3, 10). | ¶3, 10 | col. 3:52-57 |
| wherein the base ring has at least one groove | The complaint alleges the accused products practice every element of claim 1, which requires a grooved base ring (Compl. ¶10). | ¶10 | col. 2:53-54 |
| wherein the spinning band fits into the at least one groove of the base ring | The complaint alleges the accused products practice every element of claim 1, which requires the band to fit into the groove (Compl. ¶10). | ¶10 | col. 3:56-57 |
| wherein the at least one spinning band is spinnable inside the at least one grooved base ring | The complaint alleges the accused products practice every element of claim 1, which requires a spinnable band (Compl. ¶10). | ¶10 | col. 2:37-38 |
| wherein the base ring is marked with an indicator that designates a result | The complaint alleges the accused products practice every element of claim 1, which requires a marked indicator (Compl. ¶10). | ¶10 | col. 2:49-52 |
| wherein each of the at least one spinning bands is marked with a pattern covering the outer circumference | The complaint alleges the accused products practice every element of claim 1, which requires a marked pattern (Compl. ¶10). | ¶10 | col. 2:45-49 |
| wherein the pattern comprises at least two faces | The complaint alleges the accused products practice every element of claim 1, which requires at least two faces (Compl. ¶10). | ¶10 | col. 3:58-61 |
| wherein the random result generating device is sized as wearable jewelry | The complaint identifies the accused products as "jewelry products in the form of rings" (Compl. ¶3). | ¶3 | col. 9:46-48 |
- Identified Points of Contention:
- Scope Questions: The complaint broadly accuses "Dice Rings" without detailing their specific construction. A central question will be whether discovery reveals that the accused products contain a "base ring," a "spinning band," a "groove," and an "indicator" as those terms are understood in the context of the ’778 Patent.
- Technical Questions: A key evidentiary question will be whether the Defendant's products are "sized as wearable jewelry." The analysis may depend on how the products are manufactured, marketed, and sold—whether as functional gaming tools, ornamental jewelry, or both. The patent itself is titled "Functional Jewelry", suggesting this dual nature is central to the invention's identity (’778 Patent, (54)).
V. Key Claim Terms for Construction
- The Term: "wearable jewelry"
- Context and Importance: This term appears at the end of claim 1 and may be pivotal in defining the scope of the invention. Its construction will determine whether the claim covers any ring-like wearable device that generates random results, or if it is limited to devices that have a primarily ornamental or decorative purpose in addition to their functional one. Practitioners may focus on this term because the accused products are described as both "gaming" and "jewelry" products, creating a potential ambiguity (Compl. ¶3).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification repeatedly uses the phrase "functional jewelry" and "functional rings," suggesting the "function" is as important as, or more important than, the "jewelry" aspect, potentially broadening the term to include any device that is both wearable and functional in the claimed manner (’778 Patent, col. 1:13-16).
- Evidence for a Narrower Interpretation: The claim uses the specific word "jewelry," which could be interpreted according to its plain and ordinary meaning as an object of personal adornment. The patent's abstract also describes the invention as a way to replace dice with "dice rings," but the claim itself formally requires the device to be "jewelry," which could support a narrower construction limited to items with some aesthetic or ornamental character.
VI. Other Allegations
- Indirect Infringement: The complaint makes a conclusory allegation of indirect infringement, stating Defendant acts with "specific intent to do so despite knowledge of the '778 patent" (Compl. ¶17). No specific facts, such as instructing others on how to use the device in an infringing manner, are provided to support this claim.
- Willful Infringement: The complaint alleges that infringement is willful and deliberate (Compl. ¶12). The stated basis for this claim is Defendant's alleged "constructive knowledge" of the patent since its issuance date and continued infringement thereafter (Compl. ¶9, 10).
VII. Analyst’s Conclusion: Key Questions for the Case
- An Evidentiary Question of Infringement: Given that the complaint offers only conclusory allegations of infringement, a primary issue will be whether the evidence produced during discovery demonstrates that the Defendant's accused "Dice Rings" actually incorporate every structural and functional element recited in Claim 1 of the ’778 patent.
- A Definitional Question of Scope: The case may turn on the construction of the term "wearable jewelry." The central question for the court will be whether this limitation requires the accused device to have an ornamental purpose, consistent with the common definition of "jewelry," or if it can be read more broadly to cover any ring-shaped, wearable device that performs the claimed random-result generating function, regardless of its marketing or aesthetic design.