DCT
1:17-cv-12060
RW IP Holdings LLC v. Standard Innovation Corp
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: RW IP Holdings, LLC (Massachusetts)
- Defendant: Standard Innovation Corp. (Canada)
- Plaintiff’s Counsel: O'Connell Law Office
- Case Identification: 1:17-cv-12060, D. Mass., 10/20/2017
- Venue Allegations: Venue is alleged based on Defendant being a foreign corporation and having transacted business in the district, including sales of the accused products.
- Core Dispute: Plaintiff alleges that Defendant’s We-Vibe line of personal vibrators, which are remotely controllable via a mobile application, infringes a patent related to terminal units for mobile communication systems.
- Technical Context: The technology concerns using mobile communication signals to remotely control a device that provides a non-numeric, physical annunciation, such as a vibration.
- Key Procedural History: Plaintiff alleges it provided Defendant with express written notice of the patent-in-suit and the alleged infringement on three separate occasions prior to filing the complaint, beginning in October 2016. Defendant allegedly did not respond to any of these notifications.
Case Timeline
| Date | Event |
|---|---|
| 1996-10-21 | Patent Priority Date (Provisional Application) |
| 2000-02-22 | U.S. Patent No. 6,028,531 Issues |
| 2016-10-24 | Plaintiff sends first pre-suit notice letter to Defendant |
| 2017-01-20 | Plaintiff sends second pre-suit notice letter to Defendant |
| 2017-07-18 | Plaintiff sends third pre-suit notice letter to Defendant |
| 2017-10-20 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,028,531 - Terminal Units for a Mobile Communications System
- Issued: February 22, 2000
The Invention Explained
- Problem Addressed: The patent's background section notes that while mobile communication systems like pagers were commonplace, there were "previously-unexploited uses of mobile communications technology" that could represent a "marked advance in the art" (’531 Patent, col. 2:38-42). The implicit problem is the limited application of remote signaling beyond simple alerts.
- The Patented Solution: The invention is a "terminal unit" that receives a mobile communications signal (e.g., a page) and, in response, provides a "non-numeric annunciation" (’531 Patent, Abstract). A primary embodiment is a cordless personal vibrator that can be remotely activated by another person sending a signal, enabling a "heretofore unrealized" form of interpersonal communication (’531 Patent, col. 4:36-38). The system is depicted with a housing (12) containing a vibration motor (26, 22) and a channel (32) to receive a separate paging device (50) (’531 Patent, Fig. 1).
- Technical Importance: This technology proposed broadening the function of mobile communications from passive information delivery to active, remote control of physical devices for novel sensory and interactive experiences (’531 Patent, col. 2:4-8).
Key Claims at a Glance
- The complaint asserts infringement of claims 1-5 (Compl. ¶15). Independent claim 1 is representative.
- Independent Claim 1:
- A terminal unit of a mobile communications system for providing a non-numeric annunciation of a mobile communications signal, comprising:
- a terminal unit housing;
- a means for coupling the terminal unit housing to a means for receiving a mobile communications signal;
- a normally inactive non-numeric annunciator means operably associated with the terminal unit housing for non-numerically annunciating a receipt of the mobile communications signal; and
- a means for coupling the non-numeric annunciator means to a means for receiving a mobile communications signal.
- The claim further specifies that the terminal unit is constructed for use as a personal vibrator, with a user engaging portion that vibrates in response to the signal, enabling a remote user to induce a "vibratory sensation" on a user's body.
- The complaint does not explicitly reserve the right to assert dependent claims beyond claim 5.
III. The Accused Instrumentality
Product Identification
The accused products are a line of personal vibrators sold under the We-Vibe® trademark, including the We-Vibe® Sync, 4 Plus, Classic, Ditto, Nova, Rave, Jive, Pivot, and Verge models (Compl. ¶¶17, 18).
Functionality and Market Context
The complaint alleges these devices are "operative as terminal units for mobile communication systems" and are operable via the "We-Vibe® We-Connect application" on a mobile device (Compl. ¶¶13, 16). This application allows the devices to be controlled by mobile communication signals (Compl. ¶14). The complaint includes a commercial advertisement as Exhibit B, which it states depicts the mobile application and the accused devices being "connected and operable by mobile communications signals" (Compl. ¶14). The devices are described as "personal vibrators of the type used on a human body" (Compl. ¶20(f)).
IV. Analysis of Infringement Allegations
The complaint references a claim chart appended as Exhibit E, which was not included in the filing (Compl. ¶21). The infringement theory is instead detailed narratively in paragraph 20 of the complaint, which maps product features to claim elements.
’531 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a terminal unit housing | The accused devices have a housing. | ¶20(b) | col. 8:7 |
| a means for coupling the terminal unit housing to a means for receiving a mobile communications signal | The system has a means to couple the housing to a means for receiving a signal, such as a mobile telephone. The complaint notes the patent is not limited to a specific type of coupling. | ¶20(c) | col. 8:8-10 |
| a normally inactive non-numeric annunciator means operably associated with the terminal unit housing for non-numerically annunciating a receipt of the mobile communications signal | The devices have a normally inactive, non-numeric annunciator that vibrates to annunciate receipt of a signal. | ¶20(d) | col. 8:11-14 |
| a means for coupling the non-numeric annunciator to the means for receiving a mobile communications signal | The system has a means to couple the annunciator to the signal receiving means. The complaint again notes the patent is not limited to a specific type of coupling. | ¶20(e) | col. 8:15-18 |
| wherein the mobile communications terminal unit is constructed for use as a personal vibrator of the type used on a human body with the terminal unit housing... to provide the human body with a vibratory sensation | The accused devices are personal vibrators for use on a human body, with a user-engaging portion that vibrates in response to a signal to provide a vibratory sensation. | ¶¶20(f), 20(g) | col. 8:19-33 |
Identified Points of Contention
- Scope Questions: A central dispute may arise over the scope of the "means for coupling" limitations. The patent discloses a specific physical structure: a "receiving channel" (32) in the housing that accepts a separate "paging receiver" (50) to establish an "operable electrical connection" (’531 Patent, col. 4:13-33, Fig. 1). The accused products are alleged to couple wirelessly to a mobile phone via an application (Compl. ¶¶14, 16). This raises the question of whether a wireless protocol (e.g., Bluetooth) can be considered structurally equivalent to the disclosed physical docking mechanism under 35 U.S.C. § 112(f).
- Technical Questions: The complaint alleges the accused devices are depicted in various exhibits, including Exhibit C, which shows product marketing materials (Compl. ¶17). The complaint also asserts that certain devices have an "elongate cylindrical section" and others have an "aperture" for user engagement (Compl. ¶¶20(h), 20(i)). A technical question is whether discovery will show that the internal mechanism for producing vibration in the accused products is structurally equivalent to the "eccentric disk" (22) rotated by a "motor" (26) disclosed in the patent (’531 Patent, col. 4:3-7).
V. Key Claim Terms for Construction
- The Term: "means for coupling the terminal unit housing to a means for receiving a mobile communications signal"
- Context and Importance: This is a means-plus-function limitation under 35 U.S.C. § 112(f). Its scope is limited to the structure disclosed in the specification and its equivalents. As the accused products likely use wireless technology, while the patent discloses a physical connection, the interpretation of "equivalents" will be dispositive for infringement. Practitioners may focus on this term because the outcome of the structural equivalence analysis could decide the case.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The complaint itself argues that "the ‘531 patent not being limited to the type of coupling" (Compl. ¶¶20(c), 20(e)). A party might argue that the core inventive concept is the functional combination, not the specific physical implementation, suggesting a wider range of equivalents.
- Evidence for a Narrower Interpretation: The specification provides a single, highly specific corresponding structure: a "receiving channel 32" into which a "paging receiver 50" is inserted to make contact between "first connecting terminals 60" and "second connecting terminals 34" (’531 Patent, col. 4:13-33, Fig. 1). This detailed disclosure of a physical, electrical docking system could be used to argue for a narrow construction that does not cover wireless protocols.
VI. Other Allegations
Indirect Infringement
The complaint alleges that Defendant induced infringement by "engag[ing] distributors for its infringing products in the United States" and thereby inducing them to "manufacture, market, and/or sell" the accused devices (Compl. ¶¶35, 48).
Willful Infringement
Willfulness is alleged based on pre-suit knowledge. The complaint details three separate notice letters sent to Defendant between October 2016 and July 2017, which identified the ’531 patent and the accused products (Compl. ¶¶23, 25, 27). The complaint alleges that Defendant "elected to continue making and selling" the products despite this "direct knowledge," constituting "objectively reckless disregard for Plaintiff’s patent rights" (Compl. ¶¶30, 31).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of structural equivalence under 35 U.S.C. § 112(f): can the wireless communication protocols used to link the accused We-Vibe products to a smartphone be deemed legally equivalent to the patent's disclosed structure of a physical docking channel designed to receive a 1990s-era pager? The outcome of this claim construction battle is likely to be a primary determinant of infringement.
- A key factual question will relate to willfulness: does the Plaintiff's documentation of multiple, unanswered pre-suit notice letters provide sufficient evidence to demonstrate that the Defendant's alleged ongoing infringement was an act of "objectively reckless disregard," potentially exposing it to enhanced damages?