DCT
1:18-cv-10227
Schawbel Tech LLC v. Heat Factory USA Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Schawbel Technologies LLC (Massachusetts)
- Defendant: The Heat Factory USA, Inc. (Nevada)
- Plaintiff’s Counsel: Murtha Cullina LLP
- Case Identification: 1:18-cv-10227, D. Mass., 02/06/2018
- Venue Allegations: Venue is alleged as proper in the District of Massachusetts because a substantial part of the events giving rise to the claims occurred there, and because the underlying agreements between the parties are governed by Massachusetts law.
- Core Dispute: Plaintiff alleges that Defendant’s heated insoles and related products infringe 19 U.S. patents following Plaintiff's termination of a patent license agreement for Defendant's alleged failure to make payments under a related Asset Purchase Agreement.
- Technical Context: The dispute concerns the technology of battery-powered, remotely-controlled heated insoles for footwear, a product category aimed at consumers engaging in cold-weather activities.
- Key Procedural History: The complaint alleges that the parties entered into an Asset Purchase Agreement and an Exclusive Patent License Agreement on July 18, 2017. Plaintiff alleges it terminated the license on January 31, 2018, after Defendant failed to make required payments. The patent infringement allegations are based on Defendant's alleged continued sale of licensed products after the termination date.
Case Timeline
| Date | Event |
|---|---|
| 2010-12-28 | Earliest Priority Date for U.S. Patent No. 8,850,716 |
| 2013-12-04 | Earliest Priority Date for U.S. Patent No. 8,869,428 |
| 2014-10-07 | U.S. Patent No. 8,850,716 Issued |
| 2014-10-28 | U.S. Patent No. 8,869,428 Issued |
| 2017-07-18 | Asset Purchase Agreement and License Agreement Executed |
| 2017-12-10 | Alleged Due Date for Defendant's Missed Payment |
| 2017-12-11 | Plaintiff Demands Payment |
| 2018-01-10 | Alleged Due Date for Defendant's Second Missed Payment |
| 2018-01-13 | Plaintiff Demands Second Payment |
| 2018-01-31 | Plaintiff Delivers License Agreement Termination Notice |
| 2018-02-05 | Date of Website Printouts Allegedly Showing Continued Sales |
| 2018-02-06 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,850,716 - "Heated Insole Remote Control Systems"
- Issued: October 7, 2014
The Invention Explained
- Problem Addressed: The patent describes that prior art wireless heated insoles suffered from unreliable remote control operation. An antenna placed inside a shoe is parallel to the ground and often blocked by the user's foot and body, leading to poor signal reception and preventing temperature adjustments without removing the footwear (Compl. ¶7; ’716 Patent, col. 1:41-48, col. 2:1-17).
- The Patented Solution: The invention is a system and method that improves communication reliability by having the remote transmitter automatically generate and send "periodic repeated control signals" for a set duration after a user initiates a command. This increases the probability that at least one signal is transmitted while the user’s foot is in the air during a step, which greatly improves the reception environment and ensures the command is received by the insole’s electronics (’716 Patent, Abstract; col. 2:41-60).
- Technical Importance: This approach makes remote-controlled heated insoles more reliable and user-friendly, a critical factor for individuals in cold environments who require on-the-go temperature adjustments (’716 Patent, col. 1:36-48).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 2-16 (Compl. Table 1, p. 9).
- Independent Claim 1 includes the following essential elements:
- A remote transmitter for sending a wireless control signal to initiate a temperature increase.
- An electronic circuit within the insole containing a receiver, a heating element, and a microprocessor.
- The microprocessor senses the insole’s real-time temperature and generates control signals to adjust the heating element to a desired temperature.
- The system automatically generates periodic repeated control signals upon initiation of the heating process in response to the initial control signal.
U.S. Patent No. 8,869,428 - "Heated Insole with Removable and Rechargeable Battery"
- Issued: October 28, 2014
The Invention Explained
- Problem Addressed: The patent notes that existing heated insoles with integrated batteries have a limited life (e.g., 3-4 hours) and require the user to remove the entire insole from the shoe for recharging, which is described as a "hassle" that interrupts activity (’428 Patent, col. 1:36-44).
- The Patented Solution: The invention discloses an insole with a body containing a frame, typically in the heel portion, designed to receive a removable and insertable battery. A key feature is a connector that pivots to engage and disengage the battery, facilitating easy removal and replacement while the insole remains inside a shoe. This allows a user to swap a depleted battery for a fresh one instantly (’428 Patent, Abstract; col. 2:6-27).
- Technical Importance: This design extends the practical operational time of heated insoles indefinitely (with spare batteries) and significantly improves user convenience by eliminating the need to remove the insole from footwear to recharge (’428 Patent, col. 2:6-9).
Key Claims at a Glance
- The complaint asserts independent claims 1, 9, and 18, along with their dependent claims (up to claim 25) (Compl. Table 1, p. 9).
- Independent Claim 1 includes the following essential elements:
- An insole body with a heating member and a frame that receives a battery.
- A battery configured to be removable from and insertable into the frame while the insole is inside a shoe.
- A connector associated with the frame that pivots to connect to and disconnect from the battery, and which connects the battery to the heating member.
Multi-Patent Capsule:
- Patent Identification: U.S. Patent No. 8,869,429, "Heated Insole with Removable and Rechargeable Battery," issued October 28, 2014.
- Technology Synopsis: This patent is from the same family as the ’428 Patent and is directed to a heated insole with a battery-receiving portion, allowing a battery to be removed and inserted while the insole remains within a shoe (’429 Patent, Abstract).
- Asserted Claims: Claims 1-12 (Compl. Table 1, p. 9).
- Accused Features: The complaint alleges infringement by products including "Heated Insoles," "ProFLEX Heated Insoles," and related batteries and packs (Compl. Table 1, p. 9).
Multi-Patent Capsule:
- Patent Identification: U.S. Patent No. 9,101,177, "Remove Control Wireless Heated Insole Systems," issued August 11, 2015.
- Technology Synopsis: This patent is a continuation of the ’716 Patent, directed to a remote control system for heated insoles that automatically transmits repeated control signals to improve reliability by capitalizing on the user's stride pattern (’177 Patent, Abstract).
- Asserted Claims: Claims 1-15 (Compl. Table 1, p. 9).
- Accused Features: The complaint alleges infringement by products including "Heated Insoles," "ProFLEX Heated Insoles," and related batteries and packs (Compl. Table 1, p. 9).
Multi-Patent Capsule:
- Patent Identification: U.S. Patent No. 9,179,734, "Heated Insole with Removable and Rechargeable Battery," issued November 10, 2015.
- Technology Synopsis: This patent is a continuation of the ’428 Patent family, directed to a heated insole with a frame for receiving a removable battery, featuring a pivoting connector that allows battery replacement without removing the insole from a shoe (’734 Patent, Abstract).
- Asserted Claims: Claims 1-28 (Compl. Table 1, p. 9).
- Accused Features: The complaint alleges infringement by products including "Heated Insoles," "ProFLEX Heated Insoles," and related batteries and packs (Compl. Table 1, p. 9).
Note: The complaint asserts a total of 19 patents, including numerous continuations and design patents related to the core technologies described above. The complaint does not provide sufficient detail for individual analysis of each.
III. The Accused Instrumentality
Product Identification
The accused products are identified as "Heated Insoles," "Heated Insoles ProFLEX," "ProFLEX Replacement Batteries," "Heated Insoles ProFLEX HD (Heavy Duty)," "ProFLEX XB Battery Packs," "Hand Warmers," and "Pocket Warmers" (Compl. ¶50). Post-termination sales are specifically alleged for "ProFLEX Heated Insoles," "ProFLEX XB Battery Packs," and "ProFLEX Replacement Batteries" (Compl. ¶57).
Functionality and Market Context
The complaint alleges that these products incorporate the patented technology but does not provide specific technical details of their operation (Compl. ¶50). Based on the infringement allegations, the accused insoles are alleged to be battery-powered, heated articles for footwear that are controlled by a wireless remote and feature removable, rechargeable batteries. The complaint includes a screenshot from the zulily.com website, which allegedly shows advertisements for the accused products, as evidence of ongoing sales (Compl. ¶57). The complaint does not provide further detail on the products' market context beyond identifying Defendant as being in the business of "warmer technology" (Compl. ¶8).
IV. Analysis of Infringement Allegations
The complaint does not provide a claim chart or a detailed narrative mapping accused product features to specific claim limitations. The analysis below summarizes the infringement theory implied by the allegations in the complaint.
- U.S. Patent No. 8,850,716 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a remote transmitter transmitting a wireless control signal initiating a process to increase the temperature in said insole... | The accused systems are alleged to include a remote control unit used to send wireless commands to the heated insoles to adjust their temperature. | ¶58, Table 1 | col. 3:5-9 |
| an electronic circuit contained within said insole, said electronic circuit comprising a receiver..., a microprocessor, [and a] heating element... | The accused insoles allegedly contain an electronic circuit with a receiver for remote signals, a microprocessor for control, and a heating element to warm the insole. | ¶58, Table 1 | col. 3:62-65; col. 4:18-30 |
| said system automatically generating periodic repeated control signals upon initiating said process to control heating of said insole... | The accused systems allegedly operate by automatically re-transmitting a user's command at periodic intervals to ensure the signal is reliably received by the insole. | ¶58, Table 1 | col. 2:41-50 |
- U.S. Patent No. 8,869,428 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an insole body including a heating member and a frame that receives a battery; | The accused ProFLEX insoles allegedly include a main body with a heating element and a frame or housing designed to hold a battery. | ¶58, Table 1 | col. 3:29-31 |
| a battery configured to be removable from and insertable into the frame while the insole is disposed within the shoe; | The accused ProFLEX systems are alleged to use batteries that can be removed and replaced by the user without taking the insole out of their shoe. | ¶58, Table 1 | col. 2:6-9 |
| a connector operably associated with the frame, the connector pivots to connect to and disconnect from the battery... | The accused ProFLEX insoles allegedly use a connector that pivots or hinges to facilitate the connection and disconnection of the removable battery pack. | ¶58, Table 1 | col. 2:21-24 |
- Identified Points of Contention:
- Scope Questions: A central question for the ’716 Patent will be the scope of "automatically generating periodic repeated control signals." The analysis may explore whether the accused remote control's functionality meets this definition or if it uses a simpler transmission protocol (e.g., transmitting only while a button is depressed).
- Technical Questions: For the ’428 Patent, a key technical question will be whether the connector mechanism in the accused products "pivots" as required by the claim. The case may turn on evidence of the precise mechanical action used to engage and disengage the battery in the accused ProFLEX products.
V. Key Claim Terms for Construction
The Term: "automatically generating periodic repeated control signals" (’716 Patent, Claim 1)
- Context and Importance: This term is the central novel feature claimed in the ’716 Patent to overcome prior art reliability issues. The definition of "automatically" and "periodic" will be critical to determining infringement. Practitioners may focus on this term because the accused products' actual transmission behavior (e.g., single burst vs. timed repetition) will be dispositive.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself does not specify the number of repetitions, their precise interval, or the duration, potentially allowing it to cover various repeating signal schemes. The specification describes the benefit as increasing the probability of reception when a user lifts their foot, a principle that could apply broadly (’716 Patent, col. 2:45-50).
- Evidence for a Narrower Interpretation: The detailed description provides a specific example of "a burst of four packets" where the "four packet sequence is repeated every 15 seconds over the next minute" (’716 Patent, col. 4:10-17). A party might argue this example narrows the scope of the otherwise broader claim terms.
The Term: "pivots" (’428 Patent, Claim 1)
- Context and Importance: This term defines the specific mechanical action of the connector that enables the claimed easy insertion and removal of the battery. The infringement analysis for this patent family will likely hinge on whether the connector in the accused products performs this pivoting motion.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states the pivoting movement "advantageously allows the battery to mate-fit within the frame while also allowing one to insert the battery into and remove the battery from the insole" (’428 Patent, col. 2:22-26). This functional language may support a construction that covers any hinge-like motion that achieves this result.
- Evidence for a Narrower Interpretation: The figures provide specific illustrations of a connector with hinges (e.g., FIG. 13A, element 510) that rotate upward to receive the battery (’428 Patent, col. 10:4-9). This specific embodiment could be used to argue for a more limited definition of the term.
VI. Other Allegations
- Indirect Infringement: The complaint does not contain specific allegations of induced or contributory infringement. It focuses on direct infringement through Defendant’s alleged "manufacture, sale and/or offer for sale" of the accused products (Compl. ¶58).
- Willful Infringement: The complaint alleges that Defendant's infringement is "knowing, deliberate, willful and without justification" (Compl. ¶63). The basis for this allegation is Defendant's alleged continuation of manufacturing and selling the accused products after being notified by Plaintiff that the license agreement had been terminated (Compl. ¶63).
VII. Analyst’s Conclusion: Key Questions for the Case
This dispute presents a mix of contract and patent law issues. The key questions that will likely determine the outcome include:
- A threshold issue will be one of contractual validity: was the patent license agreement validly terminated by Plaintiff? If the court finds the termination was improper, the patent infringement claim may fail, as Defendant’s actions would have been licensed.
- A core evidentiary question will be one of technical operation: does the accused remote control system for the heated insoles practice the claimed method of "automatically generating periodic repeated control signals" to ensure command reception, or does it utilize a different, non-infringing transmission protocol?
- A key question of mechanical function will be whether the connector for the removable battery in the accused ProFLEX insoles "pivots" as claimed in the patents. The resolution will depend on a factual analysis of the specific mechanism used in the accused products compared to the scope of the patent claims.