DCT
0:18-cv-03190
Larson v. Soundskins Global
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Benjamin L Larson (Minnesota)
- Defendant: Soundskins Global Co (Alaska Partnership); Compustar Australia Pty Ltd (Australia); Mobile Marine & Car Audio LLC d/b/a Lakes Audio (Minnesota)
- Plaintiff’s Counsel: Bowman and Brooke LLP; Howard & Howard Attorneys PLLC
- Case Identification: 0:18-cv-03190, D. Minn., 11/15/2018
- Venue Allegations: Venue is alleged to be proper in the District of Minnesota because Defendant Lakes Audio has a regular and established place of business in the district and all defendants are alleged to have committed acts of infringement by selling products within the state.
- Core Dispute: Plaintiff alleges that Defendants’ “Soundskins Rings” acoustic speaker kits infringe a patent for a sealing, absorbing, and decoupling ring kit created by a specific manufacturing method.
- Technical Context: The technology relates to aftermarket car audio accessories designed to improve the acoustic performance of vehicle-mounted speakers by managing sound waves and vibrations within the door panel.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant SoundSkins with notice of infringement by phone and text message as early as mid-2016. It further alleges that SoundSkins admitted to an "infringement problem" and represented that it would cease selling the accused products in the U.S., which is a significant allegation for the claim of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2013-06-24 | U.S. Patent No. 8,739,921 Priority Date |
| 2014-06-03 | U.S. Patent No. 8,739,921 Issue Date |
| Mid-2016 | Alleged pre-suit notice of infringement to Defendant SoundSkins (Compl. ¶24) |
| 2018-11-15 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,739,921 - "Sealing, Absorbing, and Decoupling Speaker Ring Kit"
The asserted patent is U.S. Patent No. 8,739,921, issued June 3, 2014 (the “’921 Patent”).
The Invention Explained
- Problem Addressed: The patent’s background section states that conventional vehicle door housings provide suboptimal acoustics for speakers, causing unwanted sound energy to be directed into vibrating the door panel rather than into the vehicle cabin where it is desired (’921 Patent, col. 1:34-40).
- The Patented Solution: The invention is an acoustic kit for a vehicle speaker, and a method for making it. The solution involves manufacturing a kit from a single "drum" of foam by making two concentric circular cuts to form an outer ring, an inner ring, and a core (’921 Patent, col. 1:52-60). When installed, these components are designed to seal the space around the speaker, decouple it from its mount, and absorb rear-firing sound waves, thereby channeling sound more effectively into the cabin (’921 Patent, Fig. 6; col. 2:1-7).
- Technical Importance: The described invention sought to provide an inexpensive and easily installed aftermarket kit that could significantly improve the acoustic fidelity of factory or aftermarket speakers without requiring specialized tools or permanent vehicle modification (’921 Patent, col. 2:15-21).
Key Claims at a Glance
- The complaint quotes independent claim 15 as a representative claim and also asserts infringement of claims 1, 4, 6, 18, and 20 (Compl. ¶¶16, 19).
- Independent Claim 15 is a product-by-process claim for an acoustic system kit containing the following essential elements:
- An outer ring, an inner ring, and a core, each made of a compressible material and having specified cylindrical shapes.
- Each component having an adhesive affixed to its bottom surface.
- The components having specific dimensional relationships: the inner diameter of the outer ring is equal to the outer diameter of the inner ring, and the inner diameter of the inner ring is equal to the outer diameter of the core.
- The outer ring and core are of equal axial thickness.
- The kit is the product of a specific manufacturing method, which includes producing a "drum" of compressible material, applying adhesive, and making two concentric circular cuts to separate the drum into the three components.
III. The Accused Instrumentality
Product Identification
- The accused products are the "Soundskins Rings kits" (Compl. ¶28).
Functionality and Market Context
- The complaint alleges the accused kits consist of an outer ring, inner ring, and core made of "high density closed cell foam" with "3M brand adhesive" (Compl., p. 9 visual). The photograph of the product shows a three-piece concentric ring kit designed for acoustic treatment of speakers (Compl. ¶17, p. 7 visual). The complaint alleges these kits are sold throughout the U.S. and in Minnesota via an interactive website and through retailers (Compl. ¶¶10-11, 23). This product photo from the defendant's website shows the three-part kit offered for sale (Compl. ¶17).
IV. Analysis of Infringement Allegations
’921 Patent Infringement Allegations
| Claim Element (from Independent Claim 15) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An acoustic system kit... comprising: (a) an outer ring; (b) an inner ring; (c) a core; | The complaint points to a photograph of the accused Soundskins Rings kit, which shows three separate, concentric foam components consistent with an outer ring, inner ring, and core. | ¶17 | col. 5:2-4 |
| (g) said outer ring being made of a first compressible material; (h) said inner ring being made of a second compressible material; (i) said core being made of a third compressible material; | A product brochure for the accused kits states they are made with "high density closed cell foam." The complaint alleges this material is compressible. | p. 9 visual | col. 5:18-24 |
| (j) said outer ring having a first adhesive affixed to its bottom surface; [and same for (k) inner ring and (l) core] | The product brochure states the kits use "industry leading 3M brand adhesive." | p. 9 visual | col. 5:25-30 |
| and said method of manufacture comprising... making a first circular cut and a second circular cut in said drum... whereby said drum is separated into said outer ring, said inner ring, and said core. | The complaint makes a conclusory allegation that "the elements are also made according to the same steps recited in the claim," but provides no direct evidence of the defendants' manufacturing process. | ¶18 | col. 6:35-53 |
- Identified Points of Contention:
- Product-by-Process Evidence: Claim 15 is a product-by-process claim, which requires the plaintiff to prove that the accused product was made by the specific manufacturing method recited in the claim. The complaint provides no direct evidence of Defendants' manufacturing process, instead relying on a conclusory assertion. The ability to obtain such evidence through discovery may be a central challenge for the plaintiff.
- Technical Questions (Material Type): A significant technical question arises from the materials. The complaint identifies the accused product as being made of "high density closed cell foam" (Compl., p. 9 visual). The patent specification, however, describes its preferred material as "open-cell foam" and states that "closed-cell foam is generally unacceptably rigid" (’921 Patent, col. 3:5-6). This raises the question of whether the accused product's material meets the "compressible material" limitation as defined by the patent.
V. Key Claim Terms for Construction
- The Term: "compressible material"
- Context and Importance: The definition of this term is critical because of the apparent difference between the patent's preferred "open-cell foam" and the accused product's alleged "closed-cell foam." Practitioners may focus on this term because the infringement determination could hinge on whether the accused material falls within its scope. A brochure image in the complaint describes the accused product as being made with "high density closed cell foam" (Compl., p. 9 visual).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself is broad, simply requiring a "compressible material" (’921 Patent, col. 5:18). The specification also notes that "Other shock-absorbing materials may be used as well" (’921 Patent, col. 3:7-8), which could support a construction not limited to a specific foam type.
- Evidence for a Narrower Interpretation: The specification strongly favors "open-cell foam," identifying it as the "preferred material" (’921 Patent, col. 3:4) and explicitly stating that "closed-cell foam is generally unacceptably rigid, though some densities may be acceptable" (’921 Patent, col. 3:5-7). A defendant may argue this language limits the scope of "compressible material" to materials with properties similar to open-cell foam and disclaims rigid, closed-cell foams.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement to infringe under 35 U.S.C. § 271(b), stating that Defendants instruct customers on infringing installation methods through "YouTube videos" (Compl. ¶29). This provides a specific factual basis for the knowledge and intent elements of an inducement claim.
- Willful Infringement: The complaint alleges willfulness based on pre-suit knowledge. The allegations are that Plaintiff notified SoundSkins of infringement as early as "mid-2016," that "Soundskins admitted it had an infringement problem," and that it continued to sell the products despite this knowledge (Compl. ¶24). The complaint also points to a product brochure stating "This product has limited regional market availability" as further evidence of Defendants' awareness of the patent (Compl. ¶¶25-26, p. 9 visual).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of claim scope and material science: can the claim term “compressible material,” which the patent specification contrasts with “generally unacceptably rigid” closed-cell foam, be construed to cover the accused product’s “high density closed cell foam”? The resolution of this claim construction dispute may be dispositive.
- A key evidentiary question will be whether the plaintiff can prove, likely through discovery, that the accused kits are manufactured using the specific two-cut process recited in product-by-process claim 15. The complaint currently lacks direct evidence on this element of infringement.
- A critical factual dispute will likely concern the allegations of pre-suit notice and admissions dating back to 2016. The evidence surrounding these communications will be central to the claim for willful infringement and any potential for enhanced damages.