DCT
4:18-cv-01035
Boyd Flotation Inc v. Team Worldwide Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Boyd Flotation, Inc. (Missouri)
- Defendant: Team Worldwide Corporation (Taiwan)
- Plaintiff’s Counsel: Harness, Dickey & Pierce, P.L.C.
- Case Identification: 4:18-cv-01035, E.D. Mo., 06/26/2018
- Venue Allegations: Plaintiff Boyd Flotation, Inc. alleges venue is proper in the Eastern District of Missouri because Defendant Team Worldwide Corporation ("TWW") has transacted business in the state, including by sending product prototypes to Boyd within the district, and has directed patent enforcement activities at residents of the district, including Boyd's customers.
- Core Dispute: Plaintiff seeks a declaratory judgment that its airbed products do not infringe three of Defendant’s patents and/or that the asserted patent claims are invalid.
- Technical Context: The technology at issue involves electric air pumps that are built into inflatable products, such as air mattresses, to provide a self-contained mechanism for both inflation and deflation.
- Key Procedural History: This declaratory judgment action was filed after TWW, the patent owner, initiated litigation against one of Plaintiff's customers (Wal-Mart) in the Eastern District of Texas and subsequently moved to add infringement allegations against Plaintiff's products in that case. Subsequent to the filing of this complaint, all three patents-in-suit were subject to inter partes review (IPR) proceedings before the U.S. Patent and Trademark Office. These IPRs resulted in the cancellation of all claims asserted as the basis for the controversy in this litigation, a development that may render the dispute moot.
Case Timeline
| Date | Event |
|---|---|
| 2000-04-04 | Earliest Priority Date for ’018 Patent |
| 2001-06-22 | Earliest Priority Date for ’394 and ’950 Patents |
| 2007-07-24 | ’394 Patent Issued |
| 2008-03-25 | ’950 Patent Issued |
| 2015-12-15 | ’018 Patent Issued |
| 2017-03-29 | TWW files suit against Wal-Mart in E.D. Tex. ("Walmart Litigation") |
| 2018-03-30 | IPR proceedings initiated against ’394, ’950, and ’018 patents |
| 2018-05-29 | TWW moves to add allegations against Boyd's products in Walmart Litigation |
| 2018-06-26 | Complaint for Declaratory Judgment filed by Boyd in E.D. Mo. |
| 2024-03-11 | USPTO cancels claims 1, 7, and 11-14 of ’950 Patent |
| 2024-04-26 | USPTO cancels claims 1, 5, 7, and 11-14 of ’018 Patent |
| 2024-05-08 | USPTO cancels claims 1-12 and 16-23 of ’394 Patent |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,246,394 - Inflatable Product with Built-in Housing and Switching Pipe, issued July 24, 2007
The Invention Explained
- Problem Addressed: The patent describes the inconvenience for users, particularly outdoors, of needing to carry a separate electric air pump in addition to an air mattress (’394 Patent, col. 1:18-24).
- The Patented Solution: The invention is an inflatable product with a built-in pump assembly that eliminates the need for an external device. The core innovation is a movable "air conduit" or "switching pipe" housed within the pump assembly. By moving the conduit between a first and second position (e.g., by rotating it), the user can change the airflow path to use the same fan and motor for both inflating and deflating the product (’394 Patent, Abstract; col. 3:20-46).
- Technical Importance: This approach provided a self-contained, dual-function (inflate/deflate) system, aiming to improve user convenience and portability for products like airbeds.
Key Claims at a Glance
- The complaint identifies independent claim 1 as being at issue (Compl. ¶25).
- Essential elements of claim 1 include:
- an inflatable body;
- a fan and motor assembly;
- a housing built into the inflatable body; and
- an air conduit that is movable between a first position (for inflation) and a second position (for deflation) while remaining at least partially within the housing.
- The complaint reserves the right to seek judgment on other claims (Compl. ¶22).
U.S. Patent No. 7,346,950 - Inflatable Product Provided with Electric Air Pump, issued March 25, 2008
The Invention Explained
- Problem Addressed: Similar to the ’394 Patent, the invention seeks to solve the problem of inconvenience caused by requiring a separate, external pump for inflatable products (’950 Patent, col. 1:16-23).
- The Patented Solution: The patent describes an inflatable product with an integrated pump assembly contained within a "pack." This pack is built into the wall of the inflatable chamber and extends into its interior. It includes an air intake that communicates with the outside, an air outlet that communicates with the inside, and a valve to control airflow, allowing the internal fan and motor to inflate the chamber (’950 Patent, Abstract; col. 5:1-12).
- Technical Importance: This design focuses on the structural integration of a pump "pack" into the inflatable product's wall, providing a permanent and ready-to-use inflation system.
Key Claims at a Glance
- The complaint identifies independent claim 1 as being at issue (Compl. ¶31).
- Essential elements of claim 1 include:
- a first chamber with a chamber wall;
- a "pack" that is built into the chamber wall and extends into the chamber's interior, the pack having an air intake and a first air outlet;
- a first valve to open and close the first air outlet; and
- a fan and motor disposed within the pack's interior region.
- The complaint reserves the right to seek judgment on other claims (Compl. ¶28).
U.S. Patent No. 9,211,018 - Inflatable Airbed Provided with Electric Pump Having Pump Body Recessed into the Inflatable Airbed, issued December 15, 2015
- Technology Synopsis: This patent addresses the same general problem of external pumps (’018 Patent, col. 1:19-23). Its solution is an electric pump with a body that is "permanently held by" and "wholly or partially recessed into" the exterior wall of an inflatable airbed, leaving at least a portion of the pump body exposed. The invention also discloses that the fan can be rotated in opposite directions to perform both inflation and deflation (’018 Patent, Abstract).
- Asserted Claims: Independent claim 1 (Compl. ¶37).
- Accused Features: The complaint alleges that TWW intends to assert the ’018 Patent against Boyd's airbed products (Compl. ¶¶ 11, 37).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are "Boyd's products," specifically "airbeds" sold by Boyd Flotation, Inc. (Compl. ¶¶10, 11).
Functionality and Market Context
The complaint does not provide sufficient detail for analysis of the accused product's specific design or functionality. It states only that TWW, in a separate litigation, sought to add infringement allegations against Boyd's products, which prompted this declaratory judgment action (Compl. ¶¶11-12). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
As a complaint for declaratory judgment of non-infringement, this filing does not contain detailed infringement allegations or claim charts from the patentee. It references a motion to amend infringement contentions from a separate litigation (Compl., Ex. E), but that exhibit was not provided. Therefore, a detailed element-by-element analysis of the infringement theory is not possible based on the provided documents. The potential areas of dispute below are inferred from the patent and claim language.
’394 Patent Infringement Allegations
- The complaint does not provide sufficient detail for analysis of the specific infringement theory.
- Identified Points of Contention: A central question for infringement would concern the "air conduit being movable" limitation in claim 1. The analysis would likely focus on whether the accused Boyd airbeds utilize a single, physically repositionable conduit to switch between inflation and deflation, as shown in the patent's embodiments (’394 Patent, Figs. 1D-1E), or if they achieve this dual function through a different mechanism (e.g., a reversible motor with fixed ports).
’950 Patent Infringement Allegations
- The complaint does not provide sufficient detail for analysis of the specific infringement theory.
- Identified Points of Contention: A likely point of dispute would be the structural limitation requiring a "pack" that is "built in the chamber wall and extends into an interior of the first chamber" (’950 Patent, cl. 1). The infringement analysis would question whether the housing of the pump in the accused Boyd airbeds meets this specific positional and structural definition, or if it is configured differently (e.g., entirely recessed within the chamber or mounted flush with the exterior wall).
V. Key Claim Terms for Construction
’394 Patent
- The Term: "air conduit being movable" (cl. 1)
- Context and Importance: This term is the core of the inventive concept for switching between inflation and deflation. The infringement case would turn on whether the accused products' mechanism for changing airflow direction falls within the scope of a "movable" conduit.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that "movable between a first position and a second position" does not require a specific type of movement and could encompass any component that shifts to redirect airflow.
- Evidence for a Narrower Interpretation: The specification and figures consistently depict a single, physically rotating pipe to achieve this function (’394 Patent, col. 3:38-46, Figs. 1D-1E). A party could argue this context limits the term to a unitary, repositionable structure, not, for example, a system of static valves or a reversible motor.
’950 Patent
- The Term: "pack ... built in the chamber wall and extends into an interior of the first chamber" (cl. 1)
- Context and Importance: This is a specific structural limitation defining the location and orientation of the pump housing. Practitioners may focus on this term because infringement depends on the precise physical arrangement of the accused pump relative to the airbed wall.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A patentee might argue "built in" means any form of permanent integration and "extends into" is met if any portion of the pump housing crosses the plane of the inner wall.
- Evidence for a Narrower Interpretation: The figures show a distinct "pack" (430) with portions both outside and inside the chamber wall (41a), suggesting a specific through-wall construction (’950 Patent, Fig. 4C). A party could argue the term requires this specific type of straddling configuration, not a pump that is, for example, fully recessed inside the air chamber.
VI. Other Allegations
- Indirect Infringement: The complaint seeks a declaratory judgment that Boyd has not "induced infringement of, or contributed to the infringement of" the patents-in-suit (Compl. ¶¶ 40, 44, 48). However, it does not plead any specific facts related to an indirect infringement theory that would be asserted by TWW.
VII. Analyst’s Conclusion: Key Questions for the Case
The most significant development affecting this case occurred after its filing: the cancellation of the asserted claims by the USPTO. This procedural outcome supersedes the original technical and legal disputes.
- A primary issue is one of mootness: Does the cancellation of all asserted claims of the ’394, ’950, and ’018 patents during inter partes review render this entire declaratory judgment action moot, as there is no longer a patent right to enforce or invalidate?
- A related question is one of justiciability: Given that the specific claims creating the "real and immediate controversy" at the time of filing (Compl. ¶¶ 25, 31, 37) have been invalidated by the USPTO, can any justiciable controversy be said to remain between the parties with respect to these patents?