2:17-cv-07861
Horsemen's Pride Inc v. Ethical Products Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Horsemen's Pride, Inc. (Ohio)
- Defendant: Ethical Products, Inc. (New Jersey)
- Plaintiff’s Counsel: Flaster Greenberg, PC; Hahn Loeser & Parks LLP
- Case Identification: 2:17-cv-07861, D.N.J., 10/04/2017
- Venue Allegations: Venue is alleged to be proper in the District of New Jersey because the Defendant is incorporated in New Jersey, resides in the district, and has a regular and established place of business there.
- Core Dispute: Plaintiff alleges that Defendant’s "Stretch and Squeak" line of dog toys infringes a patent related to a tug toy with an integrated noise maker that activates when the toy is pulled.
- Technical Context: The dispute involves the market for pet toys, specifically those designed for interactive "tug-of-war" style play between a pet and its owner or another pet.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with notice of its provisional patent rights via a letter on March 7, 2017, before the patent issued. Following the patent's issuance, Plaintiff allegedly sent a second letter on July 5, 2017, providing actual notice of the issued patent and its alleged infringement. These notices form the basis for the willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 2010-03-01 | Earliest Priority Date for ’643 Patent |
| 2017-03-07 | Plaintiff sends pre-issuance notice letter to Defendant |
| 2017-06-20 | ’643 Patent Issued |
| 2017-07-05 | Plaintiff sends post-issuance notice letter to Defendant |
| 2017-10-04 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,681,643 - "Tug Toy," Issued June 20, 2017
The Invention Explained
- Problem Addressed: The patent's background section notes a lack of tug toys that are designed to emit a sound specifically when pulled by "at least two pets, or a pet and its owner" (’643 Patent, col. 1:26-31).
- The Patented Solution: The invention is a tug toy with at least one, and typically two, gripping members attached to a central portion that contains a noise maker, such as a squeaker. The key feature is that when a lateral pulling force is applied to the gripping members (as in a game of tug), this action is transmitted to the central portion, compressing the noise maker and causing it to emit a sound (’643 Patent, Abstract; col. 3:59-65). This creates an audible response directly linked to the tugging action.
- Technical Importance: The invention aims to enhance interactive play by providing immediate auditory feedback in response to the tugging action, which is distinct from conventional squeak toys that make noise when bitten or squeezed directly (’643 Patent, col. 1:22-31).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 12, as well as dependent claims 2-3, 6, 8-10, 13, and 15 (Compl. ¶19).
- Independent Claim 1 requires:
- at least one gripping member and a central portion
- wherein said at least one gripping member is attached to said central portion
- and wherein said central portion further includes a noise maker
- wherein said at least one gripping member is adapted to transmit force to said central portion
- and wherein said force comprises a first lateral force directed away from the central portion in the direction of a first gripping member
III. The Accused Instrumentality
Product Identification
The accused products are Defendant EPI’s SPOT® brand "Stretch and Squeak" dog toys (Compl. ¶11). The complaint provides photographs of several versions of the toy, including a raccoon, a lemur, and a snake (Compl. ¶12-14).
Functionality and Market Context
The complaint alleges these are dog toy products sold through Defendant’s website, retail stores, and online retailers (Compl. ¶10). Photographs show plush, animal-shaped toys with distinct end sections and a central body (Compl. ¶12). Additional photographs with the outer fabric pulled back reveal an internal, translucent, bellows-like structure alleged to be the noise maker (Compl. ¶12, p. 4). This photograph shows the internal bellows-like squeaker of the accused raccoon toy (Compl. ¶12). The complaint alleges that these products infringe by incorporating the patented tug-and-squeak functionality.
IV. Analysis of Infringement Allegations
’643 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A tug toy comprising: at least one gripping member and a central portion | The accused "Stretch and Squeak Products" are described as tug toys with at least one gripping member (e.g., the ends of the toy) and a central portion. The photographs depict toys with these features (Compl. ¶12-14). | ¶20 | col. 5:12-13 |
| wherein said at least one gripping member is attached to said central portion | The gripping members of the accused products are alleged to be attached to the central portion. The structure shown in photographs supports this physical arrangement (Compl. ¶12-14). | ¶20 | col. 5:15-16 |
| and wherein said central portion further includes a noise maker | The central portion of the accused products is alleged to include a noise maker. The complaint provides photographs of the internal bellows-like squeaker (Compl. ¶12, p. 4). | ¶20 | col. 5:17-18 |
| wherein said at least one gripping member is adapted to transmit force to said central portion | The complaint alleges the gripping member is adapted to transmit force to the central portion where the noise maker is located. | ¶20 | col. 5:19-20 |
| and wherein said force comprises a first lateral force directed away from the central portion in the direction of a first gripping member | The complaint alleges that a pulling force directed away from the central portion (i.e., tugging on the toy's ends) activates the noise maker, meeting this limitation. | ¶20 | col. 5:21-24 |
Identified Points of Contention
- Technical Question: A central factual question may be whether the accused products' bellows-like squeaker is actually activated by the "lateral force directed away from the central portion" (i.e., pulling) as claimed, or if it primarily functions as a conventional squeaker activated by direct compression (i.e., biting). The complaint alleges the former but does not provide documentary or visual evidence demonstrating this specific mechanism of action.
- Scope Question: The infringement analysis may turn on the construction of "adapted to transmit force." The question is whether the general fabric structure of the accused toy connecting the gripping ends to the central squeaker is sufficient to meet this limitation, or if the patent requires a more specific mechanism for force transmission, such as the straps disclosed in embodiments like Figure 4 (’643 Patent, Fig. 4; col. 3:35-40).
V. Key Claim Terms for Construction
- The Term: "adapted to transmit force"
- Context and Importance: This term is central to the infringement theory. Whether the accused product's structure is "adapted to" transmit the specific pulling force to the noise maker will be a key point of dispute. Practitioners may focus on this term because its construction will determine whether a simple, integrated fabric toy falls within the scope of a claim that could also be read to require a more purpose-built mechanical linkage.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself does not specify a particular structure, which may support a broad functional interpretation where any structure that achieves the result of transmitting force infringes.
- Evidence for a Narrower Interpretation: The specification discloses specific embodiments where "retainer[s] or strap[s]" (6, 7, 8) are used to encapsulate and compress the noise maker 9 when the toy is pulled (’643 Patent, col. 3:12-14, 3:59-65). A defendant may argue these embodiments limit the term to structures that are more than just the general fabric body of the toy.
VI. Other Allegations
Willful Infringement
The complaint alleges willful infringement based on Defendant having received actual notice of the patent and the infringement allegations. The claim for willfulness is supported by allegations of two specific notice letters: one sent pre-issuance on March 7, 2017, concerning provisional rights (Compl. ¶16), and a second sent post-issuance on July 5, 2017 (Compl. ¶17). The complaint alleges that Defendant continued to sell the accused products despite these notices (Compl. ¶17, ¶23).
VII. Analyst’s Conclusion: Key Questions for the Case
This case presents two central questions for the court:
A core issue will be one of functional operation: Does the accused "Stretch and Squeak" toy's bellows-like squeaker actually activate as a result of the lateral pulling force central to the patent's claims, or does it operate primarily as a conventional squeaker activated by direct compression? The plaintiff’s ability to prove the former mechanism of action will be critical.
A second key issue will be one of claim scope: How broadly should the term "adapted to transmit force" be construed? The court's decision on whether this term covers the simple, integrated fabric construction of the accused product or requires a more distinct structural linkage, as shown in the patent’s embodiments, will likely determine the outcome of the infringement analysis.