DCT

2:24-cv-09021

ND Products Inc v. Telebrands Corp

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:24-cv-09021, D.N.J., 09/09/2024
  • Venue Allegations: Venue is based on Defendant being a New Jersey corporation with its headquarters and principal place of business within the District of New Jersey.
  • Core Dispute: Plaintiff alleges that Defendant’s "Smart Swab" earwax removal products infringe a utility patent and a design patent covering the device's mechanical structure and ornamental appearance.
  • Technical Context: The technology relates to personal care devices for at-home earwax removal, a market segment where safety and efficacy are key consumer concerns.
  • Key Procedural History: The parties had a prior marketing and license agreement from 2015 to 2019, which covered the "Smart Swab" trademark and an earlier, now-expired design patent. Upon termination, Defendant was permitted to sell its remaining inventory. Plaintiff alleges it discovered new, unauthorized sales in late 2023. Plaintiff also notes prior successful litigation enforcing the utility patent-in-suit against other parties.

Case Timeline

Date Event
2015-06-12 Priority Date for '792 Patent and D'763 Patent
2015-10-22 Plaintiff and Defendant enter into marketing and license agreement
2016-09-07 D'763 Patent application filed
2019-08-10 Marketing and license agreement terminated
2019-11-12 D'763 Patent issued
2020-10-27 '792 Patent issued
2021-08-05 Defendant's counsel emails Plaintiff regarding remaining inventory
2023-08-03 Defendant's representative emails Plaintiff regarding last sale dates
2023-11-24 Plaintiff allegedly discovers new unauthorized sales via Walmart
2024-09-09 Complaint filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 10,813,792 - "System and Method for Removal of Earwax and Particulates," issued Oct. 27, 2020

The Invention Explained

  • Problem Addressed: The patent’s background section identifies the problem of cerumen impaction (earwax buildup), which can be exacerbated by conventional cotton swabs that push wax deeper into the ear canal, potentially causing blockage or injury (’792 Patent, col. 1:5-15).
  • The Patented Solution: The invention is an ear cleaning device featuring a disposable, soft, spirally-finned tip designed to "excavate and exfoliate earwax" by moving it outward with a spinning motion. A critical safety feature is a flared design or solid plate at the base of the tip, which functions as a stopper to prevent over-insertion and protect the eardrum (’792 Patent, Abstract; col. 3:11-17). The system also specifies a handle with a locking mechanism to releasably couple the disposable tip (’792 Patent, col. 3:18-27).
  • Technical Importance: The device aims to provide a safer method for at-home ear cleaning compared to traditional swabs by mechanically preventing the tip from reaching and potentially damaging the eardrum (’792 Patent, col. 3:13-17).

Key Claims at a Glance

  • The complaint asserts independent claim 1 and dependent claims 2-9 (Compl. ¶48).
  • Independent Claim 1 requires:
    • a spiral-shaped head;
    • a locking mechanism coupled to the head, which itself includes a center protrusion and a pair of longitudinally extending locking tabs;
    • a handle with a receiving portion configured to releasably couple with the locking mechanism; and
    • wherein the center protrusion includes a plurality of ribs.

U.S. Design Patent No. D866,763 - "Ear Cleaning Apparatus," issued Nov. 12, 2019

The Invention Explained

  • Problem Addressed: Not applicable for a design patent.
  • The Patented Solution: The patent protects the unique, non-functional, ornamental appearance of an ear cleaning apparatus as depicted in its seven figures (D’763 Patent, Figs. 1-7). The claimed design encompasses the overall visual impression created by the shape and contour of the handle combined with the specific aesthetic of the spiral-tipped head (D’763 Patent, "CLAIM," p. 80).
  • Technical Importance: Not applicable for a design patent.

Key Claims at a Glance

  • As with all design patents, there is a single claim for "The ornamental design for an ear cleaning apparatus, as shown and described" (D’763 Patent, p. 80). Infringement is determined by the "ordinary observer" test, which the complaint invokes (Compl. ¶¶60-61).

III. The Accused Instrumentality

Product Identification

  • The accused product is an earwax removal device marketed and sold by Defendant as "Smart Swab," which the complaint refers to as the "Counterfeit Product" (Compl. ¶¶6, 28-29).

Functionality and Market Context

  • The accused product is described as an earwax removal system comprising a handle and disposable soft tips, sold through retailers including Walmart (Compl. ¶¶6, 26, 28). The complaint includes a photograph of the accused product’s packaging, which shows a handle, 16 disposable tips, and a storage case (Compl. p. 6). Plaintiff alleges that Defendant is selling this product without a license and is falsely marking the packaging by referencing an expired patent and non-existent "other patents pending" (Compl. ¶¶29, 31).

IV. Analysis of Infringement Allegations

'792 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a spiral-shaped head The accused product includes a disposable tip with a soft, spiral-shaped head, as depicted in an annotated photograph. This photograph is provided as visual evidence in the complaint (Compl. p. 10). ¶44 col. 4:4-5
a locking mechanism coupled to the spiral-shaped head, the locking mechanism including a center protrusion and a pair of longitudinally extending locking tabs The accused product’s disposable tip is alleged to have an integral locking mechanism with a central protrusion and two opposing, longitudinally extending tabs that engage the handle, as shown in an annotated photograph (Compl. p. 10). ¶44 col. 4:16-18
a handle including a receiving portion configured to receive the locking mechanism to releasably couple the spiral-shaped head to the handle The accused product’s handle contains a shaped recess, or receiving portion, designed to accept and releasably secure the locking mechanism of the disposable tip, as depicted in an annotated photograph (Compl. p. 10). ¶44 col. 3:28-30
wherein the center protrusion includes a plurality of ribs The central protrusion on the accused tip’s locking mechanism is alleged to feature multiple ribs, which the complaint’s annotated photograph explicitly identifies (Compl. p. 10). ¶44 col. 5:27-29

Identified Points of Contention

  • Scope Questions: The dispute may center on the definition of claim terms. For example, a question for the court could be whether the structures identified as "ribs" on the accused product (Compl. p. 10) meet the functional and structural requirements of the term "plurality of ribs" as used in the patent, or if they are merely incidental manufacturing artifacts with no locking function.
  • Technical Questions: A key technical question will be whether the accused product's coupling mechanism functions as the "locking mechanism" claimed. The complaint alleges a direct mapping of parts (Compl. ¶44), but the defense may argue that the method of attachment or release in its product is fundamentally different from the "releasably couple" action required by the claim.

D'763 Patent Infringement Allegations

The complaint alleges that the ornamental design of the accused "Smart Swab" product is "substantially similar" to the design claimed in the D’763 Patent, to the point of being "nearly identical" (Compl. ¶59). The infringement theory rests on the "ordinary observer" test, arguing that a typical purchaser would be deceived into buying Defendant's product under the belief it was the patented design (Compl. ¶¶60-61). The complaint provides visual evidence comparing the patent figures to screenshots of the accused product, such as the advertisement showing a close-up of the product's tip and handle (Compl. p. 16).

Identified Points of Contention

  • The core question is one of visual perception: Are the differences between the accused product and the patented design significant enough to be apparent to an ordinary observer, or is the overall visual impression the same? Defendant may point to subtle differences in the handle's ergonomic contours or the precise geometry of the spiral fins, while Plaintiff will likely emphasize the identical overall look and feel, bolstered by the use of the same product name.

V. Key Claim Terms for Construction

"locking mechanism"

  • Context and Importance: This term is central to how the disposable tip and reusable handle connect. The claim requires specific sub-elements ("center protrusion," "locking tabs"). The construction of "locking mechanism" will define how these parts must interact to infringe.
  • Intrinsic Evidence for a Broader Interpretation: The specification describes multiple ways to connect the tip and handle, including a "tongue and groove" system (D'763 Patent, col. 5:40-42) and a "screw action" (D'763 Patent, col. 5:45-46), suggesting the inventors contemplated various forms of connection beyond a single embodiment.
  • Intrinsic Evidence for a Narrower Interpretation: Claim 1 itself narrows the term by requiring it to include a "center protrusion" and a "pair of longitudinally extending locking tabs." A defendant could argue that the term should be limited to the specific snap-fit structures shown in figures like 31B and 32E, which appear to be the primary embodiment for this claimed structure.

"plurality of ribs"

  • Context and Importance: This limitation on the "center protrusion" is a specific structural detail that Plaintiff explicitly identifies in the accused product (Compl. p. 10). Its construction will be critical, as it provides a clear point of comparison for infringement.
  • Intrinsic Evidence for a Broader Interpretation: The specification discloses that the locking function can be achieved with a "rib shape or tubs or multiple pins or array of small bars" (’792 Patent, col. 5:27-29). Plaintiff may argue this supports construing "ribs" broadly to encompass any series of small protrusions that contribute to the locking engagement.
  • Intrinsic Evidence for a Narrower Interpretation: A defendant may argue that "ribs" implies a more specific, ordered structure (e.g., parallel ridges) and that the features on its product are structurally distinct or have a different primary function, such as texturing for a friction fit rather than positive locking.

VI. Other Allegations

Indirect Infringement

  • The complaint alleges active inducement of infringement for both patents, based on Defendant manufacturing and selling the product to distributors and the public with the knowledge that its intended use (as shown on packaging) would constitute infringement (Compl. ¶¶50, 64).

Willful Infringement

  • Willfulness is alleged for both patents. The complaint claims Defendant had "actual knowledge" of the patents since their issuance and acted with "willful blindness" (Compl. ¶¶49, 51, 63, 65). This allegation is supported by the parties' prior licensing relationship, suggesting Defendant was highly aware of Plaintiff's intellectual property in this product space (Compl. ¶21).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of technical and structural correspondence: Do the specific features of the accused product's tip-to-handle connection, particularly the structures alleged to be a "center protrusion" with a "plurality of ribs," fall within the scope of those terms as they will be construed by the court, or can Defendant establish a non-infringing structural or functional distinction?
  • A second central question will be one of visual identity for the design patent: Will an ordinary observer, taking into account the overall appearance of the accused product and the identical "Smart Swab" branding, be deceived into thinking the accused product is the same as the one pictured in the D'763 patent, or are the ornamental differences legally significant?
  • Finally, the case may turn on a question of intent and history: Given the prior licensing agreement, what evidence exists regarding Defendant's knowledge of the patents-in-suit? Can Plaintiff demonstrate that Defendant's recent sales constitute objective recklessness sufficient for a finding of willful infringement, or will the facts suggest the conduct was not willful?