Bloch v. Needi Safety Supply Corp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Dr. Stuart A. Bloch d/b/a Institute for Sexual Awareness (New Jersey)
  • Defendant: Needi Safety Supply Corp. (New Hampshire)
  • Plaintiff’s Counsel: Mandel & Peslak, LLC
• Case Identification: 3:07-cv-00651, D.N.J., 02/09/2007
• Venue Allegations: Plaintiff alleges venue is proper in the District of New Jersey based on the patent venue statute, supported by an allegation that a third-party reseller recently sold and shipped one of Defendant’s accused devices into New Jersey.
• Core Dispute: Plaintiff alleges that Defendant’s "Medical Exerciser Dilator 6.75”" product infringes a design patent for an "exerciser for orifice muscles."
• Technical Context: The technology resides in the field of personal wellness and medical devices, specifically concerning the ornamental design of an apparatus for exercising orifice muscles.
• Key Procedural History: The complaint does not mention any prior litigation, inter partes reviews, or licensing history related to the patent-in-suit. It does allege that Plaintiff sells a commercial embodiment of the patent under the trademark "Kegelcisor."

Case Timeline

Date	Event
1996-05-13	’852 Patent Priority Date
2002-11-19	’852 Patent Issue Date
2007-02-09	Complaint Filing Date

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

U.S. Design Patent No. D465,852 - Exerciser for Orifice Muscles

• Patent Identification: U.S. Design Patent No. D465,852, "Exerciser for Orifice Muscles," issued November 19, 2002.

The Invention Explained

• Problem Addressed: As a design patent, the ’852 Patent does not describe a technical problem in a background section. Its purpose is to protect the novel, non-functional, ornamental appearance of the article of manufacture shown in its drawings (’852 Patent, Claim).
• The Patented Solution: The patent protects the specific aesthetic and ornamental design of an exerciser. The design consists of a slender, wand-like body with a bulbous, spherical shape at each end (’852 Patent, FIG. 1, 2, 3). A prominent feature is a raised, rounded ring or bulge located centrally along the shaft, which may serve as a grip or a point of visual distinction (’852 Patent, FIG. 1). The overall impression is one of a symmetrical, smoothly contoured object (’852 Patent, Description).
• Technical Importance: The claimed design provides a unique visual appearance for a product in the personal wellness market, allowing for aesthetic differentiation from other products with similar functions.

Key Claims at a Glance

• Design patents contain a single claim. The asserted claim is: "The ornamental design for a exerciser for orifice muscles, as shown and described." (’852 Patent, Claim).
• The elements of the claim are the visual characteristics of the design as depicted in the patent's drawings, including:
  • The overall wand-like configuration.
  • The spherical shape of the top and bottom ends.
  • The specific proportions and curvature of the main shaft.
  • The presence and shape of the central raised ring.

III. The Accused Instrumentality

Product Identification

• The accused product is identified as the "Medical Exerciser Dilator 6.75”" offered for sale on Defendant’s website, www.needi-supply.com (Compl. ¶7, ¶8).

Functionality and Market Context

• The complaint does not describe the functionality or include any images of the accused product. Its name suggests a function related to medical exercise or dilation (Compl. ¶8).
• Plaintiff alleges the product is listed in Defendant's "Best Sellers" category, suggesting a degree of commercial significance (Compl. ¶8).

IV. Analysis of Infringement Allegations

The complaint alleges that the "Medical Exerciser Dilator 6.75” infringes the ’852 Patent but does not provide a claim chart, a side-by-side visual comparison, or any specific factual allegations detailing how the accused product’s design is substantially similar to the patented design (Compl. ¶11, ¶14). The patent's overall design is depicted in a front elevational view in Figure 1 of the patent (’852 Patent, FIG. 1). Without a visual representation of the accused product, a detailed infringement analysis or claim chart summary is not possible based on the complaint alone.

Identified Points of Contention

• Factual Basis: A primary threshold question will be whether the complaint’s conclusory allegation of infringement, absent any visual or descriptive comparison between the accused product and the patented design, meets the plausibility standard for pleading established by Twombly and Iqbal.
• Visual Comparison: The central question on the merits, once the appearance of the accused product is established, will be whether an "ordinary observer," familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented design. This analysis will involve a side-by-side comparison of the overall ornamental appearance of the two designs.

V. Key Claim Terms for Construction

In design patent litigation, there are typically no claim terms to construe in the same manner as in utility patent cases. The "claim" is the design itself, as depicted in the drawings. The analysis focuses on the scope of the claimed design as a whole, rather than the definition of specific words.

• The Term: "The ornamental design ... as shown and described."
• Context and Importance: The scope of the design patent is critical. The analysis will distinguish between the protected ornamental features and any underlying functional aspects of the device. Practitioners may focus on this distinction because functional elements are not protected by a design patent and should be factored out of the infringement analysis. The determination of what is ornamental versus functional will define the scope of protection and be dispositive for infringement.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent claims the "design for a exerciser for orifice muscles" generally, which could suggest the design is not limited to a single, specific use. The clean, abstract lines in the drawings could be argued to cover designs with slight variations in proportion as long as the overall visual impression is the same.
  • Evidence for a Narrower Interpretation: The drawings provide a very specific and detailed visual representation of the design, including the particular curvature of the shaft and the shape of the central ring (’852 Patent, FIG. 1). A court may construe the claim as being limited to designs that are very close to what is explicitly depicted. The title, "Exerciser for orifice muscles," could be used to argue that any features dictated solely by that function are not part of the protected ornamental design.

VI. Other Allegations

• Indirect Infringement: The complaint does not allege indirect infringement.
• Willful Infringement: The complaint alleges that Defendant’s infringement "has been and continues to be willful, wanton and with the full knowledge of Plaintiffs' patent rights" (Compl. ¶16). This allegation may be supported by the assertion that Defendant "indicated to JT's Stockroom that it was selling Plaintiffs' Kegelcisor™ device," which is the trademark under which Plaintiff sells its own patented product (Compl. ¶9). This suggests Defendant may have had knowledge of Plaintiff's product and, by extension, its patent rights.

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

1. Pleading Sufficiency: A threshold issue for the court will be one of factual sufficiency: does the complaint, which provides no visual or descriptive details of the accused product, allege sufficient facts to state a plausible claim for design patent infringement?

2. Infringement and Scope: The central merits dispute will be a question of visual identity: is the ornamental design of the accused "Medical Exerciser Dilator 6.75”" substantially the same as the design claimed in the '852 Patent from the perspective of an ordinary observer? This will require the court to determine the scope of the claimed design, separating ornamental from potentially functional features.

3. Willfulness: A key evidentiary question will be one of knowledge and intent: does the allegation that Defendant represented its product as being Plaintiff’s "Kegelcisor™" product provide a sufficient factual basis to prove that Defendant knew of the '852 Patent and willfully disregarded Plaintiff's rights?