DCT

3:10-cv-00461

Institute for Sexual Awareness Research and Education v. BIOCOMMERCE, INC.

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I. Executive Summary and Procedural Information

Case Timeline

Date Event
1996-05-13 Priority Date (D'852 Patent)
2002-11-19 Issue Date (U.S. Patent No. D465,852)
2009-06-28 Earliest Alleged Infringing Sale Date Mentioned
2009-12-10 Plaintiffs Allegedly Sent Notice Letters to Defendants
2010-06-29 U.S. Trademark Registration for "KEGELCISOR" Issued
2010-08-31 First Amended Complaint Filed

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; it protects the novel, non-obvious, and ornamental appearance of an article of manufacture (D'852 Patent, Claim). The title indicates the article is an "Exerciser for Orifice Muscles" (D'852 Patent, (54)).
  • The Patented Solution: The patent protects the specific visual design shown in its figures (D'852 Patent, FIGS. 1-3). The design consists of an elongated shaft with a smaller, bulbous sphere at one end and a larger, bulbous sphere at the other. The central portion of the shaft between the two ends features a distinct, raised bulbous ring (D'852 Patent, FIG. 1). The design is purely ornamental, and its protection is separate from any utilitarian function the device may have (D'852 Patent, Claim).
  • Technical Importance: The complaint alleges that the design, through years of use and promotion, has acquired distinctiveness and goodwill as an indicator of source for Plaintiffs' products (Compl. ¶126).

Key Claims at a Glance

  • The patent asserts a single claim for "The ornamental design for a exerciser for orifice muscles, as shown and described" (D'852 Patent, Claim).
  • The scope of a design patent claim is defined by its drawings. The key visual elements are:
    • The overall "barbell" or "wand" configuration.
    • The presence of two spherical or bulbous ends of differing sizes.
    • A shaft connecting the ends.
    • A raised, bulbous ring located on the shaft between the two ends.

III. The Accused Instrumentality

Product Identification

  • The complaint accuses a wide range of products sold by the various defendants, including the "Steel Kegel Barbell," "Kegel Muscle Strengthener," "Kegelcisor," "Stainless Probe," and "Deluxe Chrome Wand Kegel Exerciser" (Compl. ¶¶ 30, 32, 33, 35, 36).

Functionality and Market Context

  • The complaint alleges these are "exercise device[s] for orifice muscles" or "functionally similar products" (Compl. ¶¶ 46, 52). They are allegedly sold through Defendants' individual websites and on large electronic marketplaces such as Amazon.com and eBay (Compl. ¶¶ 32, 33, 37). The complaint asserts that these products embody the design protected by the '852 patent (Compl. ¶¶ 45, 51, 57).

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

The core of a design patent infringement analysis is the "ordinary observer" test, which assesses whether an ordinary observer would find the design of the accused product to be substantially the same as the design claimed in the patent. The complaint alleges infringement through narrative pleading rather than with a comparative visual chart.

D'852 Patent Infringement Allegations

Claim Element (from Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
The ornamental design for a exerciser for orifice muscles, as shown and described. The overall aesthetic appearance and non-functional design of Defendants' various "Barbell," "Kegel Strengthener," and "Stainless Probe" products, which allegedly embody the patented design or a colorable imitation thereof. ¶45, ¶51, ¶57, ¶63, ¶69 Claim 1; FIGS. 1-3
  • Identified Points of Contention:
    • Scope Questions: The central issue will be whether the specific designs of the numerous accused products are "substantially the same" as the design depicted in the '852 patent's figures. This comparison must be made from the perspective of an ordinary observer familiar with the prior art in the field of such exercise devices.
    • Evidentiary Questions: A threshold question for the court will be one of evidence. Since the complaint does not include any images of the accused products, the visual comparison that is dispositive in a design patent case cannot be performed based on the complaint alone. The case will depend heavily on the visual evidence of the accused products that is introduced during discovery.

V. Key Claim Terms for Construction

The complaint does not provide sufficient detail for analysis of specific claim terms. In design patent litigation, claim construction is generally not a central area of dispute. The claim is understood to cover the ornamental design as a whole, as depicted in the patent's drawings. The dispute will likely focus on the application of the "ordinary observer" test to the accused products rather than the construction of any particular word or phrase in the claim or title.

VI. Other Allegations

  • Indirect Infringement: The complaint includes boilerplate allegations of contributory and induced infringement against all defendants (e.g., Compl. ¶44, ¶50, ¶56). The prayer for relief seeks to enjoin defendants from "assisting or inducing others" to infringe (e.g., Prayer ¶1.b). The complaint does not, however, plead specific facts detailing how any particular defendant knowingly encouraged or aided a third party's direct infringement.
  • Willful Infringement: The complaint alleges that all defendants have willfully infringed and will continue to do so (e.g., Compl. ¶48, ¶54, ¶60). The factual basis for this allegation is a series of notification letters Plaintiffs allegedly sent to the defendants on or around December 10, 2009, which purportedly gave the defendants pre-suit knowledge of the '852 patent and their alleged infringement (Compl. ¶¶ 30-41).

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

  • A primary question will be one of visual identity: Do the numerous accused products, once visual evidence is produced, possess an ornamental design that is "substantially the same" as the specific design shown in the '852 patent? The outcome of the patent claim will hinge entirely on this visual comparison.
  • A second key issue will be the interplay between patent and trademark law: Plaintiffs assert both design patent infringement and trade dress infringement based on the same product design. This raises complex questions regarding the potential for double recovery and whether the design has acquired the secondary meaning required for trade dress protection, in addition to meeting the novelty and non-obviousness standards for patentability.
  • Finally, a critical question for damages will be one of willfulness: Did the notice letters allegedly sent by Plaintiffs in 2009 provide actual notice to the defendants, and did any subsequent infringing activity constitute willful conduct sufficient to support an award of enhanced damages under 35 U.S.C. § 284?