Ultramax Products Ltd v. Mitchell

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Ultramax Products Ltd. (United Kingdom)
  • Defendant: Anthony Michael Mitchell (Nevada)
  • Plaintiff’s Counsel: Bayramoglu Law Offices LLC
• Case Identification: 2:18-cv-01862, D. Nev., 12/27/2018
• Venue Allegations: Venue is asserted based on the Defendant's residence in the District of Nevada and a substantial portion of the events giving rise to the claims allegedly occurring within the district.
• Core Dispute: Plaintiff alleges that Defendant’s sale of counterfeit water-based penis pumps infringes two U.S. patents related to the design and operation of such devices.
• Technical Context: The technology is in the field of vacuum-assisted erection devices, specifically those designed for use with an incompressible fluid like water rather than air.
• Key Procedural History: Plaintiff alleges it sent a cease and desist letter to the Defendant on May 29, 2018, putting Defendant on notice of the patents-in-suit. The complaint alleges that infringement continued after this date.

Case Timeline

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

U.S. Patent No. 7,651,463 - "PUMP," issued January 26, 2010

The Invention Explained

• Problem Addressed: The patent’s background section states that erections produced by conventional pumps are often not "very long lived and not of adequate erectness" (’463 Patent, col. 2:36-39).
• The Patented Solution: The invention is a pump specifically "adapted for use under water" (’463 Patent, Abstract). By using an incompressible fluid (water), compressing a gaiter on the pump expels the fluid through a non-return valve. The restoring force of the gaiter then creates a vacuum that, because the water cannot expand, forces the penis to engorge with blood to fill the volume, which is alleged to create a stronger erection. (’463 Patent, col. 6:11-25).
• Technical Importance: This approach uses the incompressibility of a liquid to create negative pressure, a different physical principle from conventional air-based vacuum pumps. (’463 Patent, col. 6:11-18).

Key Claims at a Glance

• The complaint asserts independent claim 1 (Compl. ¶44).
• The essential elements of independent claim 1 include:
  • A pump comprising a chamber adapted to receive a penis,
  • a non-return valve,
  • pumping means operable to pump fluid from the chamber, and
  • sealing means operable to seal the pump onto the body of a user, the sealing means comprising a cut away section on a face thereof, which seals against the body of a user, when in use.
• The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 9,474,643 - "PUMPS," issued October 25, 2016

The Invention Explained

• Problem Addressed: The patent seeks to "improve the functionality and usability of hitherto known pumps," noting that prior art liquid-based pumps require fine pressure control to avoid health risks (’643 Patent, col. 2:37-43).
• The Patented Solution: This patent discloses improvements to the basic water pump design, most notably by adding an "internal membrane" or liner that is secured over the inner side of the pump's "compressible gaiter." This liner is intended to provide a "substantially smooth surface inside the gaiter," which can enhance comfort and hygiene. (’643 Patent, Abstract; col. 6:44-50).
• Technical Importance: The invention represents an incremental improvement focused on user experience, comfort, and safety features for water-based erection pumps. (’643 Patent, col. 6:44-50).

Key Claims at a Glance

• The complaint asserts independent claim 1 (Compl. ¶44).
• The essential elements of independent claim 1 include:
  • A pump comprising a chamber adapted to receive a penis,
  • a non-return valve, and
  • pumping means operable to pump fluid from the chamber,
  • wherein the pumping means comprises a compressible gaiter,
  • wherein the pumping means further comprises an internal membrane that is secured over an inner side of the gaiter and is operable to provide a substantially smooth surface inside the gaiter.
• The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are "counterfeited penis pumps" allegedly sold by the Defendant through at least two websites, https://officiallyhydromaxpump.com/ and https://hydromaxdirect.com/ (Compl. ¶12).

Functionality and Market Context

The complaint alleges these products are "made to resemble genuine UMP Pumps" and are marketed using Plaintiff's tradenames like "Hydromax" (Compl. ¶12). A screenshot from an accused website shows products for sale such as "Hydromax X20" and "Hydromax X30 Xtreme Kit" (Compl. p. 5). The complaint alleges that Defendant's website falsely claims to be an "Official Supplier of Original Bathmate Pumps," creating confusion with Plaintiff's authentic products (Compl. ¶15). A provided screenshot from an accused website shows various pump products available for purchase. (Compl. p. 5, fig. "Pumps").

IV. Analysis of Infringement Allegations

The complaint makes general allegations of infringement without providing a detailed claim chart. The following tables synthesize the allegations based on the asserted claims and the description of the accused products.

’463 Patent Infringement Allegations

’643 Patent Infringement Allegations

Identified Points of Contention

• Technical Questions: A primary factual question for the ’643 Patent is whether the accused products actually contain an "internal membrane that is secured over an inner side of the gaiter." The complaint's allegations on this internal feature are conclusory and not supported by visual or descriptive evidence.
• Scope Questions: For the ’463 Patent, a key question will be whether the accused product's sealing mechanism includes a "cut away section" as required by claim 1. The resolution may depend on both the physical structure of the accused device and the court's construction of that claim term.

V. Key Claim Terms for Construction

Term: "cut away section" (’463 Patent, Claim 1)

• Context and Importance: This term defines a specific feature of the sealing means. Infringement of claim 1 of the ’463 Patent will depend on whether the accused products are found to have a structure meeting this definition.
• Intrinsic Evidence for a Broader Interpretation: The claim language itself does not specify a particular shape or size for the "cut away section," which a plaintiff may argue covers any form of recess or indentation on the sealing face.
• Intrinsic Evidence for a Narrower Interpretation: The specification describes a specific embodiment as a "wedge shaped cut away section 213 to allow it to fit more comfortably on the body of a user," specifically "over the testicles" (’463 Patent, col. 6:50-54). A defendant may argue that the term should be limited to this disclosed shape and function.

Term: "internal membrane" (’643 Patent, Claim 1)

• Context and Importance: This feature appears to be a key point of novelty in the ’643 Patent. Whether the accused "counterfeit" products include this specific improvement will be critical to the infringement analysis for this patent.
• Intrinsic Evidence for a Broader Interpretation: The specification describes the feature as an "elastically deformable liner 122" that provides a "smooth inner surface" (’643 Patent, col. 6:44-47). Plaintiff may argue this covers any separate liner component that smooths the interior of the gaiter.
• Intrinsic Evidence for a Narrower Interpretation: The claim requires the membrane to be "secured over an inner side of the gaiter," and figures show it as a distinct component (e.g., item 122 in Fig. 5). A defendant could argue that a pump whose gaiter is simply molded with a smooth interior surface does not have a separate "internal membrane" that is "secured over" it.

VI. Other Allegations

Indirect Infringement

The complaint includes a count for inducement, alleging Defendant markets the counterfeit pumps through websites and has knowledge of the patents (Compl. ¶¶50-52). The basis for inducement appears to be the act of selling the products with the knowledge and intent that end-users will use them in their intended, infringing manner.

Willful Infringement

Willfulness is alleged based on Defendant’s continued infringement after receiving alleged actual knowledge of the patents via a cease and desist letter dated May 29, 2018 (Compl. ¶15, ¶45). The complaint also makes a conclusory allegation of knowledge "since before his first sale" (Compl. ¶51).

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

• A central evidentiary question will be one of component-level copying: do the accused "counterfeit" products replicate the claimed inventions in their entirety, or do they omit specific, potentially non-obvious features recited in the claims, such as the "internal membrane" of the ’643 patent or the "cut away section" of the ’463 patent? The resolution will require detailed product examination.
• A key legal question will be one of claim construction: how broadly will the court define the term "cut away section" in the ’463 patent? The outcome will determine whether a variety of sealing ring designs could infringe or if infringement is limited to products with a specific "wedge shaped" feature as described in the specification.
• The case may also turn on the veracity of the "counterfeit" allegation. If the products are shown to be near-identical copies of Plaintiff's commercial embodiments, the infringement analysis may be more direct. If they are merely functional alternatives, the dispute will focus more intensely on the specific language of the claims.