DCT

1:20-cv-00418

Sylo Supply Inc v. Starlux Games LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:20-cv-00418, E.D.N.Y., 04/03/2020
  • Venue Allegations: Venue is alleged to be proper because Plaintiffs reside in the district, both parties transact business there, and Defendant directed enforcement activities (cease-and-desist letters) into the district.
  • Core Dispute: Plaintiffs seek a declaratory judgment that their "Light-up Capture the Flag Game" does not infringe and that U.S. Patent No. 10,441,875 is invalid, and also bring a claim for tortious interference based on Defendant’s enforcement actions.
  • Technical Context: The technology concerns physical game kits using light-emitting diodes (LEDs) to adapt traditional outdoor games, like "capture the flag," for play in low-light or nighttime conditions.
  • Key Procedural History: Plaintiffs allege that Defendant sent multiple cease-and-desist letters, filed complaints with Amazon.com to have Plaintiffs’ product delisted, and refused to provide claim charts upon request. Plaintiffs also note that Defendant filed continuation applications with claims allegedly drafted to cure the divided infringement issues present in the asserted patent, which Plaintiffs characterize as evidence of bad faith.

Case Timeline

Date Event
2015-10-29 ’875 Patent Priority Date
2019-10-15 ’875 Patent Issue Date
2019-12-16 Defendant sends first cease-and-desist letter to Plaintiffs
2019-12-23 Defendant sends second cease-and-desist letter to Plaintiffs
2020-01-08 Defendant sends third cease-and-desist letter to Plaintiffs
2020-01-15 Defendant sends fourth cease-and-desist letter to Plaintiffs
2020-04-03 Amended Complaint Filing Date

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

U.S. Patent No. 10,441,875 - “Low Light Game System and Method”

  • Patent Identification: U.S. Patent No. 10,441,875, “Low Light Game System and Method,” issued October 15, 2019.

The Invention Explained

  • Problem Addressed: The patent background describes that while many multiplayer games are enjoyed in well-lit environments, “unique issues can arise when these games are attempted in low-light conditions,” which can create “difficulties and inherent limitations” ( ’875 Patent, col. 2:14-17).
  • The Patented Solution: The invention is a “kit of parts” designed to facilitate playing capture the flag in the dark ( ’875 Patent, Abstract). The kit includes game pieces such as flags, territory markers, and jail markers, all of which are equipped with LEDs to provide a visual signal ( ’875 Patent, col. 3:41-44, col. 4:3-8). These illuminated components allow players to define a game field, identify teams, and locate objectives in a low-light environment ( ’875 Patent, col. 3:30-37).
  • Technical Importance: The invention aims to overcome visibility limitations in nighttime gameplay by using portable, battery-powered light sources on game equipment, thereby creating a "futuristic nighttime adventure" from a traditional game (Compl. ¶15).

Key Claims at a Glance

  • The complaint indicates Defendant asserted independent claims 1, 8, and 17 (Compl. ¶45).
  • Independent Claim 1 recites a method with the following essential elements:
    • providing a kit of parts including LED-equipped flags, territory markers, and jail markers;
    • dividing at least two players into at least two teams;
    • assigning one of the flags to each team, with each flag having a different LED color;
    • distributing the territory markers to define a game play territory area for each team;
    • distributing the jail markers to define a game play jail area for each team; and
    • placing the flags within a corresponding team's territory area.
  • The complaint notes that dependent claims 2-7, 9-16, and 18-20 are also at issue (Compl. ¶104).

III. The Accused Instrumentality

Product Identification

The accused instrumentality is Plaintiffs' "Light-up Capture the Flag Game Illuminated," also sold under the brand name "Squad Hero" (Compl. ¶19).

Functionality and Market Context

The product is a game kit sold by Plaintiffs, who are online retailers (Compl. ¶19, ¶25). The complaint includes a screenshot of the product listing on Amazon.com, which depicts a game set containing various illuminated items for nighttime play (Compl. Ex. C). The complaint alleges that Defendant has filed multiple complaints with Amazon.com based on this product, resulting in the removal of the sales listing (Compl. ¶20, ¶42, ¶70).

IV. Analysis of Infringement Allegations

This is a declaratory judgment action for non-infringement. The analysis below summarizes Plaintiffs’ arguments for why they do not infringe the patent. The complaint does not contain a formal claim chart, but makes specific non-infringement arguments by claim element.

’875 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Non-Infringing Functionality Complaint Citation Patent Citation
dividing the at least two players into the at least two teams... Plaintiffs, as sellers of the Accused Product, do not perform this step. This step is performed, if at all, by the end-users of the game. ¶24; ¶100 col. 10:22-24
assigning one of the flags to each team... Plaintiffs do not perform this step; it is performed by the end-users. ¶24; ¶100 col. 10:25-27
distributing the territory markers to define a game play territory area... Plaintiffs do not perform this step; it is performed by the end-users. ¶24; ¶100 col. 10:28-30
distributing the jail markers to define a game play jail area... Plaintiffs do not perform this step; it is performed by the end-users. ¶24; ¶100 col. 10:31-34
placing the flags within a corresponding team's territory area. Plaintiffs, as online retailers, do not physically place the flags to establish game play. This step is performed by the end-users at their discretion. ¶25; ¶100 col. 10:35-37

Identified Points of Contention

  • Scope Questions (Divided Infringement): The central dispute is whether Plaintiffs, as sellers of a game kit, can be liable for directly infringing a method claim whose steps (e.g., "dividing players," "placing the flags") are performed by the end-user. The complaint argues that the actions of the game players cannot be attributed to the seller (Compl. ¶26-27). This raises the legal question of "direction or control" required to prove infringement by multiple actors.
  • Technical Questions (Claim Indefiniteness): Plaintiffs allege that the claims are invalid as indefinite because they improperly mix two statutory classes of invention: a system (the "kit of parts") and a method of using that system (the "dividing," "assigning," and "placing" steps) (Compl. ¶90-91). This raises the question of whether it is clear if infringement occurs when the kit is sold, or only when the game is actually played according to the claimed rules (Compl. ¶94).

V. Key Claim Terms for Construction

  • The Term: "placing the flags"
  • Context and Importance: This term is critical to the divided infringement defense. Plaintiffs argue that they, as a remote online seller, cannot physically perform the step of "placing the flags" on a game field (Compl. ¶25). The construction of this term will determine whether this claim limitation requires a physical action by the party setting up the game, an act Plaintiffs allege only the end-user can perform.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent claims a "method of establishing game play" ( ’875 Patent, col. 10:1-3). An argument could be made that this encompasses the entire commercial act of making the game playable, from providing the kit to its ultimate use.
    • Evidence for a Narrower Interpretation: The specification provides concrete physical examples of this step, such as "placing the flag on a chair in an open gymnasium or in a tree in an outdoor playing environment" or on "grass, dirt or pavement" ( ’875 Patent, col. 3:64-4:2). The complaint cites these examples to support the argument that "placing" is a discretionary physical act performed by game players in a specific location, not by a remote seller (Compl. ¶32-33).

VI. Other Allegations

  • Indirect Infringement: The complaint anticipates and refutes a potential allegation of indirect infringement by arguing that providing a user guide does not amount to inducing infringement, particularly because the patent specification itself describes numerous ways a flag can be placed "solely at the discretion and pleasure of the game players" (Compl. ¶32).
  • Willful Infringement: Plaintiffs do not allege willfulness against Defendant. Instead, they allege that Defendant has engaged in "bad faith" patent assertion (Compl. ¶24, ¶36). The factual basis for this allegation includes Defendant’s refusal to provide claim charts, its assertion of claims that are allegedly not infringed due to the divided infringement problem, and filing complaints with Amazon before contacting Plaintiffs (Compl. ¶42, ¶45, ¶51-53, ¶65).

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

  • A core issue will be one of divided infringement liability: Can the defendant, Starlux, demonstrate that the plaintiffs, as sellers of a game kit, direct or control the end-users’ performance of method steps like “dividing... players” and “placing the flags” to a degree sufficient to attribute the users' actions to the plaintiffs for a finding of direct infringement?
  • A central validity question will be one of claim indefiniteness: Does the recitation of both system elements ("providing a kit of parts") and active method steps ("placing the flags") within the same claim render the claim indefinite under 35 U.S.C. § 112 by failing to provide clear notice of when infringement occurs?
  • A further dispositive question may be one of patent eligibility: Are the claims directed to the abstract idea of rules for playing a game, and if so, do the claimed elements—LED-equipped versions of conventional game pieces—add a sufficient inventive concept to transform the idea into a patent-eligible application?