Green Pet Shop Enterprises LLC v. Imagestore US Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: The Green Pet Shop Enterprises, LLC (Illinois)
  • Defendant: Imagestore US Inc. (New York)
  • Plaintiff’s Counsel: CARLSON, GASKEY & OLDS, P.C.
• Case Identification: 1:20-cv-02558, E.D.N.Y., 06/09/2020
• Venue Allegations: Venue is asserted on the basis that Defendant is incorporated in the State of New York.
• Core Dispute: Plaintiff alleges that Defendant’s self-cooling pet mat infringes patents related to a pressure-activated, recharging cooling platform technology.
• Technical Context: The technology at issue addresses the market for pet comfort products, specifically non-electric, portable cooling pads that activate under a pet's weight.
• Key Procedural History: The complaint notes that the patents-in-suit were previously the subject of litigation against a third party, Maze Innovations, Inc. In that prior case, the USPTO reportedly declined to institute an inter partes review (IPR) of the patents. Further, the court in that matter is said to have issued a claim construction order adopting the Plaintiff's proposed definitions, after which the case settled with an admission of validity and infringement. Plaintiff alleges it notified the current Defendant of this litigation history prior to filing this suit.

Case Timeline

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

U.S. Patent No. 8,720,218 - "Pressure Activated Recharging Cooling Platform"

• Patent Identification: U.S. Patent No. 8,720,218, "Pressure Activated Recharging Cooling Platform," issued May 13, 2014. (Compl. ¶7).

The Invention Explained

• Problem Addressed: The patent describes conventional pet cooling beds as suffering from two primary drawbacks: those that are electrically powered are not portable and are subject to power failure, while those using replaceable ice packs are inconvenient and require ongoing replacement. (’218 Patent, col. 1:11-28).
• The Patented Solution: The invention is a multi-layer platform comprising a "temperature regulation layer" containing a special chemical composition, a "support layer" made of a material like foam, and a "channeled covering layer." (’218 Patent, col. 2:13-16). The composition is designed to trigger an endothermic (cooling) reaction when pressure is applied (e.g., by a pet lying down) and to "recharge" when the pressure is released, reversing the reaction without external energy input. (’218 Patent, col. 3:17-24).
• Technical Importance: The technology aims to provide a low-cost, portable, and "eco-friendly" cooling solution that is reusable and does not require electricity or consumable components like ice. (’218 Patent, col. 5:13-18).

Key Claims at a Glance

• The complaint asserts independent claims 15, 16, 18, and 19. (Compl. ¶14).
• Independent Claim 15, for example, requires:
  • A temperature regulation layer having an angled segment formed by a top side and a bottom side at a predefined distance, and channels.
  • A pressure activated recharging cooling composition within the layer that is endothermically activated by the application of pressure and endothermically deactivated by the release of pressure.
• The complaint does not assert any dependent claims but may reserve the right to do so.

U.S. Patent No. 9,226,474 - "Pressure Activated Recharging Cooling Platform"

• Patent Identification: U.S. Patent No. 9,226,474, "Pressure Activated Recharging Cooling Platform," issued January 5, 2016. (Compl. ¶10).

The Invention Explained

• Problem Addressed: As a continuation of the ’218 Patent, the ’474 Patent addresses the same limitations of existing electric or ice-based cooling systems. (’474 Patent, col. 1:21-39).
• The Patented Solution: The invention is structurally similar to that of the parent patent, describing a platform with a pressure-activated cooling composition. However, the claims introduce different structural configurations. For instance, asserted claim 1 requires a support layer located within the temperature regulation layer, with the cooling composition being "absorbed within the support layer," suggesting a different physical relationship between the components compared to the parent patent. (’474 Patent, col. 6:6-10).
• Technical Importance: The invention provides alternative embodiments and claim scope for a self-recharging, portable cooling platform technology. (’474 Patent, col. 5:19-30).

Key Claims at a Glance

• The complaint asserts independent claims 1, 11, 16, 17, 18, 19, 20, and 21. (Compl. ¶14).
• Independent Claim 1, for example, requires:
  • A temperature regulation layer with a plurality of angled segments and channels.
  • A pressure activated recharging cooling composition within the layer.
  • A support layer (comprised of an elastic material) located within the temperature regulation layer, where the cooling composition is "absorbed within the support layer."
• The complaint also asserts dependent claims 4 and 5.

III. The Accused Instrumentality

Product Identification

• The "Ownpets Pet Self Cooling Gel Pad Cooling Mat." (Compl. ¶13).

Functionality and Market Context

• The complaint identifies the accused instrumentality as a "pet bed" and a "cooling pad for pets." (Compl. ¶13, ¶18). It is marketed as a "Self Cooling Gel Pad Cooling Mat," which suggests it operates without external power. (Compl. ¶13). The complaint does not provide further technical details on the product's specific construction, materials, or mechanism of action. No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint alleges infringement but does not provide a detailed mapping of accused product features to claim elements. The following summary is based on the general allegations.

’218 Patent Infringement Allegations

• Identified Points of Contention:
  • Technical Question: A central issue will be whether the gel in the accused product functions via a reversible endothermic reaction that qualifies as "recharging," or if it cools through simple heat dissipation. The complaint does not provide evidence to resolve this.
  • Scope Question: The analysis will depend on whether the accused "Gel Pad" has the specific physical structure of "angled segments" and "channels" as defined in the patent.

’474 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Question: A critical dispute may arise over the term "absorbed within the support layer." The court will need to determine if the accused product's construction meets this specific limitation, which distinguishes it from merely containing a gel within an outer envelope.
  • Technical Question: It raises the factual question of whether the accused product contains a distinct "support layer" (e.g., a foam matrix) in addition to the gel and an outer covering.

V. Key Claim Terms for Construction

• The Term: "pressure activated recharging cooling composition"

• Context and Importance: This term is the technological core of both asserted patents. The outcome of the infringement analysis largely depends on whether the accused product's gel falls within the scope of this definition, particularly the "recharging" capability.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification describes the "recharge" function in broad terms as a "reverse of the initial reaction" consistent with "Le Chatelier's principle" that occurs upon "absence of pressure," which could support a functional definition not tied to a specific chemical formula. (’218 Patent, col. 3:21-25).
  • Evidence for a Narrower Interpretation: The specification discloses a specific chemical embodiment for the composition: "thirty percent carboxmethyl cellulose; twenty percent water; thirty-five percent polyacrylamide; and at least fifteen percent alginic acid." (’218 Patent, col. 3:26-29). A party could argue the claims should be construed as limited to this or chemically analogous compositions.

• The Term: "absorbed within the support layer" (’474 Patent, Claim 1)

• Context and Importance: This limitation is unique to certain claims in the ’474 Patent and creates a key distinction from the parent ’218 Patent. Infringement of claim 1 hinges on the physical relationship between the cooling gel and the internal structure of the accused mat.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The term could be interpreted to mean the cooling composition is held within the pores or interstitial spaces of a support material, such as a foam, similar to water in a sponge. The specification’s description of the support layer as potentially being foam could support this reading. (’218 Patent, col. 2:57-62, incorporated by reference).
  • Evidence for a Narrower Interpretation: A party could argue that "absorbed" implies a more specific physical or chemical process of being taken up by the material of the support layer itself, rather than simply being physically contained within its voids.

VI. Other Allegations

• Indirect Infringement: The complaint makes a bare allegation of induced infringement under 35 U.S.C. § 271(b) but does not plead specific facts to support it, such as by referencing instructional materials or other evidence of intent. (Compl. ¶24, ¶29).
• Willful Infringement: The complaint alleges willfulness based on pre-suit notice provided to the Defendant on two separate dates. (Compl. ¶15). The willfulness claim is further bolstered by the allegation that Plaintiff specifically informed Defendant of prior successful litigation involving the same patents, including a favorable claim construction ruling and a rejected IPR petition, before Defendant allegedly continued its infringing conduct. (Compl. ¶16, ¶22, ¶25, ¶30).

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

1. A Threshold Technical Question: Does the accused "Self Cooling Gel Pad" operate via a reversible, pressure-activated endothermic reaction that constitutes "recharging" as required by the patents, or does it achieve cooling through a different physical mechanism, such as passive heat conduction? The answer to this factual question, which will require expert and discovery evidence, is fundamental to the infringement analysis.

2. A Critical Claim Construction Issue: How will the court define "pressure activated recharging cooling composition"? The case may turn on whether this term is given a broad, functional definition or is construed more narrowly, potentially tied to the specific chemical formulation disclosed in the patent specification.

3. A Structural Infringement Question: Specific to the ’474 Patent, does the accused product contain a distinct "support layer" that "absorbs" the cooling composition, or is the gel simply enclosed within a sealed pouch? Proving this specific structural arrangement as claimed will be a key evidentiary burden for the Plaintiff.