DCT

1:23-cv-05429

Sound Around Inc v. Global Proton LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-05429, E.D.N.Y., 07/18/2023
  • Venue Allegations: Venue is based on Plaintiff’s residence and business in the district, and the assertion that a substantial part of the events giving rise to the claims, including tortious injury, occurred there.
  • Core Dispute: Plaintiff seeks a declaratory judgment that its "SA Towel Warmers" do not infringe Defendant's patent and that the patent is invalid and unenforceable, following Defendant's infringement complaints to Amazon.
  • Technical Context: The lawsuit concerns the market for portable electric appliances designed to warm towels and other textiles using dry heat, a consumer product category sold on major e-commerce platforms.
  • Key Procedural History: The complaint alleges that the patent-in-suit, U.S. Patent No. 8,481,895, expired in July 2021 for failure to pay a maintenance fee. It further alleges that the prior owner, Heatwave, deliberately abandoned the patent, but was persuaded by Defendant Global-Proton to file a "fraudulent petition" in June 2023 to reinstate the patent by falsely claiming the abandonment was "unintentional." The patent was then transferred to Global-Proton, which began asserting it against the Plaintiff. This allegation of fraudulent reinstatement is central to the Plaintiff's invalidity and unenforceability claims.

Case Timeline

Date Event
2004-12-27 '895 Patent - Earliest Priority Date
2013-07-09 '895 Patent - Issue Date
2021-07-10 '895 Patent allegedly expired for non-payment of maintenance fee
2022-01-01 A different entity, Keenray, allegedly contacted Amazon about a design patent, initiating prior delisting issues for Plaintiff
2023-06-01 Petition to revive '895 Patent allegedly filed with PTO
2023-06-23 '895 Patent allegedly transferred from Heatwave, LLC to Global-Proton, LLC
2023-07-10 Amazon allegedly forwarded Global-Proton's infringement complaint to Plaintiff
2023-07-18 Complaint for Declaratory Judgment filed

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

U.S. Patent No. 8,481,895 - "Portable warming device and method for warming an article," issued July 9, 2013

The Invention Explained

  • Problem Addressed: The patent identifies the discomfort of using a room-temperature towel after a warm shower or bath ('895 Patent, col. 1:30-44). It notes that prior art towel warmers were often expensive, required invasive installation, were not portable, or took too long to heat a towel ('895 Patent, col. 2:6-16).
  • The Patented Solution: The invention is a self-contained, portable device that uses "dry heat," primarily via conduction, to warm articles like towels ('895 Patent, Abstract; col. 4:50-54). An embodiment described in detail is a bucket-style warmer with an inner and outer shell, where a heating element (e.g., a heating mat) is positioned between the shells to heat the inner shell, which in turn warms a towel placed inside the "warming cavity" ('895 Patent, FIG. 1; col. 29:60-67). A lid helps to "substantially encapsulate" the towel to retain heat ('895 Patent, cl. 1).
  • Technical Importance: The technology aimed to provide a lightweight, low-cost, and portable towel warming appliance that could be easily moved and used without permanent structural modifications to a room ('895 Patent, col. 2:17-20).

Key Claims at a Glance

The complaint seeks a declaration of non-infringement of the "'895 Patent" generally, alleging the accused products lack one or more elements of "each of the independent patent claims" (Compl. ¶46). It notes that Defendant Global-Proton has not yet identified which specific claims it asserts (Compl. ¶50). Independent Claim 1 is representative:

  • A portable textile warmer comprising:
    • a housing body having a bottom portion, a top portion, an inner shell, and a lid;
    • the inner shell having an inner surface that at least partially forms a warming cavity with a base wall and a side wall;
    • the lid being movable and, in a closed position, causing textiles in the warming cavity to be "substantially encapsulated";
    • a heating arrangement designed to dry heat the textiles, which includes a resistive heating element, a heating controller, a current connector, and an activation switch;
    • the resistive heating element is positioned "on an outer surface of said inner shell and about said side wall of said warming cavity."

III. The Accused Instrumentality

Product Identification

The complaint identifies the accused products as Plaintiff's "SA Towel Warmers" (Compl. ¶1), sold on Amazon under the "SereneLife" brand (Compl. ¶16). Specific Amazon Standard Identification Numbers (ASINs) are provided, including B09Y299Q8Q, B0B7TT5DQJ, and B0BM4Z7K8G (Compl. ¶¶ 22-23).

Functionality and Market Context

The products are described as "Bucket Towel Wamers" intended to warm towels, blankets, and bathrobes (Compl. ¶¶ 16, 22). Notices from Amazon reproduced in the complaint describe product features such as "Customized Fragrance for Spa and Bathroom," "Auto Shut off," and a "Single Touch" operation (Compl. ¶¶ 22-23). The complaint states these products enjoy "brisk sales" on the Amazon platform (Compl. ¶20).

IV. Analysis of Infringement Allegations

The complaint is for a declaratory judgment of non-infringement and does not set forth a detailed infringement theory to analyze. Instead, it makes the conclusory allegation that the "accused SA Towel Warmers are so constructed that they lack one more of each of the independent patent claims of the '895 Patent" (Compl. ¶46). The plaintiff further states that it will identify the specific non-infringed elements "once Global first identifies which patent claims it alleges are being infringed" (Compl. ¶50). Therefore, a detailed claim chart summary cannot be constructed from the pleading.

The complaint does provide visual evidence of Defendant Global-Proton's business activities. A screenshot from the defendant's website shows the '895 Patent advertised as its central asset, stating "Global Proton will be committed to the development of towel warmers" and warning "Please do not infringe this patent from other manufacturers" (Compl. ¶28). This visual supports the plaintiff's allegation that the defendant's business is centered on enforcing the patent rather than manufacturing products (Compl. ¶29).

  • Identified Points of Contention:
    • Scope Questions: The core infringement dispute, once claims are identified, will likely concern the scope of structural terms. For example, does the accused product's heating mechanism meet the specific locational requirement of being "on an outer surface of said inner shell and about said side wall" as recited in Claim 1?
    • Technical Questions: A central question will be whether the accused products are "so constructed that they lack" a claimed element. The complaint provides no specific evidence on this point, making it a primary factual issue for discovery. For instance, what is the precise structure and heating method of the "SA Towel Warmers," and how does it differ from the patented design?

V. Key Claim Terms for Construction

The complaint does not provide sufficient detail for analysis of specific claim term disputes. However, based on the technology and the language of representative Claim 1, the following terms may be central to the case.

  • The Term: "warming cavity"

    • Context and Importance: This term defines the space where the article is heated. Its construction is critical because it dictates the required structure of the infringing device. Practitioners may focus on this term to determine if it is limited to the specific bucket-like, lid-covered embodiment shown in the patent's figures or if it can read on other configurations.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The term itself is generic. The specification describes the cavity as being "partially" formed by the inner surface of the inner shell ('895 Patent, cl. 1), which may suggest it is not an all-encompassing, rigidly defined structure.
      • Evidence for a Narrower Interpretation: The detailed description and figures consistently depict the "warming cavity" as the interior of a bucket-style housing with a base, side walls, and a cooperating lid (e.g., '895 Patent, FIG. 1, 4). An argument could be made that the term is implicitly limited to this disclosed embodiment.

  • The Term: "substantially encapsulated"

    • Context and Importance: This term describes the function of the lid in the closed position. Its construction will be key to determining whether the accused product's lid, if any, performs the claimed function to the required degree. Terms of degree like "substantially" are frequently litigated.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The use of "substantially" implies that complete, hermetic sealing is not required. The purpose is to trap enough heat to warm the towel, suggesting a functional rather than a strictly structural definition.
      • Evidence for a Narrower Interpretation: The specification explains that encapsulation can "increase the rate at which the one or more articles are heated" ('895 Patent, col. 5:24-28). This functional language could be used to argue that if an accused device's lid does not achieve this purpose, it does not "substantially encapsulate."

VI. Other Allegations

The complaint does not allege indirect or willful infringement. Instead, it brings claims against the patentee for invalidity and business torts.

  • Invalidity and Unenforceability (Inequitable Conduct): The central allegation is that the '895 Patent is invalid and unenforceable because it was revived from an expired state through a "fraudulent petition" to the PTO (Compl. ¶¶ 36, 52). Plaintiff alleges the patent's prior owner, Heatwave, "consciously and deliberately opted not to pay" the maintenance fee, causing the patent to expire, and that the subsequent petition to revive it falsely characterized this abandonment as "unintentional" (Compl. ¶¶ 33, 37). This forms the basis for a claim of inequitable conduct.
  • Unfair Competition and Tortious Interference: Plaintiff alleges that Defendant's assertion of a patent it knew was invalid and fraudulently procured constitutes unfair competition under the Lanham Act and tortious interference with its business relationship with Amazon (Compl. ¶¶ 57, 66).

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

  1. A dispositive threshold issue will be one of patent validity: Is the '895 patent enforceable, or was it, as alleged, deliberately abandoned and then fraudulently reinstated? The case may turn on evidence of the patentee's intent at the time it failed to pay the maintenance fee.
  2. A second key issue will be one of infringement scope: Assuming the patent is found valid, does the specific construction of the accused "SA Towel Warmers" meet the precise structural and functional limitations of the asserted claims, particularly regarding the location of the heating element and the nature of the "warming cavity"?
  3. A final question will be one of bad faith assertion: Did the defendants' act of reporting infringement to Amazon, given the contested validity of the patent, constitute an act of unfair competition under the Lanham Act? This will depend on the court's findings regarding the defendants' knowledge and intent.