DCT

1:22-cv-06314

Melissa & Doug LLC v. Scholastic Corp

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:22-cv-06314, S.D.N.Y., 08/01/2023
  • Venue Allegations: Venue is alleged based on Defendants Scholastic and Klutz having a regular and established place of business in the district, and on Defendant Make Believe being subject to personal jurisdiction in the district through its own and affiliated actions.
  • Core Dispute: Plaintiff alleges that Defendants’ line of children’s board books, which feature push-button "popping" mechanisms, infringes a patent for interactive devices.
  • Technical Context: The technology relates to tactile and audible push-button mechanisms integrated into books or cards to make educational concepts, such as counting, more concrete and engaging for children.
  • Key Procedural History: This Amended Complaint was filed after the parties engaged in settlement negotiations that resulted in a court dismissal, which was subsequently reopened after the parties disputed the terms of the settlement. The complaint now includes alternative causes of action for enforcing the alleged settlement agreement. Plaintiff alleges it provided Defendants with notice of infringement via a letter dated May 20, 2022.

Case Timeline

Date Event
2006-01-25 ’200 Patent Priority Date
2010-08-10 ’200 Patent Issue Date
2022-05-20 Plaintiff sends notice of infringement letter to Defendant Make Believe
2022-07-25 Plaintiff files original Complaint
2022-09-06 Accused Product "My Busiest Book Ever!" released for sale
2023-08-01 Amended Complaint Filing Date

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

  • U.S. Patent No. 7,771,200: "Devices with Push Button-Type Mechanism and Methods for Using Said Devices" (Issued Aug. 10, 2010)

The Invention Explained

  • Problem Addressed: The patent’s background section notes that conventional educational tools like books and flash cards are often not motivating or durable, and they lack a simple, built-in indicator to make learning "less abstract and more concrete." (’200 Patent, col. 1:36-47).
  • The Patented Solution: The invention is a device, such as a book or card, that incorporates a "push button-type mechanism" with at least one button. This button is a reversible dome that can be pushed from a convex to a concave state, creating a "clicking and/or popping noise." (’200 Patent, col. 4:17-25, Abstract). This mechanism, which is often sandwiched between two layers of a page or card with windows allowing access from both sides, provides tactile, visual, and auditory feedback to a user to mark an event, such as counting an object. (’200 Patent, col. 3:37-44; Fig. 2).
  • Technical Importance: The invention provided an integrated, multi-sensory method for users, particularly children, to interact with static educational materials, enhancing the learning process by adding a durable and entertaining manipulative element. (’200 Patent, col. 2:1-4).

Key Claims at a Glance

  • The complaint asserts infringement of independent Claim 8. (Compl. ¶15).
  • The essential elements of independent Claim 8 are:
    • A book comprising a front cover, a back cover, at least one leaf between them, and a binding.
    • At least one of the cover(s) or leaf contains a front and a back adhered to one another, with corresponding front and back windows.
    • At least one of these windows comprises a push button mechanism.
    • The mechanism has a button operable between two positions and is accessible through the front and back windows.
    • The mechanism is made of a material that produces a "clicking and/or popping noise" when its position is changed.
  • The complaint notes that the accused products also infringe claims 9-13, 17, 18, 20-22, and/or 24. (Compl. ¶26).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are a line of children’s board books, including but not limited to “The Pop Pets,” “Never Pop A Dinosaur,” “Never Pop a Unicorn,” “Klutz Pop-It! Challenge Activity Book,” and “My Busiest Book Ever!” (collectively, the “Accused Products”). (Compl. ¶¶17-20, 36).

Functionality and Market Context

  • The Accused Products are children's board books that incorporate one or more push-button mechanisms that produce a "popping" sound when pressed. (Compl. ¶1). The complaint illustrates different configurations; for example, "The Pop Pets" is depicted as having several single-button mechanisms integrated into its front cover. (Compl. ¶18). The complaint shows the cover of "The Pop Pets" book, which includes several single-button mechanisms. (Compl. p. 6). Other products, such as "Never Pop A Dinosaur," are alleged to have a multi-button mechanism integrated into the back cover, which is accessible through windows located in the book's pages. (Compl. ¶19). The complaint alleges these products are designed, manufactured, marketed, and sold by the Defendants, interfering with Plaintiff's own "Poke-A-Dot!" line of books that practices the patent. (Compl. ¶¶16-17).

IV. Analysis of Infringement Allegations

’200 Patent Infringement Allegations

Claim Element (from Independent Claim 8) Alleged Infringing Functionality Complaint Citation Patent Citation
A book comprising: a front cover; a back cover; at least one leaf between said front cover and back cover, and a binding... The Accused Products are books that have a front cover, a back cover, at least one leaf between the covers, and a binding. ¶22 col. 7:20-22
...wherein at least one of said front cover, back cover, and the at least one said leaf contains a front having at least one window and a back having at least one window, with the proviso that the front and back windows are located at a position that correspond to each other, and the front and back are adhered to one another... At least one component of the Accused Products—such as the front cover in "The Pop Pets" or the back cover in "Never Pop A Dinosaur"—contains a front and back adhered together, with corresponding windows where the mechanism is located. The complaint provides an image of the "Never Pop A Dinosaur" book, showing windows in the pages that align with a mechanism in the back cover. (Compl. p. 7). ¶23 col. 3:35-44
...and, wherein at least one of said window(s) comprises a push button mechanism, said push button mechanism having at least one button that is operable between two variable positions and is accessible through the front and back windows... The windows in the Accused Products contain a push-button mechanism with a button that can be moved between two positions. This mechanism is alleged to be accessible through the front and back of the cover or leaf in which it is situated. ¶24 col. 4:57-61
...and wherein the push button mechanism is made of a material that provides a clicking and/or popping noise when the position is changed. The push-button mechanisms in the Accused Products are made of a material that creates a clicking or popping noise when pressed, a feature the complaint states is touted in Defendants' marketing. ¶25 col. 4:17-25
  • Identified Points of Contention:
    • Scope Questions: A central question may be whether the accused configuration where a mechanism is in the back cover and accessed through windows in the leaves meets the claim limitation "wherein at least one of said front cover, back cover, and the at least one said leaf contains a front having at least one window and a back having at least one window." The claim appears to require the windows and the mechanism to reside in the same structural component (e.g., the back cover itself must have front and back windows), raising the question of how the claim language applies to the specific layered construction of the accused books.
    • Technical Questions: A key factual dispute may arise over whether the mechanism is "accessible through the front and back windows." For products where the mechanism is embedded in a thick back cover, evidence will be required to show that the button is functionally operable from both the interior-facing side (through the leaves) and the exterior-facing side of the back cover, as the claim requires.

V. Key Claim Terms for Construction

  • The Term: "a front having at least one window and a back having at least one window ... and the front and back are adhered to one another"

    • Context and Importance: This term defines the "sandwich" structure that houses the mechanism. Its construction will be critical to determine whether the various designs of the Accused Products infringe, especially those where the mechanism is in one component (e.g., the back cover) and accessed through windows in another (e.g., the leaves). Practitioners may focus on whether this requires a discrete, multi-layer assembly for a single page or cover.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification describes the concept generally: "a push button-type mechanism 25 is sandwiched between the front 15 and a back 20 before the front and back are adhered to one another." (’200 Patent, col. 3:37-40). This language could be argued to cover any structure in the book where a mechanism is placed between two adhered layers.
      • Evidence for a Narrower Interpretation: The figures, particularly the exploded view in Figure 2, depict a specific assembly of a front layer (15), a separate mechanism layer (25), and a back layer (20). A defendant could argue this implies a distinct three-part laminated structure, which may not be present if, for instance, an accused mechanism is molded directly into a single piece of a cover.

  • The Term: "accessible through the front and back windows"

    • Context and Importance: This limitation is vital for infringement, as it requires operability from both sides of the mechanism. Its meaning will be disputed, particularly for books where the mechanism is embedded in a thick outer cover.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The plain meaning of "accessible" could be construed as merely physically reachable, regardless of the ease or intended method of operation.
      • Evidence for a Narrower Interpretation: The patent describes a user changing the button's position "from convex to concave by depressing the convex side" and "vice versa," which suggests an intended bi-directional functionality. (’200 Patent, col. 4:64-col. 5:1). A defendant might argue that if the mechanism is not designed to be operated from the exterior of the book's cover, it is not "accessible" from that side in the manner contemplated by the patent.

VI. Other Allegations

  • Willful Infringement: The complaint alleges willful infringement based on Defendants’ conduct after receiving notice of infringement. (Compl. ¶61). The allegations state that Plaintiff sent a letter to Defendant Make Believe on May 20, 2022, providing actual notice of the ’200 Patent. (Compl. ¶27). The complaint further alleges that Defendants continued to sell existing Accused Products and launched new infringing products, such as "My Busiest Book Ever!," after receiving this notice. (Compl. ¶¶34-36).

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

  • A core issue will be one of claim scope and construction: can the claim language requiring a component to have its own corresponding "front and back windows" be construed to read on a design where the mechanism is in one component (the back cover) but is accessed through windows in different components (the book's leaves)?
  • A key evidentiary question will be one of technical fact: is the push-button mechanism in the accused books, particularly those where it is embedded in the back cover, factually "accessible through the front and back windows" as required by the claim, or is its operation effectively unidirectional?
  • A significant procedural question exists due to the alternative pleadings: will the court first address whether the parties formed an enforceable settlement agreement? A finding that a binding settlement exists could resolve the dispute and render the patent infringement analysis moot.