DCT
1:22-cv-10837
Crave Innovations Inc v. Cotr Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Crave Innovations, Inc. (Delaware)
- Defendant: COTR, Inc. (Delaware)
- Plaintiff’s Counsel: Merchant & Gould P.C.
- Case Identification: 1:22-cv-10837, S.D.N.Y., 05/30/2023
- Venue Allegations: Venue is alleged to be proper in the Southern District of New York because the Defendant's headquarters is located within the district, and it allegedly commits acts of infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s line of personal vibrators, particularly the "Le Wand Necklace" and "Deux" models, infringes two of its design patents and two of its utility patents covering ornamental designs and modular, USB-chargeable vibrator technology.
- Technical Context: The technology relates to personal pleasure devices designed to be both functional as vibrators and aesthetically suitable for display or wear as jewelry, aiming to mainstream a product category often considered private.
- Key Procedural History: The complaint alleges that Plaintiff sent Defendant a cease and desist letter on October 8, 2019, which included claim charts detailing the alleged infringement of the two utility patents. This event is cited as the basis for alleging willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2009-01-01 | Crave founded (approximate, based on complaint) |
| 2011-01-01 | Crave launches the "Duet" vibrator |
| 2012-08-13 | Earliest Priority Date for ’531 and ’424 Patents |
| 2014-01-01 | Crave launches the "Vesper" vibrator |
| 2014-07-16 | Earliest Priority Date for D’709 and D’260 Patents |
| 2015-03-03 | U.S. Patent No. 9,144,531 Issues |
| 2015-03-03 | U.S. Design Patent No. D723,709 Issues |
| 2016-06-14 | U.S. Design Patent No. D759,260 Issues |
| 2019-07-23 | U.S. Patent No. 10,357,424 Issues |
| 2019-10-08 | Crave sends cease and desist letter to COTR |
| 2023-05-30 | First Amended Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,144,531 - “Vibratory Actuator and Device for Sexual Stimulation,” Issued March 3, 2015
The Invention Explained
- Problem Addressed: The patent background notes that while personal vibrators are increasingly popular, many designs are "excessively conspicuous, both when in use and when not," creating a need for more discreet products (’531 Patent, col. 1:25-33).
- The Patented Solution: The invention is a modular personal vibrator composed of two main parts: an "interaction module" that contains the haptic stimulation unit and a separate "power module" containing a rechargeable battery and control circuitry (’531 Patent, col. 2:40-54). The power module can be detached and charged openly via a standard port (e.g., USB), while the more personal interaction module can be stored discreetly, minimizing "visual or tactile exposure" when not in use (’531 Patent, col. 2:62-67).
- Technical Importance: This modular approach addresses a user-experience problem by separating the functional components from the power and charging components, allowing for a more discreet and mainstream-friendly product design.
Key Claims at a Glance
- Independent Claim 1 is asserted (Compl. ¶61, ¶107).
- Essential elements of Claim 1:
- An interaction module with a first port (power and ground pins) and a haptic stimulation unit.
- A control module comprising:
- a second port (input, output, ground pins) that engages an external device for charging (first configuration) and engages the first port for operation (second configuration);
- a rechargeable battery;
- a charging circuit;
- an input region (e.g., buttons); and
- an actuator driver (with a power transistor and processor) to control power from the battery to the haptic unit based on user input.
- The complaint reserves the right to assert other claims (Compl. ¶106).
U.S. Patent No. 10,357,424 - “Vibratory Actuator and Device for Sexual Stimulation,” Issued July 23, 2019
The Invention Explained
- Problem Addressed: Similar to the ’531 patent, this patent addresses the need for a "new and useful vibratory actuator and a new and useful device for sexual stimulation" that is less conspicuous than conventional designs (’424 Patent, col. 1:18-24).
- The Patented Solution: The invention is a two-part device with an "interaction module" and a "power module," each contained in its own "unitary housing" (’424 Patent, col. 17:26-34). The two modules are "removably mechanically coupled" by their respective electrical ports, allowing them to be separated for charging and joined for use (’424 Patent, col. 17:35-43). The design emphasizes the physical and electrical separability of the two core units.
- Technical Importance: This patent focuses on the structural and housing aspects of the modular vibrator concept, claiming the specific arrangement of two distinct, self-contained, and removably coupled unitary housings.
Key Claims at a Glance
- Independent Claim 1 is asserted (Compl. ¶71, ¶117).
- Essential elements of Claim 1:
- An interaction module comprising:
- a first unitary housing with a first electrical port; and
- a haptic stimulation unit enclosed by the housing and coupled to the port.
- A power module comprising:
- a second unitary housing with a second electrical port, which is removably mechanically coupled to the first housing via the ports;
- a rechargeable battery enclosed by the second housing;
- an input mechanism; and
- a stimulation unit driver enclosed by the second housing.
- An interaction module comprising:
- The complaint reserves the right to assert other claims (Compl. ¶116).
Multi-Patent Capsule
U.S. Design Patent No. D723,709, “Pendant for Sexual Stimulation,” Issued March 3, 2015
- Technology Synopsis: This patent claims the ornamental design for a pendant-style vibrator. The design features a smooth, elongated cylindrical body with a slightly rounded tip and a distinct, crown-like cap through which a necklace chain can be threaded. The complaint alleges this design combines jewelry with a pleasure device, allowing it to be worn openly (Compl. ¶6, ¶21).
- Asserted Claims: The single design claim for the ornamental design as shown in the patent figures is asserted (Compl. ¶82).
- Accused Features: The overall ornamental design of the "Le Wand Necklace Vibrator" is accused of infringing the D'709 patent, with the complaint alleging that an ordinary observer would be deceived by the similarity (Compl. ¶83-¶84).
U.S. Design Patent No. D759,260, “Pendant for Sexual Stimulation,” Issued June 14, 2016
- Technology Synopsis: This patent is a continuation of the application for the D'709 patent and claims a similar ornamental design for a pendant-style vibrator. The drawings show slight variations in the proportions and features of the cap and body compared to the D'709 patent.
- Asserted Claims: The single design claim for the ornamental design as shown in the patent figures is asserted (Compl. ¶93).
- Accused Features: The "Le Wand Necklace Vibrator" is also accused of infringing the D'260 patent, with the complaint providing a three-way visual comparison between the Crave product, the patent drawings, and the accused product (Compl. ¶47, p. 12).
III. The Accused Instrumentality
Product Identification
- COTR, Inc.’s "Deux" model vibrator is accused of infringing the utility patents (’531 and ’424) (Compl. ¶62). COTR's "Le Wand Necklace Vibrator" is accused of infringing the design patents (D’709 and D’260) (Compl. ¶34).
Functionality and Market Context
- The "Deux" vibrator is described as a two-part device that de-couples to reveal a USB port for charging (Compl. ¶64). The bottom half ("control module") contains the battery and circuitry and can be plugged into a standard USB port to charge, while the top half ("interaction module") has a two-pronged tip ("haptic stimulation unit") for use (Compl. ¶64). The complaint provides a labeled photograph of the disassembled "Deux" vibrator, identifying its "Interaction Module" and "Control Module" (Compl. p. 18).
- The complaint alleges that the "Deux" is a "knock-off" of Crave's "Duet" vibrator and that COTR's entire product line "mimics the product family of Crave" (Compl. ¶62, ¶75). A side-by-side comparison image is provided to illustrate the alleged copying of the entire product family (Compl. p. 21).
IV. Analysis of Infringement Allegations
’531 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an interaction module comprising a first port comprising a power pin and a first ground pin and a haptic stimulation unit electrically coupled to the power pin and to the first ground pin | The top half of the Deux vibrator is an "interaction module" with a two-pronged "haptic stimulation unit" and a "first port" with a power pin and ground pin. | ¶65 | col. 2:6-12 |
| a control module comprising a second port ... configured to transiently engage a standardized powered data port of an external device in a first configuration, and configured to transiently engage the first port in a second configuration | The bottom half of the Deux is a "control module" with a standard USB "second port." This port plugs into a computer for charging ("first configuration") and plugs into the interaction module for use ("second configuration"). | ¶66 | col. 2:13-21 |
| a rechargeable battery, a charging circuit electrically coupled to the second port | The control module contains a rechargeable battery and a charging circuit coupled to the USB port for charging via a computer. | ¶66 | col. 2:12-16 |
| an input region, and an actuator driver configured to control power transmission from the rechargeable battery to the haptic stimulation unit ... wherein the actuator driver comprises at least one power transistor and a processor | The control module has buttons ("input region") and an actuator driver with a processor to control power flow to the haptic unit in response to button presses, setting a vibratory pattern. | ¶67 | col. 2:22-25; col. 1:59-62 |
’424 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an interaction module comprising: a first unitary housing comprising a first electrical port; and a haptic stimulation unit enclosed by the first unitary housing... | The top half of the Deux vibrator is an interaction module enclosed in a housing, containing the haptic stimulation unit and a port. | ¶64, ¶72 | col. 17:28-31 |
| a power module comprising: a second unitary housing ... removably mechanically coupled to the first unitary housing by the first and second electrical ports... | The bottom half of the Deux is a power module in a separate housing. The two housings are removably coupled together via their ports. | ¶64, ¶72 | col. 17:35-40 |
| a rechargeable battery enclosed by the second unitary housing... | The power module's housing encloses a rechargeable battery. | ¶64, ¶72 | col. 17:41-43 |
| an input mechanism; and a stimulation unit driver ... enclosed by the second unitary housing. | The power module's housing encloses the control buttons and the driver circuitry. The complaint provides a side-by-side photograph comparing the Crave Duet and COTR Deux vibrators (Compl. p. 18). | ¶67, ¶72 | col. 17:44-48 |
- Identified Points of Contention:
- Scope Questions: The complaint alleges the "Deux" vibrator is a "knock-off," but the infringement analysis will depend on whether the specific components of the accused device meet the precise definitions in the claims. For the '424 patent, a question may arise as to whether the respective casings of the accused device qualify as "unitary housing[s]" as that term is used in the patent.
- Technical Questions: For the '531 patent, a key question will be whether the circuitry in the accused "Deux" device includes "at least one power transistor and a processor" that performs the exact functions recited in Claim 1. The complaint alleges this functionality exists but does not provide schematics or a teardown analysis, which would likely be a focus of discovery (Compl. ¶67). The complaint's visual evidence shows the two modules of the accused product can be separated for charging, which supports the "first configuration" and "second configuration" limitations (Compl. p. 18).
V. Key Claim Terms for Construction
Term: "interaction module" / "control module" (’531 Patent, Claim 1)
- Context and Importance: The patents are built around a two-module architecture. The specific functions assigned to each claimed "module" are central to the infringement analysis. Practitioners may focus on whether the accused "Deux" device maintains the same functional separation as defined in the claims, or if some functions are shared or allocated differently.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the modules in functional terms—the interaction module "contacts and stimulates," while the power module "power[s] the interaction module" and is "held by the user" (’531 Patent, col. 2:42-50). This functional description could support a construction that is not tied to a specific physical form.
- Evidence for a Narrower Interpretation: The claims themselves recite very specific components that must be part of each module (e.g., the "control module" must comprise the battery, charging circuit, input region, and actuator driver). An argument could be made that if any of these components are located in the other half of the accused device, it does not meet the limitation.
Term: "unitary housing" (’424 Patent, Claim 1)
- Context and Importance: Claim 1 of the ’424 patent requires both the interaction module and the power module to be contained in their own "unitary housing." The definition of "unitary" will be critical. If the accused device's housings are assembled from multiple pieces, it may raise a non-infringement defense.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not explicitly define "unitary." A party might argue it means a single, self-contained assembly that functions as one piece, even if composed of sub-parts.
- Evidence for a Narrower Interpretation: The term "unitary" itself suggests being formed as a single, seamless piece. The specification describes the housing as defining a "waterproof, dustproof, and hermetic boundary" and being made of "a substantially rigid material," which might imply a single, solid construction is contemplated (’424 Patent, col. 10:35-37, col. 5:10-12).
VI. Other Allegations
- Indirect Infringement: The complaint alleges that COTR induces infringement by "instructing its consumers how to use the Deux vibrator, and to configure the Deux vibrator for recharging and for haptic stimulation," which are the steps that allegedly practice the claims (Compl. ¶108, ¶118).
- Willful Infringement: The willfulness claim is based on alleged pre-suit knowledge. The complaint states that Crave sent COTR a cease and desist letter on October 8, 2019, which specifically identified the ’531 and ’424 patents and included "claims charts specifying COTR's infringement." COTR's alleged continuation of sales after receiving this notice is the primary basis for the willfulness allegation (Compl. ¶73, ¶109, ¶119).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of technical equivalence: Does the accused "Deux" vibrator’s internal architecture—specifically its ports, pins, processor, and power transistor functions—map directly onto the detailed and specific limitations of the utility patent claims, or are there technical distinctions that could support a non-infringement argument?
- For the design patents, the key question is one of visual perception: Would an ordinary observer, giving the level of attention a purchaser normally would, be deceived into purchasing COTR’s "Le Wand Necklace" believing it to be the same as the design patented by Crave, particularly given the side-by-side visual comparisons provided in the complaint? (Compl. pp. 4, 12).
- A significant legal question will be one of enhanced damages: Did COTR's alleged continuation of its commercial activities after receiving a cease and desist letter with detailed claim charts in 2019 constitute willful infringement, potentially exposing it to treble damages and attorney's fees?