DCT
1:24-cv-01389
Powx Inc v. Performance Solutions LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: PowX Inc. (New York)
- Defendant: Performance Solutions, LLC (Massachusetts)
- Plaintiff’s Counsel: Tarter Krinsky & Drogin LLP
- Case Identification: 1:24-cv-01389, S.D.N.Y., 04/03/2024
- Venue Allegations: Venue is based on Defendant conducting business in New York and directing enforcement activities (via Amazon's APEX program) at Plaintiff, a New York-based entity, with awareness of its location.
- Core Dispute: Plaintiff seeks a declaratory judgment that its foam roller products do not infringe Defendant’s patent, and that the patent is invalid and unenforceable, following Defendant’s assertions of infringement through an e-commerce platform's patent evaluation program.
- Technical Context: The technology concerns therapeutic foam rollers featuring specific surface projections and material properties intended to provide more effective soft tissue mobilization than conventional smooth rollers.
- Key Procedural History: The dispute was initiated by Defendant's use of Amazon's Patent Evaluation Express (APEX) program to assert infringement against Plaintiff's products. After the complaint was filed, the U.S. Patent and Trademark Office issued an Ex Parte Reexamination Certificate for the patent-in-suit, which confirmed the patentability of the asserted claim and amended several dependent claims.
Case Timeline
| Date | Event |
|---|---|
| 2006-07-18 | '112 Patent Priority Date |
| 2016-01-25 | '112 Patent Application Filing Date |
| 2017-05-23 | '112 Patent Issue Date |
| c. 2017 | Plaintiff begins selling Accused Products on Amazon |
| 2023-03 | Defendant files initial infringement report with Amazon |
| 2024-02-05 | Plaintiff receives notice of Defendant's APEX assertion |
| 2024-04-03 | Complaint for Declaratory Judgment Filed |
| 2024-06-03 | '112 Patent Reexamination Certificate Issued |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,656,112 - "Therapeutic, fitness, and sports enhancement device"
- Patent Identification: U.S. Patent No. 9,656,112, issued May 23, 2017.
The Invention Explained
- Problem Addressed: The patent's background section identifies shortcomings in conventional, smooth cylindrical foam rollers, noting they provide minimal effect for tissue mobilization and can be unstable, causing users to fall off during balance exercises ('112 Patent, col. 1:22-44).
- The Patented Solution: The invention is a two-piece device composed of an inner core and an outer overlay. The solution involves an "entirely cylindrically shaped core" surrounded by an overlay that includes "a plurality of solid projections" ('112 Patent, Claim 1). The combination of the material density, device diameter, and the shape of the projections is purported to "optimize mobilization of soft tissue structures" more effectively than prior art devices ('112 Patent, col. 2:41-49; Abstract). The two-piece construction is depicted in figures such as Fig. 16, which shows a distinct core (12') and overlay (13).
- Technical Importance: The claimed design purports to offer a more targeted and effective means of applying pressure to muscle and fascia, while the projections may enhance stability during use compared to smooth rollers ('112 Patent, col. 2:3-6; col. 7:39-41).
Key Claims at a Glance
- The complaint identifies independent Claim 1 as the basis for Defendant's infringement assertion in the Amazon APEX program (Compl. ¶10).
- The essential elements of independent Claim 1 are:
- A two piece therapeutic, fitness, and sports enhancement device comprising:
- a first piece including an entirely cylindrically shaped core made of closed cell foam, rubber or plastic and having a diameter of about 3 inches to about 15 inches; and
- a second piece including an overlay completely surrounding the core, the overlay made of closed cell foam, rubber, or plastic and including a plurality of solid projections having a predetermined shape configured to extend into soft tissue of a user.
- The complaint seeks a declaratory judgment that it does not infringe "any valid claim" of the patent ('112 Patent, Compl. ¶34).
III. The Accused Instrumentality
Product Identification
The "Accused Products" are identified in the complaint by a list of Amazon Standard Identification Numbers (ASINs) (Compl. ¶9). The products are generally described as foam rollers (Compl. ¶21).
Functionality and Market Context
- The complaint focuses on the physical structure of the Accused Products rather than their specific function, alleging that they are missing a key structural element required by the patent's claims (Compl. ¶30).
- Plaintiff sells its products on the Amazon marketplace, which it characterizes as a highly advantageous platform providing exposure to a worldwide market (Compl. ¶¶19, 23).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
The complaint is for a declaratory judgment of non-infringement. The table below summarizes Plaintiff's primary argument for why its products do not meet the limitations of the asserted claim.
'112 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Plaintiff's Asserted Non-Infringing Structure | Complaint Citation | Patent Citation |
|---|---|---|---|
| A two piece therapeutic, fitness, and sports enhancement device... | The complaint does not provide a specific non-infringement theory for this element. | col. 9:18-19 | |
| a first piece including an entirely cylindrically shaped core made of closed cell foam, rubber or plastic... | The complaint alleges that this element, specifically "an entirely cylindrically shaped core," is "absent from Plaintiff's products." | ¶30 | col. 9:19-22 |
| a second piece including an overlay completely surrounding the core, the overlay made of closed cell foam, rubber, or plastic and including a plurality of solid projections... | The complaint does not provide a specific non-infringement theory for this element. | col. 9:25-32 |
Identified Points of Contention
- Structural Mismatch: The central dispute articulated in the complaint is a potential structural mismatch. Plaintiff's core assertion is that its products lack the claimed "entirely cylindrically shaped core" (Compl. ¶30). This raises the question of whether the Accused Products are constructed as a single piece or have an internal structure that is not "entirely cylindrically shaped."
- Evidentiary Question: A key factual question for the court will be the actual physical construction of the Accused Products. The complaint does not include images or detailed descriptions, so discovery will be required to establish whether they are in fact two-piece devices with a distinct, cylindrically shaped core as recited in Claim 1.
V. Key Claim Terms for Construction
- The Term: "an entirely cylindrically shaped core"
- Context and Importance: This term is the lynchpin of the non-infringement argument presented in the complaint (Compl. ¶30). The outcome of the infringement analysis may depend on whether this term is construed to require a discrete, geometrically perfect cylindrical component, a standard that Plaintiff alleges its products do not meet.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A patentee might argue that "core" refers generally to the central load-bearing portion of the device and does not strictly require a separate, bonded component, as long as a functionally distinct core region exists. The patent mentions other manufacturing methods, such as cutting from a single sheet of material, which could be argued to support a less rigid structural definition ('112 Patent, col. 8:61-64).
- Evidence for a Narrower Interpretation: The plain language of Claim 1, which explicitly recites a "two piece" device comprising "a first piece including an... core" and "a second piece including an overlay," strongly supports an interpretation requiring two separate, distinct components ('112 Patent, Claim 1). This is visually supported by figures like Fig. 16 and Fig. 17, which depict a distinct core (12') and overlay (13). The term "entirely" can be argued to mean without exception, implying a uniform and geometrically true cylinder. The recent reexamination certificate, which amends dependent claims to consistently differentiate between the "core" and the "overlay," may further support this narrow interpretation ('112 Reexam. Cert., Claims 2-6).
VI. Other Allegations
- Indirect Infringement: Plaintiff seeks a declaration that it has not infringed the '112 Patent "directly or indirectly" but provides no specific facts related to indirect infringement theories (Compl. ¶34).
- Invalidity and Unenforceability: Plaintiff includes causes of action for declaratory judgments of patent invalidity under 35 U.S.C. §§ 102 and/or 103 and unenforceability due to alleged inequitable conduct (Compl. ¶¶36-44). The complaint makes these allegations in a conclusory manner without pleading specific supporting facts.
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of claim construction: how will the court define "a first piece including an entirely cylindrically shaped core"? The case may turn on whether this requires a discrete, geometrically perfect component, or if it can be construed more broadly to cover the internal structure of Plaintiff's products.
- The primary evidentiary question will be one of physical structure: what is the actual construction of the Accused Products? Fact discovery will be necessary to determine if they are two-piece devices with a distinct core and overlay that meet the limitations of Claim 1, or if they possess a fundamentally different structure.
- A key procedural question will be the impact of the reexamination: how will the recently issued reexamination certificate, which confirmed Claim 1 and amended dependent claims to further clarify the "core" and "overlay" distinction, influence claim construction arguments and the overall trajectory of the case?