Smith v. Coulter Ventures LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Brent Smith (California)
  • Defendant: Coulter Ventures, LLC dba Rogue Fitness (Ohio)
  • Plaintiff’s Counsel: Sand, Sebolt & Wernow Co., LPA
• Case Identification: 2:24-cv-00499, S.D. Ohio, 02/07/2024
• Venue Allegations: Venue is alleged to be proper because Defendant is a limited liability company organized under the laws of Ohio with its principal place of business in the district, constituting residence under TC Heartland.
• Core Dispute: Plaintiff alleges that Defendant’s "Rogue Thompson Fatbell" exercise products infringe two patents related to a spherical weight with an internal handle.
• Technical Context: The technology concerns free weights for strength and conditioning, specifically an alternative design to traditional kettlebells and dumbbells intended to center the weight mass around the user's hand.
• Key Procedural History: The ’629 Patent is a continuation of the application that matured into the ’727 Patent and is subject to a terminal disclaimer. The complaint alleges Defendant had knowledge of infringement of both patents as of July 31, 2023, more than six months prior to the filing of the lawsuit, which may form the basis for a willfulness claim.

Case Timeline

Date	Event
2011-09-22	Earliest Priority Date for ’727 and ’629 Patents
2018-08-28	U.S. Patent No. 10,058,727 Issued
2019-07-02	U.S. Patent No. 10,335,629 Issued
2023-07-31	Alleged date of Defendant's knowledge of infringement
2024-02-07	Complaint Filing Date

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

U.S. Patent No. 10,058,727 - “EXERCISE APPARATUS AND METHODS,” Issued August 28, 2018

The Invention Explained

• Problem Addressed: The patent background describes conventional exercise equipment like kettlebells as having functional limitations. Specifically, because a kettlebell's handle extends from the top of the ball, its weight is not distributed evenly around the hand, which can cause "unwieldy flopping motions" during exercises (’727 Patent, col. 1:23-29). Standard dumbbells are noted as not engaging proprioception (the body's ability to sense its own position in space) during push exercises (’727 Patent, col. 1:30-34).
• The Patented Solution: The invention is a spherical weight with an internal, centrally located handle. A user reaches through an opening in the surface and a "passageway" to grasp a handle located inside a larger "cavity" at the device's approximate center (’727 Patent, Fig. 1B; col. 2:1-4). This design aims to center the mass around the user's hand, providing a stable grip for lifts, swings, and push-ups while also allowing for rotational movements that engage stabilizing muscles (’727 Patent, col. 1:35-39; col. 2:35-40).
• Technical Importance: The design attempts to combine the ballistic movement benefits of a kettlebell with the stability of a dumbbell, while adding a proprioceptive element for exercises like push-ups.

Key Claims at a Glance

• The complaint asserts independent claims 1 (apparatus) and 8 (method) (Compl. ¶14, ¶59).
• Independent Claim 1 (Apparatus) Elements:
  • An exercise device comprising:
  • a solid metal spherical structure having a rigid surface, a hand-opening in the surface, a cavity in the approximate center of the spherical structure, and a passageway coupling the hand-opening and the cavity;
  • wherein the hand-opening is relatively small and sized to accommodate insertion of a hand and forearm to permit only limited movement thereof during exercises;
  • wherein the passageway increases in size toward the cavity;
  • wherein the cavity is relatively larger and sized to more freely accommodate the hand; and
  • a rigid handle laterally positioned in the cavity and affixed in the approximate center of the spherical structure.
• Independent Claim 8 (Method) Elements:
  • An exercise method, comprising:
  • providing at least one exercise apparatus (as described in claim 1);
  • grasping the handle of the exercise apparatus with a user's hand; and
  • the user performing one or more exercises with the exercise apparatus.
• The complaint asserts dependent claims 2, 3, 4, 5, and 7 for the apparatus and dependent claims 9-15 for the method (Compl. ¶15-19, ¶60-66).

U.S. Patent No. 10,335,629 - “EXERCISE APPARATUS AND METHODS,” Issued July 2, 2019

The Invention Explained

• Problem Addressed: As a continuation of the application leading to the ’727 Patent, the ’629 Patent addresses the same technical problems related to the limitations of kettlebells and dumbbells (’629 Patent, col. 1:25-34).
• The Patented Solution: The patented solution is structurally and functionally identical to that described in the ’727 Patent: a spherical weight with an internal cavity and a centrally grasped handle (’629 Patent, Fig. 1B; col. 2:5-12). The specification is substantially the same as that of the parent ’727 Patent.
• Technical Importance: This patent appears to broaden the scope of protection for the core invention, particularly by claiming a "rigid" structure rather than a "solid metal" one.

Key Claims at a Glance

• The complaint asserts independent claims 1 (apparatus) and 9 (method) (Compl. ¶25, ¶96).
• Independent Claim 1 (Apparatus) Elements:
  • An exercise device, comprising:
  • a rigid spherical structure having a hand-opening in the surface, a cavity in the approximate center of the spherical structure, and a passageway coupling the hand-opening and the cavity;
  • wherein the hand-opening is relatively small and sized to accommodate insertion of a hand and forearm to permit only limited movement thereof during exercises;
  • wherein the passageway increases in size toward the cavity;
  • wherein the cavity is relatively larger and sized to more freely accommodate the hand; and
  • a rigid handle laterally positioned in the cavity and affixed in the approximate center of the spherical structure.
• Independent Claim 9 (Method) Elements:
  • An exercise method, comprising:
  • providing at least one exercise apparatus (as described in claim 1 of the '629 patent);
  • grasping the handle of the exercise apparatus with a user's hand; and
  • the user performing one or more exercises with the exercise apparatus.
• The complaint asserts dependent claims 2, 3, 4, 5, 7, and 8 for the apparatus and dependent claims 10-16 for the method (Compl. ¶26-31, ¶97-103).

III. The Accused Instrumentality

Product Identification

• The "Rogue Thompson Fatbell" exercise device (Compl. ¶33, ¶70).

Functionality and Market Context

• The complaint alleges the Accused Product is a "globular body (i.e., globe shaped)" exercise device made of solid metal with a rigid surface (Compl. ¶34, ¶71). It is described as having a hand opening leading through a passageway to an internal cavity containing a rigid handle (Compl. ¶35-37, ¶72-73). The product is sold in a range of weights from 9 to 150 pounds, which overlaps with the claimed range of 5 to 150 pounds (Compl. ¶46, ¶82). The complaint alleges Defendant manufactures, uses, sells, and offers for sale these products through its website (Compl. ¶4, ¶20).

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint. The complaint references claim chart Exhibits C and D but does not include them in the filing. The infringement theory is therefore based on the narrative allegations.

’727 Patent Infringement Allegations
The complaint alleges that the Rogue Thompson Fatbell directly infringes at least claim 1 of the ’727 Patent (Compl. ¶47). The infringement theory is that the product is a "solid metal, spherical structure" (Compl. ¶34) that possesses all the claimed geometric features: a "hand opening" (Compl. ¶35), an internal "cavity" (Compl. ¶36), a "passageway" connecting them (Compl. ¶37), and a "rigid handle" affixed in the cavity's approximate center (Compl. ¶41). The complaint further alleges the product meets the functional and dimensional limitations, such as the hand opening being "relatively small" to limit wrist movement and the cavity being "relatively larger" to accommodate a user's hand (Compl. ¶38, ¶40). Infringement of method claim 8 is based on induced infringement, alleging Defendant sells the product to customers for use in an infringing manner (Compl. ¶58).

’629 Patent Infringement Allegations
The infringement allegations for the ’629 Patent are nearly identical to those for the ’727 Patent. The complaint alleges the Rogue Thompson Fatbell is a "rigid spherical structure" (Compl. ¶71) with the same claimed features: a hand opening (Compl. ¶71), cavity (Compl. ¶72), passageway (Compl. ¶73), and internal handle (Compl. ¶77). The complaint also alleges the product meets the corresponding dimensional limitations from claim 1 of the ’629 patent (Compl. ¶74, ¶76). A notable addition is the allegation that the product meets dependent claim 8, which requires the spherical structure to be "solid" (Compl. ¶83). Infringement of method claim 9 is alleged on a theory of inducement by selling the product to customers (Compl. ¶95).

V. Key Claim Terms for Construction

• The Term: "solid metal spherical structure" (in '727 Patent, Claim 1)

• Context and Importance: This term is the primary distinction between the main apparatus claims of the two patents-in-suit. The '629 Patent recites a broader "rigid spherical structure." The construction of "solid metal" will be critical to determining infringement of the '727 Patent. Defendant may argue its product is not "solid" if it has any hollow portions or is constructed from multiple pieces, or that the material is not a "metal" in the sense intended by the patent.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The term itself is straightforward, but disputes could arise over the definition of "solid."
  • Evidence for a Narrower Interpretation: The specification provides an exemplary embodiment: "a suitable metal such as cast iron having the desired weight may be melted and formed in a mold" (’727 Patent, col. 2:8-11). This could be used to argue the term is limited to cast, single-piece metal structures.

• The Term: "approximate center of the spherical structure" (in Claims 1 of both patents)

• Context and Importance: The location of the handle is a core feature of the invention. Practitioners may focus on this term because "approximate" is inherently indefinite. The infringement analysis will depend on how much deviation from the geometric center is permitted.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification explicitly states the handle "could also be moved slightly off-center for comfort or for more advanced exercise positioning" (’727 Patent, col. 2:62-64). This language directly supports a construction that is not strictly limited to the geometric center.
  • Evidence for a Narrower Interpretation: The same passage immediately cautions that "functionality decreases if the handle is too far off-center" (’727 Patent, col. 2:65-66). This suggests there is a functional, albeit undefined, limit to how "approximate" the location can be, potentially narrowing the scope from any off-center position to only those that maintain the core functional benefits.

VI. Other Allegations

• Indirect Infringement: Plaintiff alleges that Defendant induces infringement of method claims in both patents. The alleged inducing act is "selling the Accused Product to its customers for use in a manner that infringes" (Compl. ¶58, ¶95). The complaint alleges post-suit inducement based on knowledge from service of the complaint and pre-suit inducement based on knowledge alleged since July 31, 2023 (Compl. ¶49, ¶51, ¶86, ¶88).
• Willful Infringement: The complaint alleges Defendant "has had knowledge of infringement" of both patents "at least as early as July 31, 2023" (Compl. ¶49, ¶86). This specific date suggests Plaintiff may have evidence of pre-suit notice. The prayer for relief explicitly seeks an award for willful infringement, including treble damages (Compl. p. 21, ¶e).

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

• A central issue will be one of claim scope and differentiation: What is the patentably distinct territory between the '727 Patent's "solid metal spherical structure" and the '629 Patent's broader "rigid spherical structure"? The court's construction of these terms will determine whether infringement can be found under the narrower parent patent or only the broader continuation patent.
• A second core issue will be the definition of a relative term: How will the court construe "approximate center"? The patent's own text provides arguments for both a flexible and a limited interpretation, making this a likely focus of claim construction and a key factual question for infringement.
• A key evidentiary question will be the basis for inducement and willfulness: Beyond the act of selling the product, what specific evidence does Plaintiff have to demonstrate that Defendant knowingly and intentionally encouraged its customers to perform the patented methods, and what is the nature of the evidence showing Defendant's knowledge of infringement as of July 2023?