3:22-cv-01753
Catanzaro v. 4imprint Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: David J. Catanzaro (Pennsylvania)
- Defendant: 4imprint Inc. (Wisconsin)
- Plaintiff’s Counsel: David J. Catanzaro, pro se
- Case Identification: 3:22-cv-01753, M.D. Pa., 11/03/2022
- Venue Allegations: Venue is alleged to be proper as the district where a substantial part of the acts giving rise to the claims occurred.
- Core Dispute: Plaintiff alleges that Defendant’s "Sun Bend-a-Pen" and other promotional products infringe a patent related to an article assembly featuring a self-standing base.
- Technical Context: The technology concerns novelty holders for elongated items, such as pens or toothbrushes, designed to keep the item in a stable, upright position on a horizontal surface.
- Key Procedural History: The complaint notes that the asserted patent, which expired in 2016, was subject to a terminal disclaimer requiring common ownership with a parent patent ('532 patent) for enforceability. Plaintiff alleges the parent patent was assigned to a third party and then assigned back to the Plaintiff in 2016, and that Plaintiff has the right to sue for damages within the six-year statutory look-back period.
Case Timeline
| Date | Event |
|---|---|
| 1996-12-30 | '959 Patent Priority Date |
| 2010-02-02 | '959 Patent Issue Date |
| 2010-02-02 | Alleged Infringement Start Date |
| 2011-02-28 | '532 Patent assigned to Church & Dwight Co. |
| 2016-08-31 | '532 Patent assigned back to Plaintiff |
| 2016-12-30 | '959 Patent Expiration Date |
| 2022-11-03 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,653,959 - “Article Assembly”
- Patent Identification: U.S. Patent No. 7,653,959, “Article Assembly,” issued February 2, 2010.
The Invention Explained
- Problem Addressed: The patent’s background section describes prior art toothbrush holders where the stand is composed of elements, such as a pair of feet, that are "separate and unattached from one another" ('959 Patent, col. 1:26-33). This construction is implicitly presented as being less stable or suitable than the patented invention.
- The Patented Solution: The invention is an assembly featuring a stand shaped like a pair of feet that are "joined together and positioned together to form a continuous bottom supporting surface" ('959 Patent, col. 2:33-35). This joined structure forms a "single heel portion" which includes a recess designed to receive the end of an article, such as a toothbrush, thereby holding it in a vertical position on a flat surface ('959 Patent, col. 2:35-41). The core innovation appears to be the stability derived from this integrated, continuous-bottom stand design.
- Technical Importance: The design aims to provide a simple, stable, and "economical in cost to manufacture" method for holding an elongated article upright ('959 Patent, col. 2:4-6).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 5.
- Independent Claim 1, key elements:
- An article having a receivable end
- A stand in the shape of first and second feet, with a toe end and a common heel end
- The feet are "joined together and positioned together to form a continuous bottom supporting surface"
- The heel ends are positioned together to form a "single heel portion"
- The single heel portion includes a recess for receiving the article's end
- The side surfaces of the feet intersect in a common plane
- Independent Claim 5, key elements:
- Claim 5 recites a stand with largely the same structural limitations as in claim 1(b) (joined feet, continuous bottom surface, single heel portion with a recess), but is directed to the stand itself rather than the combination of the stand and an article.
- The complaint also asserts dependent claims 4 and 8.
III. The Accused Instrumentality
Product Identification
- The complaint identifies the accused products as the "Sun Bend-a-Pen" and "other similar assorted product lines" (Compl. ¶14).
Functionality and Market Context
- The complaint alleges that Defendant manufactures, imports, offers for sale, and sells these products, which "embody and/or practice the patented invention" (Compl. ¶14). The pleading does not provide any specific technical description of the accused products' structure, features, or operation. It also does not provide details regarding the products' market positioning beyond the allegation that they were sold after February 2, 2010 (Compl. ¶15).
IV. Analysis of Infringement Allegations
The complaint alleges infringement in a conclusory manner and does not provide element-by-element factual allegations that would permit the construction of a claim chart. The infringement theory, stated broadly, is that the accused "Sun Bend-a-Pen" products are "article assemblies" that include a stand meeting all the structural limitations of the asserted claims of the ’959 Patent (Compl. ¶14, ¶17). No probative visual evidence provided in complaint.
- Identified Points of Contention:
- Evidentiary Question: A threshold issue will be whether the physical structure of the accused "Sun Bend-a-Pen" stand actually incorporates the specific features required by the claims. The complaint does not provide evidence, such as photographs or technical specifications, to support its allegation that the accused stand has "first and second feet... joined together," a "continuous bottom supporting surface," and a "single heel portion" with a recess.
- Scope Questions: The dispute may turn on the interpretation of the patent's structural language. For example, does the stand of the accused product, which is not described in the complaint, meet the claim requirement that its feet are "joined together to form a continuous bottom supporting surface," or is its construction materially different from that claimed?
V. Key Claim Terms for Construction
The complaint does not identify any specific claim terms as being in dispute. However, based on the patent's description, the following terms may be central to the infringement analysis.
The Term: "a continuous bottom supporting surface"
Context and Importance: This limitation appears to be a primary point of distinction from the prior art, which the patent describes as having "separate and unattached" feet ('959 Patent, col. 1:26-33). The definition of "continuous" will be critical for determining whether the accused product's stand, once its structure is known, falls within the claim scope.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states the feet are "joined together and positioned together to form a continuous bottom supporting surface" ('959 Patent, col. 2:33-35), which a party could argue simply means the bottom of the stand makes uninterrupted contact with a plane, rather than requiring a single, monolithic sole.
- Evidence for a Narrower Interpretation: A party might argue the term requires a single, unbroken plane along the entire bottom of the stand, potentially pointing to the optional "base 9" shown in Figure 2 as illustrative of what a truly continuous surface entails ('959 Patent, col. 2:45-49).
The Term: "single heel portion"
Context and Importance: This is the claimed location of the recess that holds the article. The infringement analysis will require determining if the accused product has a structure that can be properly characterized as a "single heel portion" formed by the joining of two "feet."
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: This could be argued to encompass any rear section of a stand where two leg-like structures converge and a recess is located.
- Evidence for a Narrower Interpretation: The figures depict a distinct anatomical "heel" (element 7) formed at the convergence of the two feet ('959 Patent, Fig. 1). A party could argue the term is limited to a structure that clearly resembles this depicted embodiment.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement "by knowingly and actively inducing others to infringe" (Compl. ¶17). It does not, however, plead specific facts to support this allegation, such as references to user manuals, advertisements, or other instructions provided by the Defendant.
- Willful Infringement: The complaint makes a conclusory allegation of willful and deliberate infringement (Compl. ¶18). It does not allege any facts to support pre-suit knowledge of the ’959 patent.
VII. Analyst’s Conclusion: Key Questions for the Case
A primary issue will be evidentiary: As the complaint lacks specific factual support for its infringement allegations, the case will depend on what evidence Plaintiff can produce to show that the accused "Sun Bend-a-Pen" product has a stand that physically embodies each of the structural limitations of the asserted claims, such as the "continuous bottom supporting surface" and "single heel portion."
A central legal question will be one of structural scope: How broadly will the court construe the patent's key structural terms? The outcome of claim construction for terms like "continuous bottom supporting surface" will likely determine whether the design of the accused product, once revealed, infringes the ’959 patent.
A potential threshold question will be one of enforceability: The complaint itself raises the issue of a terminal disclaimer that required "joint ownership" of the '959 and '532 patents (Compl. ¶8). The court may need to determine if the 2011 assignment of the '532 patent to a third party rendered the '959 patent unenforceable for any period, and whether the 2016 re-assignment to Plaintiff cured any such defect for the purpose of collecting damages.