DCT
3:22-cv-01756
Catanzaro v. Walmart Stores Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: David J. Catanzaro (Pennsylvania)
- Defendant: Walmart Stores, Inc. (Arkansas); Staples Inc. (Massachusetts); eKids, LLC. (New Jersey); KiDdesigns Inc. (New Jersey)
- Plaintiff’s Counsel: David J. Catanzaro, pro se
- Case Identification: 3:22-cv-01756, M.D. Pa., 11/03/2022
- Venue Allegations: Plaintiff alleges venue is proper in the Middle District of Pennsylvania because a substantial part of the acts giving rise to the claims occurred in the district.
- Core Dispute: Plaintiff alleges that Defendants’ novelty consumer electronics, including character-themed USB flash drives and a Bluetooth speaker, infringe a patent related to an article assembly featuring a stand shaped like feet.
- Technical Context: The patent-in-suit describes a functional stand designed with the ornamental appearance of a pair of feet, intended to hold an article such as a toothbrush in an upright position.
- Key Procedural History: The asserted patent expired in 2016. The complaint notes the patent was subject to a terminal disclaimer requiring common ownership with a parent patent ('532 patent) to be enforceable. The '532 patent was transferred to a third party and then assigned back to the Plaintiff in August 2016, a few months before the asserted patent's expiration. This history may raise questions regarding the patent's enforceability during the relevant damages period.
Case Timeline
| Date | Event |
|---|---|
| 1995-12-28 | Earliest Priority Date Claimed by '959 Patent |
| 2010-02-02 | U.S. Patent No. 7,653,959 Issues |
| 2011-02-28 | '532 Patent Assigned to Church & Dwight Co. |
| 2016-08-31 | '532 Patent Assigned back to Plaintiff David J. Catanzaro |
| 2016-12-30 | '959 Patent Expires |
| 2022-11-03 | Complaint Filed |
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 identifies a need to improve upon prior art toothbrush holders. It suggests that existing designs, such as those with a cup portion supported by separate and unattached legs and feet, may not be suitable for the purposes addressed by the invention (’959 Patent, col. 1:23-41).
- The Patented Solution: The invention is a stand for holding an article, such as a toothbrush, in an upright position. The stand is uniquely shaped as a pair of feet that are joined together to form a single, continuous structure. This unitary design includes a "single heel portion" with a recess for receiving the end of the article, thereby providing a stable base on a horizontal surface (’959 Patent, Abstract; col. 2:28-40). The patent also discloses an optional base that can be connected to the bottom of the foot stand for additional stability (’959 Patent, col. 2:45-49).
- Technical Importance: The design aims to provide a stable, single-piece stand with a novel ornamental appearance, intended to overcome the potential structural limitations of prior art stands composed of multiple, unattached components (’959 Patent, col. 1:39-41, col. 1:42-45).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 5.
- Independent Claim 1 (An article assembly):
- An article having a receivable end, and
- A stand in the shape of first and second feet, with each foot being elongated to define 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 to retain it on a horizontal surface.
- Each foot includes a side surface, and these side surfaces intersect in a common plane.
- Independent Claim 5 recites the stand itself, without the article.
- The complaint also asserts dependent claims 4 and 8, which add the limitation that the toe ends of the feet are at an acute angle to one another (’959 Patent, col. 4:1-4, col. 4:21-23; Compl. ¶20).
III. The Accused Instrumentality
Product Identification
- The complaint names the “Marvel & Star Wars USB Drive Disque Flash USB” product lines and a product called the “Hello Kitty” iHome Bluetooth Speaker” as the accused instrumentalities (Compl. ¶17).
Functionality and Market Context
- The complaint identifies the accused products by their commercial names and general functions as USB flash drives and a Bluetooth speaker (Compl. ¶17). It does not provide any specific technical description of the products' physical construction, dimensions, or how the components alleged to be a "stand" are formed or operate. The complaint alleges that these products are sold by major retailers Walmart and Staples, but provides no further detail regarding their market context or commercial importance (Compl. ¶¶4-5, 17-18). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint does not contain a claim chart or detailed infringement contentions. The following chart summarizes the infringement theory as can be inferred from the general allegations that the accused products "embody and/or practice the patented invention" (Compl. ¶17).
'959 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An article having a receivable end | The complaint alleges the accused products, such as USB flash drives and a Bluetooth speaker, are the "article" (Compl. ¶17). It does not specify what constitutes the "receivable end." | ¶17 | col. 3:3-4 |
| a stand in the shape of first and second feet, each of said first and second feet being elongated to define a toe end and together a common heel end, said first and second feet being joined together and positioned together to form a continuous bottom supporting surface | The complaint does not specify, but implies that the base of the character-themed products is shaped like feet and functions as a stand, forming a continuous supporting surface. | ¶17 | col. 3:5-10 |
| said heel end of each of said first and second feet being positioned together to form a single heel portion, said single heel portion including a recess extending through a topside thereof and towards a sole thereof for selectively receiving said receivable end of said article therein | The complaint does not provide specific facts alleging that the accused products feature a "single heel portion" with a "recess" for receiving the article itself. The infringement theory appears to rely on the overall character design functioning as an integrated article and stand. | ¶17 | col. 3:10-15 |
| said first and second feet each including a side surface, said side surfaces intersecting one another in a common plane | The complaint does not contain allegations or evidence demonstrating that the feet of the accused products have side surfaces that intersect in a common plane as required by the claim. | ¶17 | col. 3:17-19 |
- Identified Points of Contention:
- Scope Questions: The patent specification focuses on a toothbrush holder. A central question is whether the broad claim term "an article having a receivable end" can be construed to read on integrated electronic devices like USB flash drives and Bluetooth speakers, where the "stand" and "article" may not be distinct components in the manner described in the patent.
- Technical Questions: The complaint lacks factual allegations detailing how the accused products meet the specific structural and geometric limitations of the claims. A key evidentiary question will be whether Plaintiff can demonstrate that the ornamental feet on the accused products contain a "recess" for receiving the "article" and possess "side surfaces intersecting one another in a common plane," as a purely ornamental design may not meet these functional and structural requirements.
V. Key Claim Terms for Construction
The Term: "a stand in the shape of first and second feet"
Context and Importance: The entire infringement theory rests on this term. The case will likely turn on whether the integrated, ornamental bases of the accused character-themed products constitute a "stand" as claimed, or are merely non-functional design elements. Practitioners may focus on this term because it links the functional requirements of a "stand" to the ornamental "shape of... feet."
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent's title is "Article Assembly," not "Toothbrush Holder," and Claim 1 recites "an article," suggesting broader applicability beyond the primary embodiment (’959 Patent, Title; col. 3:3). The use of stylized characters like Bugs Bunny in the original patent figures could support construing "shape of... feet" to encompass a wide range of character depictions.
- Evidence for a Narrower Interpretation: The specification repeatedly describes the stand's functional purpose of "retaining handle 1 in a vertical position when the stand 5 is placed on a horizontal surface" (’959 Patent, col. 2:39-41). A defendant could argue this language limits the term to structures that are primarily functional stands, not merely ornamental bases of a larger product.
The Term: "said side surfaces intersecting one another in a common plane"
Context and Importance: This is a precise, geometric limitation that imposes a specific structural requirement on the accused "stand." Proving infringement requires showing this exact geometric feature is present in the accused products.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The complaint does not provide sufficient detail for analysis of arguments for a broader interpretation.
- Evidence for a Narrower Interpretation: The claim language is explicit and technical. The detailed description reiterates this structure: "First and second feet 6a and 6b each include a side surface, the side surfaces intersect one another in a common plane" (’959 Patent, col. 2:41-43). This language suggests the limitation requires a specific, planar intersection, which may not be present in the rounded or stylized feet of a toy or novelty item.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement but does so in a conclusory manner, without pleading specific supporting facts, such as references to user manuals or advertising that would instruct or encourage an infringing use (Compl. ¶20).
- Willful Infringement: The complaint makes a bare allegation that infringement has been "willful and deliberate" but provides no factual basis to support this claim, such as allegations of pre-suit notice or copying of the patented invention (Compl. ¶22).
VII. Analyst’s Conclusion: Key Questions for the Case
- Evidentiary Sufficiency: A primary hurdle for the Plaintiff will be an evidentiary one: can sufficient evidence be produced to demonstrate that the accused products meet every specific structural and geometric limitation of the asserted claims—particularly the requirements of a "recess" in a "single heel portion" and "side surfaces intersecting one another in a common plane"—when the complaint itself provides no such detail?
- Patent Enforceability: A threshold legal question will surround the patent’s enforceability during the alleged infringement period. Given the patent’s history with a terminal disclaimer tied to a parent patent, which was held by a third party until just a few months before the patent’s expiration, the court may need to resolve whether Plaintiff had proper standing to sue for infringement occurring in the narrow damages window.
- Definitional Scope: A core issue will be one of definitional scope: can the claim term "a stand," described in the patent as a discrete component for holding an article upright, be construed to cover the integrated, ornamental feet of the accused novelty electronic devices, or is there a fundamental mismatch between the patented invention and the accused products?