Catanzaro v. Walmart Stores Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: David J. Catanzaro (Pennsylvania)
  • Defendant: Walmart Stores, Inc., et al. (various jurisdictions)
  • Plaintiff’s Counsel: David J. Catanzaro, pro se
• Case Identification: 3:22-cv-01768, M.D. Pa., 01/06/2023
• Venue Allegations: Plaintiff alleges venue is proper in the Middle District of Pennsylvania as it is the district where "a substantial part of the acts and omissions giving rise to the claims occurred."
• Core Dispute: Plaintiff alleges that various novelty products sold by Defendants, such as "Solar Dancers" and "Solar Bobble Heads," infringe a patent related to an article assembly with a stand shaped like a pair of feet.
• Technical Context: The technology at issue is a mechanical stand for holding an object upright, primarily for use in consumer novelty goods.
• Key Procedural History: The patent-in-suit expired in 2016, and this action seeks damages for a six-year lookback period. The complaint notes that the asserted patent is a continuation of a parent patent ('532 patent) that was previously assigned to Church & Dwight Co. as part of a litigation settlement. A terminal disclaimer required joint ownership for enforceability, and the complaint alleges the '532 patent was assigned back to the Plaintiff in 2016, restoring his right to sue. A Certificate of Correction was issued for the patent-in-suit in 2010, replacing original drawing figures depicting specific characters with more generic illustrations of the invention.

Case Timeline

Date	Event
1995-12-28	U.S. Patent No. 7,653,959 Priority Date
2010-02-02	U.S. Patent No. 7,653,959 Issues
2010-05-18	Certificate of Correction for '959 Patent Issued
2016-08-31	'532 Patent Assigned from Church & Dwight to Plaintiff
2016-12-30	U.S. Patent No. 7,653,959 Expires
2022-11-04	Original Complaint Filing Date
2023-01-06	Third Amended 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 (’959 Patent).

The Invention Explained

• Problem Addressed: The patent background describes prior art holders for articles like toothbrushes but states that such units "would not be suitable for the purposes of the present invention as heretofore described," implying a need for an improved design for holding such articles ('959 Patent, col. 1:39-42).
• The Patented Solution: The invention is an assembly that includes an article and a stand designed to hold it in a vertical position on a horizontal surface ('959 Patent, Abstract). The stand's key feature is its shape: a pair of "feet" that are "joined together and positioned together to form a continuous bottom supporting surface" and a "single heel portion" ('959 Patent, col. 2:32-37). This single heel portion contains a recess for receiving the end of the article, providing stability ('959 Patent, col. 2:37-43).
• Technical Importance: The design provides a stable, and potentially ornamental, base for holding elongated consumer articles upright ('959 Patent, col. 1:15-17).

Key Claims at a Glance

• The complaint asserts independent claims 1 and 5 ('959 Patent, col. 3:3-19, col. 4:5-18; Compl. ¶33).
• Independent Claim 1 recites an assembly comprising:
  • An article having a receivable end, and
  • A stand in the shape of first and second feet,
  • The feet are elongated to define a toe end and a common heel end,
  • The feet are joined to form a continuous bottom supporting surface,
  • The heel ends are positioned together to form a single heel portion,
  • The single heel portion has a recess for receiving the article's end,
  • The first and second feet each include a side surface, and
  • The side surfaces intersect in a common plane.
• Independent Claim 5 recites the stand itself, with elements substantially similar to the stand described in claim 1.
• The complaint asserts infringement of dependent claims 2-4 and 6-8 (Compl. ¶33).

III. The Accused Instrumentality

Product Identification

• The complaint identifies the accused instrumentalities as broad categories of products, including but not limited to "Solar Dancers," "Solar Dancing Figurines," "Solar Dancing Toys," "Solar Bobble Heads," and "Solar Dancing Animals" (Compl. ¶30, 31).

Functionality and Market Context

• The complaint does not provide specific details on the technical functionality or construction of the accused products. It alleges that the named Defendants have manufactured, imported, offered for sale, or sold these products within the judicial district (Compl. ¶30, 31). The complaint does not contain allegations regarding the products' specific market positioning beyond their general classification as novelty items.

IV. Analysis of Infringement Allegations

The complaint does not provide sufficient detail to construct an element-by-element infringement chart. The infringement theory is stated in a conclusory manner, alleging that Defendants' products "embody and/or practice the patented invention" and directly infringe claims 1-8 of the ’959 Patent (Compl. ¶30, 33). No specific product features are mapped to any specific claim limitations.

No probative visual evidence provided in complaint.

• Identified Points of Contention:
  • Factual Questions: The central dispute will likely concern the actual physical structure of the accused products. What evidence does the Plaintiff possess that the bases of products like "Solar Dancers" are constructed "in the shape of first and second feet" that are "joined together" to form a "single heel portion" with a "recess," as required by the claims?
  • Scope Questions: The infringement analysis may raise the question of whether the base of a mass-produced novelty toy can be considered to meet the specific structural and aesthetic limitations of the claims, such as having "side surfaces intersecting one another in a common plane."

V. Key Claim Terms for Construction

• The Term: "a stand in the shape of first and second feet" (claims 1 and 5).

• Context and Importance: This term is central to the patent's novelty and defines the core structure of the claimed invention. The outcome of the infringement analysis will heavily depend on how broadly or narrowly this phrase is construed, specifically whether the bases of the accused products fall within its scope.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification describes the element generically as "first and second feet 6a and 6b" without limiting them to a particular style ('959 Patent, col. 2:30-31). The 2010 Certificate of Correction, which replaced drawings of specific characters with generic figures, could be argued to support a construction not tied to any particular recognizable character's feet ('959 Patent, p. 15).
  • Evidence for a Narrower Interpretation: The patent figures, both original and corrected, depict distinct, recognizable feet with features like toes and a heel ('959 Patent, p. 11, 17). A defendant could argue that this term requires a structure that an ordinary observer would identify as a pair of feet, not merely any stand with a bifurcated base.

• The Term: "joined together and positioned together to form a continuous bottom supporting surface" (claims 1 and 5).

• Context and Importance: This limitation describes the required relationship between the "first and second feet." Whether the accused products infringe will depend on whether their bases are constructed in this specific manner.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: This language could be interpreted to cover any single-piece molded base that is flat on the bottom and has two foot-like protrusions, thereby forming a "continuous" surface.
  • Evidence for a Narrower Interpretation: The specification states that the "heel end of each first and second feet" are "positioned together to form a single heel portion" ('959 Patent, col. 2:35-37). This may suggest a narrower construction requiring the appearance or structure of two distinct heel elements being merged, rather than simply a unitary base.

VI. Other Allegations

• Indirect Infringement: The complaint alleges that Defendants induced infringement in violation of 35 U.S.C. § 271(b) (Compl. ¶33). It does not, however, plead specific facts supporting the requisite knowledge and intent, such as referencing user manuals or advertising that instruct on an infringing use.
• Willful Infringement: The complaint alleges that "Defendants infringement of the ’959 patent have been willful and deliberate" (Compl. ¶34). The pleading does not allege any facts to support pre-suit knowledge of the patent by any defendant.

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

• Evidentiary Sufficiency: A threshold issue is whether the complaint's conclusory infringement allegations, which lack any specific factual support mapping accused product features to claim limitations, are sufficient to state a plausible claim for relief. The case will depend on what factual evidence of the accused products' design and construction is brought forward.
• Definitional Scope: A core legal question will be one of claim construction: can the term "a stand in the shape of first and second feet," which is rooted in a specific structural and ornamental configuration, be construed to cover the potentially generic bases of the accused "Solar Dancer" novelty products?
• Enforceability: While the complaint presents a clear narrative to address the patent’s terminal disclaimer and ownership history (Compl. ¶23-25), the complex procedural background involving a prior lawsuit, settlement, and assignment may present an area for defendants to explore for potential defenses.