DCT

3:22-cv-01768

Catanzaro v. Walmart Stores Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:

  • Case Identification: 3:22-cv-01768, M.D. Pa., 11/07/2022

  • Venue Allegations: Plaintiff alleges venue is proper in the Middle District of Pennsylvania on the basis that it is the district where "a substantial part of the acts and omissions giving rise to the claims occurred."

  • Core Dispute: Plaintiff alleges that Defendants’ "Solar Dancers" and related novelty figurine products infringe a patent related to an article assembly with a stand for holding an item in an upright position.

  • Technical Context: The technology at issue is a mechanical stand, specifically one shaped like a pair of joined feet, designed to hold an article such as a toothbrush or novelty item vertically on a flat surface.

  • Key Procedural History: The complaint states that the patent-in-suit, U.S. Patent No. 7,653,959, is subject to a terminal disclaimer requiring joint ownership with a parent patent (U.S. Patent No. 6,026,532) for enforceability. Plaintiff alleges this condition is met because the parent patent, previously assigned to a third party, was assigned back to the Plaintiff on August 31, 2016. The patent-in-suit expired on December 30, 2016, and this action seeks damages for infringement within the six-year statutory period preceding the patent's expiration.

Case Timeline

Date Event
1995-12-28 Earliest Priority Date for ’959 Patent
2010-02-02 ’959 Patent Issued
2010-02-02 Alleged Infringement by Defendants Begins (on or after)
2016-08-31 Parent ’532 Patent Assigned Back to Plaintiff
2016-12-30 ’959 Patent Expired
2022-11-07 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, titled "Article Assembly", issued February 2, 2010 (’959 Patent).

The Invention Explained

  • Problem Addressed: The patent's background section describes prior art holders for items like toothbrushes, such as those with stands comprising separate and unattached feet, and notes that such designs "would not be suitable for the purposes of the present invention" (’959 Patent, col. 1:21-42). The stated goal is to "overcome the shortcomings of the prior art devices" (’959 Patent, col. 1:43-45).
  • The Patented Solution: The invention is an assembly consisting of an article and a stand designed to hold it vertically (’959 Patent, Abstract). The key feature is the stand, which is shaped like a pair of feet "joined together and positioned together to form a continuous bottom supporting surface" and a "single heel portion" (’959 Patent, col. 1:32-36). This single heel portion contains a recess into which the end of the article can be inserted for stable, upright support on a horizontal surface (’959 Patent, col. 1:36-42; Fig. 1).
  • Technical Importance: The design aims to provide a stable, unitary stand that is simple in construction and "economical in cost to manufacture" (’959 Patent, col. 2:2-4).

Key Claims at a Glance

  • The complaint asserts independent claims 1 and 5, as well as dependent claims 2-4 and 6-8 (Compl. ¶24).
  • Independent Claim 1 requires:
    • An article having a receivable end.
    • 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 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 selectively receiving the article's end.
    • The first and second feet each include a side surface, and these side surfaces intersect in a common plane.
  • Independent Claim 5 recites the stand itself, with largely identical structural limitations as the stand in claim 1.

III. The Accused Instrumentality

Product Identification

The complaint identifies the accused products by various commercial names, including "Solar Dancers," "Solar Dancing Figurines," "Solar Dancing Toys," and "Christmas Sunny Jigglers" (Compl. ¶21).

Functionality and Market Context

The complaint does not provide a technical description of the construction or operation of the accused products. It identifies them as novelty items sold by the defendants (Compl. ¶¶21-22). The infringement allegations suggest the products are figurines that incorporate a base, and it is this base that is alleged to be the infringing "stand." No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint alleges that the accused products directly infringe claims 1-8 of the ’959 Patent but does not provide a claim chart or a detailed, element-by-element mapping of the claim limitations to the features of the accused products (Compl. ¶24). The infringement theory appears to be that the base of the "Solar Dancers" and related figurines embodies the "stand" as recited in the asserted claims. The lack of specific factual allegations mapping claim elements to product features makes a detailed analysis based solely on the complaint not possible.

  • Identified Points of Contention:
    • Scope Questions: A primary dispute will likely concern the scope of the phrase "a stand in the shape of first and second feet." The question for the court may be whether this phrase, as used in the patent, can be construed to read on the bases of the accused novelty figurines, or if its meaning is limited to the more distinct foot-like structures depicted in the patent's figures (’959 Patent, Figs. 1-5).
    • Technical Questions: The complaint does not present evidence that the accused products contain the specific structures recited in the claims. For example, it raises the question of what evidence will show that the accused products have a base formed from two distinct "feet" that are "joined together" to form both a "continuous bottom supporting surface" and a "single heel portion" as required by the claims (’959 Patent, col. 3:5-11).

V. Key Claim Terms for Construction

  • The Term: "a stand in the shape of first and second feet" (Claim 1).
  • Context and Importance: This term is central to defining the patented structure. The infringement analysis will depend entirely on whether the base of the accused "Solar Dancer" products falls within the scope of this limitation. Practitioners may focus on this term because the patent's figures depict distinct feet, while the accused products are alleged to be generic novelty items whose bases may not have such a clear shape.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A party could argue that the term does not require an anatomically precise representation of feet, pointing to specification language describing the invention more generally as an "assembly which may contain a combination of appealing qualities" (’959 Patent, col. 1:16-17).
    • Evidence for a Narrower Interpretation: A party could argue the term is limited by the patent's specific embodiments. The specification consistently refers to "first and second feet 6a and 6b" and describes their specific arrangement, including a "toe end" and a "common heel end" (’959 Patent, col. 1:30-33). All figures in the patent depict clear, recognizable foot structures, which may be used to argue for a narrower construction limited to such shapes (’959 Patent, Figs. 1-5).

VI. Other Allegations

  • Indirect Infringement: The complaint makes a conclusory allegation of induced infringement under 35 U.S.C. § 271(b), stating Defendants acted by "knowingly and actively inducing others to infringe" (Compl. ¶24). The complaint does not, however, allege specific facts to support the requisite knowledge or intent, such as referencing user manuals or advertising materials that instruct on an infringing use.
  • Willful Infringement: The complaint alleges that Defendants' infringement has been "willful and deliberate" (Compl. ¶25). No specific facts are alleged to support this claim, such as pre-suit knowledge of the patent or a failure to respond to a notice of infringement.

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

  1. A core issue will be one of definitional scope: can the claim term "a stand in the shape of first and second feet," which is described and depicted in the patent with specific structural details, be construed broadly enough to encompass the bases of the accused "Solar Dancer" novelty figurines?
  2. A second key issue will be evidentiary: given the complaint's lack of technical detail or visual evidence regarding the accused products, a central question will be whether the Plaintiff can produce evidence demonstrating that these products actually incorporate the specific structural limitations of the asserted claims, such as two "feet" that are "joined together" to form a "single heel portion."
  3. A potential threshold question relates to patent enforceability: did the timing of the patent assignment mentioned in the complaint satisfy the "joint ownership" requirement of the terminal disclaimer for the full period for which damages are sought? Defendants may scrutinize the chain of title to challenge the patent's enforceability during the alleged infringement period.