DCT
3:24-cv-00838
Phoenix Worldwide LLC v. Swift Paws Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Phoenix Worldwide LLC (Tennessee)
- Defendant: Swift Paws Inc (Delaware)
- Plaintiff’s Counsel: Wright Cortesi & Gilbreath
- Case Name: Phoenix Worldwide, LLC v. Swift Paws, Inc.
- Case Identification: 3:24-cv-00838, M.D. Tenn., 07/11/2024
- Venue Allegations: Plaintiff alleges venue is proper in the Middle District of Tennessee because Defendant directed enforcement activities into the district by filing a patent infringement complaint with Amazon.com against Plaintiff, a Tennessee resident, which resulted in the de-listing of Plaintiff's product and caused harm within the district.
- Core Dispute: Plaintiff seeks a declaratory judgment that its "Fast Fetch Toy" does not infringe Defendant's patents related to motorized lure chasing systems for animals, and further asks the court to declare the patents invalid and unenforceable.
- Technical Context: The technology concerns consumer-grade, pulley-based lure coursing systems designed to provide exercise and entertainment for pets by pulling a lure or flag along a user-defined path.
- Key Procedural History: The action was precipitated by an infringement complaint Defendant filed with Amazon on May 3, 2024, targeting Plaintiff's product and alleging infringement of the ’801 Patent. This led Amazon to remove Plaintiff's product from its marketplace. The complaint alleges the patents-in-suit are invalid based on Defendant's own prior public uses and sales of the invention more than one year before the patents' effective filing dates. It further alleges the patents are unenforceable due to inequitable conduct for failing to disclose this prior art to the USPTO during prosecution.
Case Timeline
| Date | Event |
|---|---|
| 2011-12-08 | Alleged first sale of Defendant's "Swift Paws" product |
| 2011-11-14 | Alleged public disclosure via YouTube video by Defendant |
| 2012-10-19 | Alleged offer for sale on Defendant's website |
| 2013-12-17 | Priority Date for ’904 and ’801 Patents |
| 2020-04-07 | ’904 Patent Issue Date |
| 2022-04-12 | ’801 Patent Issue Date |
| 2024-04-21 | Plaintiff begins offering "Fast Fetch Toy" for sale on Amazon |
| 2024-05-03 | Defendant files infringement complaint with Amazon against Plaintiff |
| 2024-07-11 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,609,904 - Lure Chasing System (Issued Apr. 7, 2020)
The Invention Explained
- Problem Addressed: The patent's background section identifies operational problems and safety risks in conventional lure chasing systems, which often use open pulleys. These systems can allegedly injure an animal's mouth or limbs, and the high-resiliency lines can cause burns or trauma if an animal becomes entangled. Furthermore, the open pulleys are described as being prone to misalignment and line failure (’904 Patent, col. 2:27-42).
- The Patented Solution: The invention provides a lure chasing system with enclosed pulley units to improve safety and reliability. A motorized drive unit and one or more transfer units each contain a pulley within a housing composed of a cover and a base. The housing is designed with two distinct passages: a larger "drive window" to allow the attached lure to pass through, and a smaller "opening" formed by "arcuate surfaces" that guide only the lure line, preventing it from slipping off the pulley during operation (’904 Patent, Abstract; col. 4:36-55; Fig. 3).
- Technical Importance: This design sought to make lure coursing technology safer for "do it yourself" consumer use by enclosing the moving parts and implementing a line management system to prevent derailment and potential injury (’904 Patent, col. 2:21-27).
Key Claims at a Glance
- The complaint contests all claims and specifically references independent claims 1 and 11 (Compl. ¶¶ 38, 57). Independent Claim 1 is representative.
- Independent Claim 1 requires, in part:
- A motorized pulley unit with a drive housing enclosing a drive pulley.
- The drive housing has a cover and base with annular recesses that at least partially enclose the drive pulley.
- A transfer pulley unit with a housing enclosing a transfer pulley.
- A lure line engaging both pulleys to form a loop, with an attached lure.
- The drive housing forms a "drive window" of a certain height to allow the lure to pass through.
- The drive housing cover and base have "arcuate surfaces" that together form an "opening" for the lure line, where the opening is smaller than the drive window.
- The complaint expressly reserves the right to assert additional grounds of non-infringement (Compl. ¶ 40).
U.S. Patent No. 11,297,801 - Lure Chasing System (Issued Apr. 12, 2022)
The Invention Explained
- Problem Addressed: As a continuation-in-part of the application leading to the ’904 Patent, this patent addresses the same fundamental safety and reliability issues with open-pulley lure coursing systems (’801 Patent, col. 1:32-54).
- The Patented Solution: The ’801 Patent refines the housing design by introducing an "inwardly beveled drive pulley shield." This shield is part of the housing cover and, in a closed position, combines with the groove of the drive pulley to form a "substantially solid inner surface" for the "lure passthrough window." This specific geometry is intended to more robustly prevent the lure line from derailing and to actively guide it back into the pulley groove if it becomes dislodged (’801 Patent, Abstract; col. 7:1-12; Fig. 7).
- Technical Importance: This patent claims a more specific geometric solution to the line-derailment problem, focusing on the shape of the surfaces immediately surrounding the pulley to ensure continuous and safe operation.
Key Claims at a Glance
- The complaint contests all claims and specifically references independent claims 1 and 10 in its indefiniteness arguments (Compl. ¶ 89). Independent Claim 1 is representative.
- Independent Claim 1 requires, in part:
- A drive unit with a drive pulley enclosed by a drive pulley housing.
- The housing cover includes an "inwardly beveled drive pulley shield" and a hinge.
- When closed, the housing comprises a "lure passthrough window that includes a substantially solid inner surface comprised of a drive pulley groove and the inwardly beveled drive pulley shield."
- A transfer unit with similar features, including an "inwardly beveled transfer pulley shield."
- A lure line and an attached lure.
- The complaint expressly reserves the right to assert additional grounds of invalidity (Compl. ¶ 90).
III. The Accused Instrumentality
- Product Identification: Plaintiff's "Fast Fetch Toy" (Compl. ¶ 2).
- Functionality and Market Context: The complaint describes the Fast Fetch Toy as a "pulley-based system" where a user arranges four pulley bases on the ground, runs a string through them, and attaches a flag lure (Compl. ¶ 26). The complaint provides an illustration of the Fast Fetch Toy, which shows four pulley bases, a remote control, and a flag lure (Compl. ¶ 25). Plaintiff states it developed the product as a lower-cost alternative to Defendant's "Swift Paws Inc" product, which it deemed "too expensive for the average consumer" (Compl. ¶ 22). The Fast Fetch Toy was sold exclusively on Amazon before being removed following Defendant's infringement report (Compl. ¶¶ 16, 21).
IV. Analysis of Infringement Allegations
’904 Patent Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement, arguing that the Fast Fetch Toy lacks multiple required claim elements.
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| wherein said drive housing cover and drive housing base comprise a drive window having a height... | Plaintiff alleges this feature is not present in the Fast Fetch Toy. | ¶38 | col. 7:7-12 |
| wherein said drive housing cover comprises an arcuate surface and said drive housing base comprises an arcuate surface, said...surfaces together forming an opening... | Plaintiff alleges this feature is not present in the Fast Fetch Toy. | ¶38 | col. 7:13-22 |
| wherein said drive pulley is at least partially enclosed by said drive housing cover annular recess and said drive housing base annular recess | Plaintiff alleges this feature is not present in the Fast Fetch Toy. | ¶38 | col. 5:46-52 |
| wherein said first portion [of the drive pulley] extends into said drive housing cover annular recess, and wherein said second portion extends into said drive housing base annular recess | Plaintiff alleges this feature is not present in the Fast Fetch Toy. | ¶38 | col. 5:53-59 |
- Identified Points of Contention:
- Technical Questions: The primary factual dispute appears to be whether the Fast Fetch Toy's pulley units incorporate the specific housing structure of the claims. The complaint's general description and visual evidence (Compl. ¶ 25) suggest a potentially simpler, more open design that may lack the claimed "annular recesses," distinct "window" and "opening," and guiding "arcuate surfaces." The complaint also includes photographs allegedly showing the inventor with an early version of the system, which may be used to argue about the scope of the invention (Compl. ¶ 53).
- Scope Questions: The case may turn on the construction of terms like "enclosed," "drive window," and "opening." A central question for the court will be whether these terms require the specific two-part, hinged housing with distinct lure and line passages as depicted in the patent's embodiments, or if they can be construed more broadly to read on other pulley housing designs.
’801 Patent Infringement Allegations
The complaint does not provide a detailed, element-by-element non-infringement theory for the ’801 Patent, instead focusing its allegations on invalidity and unenforceability. The general non-infringement arguments made against the ’904 Patent, which claims a less-specific housing structure, would presumably apply with greater force to the more detailed claims of the ’801 Patent.
V. Key Claim Terms for Construction
Term: "arcuate surfaces...together forming an opening" (’904 Patent, Claim 1)
- Context and Importance: Plaintiff alleges the accused product lacks this feature. The construction of this term is critical to determining whether the accused product's potentially simpler pulley entry mechanism infringes. Practitioners may focus on whether this requires a specific structure, separate from the main "window," whose sole purpose is to guide the line.
- Intrinsic Evidence for a Broader Interpretation: The term "arcuate surface" is a general geometric description. An argument could be made that any curved surface on the housing that guides the line into the pulley meets this limitation.
- Intrinsic Evidence for a Narrower Interpretation: The claim language distinguishes between the "drive window" (for the lure) and the "opening" (for the line), stating the opening is smaller (’904 Patent, col. 7:20-25). Figure 3 depicts the "opening" (108) as a narrow gap at the bottom of the housing, separate from the larger "window" (48), suggesting the "arcuate surfaces" must form this specific, smaller passage.
Term: "substantially solid inner surface" (’801 Patent, Claim 1)
- Context and Importance: This term defines the core novel feature of the ’801 Patent's claims. Plaintiff alleges this term is indefinite (Compl. ¶ 89). Its construction is therefore central to both validity and infringement.
- Intrinsic Evidence for a Broader Interpretation: The word "substantially" suggests the surface does not need to be perfectly uninterrupted. An argument could be made that as long as the combined surfaces are functionally solid enough to guide the line and prevent escape, the limitation is met.
- Intrinsic Evidence for a Narrower Interpretation: The claim explicitly defines this surface as being "comprised of a drive pulley groove and the inwardly beveled drive pulley shield" (’801 Patent, Claim 1). This suggests the term is not merely functional but requires the combination of these two specific structural components. The specification emphasizes this combination serves to "ensure that the lure line cannot 'ride up' from the groove" (’801 Patent, col. 7:29-32).
VI. Other Allegations
- Unenforceability / Bad Faith Assertions: The complaint does not contain allegations of willful infringement against the Plaintiff. Instead, it alleges that Defendant engaged in inequitable conduct by failing to disclose its own alleged prior sales and public uses to the USPTO during prosecution, and that it did so with an intent to deceive the agency (Compl. ¶¶ 71, 98). The complaint further alleges that Defendant asserted the patents in "bad faith," knowing them to be invalid and not infringed (Compl. ¶ 103). These allegations form the basis for Plaintiff's unenforceability claim and its request for attorneys' fees under 35 U.S.C. § 285 (Compl. ¶¶ B, F).
VII. Analyst’s Conclusion: Key Questions for the Case
- Prior Art and Public Use: A dispositive issue will be factual: did Defendant's activities between 2011 and 2013, including alleged sales and YouTube video publications, place the claimed invention in the public domain more than one year before the December 2013 priority date, thereby invalidating the patents under the on-sale and public use bars of 35 U.S.C. § 102?
- Intent and Unenforceability: A related and critical question is one of intent: does the evidence of Defendant's alleged pre-filing commercial activity support a finding that its failure to disclose this information to the USPTO was "but-for" material and done with a specific intent to deceive, which would render the patents unenforceable for inequitable conduct?
- Infringement and Structural Equivalence: Should the patents survive the validity and enforceability challenges, the core infringement question will be one of structural correspondence: does the Plaintiff's "Fast Fetch Toy" incorporate the specific, multi-component enclosed housing claimed in the patents, or is its design fundamentally different in a way that avoids the literal scope of the claims?