DCT
4:23-cv-01173
Contego Spa Designs Inc v. T Spa Mfg LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Contego Spa Designs, Inc. (Jurisdiction not specified in provided documents)
- Defendant: T-Spa Mfg., LLC, T-SPA DEPOT, LLC, and US Nails Spa, Inc. (Jurisdiction not specified in provided documents)
- Plaintiff’s Counsel: Amatong McCoy LLC
- Case Identification: 4:23-cv-01173, S.D. Tex., 03/30/2023
- Venue Allegations: The complaint likely alleges venue is proper in the Southern District of Texas because the defendants conduct business, maintain a regular and established place of business, and/or have sold the accused products within the district.
- Core Dispute: Plaintiff alleges that Defendants’ pedicure spa chairs infringe a patent related to a dual-basin system designed to manage water overflow when a disposable liner is in use.
- Technical Context: The technology addresses a known sanitation and operational issue in pedicure spas, where disposable liners used for hygiene block the basin's primary drain, creating a risk of overflow.
- Key Procedural History: The patent-in-suit, U.S. Patent No. 9,289,353, incorporates by reference and is related to U.S. Patent No. 7,950,979, issued to the same applicant. This prior patent and its prosecution history may be relevant for claim construction.
Case Timeline
| Date | Event |
|---|---|
| 2013-03-12 | Priority Date for U.S. Patent No. 9,289,353 |
| 2016-03-22 | Issue Date for U.S. Patent No. 9,289,353 |
| 2023-03-30 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,289,353 - “Pedicure Basin with Overflow Protection”
- Patent Identification: U.S. Patent No. 9,289,353 (“the ’353 Patent”), “Pedicure Basin with Overflow Protection,” issued March 22, 2016.
The Invention Explained
- Problem Addressed: The patent describes a sanitation problem in the pedicure industry where disposable plastic liners are used to cover a pedicure basin. While hygienic, these liners block the basin’s drain, making it difficult to adjust water temperature and creating a risk of water overflowing onto the floor if more water is added. (Compl. ¶12; ’353 Patent, col. 1:36-50).
- The Patented Solution: The invention is a pedicure basin assembly with a main basin and a secondary basin. The main basin features a peripheral rim with at least one section that is intentionally lower than the rest. When the water level rises too high, it spills over this lowered rim into the secondary basin, which can be separately drained, thus preventing an overflow onto the floor even when a liner blocks the main basin's drain. (Compl. ¶14; ’353 Patent, col. 2:4-9, Fig. 2A).
- Technical Importance: This design allows salons to maintain the sanitary benefits of using disposable liners while mitigating the associated risk of overflow and providing a mechanism for water level management. (Compl. ¶13; ’353 Patent, col. 2:25-32).
Key Claims at a Glance
- The complaint asserts at least independent claim 1.
- Essential elements of independent claim 1 include:
- A seat for a spa patient.
- A main basin for the patient's feet.
- The main basin having a peripheral rim, with at least a portion at a "lowered height."
- A liner covering the main basin's surface up to the rim.
- A secondary basin "communicated with the main basin" to collect overflow.
- The complaint may reserve the right to assert additional claims, including dependent claims 2-7. (Compl. ¶30).
III. The Accused Instrumentality
Product Identification
- The complaint accuses certain pedicure spa chairs manufactured, used, sold, or offered for sale by the Defendants. (Compl. ¶19).
Functionality and Market Context
- The complaint alleges that the accused pedicure chairs include a primary basin for a user's feet and an overflow management system that directs water from the primary basin to a secondary collection area or basin. (Compl. ¶20). This functionality is allegedly prominent in Defendants' products that are designed for use with disposable sanitary liners. The complaint includes a figure, reproduced from the patent, illustrating a square-like pedicure basin with a secondary basin incorporated into a spa chair. (Compl. ¶21, Fig. 2B).
IV. Analysis of Infringement Allegations
’353 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a seat arranged for receiving the patient in seating position thereon with the feet presented forwardly of the seat; | The accused spa chairs include a seat for a customer. (Compl. ¶22). | ¶22 | col. 2:56-58 |
| a main basin in front of the seat and arranged such that the feet of the patient sitting on the seat are received into the main basin; | The accused products have a main basin located at the foot of the chair for receiving the customer's feet during a pedicure. The complaint includes a visual, taken from the patent, showing this arrangement. (Compl. ¶23, Fig. 2B). | ¶23 | col. 2:59-62 |
| the main basin having a peripheral rim for containing liquid in the main basin; | The main basin of the accused products has a peripheral rim to contain water. (Compl. ¶24). | ¶24 | col. 3:50-51 |
| the main basin having at least a portion of the peripheral rim arranged at a lowered height relative to a prescribed height of the peripheral rim... | The complaint alleges the accused products' main basin has a rim with a lowered portion or spillway designed to allow water to overflow at a predetermined point. The complaint provides a diagram from the patent showing a lowered rim (230) relative to the main rim (240). (Compl. ¶25, Fig. 2A). | ¶25 | col. 3:20-23 |
| a liner covering a surface of the main basin up to the peripheral rim in an installed configuration; | The accused products are designed and intended to be used with disposable liners that cover the inside surface of the main basin. (Compl. ¶26). | ¶26 | col. 3:38-43 |
| and a secondary basin communicated with the main basin over said at least a portion of the peripheral rim so as to collect all overflow of liquid from the main basin... | The accused products feature a secondary basin or channel positioned to collect water that spills over the lowered portion of the main basin's rim. A patent figure included in the complaint shows an embodiment where the secondary basin (410) completely surrounds the main basin (420), allowing overflow from any point on the rim. (Compl. ¶27, Fig. 3A). The complaint also points to a patent figure showing an embodiment where the basins do not share a wall but are connected by a spout (550). (Compl. ¶28, Fig. 4A). | ¶27-28 | col. 3:57-64 |
- Identified Points of Contention:
- Scope Questions: A central dispute may concern the meaning of "communicated with." The patent discloses embodiments where the basins share a wall (Fig. 2A) and others where they are separate but connected by a spout (Fig. 4A). The question for the court will be how broadly this term should be construed and whether the specific structure of the accused products falls within that scope.
- Technical Questions: Infringement requires the presence of "a liner covering a surface of the main basin." Since the defendant sells the spa chair and liners may be sold separately or installed by the end-user (a salon), this raises a potential question of divided infringement. The plaintiff's ability to prove direct infringement by the defendant, or to meet the heightened standard for induced infringement, will be a key evidentiary challenge.
V. Key Claim Terms for Construction
The Term: "a secondary basin communicated with the main basin"
Context and Importance: The definition of this term is critical because it dictates the required structural relationship between the two basins. A narrow construction could exclude certain designs, while a broad one could cover a wider range of overflow systems. Practitioners may focus on this term to determine if the accused products, which may have distinct channels or spouts, meet this limitation.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification explicitly discloses an embodiment where the "main basin 510 and secondary basin 520 do not share a side wall," but are instead connected by a "slide (or spout) 550." (’353 Patent, col. 4:1-6, Fig. 4A). This language suggests "communicated with" does not require the basins to be integrated or share a physical wall.
- Evidence for a Narrower Interpretation: Other embodiments, including the one described as "preferred," show the secondary basin attached to and sharing a side wall with the main basin. (’353 Patent, col. 3:7-18, Fig. 2A). A defendant may argue these embodiments define the core invention and that "communicated with" requires a more direct, adjacent connection.
The Term: "a liner covering a surface of the main basin up to the peripheral rim in an installed configuration"
Context and Importance: The use of a liner is the stated motivation for the invention. Whether infringement can be found will depend on the role of the liner. This term is central to potential arguments about divided infringement, as the defendant may argue it only sells the chair, and it is the end-user who completes the claimed combination by installing a liner.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language requires the liner to be present "in an installed configuration," which could be interpreted to cover the system when it is put into its intended use by a customer, supporting an indirect infringement theory. The patent also describes the liner generically as a "flexible plastic liner" or a "hard shell liner," suggesting the term is not limited to a specific type. (’353 Patent, col. 5:7-10).
- Evidence for a Narrower Interpretation: A defendant may argue that direct infringement requires all elements to be present at one time under the defendant's control. Since the defendant may not install the liner itself, it might argue that it does not "make" or "use" the complete claimed invention. The claim recites "a liner," not just the capacity for a liner, which could support this narrower view.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendants induce infringement by providing customers with marketing materials, user manuals, and instructions that encourage and facilitate the use of the accused spa chairs with disposable liners in a manner that directly infringes the ’353 Patent. (Compl. ¶33).
- Willful Infringement: The complaint alleges that Defendants' infringement has been willful, suggesting it will seek enhanced damages. This allegation is likely based on the assertion that Defendants have had knowledge of the ’353 patent at least from the date of service of the complaint, if not earlier, and have continued their infringing activities. (Compl. ¶35).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of divided infringement: can the plaintiff prove that the defendants are liable for infringement when the final claim element—the liner in its "installed configuration"—is added by the end-user? This will turn on evidence of the defendants' instructions and control over their customers' use of the product.
- A second key issue will be one of claim scope: can the term "communicated with", which describes the relationship between the main and secondary basins, be construed to read on the specific design of the defendants' overflow systems? The outcome will depend on how the court weighs the different embodiments disclosed in the patent's specification.
- Finally, an evidentiary question will be whether the accused overflow system is designed "to collect all overflow" from the main basin as directed by the lowered rim. Defendants may argue their system is imperfect and does not meet this potentially limiting term in the claim.