Hyper Ice Inc v. Big 5 Corp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Hyper Ice, Inc. (California) and Hyperice IP Subco, LLC (Delaware)
  • Defendant: Big 5 Corp. (Delaware)
  • Plaintiff’s Counsel: Scott Douglass & McConnico LLP; Miller Barondess LLP
• Case Identification: 6:24-cv-00033, W.D. Tex., 01/16/2024
• Venue Allegations: Plaintiff alleges venue is proper because Defendant has a regular and established place of business in the district, operates physical stores there, and has committed acts of infringement in the district.
• Core Dispute: Plaintiff alleges that Defendant’s percussive massage devices infringe a utility patent related to the internal mechanics and head-attachment system of such devices, as well as a design patent covering the ornamental appearance of a percussive massager.
• Technical Context: The technology concerns handheld, battery-powered percussive massage devices used for deep muscle stimulation and therapy.
• Key Procedural History: The asserted utility patent, U.S. 11,857,482, claims priority to a provisional application filed over a decade before the patent issued, which may be relevant to analyses of prior art. The asserted design patent, U.S. D886,317, is the result of a chain of continuation and divisional applications originating from a 2018 application.

Case Timeline

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 11,857,482 - "Massage Device Having Variable Stroke Length," issued January 2, 2024

The Invention Explained

• Problem Addressed: The patent’s background section states that prior art massaging devices suffer from deficiencies such as being "bulky, get very hot, are noisy and/or are difficult to use for extended periods of time" (’482 Patent, col. 1:28-31).
• The Patented Solution: The invention claims to solve these problems through a specific mechanical arrangement. It describes a device with a motor and drive mechanism (e.g., a "Scotch yoke") that converts rotary motion into a linear, reciprocating motion for a piston (’482 Patent, col. 5:1-14). The patent also discloses a "quick-connect system" that allows a user to attach and detach different massaging heads, potentially while the device is still in operation (’482 Patent, col. 6:46-56).
• Technical Importance: The design addresses key usability issues in the field of personal therapeutic devices by focusing on noise reduction, thermal management, and user convenience for swapping attachments.

Key Claims at a Glance

• The complaint asserts independent Claim 1 (Compl. ¶21).
• The essential elements of Claim 1 are:
  • a housing;
  • a piston with a distal end having a substantially cylindrical bore;
  • a motor operatively connected to the piston to cause reciprocation;
  • a drive mechanism controlling a predetermined stroke length of the piston; and
  • a quick-connect system configured to secure a massaging head by the head being slid into the bore while the piston reciprocates.
• The complaint asserts "at least Claim 1," reserving the right to assert other claims (Compl. ¶21).

U.S. Patent No. D886,317 - "Percussive Massage Device," issued June 2, 2020

• Technology Synopsis: This design patent protects the ornamental, non-functional appearance of a percussive massage device (’D’317 Patent, Claim). The protected design is defined by the visual characteristics shown in the patent's figures, including its overall T-shaped configuration, proportions, and surface details, while aspects shown in broken lines are disclaimed.
• Asserted Claims: The single claim for "The ornamental design for a 'percussive massage device,' as shown and described" (Compl. ¶¶ 25-26; ’D’317 Patent, Claim).
• Accused Features: The complaint alleges that the overall ornamental appearance of the "HY-IMPACT Percussion Massager and the Aduro Sport Elite Percussion Massager" infringes the patented design (Compl. ¶18).

III. The Accused Instrumentality

Product Identification

The complaint identifies the accused products as the "HY-IMPACT (Nano Massager, Percussion Massager); Aduro (Sport Elite Percussion Massager); and Renew (Deep Tissue Percussion Massager)" (Compl. ¶13).

Functionality and Market Context

The complaint describes the accused products as "battery-powered percussive massagers" (Compl. ¶21). It alleges that Defendant offers for sale and/or sells these products through its retail stores in the Western District of Texas and via its website (Compl. ¶¶ 4, 13). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

’482 Patent Infringement Allegations

Identified Points of Contention

• Functional Question: A central question will be whether the accused products’ "quick-connect system" is, in fact, "configured to secure" a massage head while the piston is reciprocating, as required by the final limitation of Claim 1. The complaint does not provide evidence demonstrating this specific functionality, which may become a key point of discovery and expert testimony.
• Evidentiary Question: The complaint provides a conclusory recitation of the claim elements without mapping them to specific components or operations of the accused products. A primary point of contention will be what evidence Plaintiff can produce to show that the internal structure of the accused devices—particularly the "drive mechanism" and "piston" assembly—matches the claimed configuration.

V. Key Claim Terms for Construction

• Term for Construction: "quick-connect system"

  • Context and Importance: This term is critical because its construction will define the scope of the most specific functional limitation in Claim 1. The dispute may center on whether the term requires a specific structure (like the magnetic one shown in the patent) or more broadly covers any mechanism that allows for rapid attachment, particularly while the device is in motion.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification states the system "allows a user to quickly switch massaging heads" and may be used "without turning off the massaging device" (’482 Patent, col. 6:51-56). This language supports a primarily functional definition.
    • Evidence for a Narrower Interpretation: The patent’s detailed description illustrates a specific embodiment of the system that uses magnets ("magnet 606", "magnet 624") to hold the head in place (’482 Patent, col. 6:57-68). A defendant may argue the term should be limited to or informed by this magnetic implementation.

• Term for Construction: "drive mechanism that controls a predetermined stroke length of the piston"

  • Context and Importance: This term defines the core power-transmission element of the invention. Its construction will determine whether the claim covers a wide variety of internal mechanisms or is effectively limited to the specific type disclosed in the patent.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language is functional and does not recite a specific type of mechanism. This may support an interpretation that covers any mechanical linkage converting motor rotation into a fixed-length linear motion.
    • Evidence for a Narrower Interpretation: The specification provides a detailed description and figures for a specific "Scotch yoke" drive mechanism that uses an offset "crank pin 213" on a "flywheel 212" (’482 Patent, col. 5:1-14). A party could argue that the claims should be construed in light of this being the only drive mechanism described in detail.

VI. Other Allegations

• Indirect Infringement: The complaint does not contain allegations of induced or contributory infringement. It alleges only "direct infringement" of the asserted patents (Compl. ¶¶ 11, 16).
• Willful Infringement: The complaint does not include a formal count for willful infringement or specific factual allegations to support a claim of willfulness (e.g., pre-suit knowledge of the patents). The prayer for relief includes a request for a declaration that the case is "exceptional" under 35 U.S.C. §285, which is the basis for awarding attorneys' fees, but the pleading does not establish a factual predicate for such a finding (Compl. p. 6, ¶5).

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

• A key evidentiary and functional question for the utility patent will be one of operational capability: Can the plaintiff provide evidence that the accused products' attachment mechanism is actually "configured to secure" a massage head while the piston is actively reciprocating? The answer will likely depend on expert testing and analysis of the physical products.
• The case may also turn on a question of claim scope: Will the term "quick-connect system" be given a broad functional definition, or will it be narrowed by the specification’s disclosure of a specific magnetic embodiment? The court's construction of this term could be dispositive of infringement for the '482 patent.
• For the design patent, the central issue will be the application of the "ordinary observer" test: Would an ordinary observer, familiar with the prior art designs of percussive massagers, be deceived into purchasing one of the accused products believing it was the product embodying the patented design?