Hyper Ice Inc v. Macy's Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Hyper Ice, Inc. (California) and Hyperice IP Subco, LLC (Delaware)
  • Defendant: Macy's Inc. (Delaware)
  • Plaintiff’s Counsel: Scott Douglass & McConnico LLP; Miller Barondess LLP
• Case Identification: 6:24-cv-00037, W.D. Tex., 01/16/2024
• Venue Allegations: Plaintiff alleges venue is proper because Defendant operates physical stores in the district, constituting a regular and established place of business, and has committed the alleged acts of infringement within the district.
• Core Dispute: Plaintiff alleges that Defendant’s sale of various third-party percussive massage guns infringes one utility patent and two design patents related to the mechanical and ornamental features of such devices.
• Technical Context: The technology concerns handheld, battery-powered percussive massage devices designed for deep muscle stimulation and therapeutic use.
• Key Procedural History: The asserted utility patent, U.S. 11,857,482, claims priority back to a 2013 provisional application and is part of a family of patents related to massage devices. The asserted design patents also claim priority through a series of continuation and divisional applications, indicating a multi-generational patent prosecution strategy. The complaint does not mention any prior litigation, licensing history, or post-grant proceedings involving the asserted patents.

Case Timeline

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

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

• Patent Identification: U.S. Patent No. 11,857,482, "Massage Device Having Variable Stroke Length," issued January 2, 2024. (Compl. ¶9).

The Invention Explained

• Problem Addressed: The patent's background section notes that prior art massaging devices suffered 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. 1:29-33).
• The Patented Solution: The invention is a handheld percussive massager designed to be more robust and user-friendly. It employs a motor to drive a reciprocating piston via a drive mechanism, such as a Scotch yoke, to which different massage heads can be attached ('482 Patent, col. 5:1-13). A key feature described is a quick-connect system that potentially allows a user to swap massage heads without turning the device off ('482 Patent, col. 5:51-55).
• Technical Importance: The described combination of a robust drive mechanism, ergonomic design, and a quick-connect head system aims to improve upon the usability and performance of personal therapeutic massage devices ('482 Patent, col. 1:24-28).

Key Claims at a Glance

• The complaint asserts at least independent Claim 1 (Compl. ¶26).
• The essential elements of Claim 1 include:
  • a housing;
  • a piston with a distal end having a substantially cylindrical bore;
  • a motor within the housing to reciprocate the piston at a first speed;
  • a drive mechanism controlling a predetermined stroke length of the piston; and
  • a quick-connect system where a massaging head is secured by being slid into the bore "while the piston reciprocates the predetermined stroke length at the first speed."

U.S. Patent No. D956,253 - "Percussive Massage Device"

• Patent Identification: U.S. Design Patent No. D956,253, "Percussive Massage Device," issued June 28, 2022. (Compl. ¶14).

The Invention Explained

• Problem Addressed: Not applicable. Design patents protect the ornamental appearance of an article of manufacture, not its function.
• The Patented Solution: The patent protects the specific, non-functional, ornamental design of a percussive massage device as depicted in its figures ('D'253 Patent, Figs. 1-8). The design is characterized by a "T-shaped" overall configuration, with a vertical cylindrical handle portion and a horizontal housing, along with specific surface contours, proportions, and visual details of the vents and attachment collar.
• Technical Importance: The value of a design patent lies in protecting the aesthetic appearance and brand identity associated with a product's unique look.

Key Claims at a Glance

• Design patents contain a single claim: "The ornamental design for a 'percussive massage device,' as shown and described." (D'253 Patent, Claim).
• The elements of the claim are the visual characteristics of the device illustrated in the patent's seven figures, including its overall shape, the arrangement of its parts, and surface ornamentation.

U.S. Patent No. D886,317 - "Percussive Massage Device"

• Patent Identification: U.S. Patent No. D886,317, "Percussive Massage Device," issued June 2, 2020. (Compl. ¶19).
• Technology Synopsis: The 'D'317 patent protects the ornamental design for a percussive massage device. The claimed design consists of the visual characteristics of the device as shown in the patent's figures, featuring a distinct T-shaped body, cylindrical handle, and specific proportions and surface features that create its overall aesthetic impression ('D'317 Patent, Figs. 1-8).
• Asserted Claims: The single claim for the ornamental design as shown and described.
• Accused Features: The complaint alleges that the overall appearance of accused products, including certain models from Pursonic, Evertone, and Life Authentics, is substantially the same as the patented design, thereby infringing the 'D'317 patent (Compl. ¶23).

III. The Accused Instrumentality

Product Identification

• The complaint identifies a wide range of "battery-powered percussive massagers" sold by Defendant Macy's (Compl. ¶26). These include, but are not limited to, models branded as Pursonic, Conair, Homedics, Evertone, Tzumi, SLF, Life Authentics, Sharper Image, and Dartwood (Compl. ¶13, ¶18, ¶23).

Functionality and Market Context

• The accused products are described as handheld devices that provide percussive massage for therapeutic purposes (Compl. ¶13). The complaint alleges these products incorporate the patented features but provides no specific details on their individual operation, technical specifications, or market share beyond their availability for sale through Defendant's stores and website (Compl. ¶4). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

'482 Patent Infringement Allegations

The complaint alleges that the accused products infringe at least Claim 1 of the '482 patent. The allegations are presented at a high level without specific evidence mapping product features to claim limitations.

Identified Points of Contention

• Technical Questions: A principal factual question is whether the accused products' connection mechanisms are actually "configured to secure" a massage head "while the piston reciprocates." This "hot-swap" capability is a specific functional requirement. The complaint provides no evidence to support this allegation, making it a likely point of discovery and dispute.
• Scope Questions: The interpretation of "drive mechanism that controls a predetermined stroke length" may be contested. A dispute could arise over whether this requires a specific type of mechanical linkage as disclosed in the patent's embodiments, or if any mechanism that results in a fixed stroke length meets the limitation.

V. Key Claim Terms for Construction

• The Term: "quick-connect system ... configured to secure the first massaging head ... while the piston reciprocates"
• Context and Importance: This term appears to be the most restrictive limitation in Claim 1. The infringement analysis for the '482 patent may turn entirely on whether the accused products can perform this specific "hot-swapping" function. Practitioners may focus on this term because it moves beyond a simple structural description to a functional capability that may not be present in all percussive massagers.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party could argue that "configured to" does not require the function to be a primary, intended, or even safe operation, but merely that the physical components are arranged in a way that would not prevent it.
  • Evidence for a Narrower Interpretation: The patent specification provides strong support for a narrow, functional reading, stating that the system "allows a user to quickly switch massaging heads... without turning off the massaging device" ('482 Patent, col. 5:53-55) and that the head is shaped to "easily slip into the opening... even while the piston... is moving" ('482 Patent, col. 6:10-12).

VI. Other Allegations

• Indirect Infringement: The complaint does not plead any facts to support a claim for indirect infringement (inducement or contributory infringement). The infringement counts are based on direct infringement by Defendant for its offers to sell and sales of the accused products (Compl. ¶25, ¶30, ¶34).
• Willful Infringement: The complaint does not use the term "willful" and does not allege that Defendant had pre-suit knowledge of the patents. While the prayer for relief requests a finding of an "exceptional case" for attorneys' fees under 35 U.S.C. §285, it does not explicitly plead facts to support a claim for enhanced damages based on willful infringement (Compl. Prayer for Relief ¶5).

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

• A core issue will be one of demonstrable functionality: for the '482 patent, can Plaintiff produce evidence showing the accused products actually perform the "hot-swapping" function of securing a massage head while the device is operating, as recited in Claim 1? The complaint's bare allegation on this point will require significant evidentiary support.
• A second central question will be the application of the ordinary observer test for the design patents: in a crowded market of similarly T-shaped massage guns, will a fact-finder conclude that the overall ornamental design of the accused products is substantially the same as the specific designs protected by the 'D'253 and 'D'317 patents?
• Finally, the case raises a question of pleading sufficiency: given the lack of specific factual allegations mapping the numerous accused products to the patent claims, particularly for the "hot-swap" feature and the design patent claims, the litigation may first focus on whether the complaint meets the plausibility standards required to proceed to full discovery.