DCT
1:04-cv-00117
Edizone v. Cloud Nine
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Edizone, LC (Utah)
- Defendant: Cloud Nine, LLC, et al. (Utah, New York)
- Plaintiff’s Counsel: Hill, Johnson & Schmutz, LC.
- Case Identification: 1:04-cv-00117, D. Utah, 08/26/2004
- Venue Allegations: Venue is based on the Defendants being entities doing business in, or individuals residing in, the District of Utah.
- Core Dispute: Plaintiff alleges that Defendants’ gel cushioning products infringe patents related to gelatinous cushions with buckling columns and the specific elastomeric gel used to manufacture them, following the termination of a license agreement between the parties.
- Technical Context: The technology concerns high-performance cushioning materials, primarily for medical and comfort applications, that use a grid of gelatinous columns designed to buckle under pressure points to evenly distribute weight.
- Key Procedural History: The complaint details a prior licensing relationship between Plaintiff's predecessor-in-interest (TekSource) and Defendant Cloud Nine. Plaintiff alleges that after it terminated the license agreement due to multiple breaches, Defendants continued to manufacture and sell products using the licensed and patented technology. Plaintiff further alleges it provided Defendants with actual written notice of the infringement prior to filing suit.
Case Timeline
| Date | Event |
|---|---|
| 1996-02-14 | Patent Priority Date (U.S. 5,749,111 & U.S. 6,026,527) |
| 1996-07-01 | Patent Priority Date (U.S. 5,994,450) |
| 1998-04-07 | License Agreement entered between TekSource and Cloud Nine |
| 1998-05-12 | U.S. Patent 5,749,111 Issued |
| 1999-11-30 | U.S. Patent 5,994,450 Issued |
| 2000-02-22 | U.S. Patent 6,026,527 Issued |
| 2002-03-11 | Plaintiff formally terminated Cloud Nine's license |
| 2002-07-XX | Plaintiff allegedly discovered Defendants' post-termination sales |
| 2004-08-26 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 5,749,111 - "GELATINOUS CUSHIONS WITH BUCKLING COLUMNS"
- Issued: May 12, 1998
The Invention Explained
- Problem Addressed: The patent’s background section describes how prior art cushions, such as those made from foam or fluid-filled bladders, often create high-pressure points under protruding parts of a user’s body, leading to discomfort and potentially restricting blood flow (Compl. ¶14; ’111 Patent, col. 1:21-46).
- The Patented Solution: The invention is a cushion made from a gelatinous elastomer material formed into a grid of substantially parallel, hollow columns. When weight is applied, the column walls located directly under pressure points (such as a hip bone) are designed to buckle, which relieves the pressure peak. Surrounding columns compress without buckling to provide even support, allowing the cushion to conform to the user’s shape. (’111 Patent, Abstract; col. 9:8-25; Fig. 3).
- Technical Importance: This design sought to combine the pressure-distributing properties of a fluid cushion with the stability and shape memory of a solid gel, while also being lightweight and allowing for air circulation through the hollow columns (’111 Patent, col. 6:21-52).
Key Claims at a Glance
- The complaint alleges general infringement without specifying claims (Compl. ¶74). Independent claim 1 is representative and includes the following essential elements:
- A yieldable cushioning element comprising a flexible, resilient, gel cushioning media that is substantially solid and non-flowable below 130°F.
- The element includes a plurality of hollow columns situated in the media, each defined by a column wall.
- At least one of the column walls is capable of buckling beneath a protuberance on a cushioned object.
- The element is yieldable due to a combination of the media’s compressibility and the column’s bucklability.
U.S. Patent No. 5,994,450 - "GELATINOUS ELASTOMER AND METHODS OF MAKING AND USING THE SAME AND ARTICLES MADE THEREFROM"
- Issued: November 30, 1999
The Invention Explained
- Problem Addressed: The patent describes prior art oil-extended elastomers as often having deficient physical properties, such as low tensile strength, poor elongation, and a tendency for the plasticizing oil to bleed out of the material (’450 Patent, col. 3:5-14, col. 7:5-9).
- The Patented Solution: The patent discloses a specific formulation for a gelatinous elastomer with superior physical properties. The invention combines a specific A-B-A triblock copolymer—where the "B" midblock is a hydrogenated polymer of isoprene and butadiene monomers—with a plasticizer such as mineral oil. This composition is described as yielding an elastomer with significantly higher tensile strength and elongation, and little to no oil bleed, compared to prior art materials. (’450 Patent, Abstract; col. 22:4-15).
- Technical Importance: This elastomer formulation provided a durable, high-performance material suitable for demanding applications like the buckling-column cushions, which require both softness and high resilience.
Key Claims at a Glance
- The complaint alleges general infringement (Compl. ¶74). Independent claim 1 is representative and includes the following essential elements:
- An elastomeric material comprising a plasticizer and a triblock copolymer with an A-B-A configuration.
- The ‘A’ block is a monoalkenylarene polymer (e.g., polystyrene).
- The ‘B’ block is a hydrogenated polymer that includes a plurality of both isoprene monomers and butadiene monomers.
- The isoprene monomers must comprise at least about 30 weight percent of the hydrogenated ‘B’ block.
U.S. Patent No. 6,026,527 - "GELATINOUS CUSHIONS WITH BUCKLING COLUMNS"
Issued: February 22, 2000
Technology Synopsis: As a continuation-in-part of the ’111 patent, this patent further describes cushioning elements made from a soft, deformable elastic or visco-elastic material formed into a plurality of parallel columns. The patent explains that when a force is exerted on the cushion, the column walls may buckle to equalize pressure across the contact area of the object being cushioned, addressing the same problem of pressure peaks identified in the parent patent. (’527 Patent, col. 1:12-21; Abstract).
Asserted Claims: General infringement is alleged (Compl. ¶74). Independent claims 1 and 33 are representative.
Accused Features: The complaint accuses Defendants' "GellyComb" cushioning products of embodying the invention of the ’527 Patent (Compl. ¶¶14, 48, 74).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are gel cushioning products, including "GellyComb seat cushions" and "mattress toppers," sold by Defendants through various entities and websites such as Cloud Nine, Easy Seat, Gel Tec, Senior Shops.com, and Gel Seat Cushions (Compl. ¶¶48, 49, 51, 61, 64).
Functionality and Market Context
- The complaint alleges that the accused products are made using Plaintiff’s patented "GellyComb" and "Gelastic" technology, which was previously licensed to Defendant Cloud Nine (Compl. ¶¶14, 18). The core of the allegation is that Defendants continued to make and sell these products after the license was terminated (Compl. ¶48). An investigation of an accused mattress topper allegedly revealed that the "GellyComb inside said topper came from the same molds used by Easy Seat," suggesting the accused products have the same physical structure as Plaintiff’s patented products (Compl. ¶67). Defendants are alleged to be selling these products online, in competition with Plaintiff and its authorized licensees (Compl. ¶¶62, 64).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint does not contain a detailed claim chart. The infringement theory is based on allegations that after the termination of a license for Plaintiff’s technology, Defendants continued to make and sell products embodying that same patented technology.
U.S. Patent 5,749,111 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A yieldable cushioning element that includes a flexible, resilient, gel cushioning media... | Defendants' products are alleged to be "GellyComb" cushions made with Plaintiff’s "Intelli-Gel" technology using a gelatinous elastomer. | ¶14 | col. 31:37-41 |
| a plurality of hollow columns situated in said cushioning media... | The products are alleged to use a structure based on "column buckling" and to have been made from the "same molds used by" a former licensee of the technology. | ¶14, ¶67 | col. 31:45-48 |
| wherein at least one of said column walls is capable of buckling beneath a protuberance... | The complaint describes Plaintiff's technology, allegedly used by Defendants, as relying on "column buckling" to provide cushioning without increasing unit pressure. | ¶14 | col. 31:60-64 |
- Identified Points of Contention:
- Factual Question: The central dispute appears to be factual: do the accused products sold by Defendants incorporate the claimed structure of "hollow columns" that are "capable of buckling"? The complaint asserts this based on the products' branding and an alleged physical inspection (Compl. ¶67), but this will likely require evidentiary proof.
U.S. Patent 5,994,450 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An elastomeric material having a plasticizer and a triblock copolymer of the general configuration A-B-A... | Defendants' products are alleged to be made from "Gelastic," which the complaint identifies as the patented material from the '450 Patent. | ¶14 | col. 47:49-51 |
| wherein B is a hydrogenated polymer including a plurality of isoprene monomers and a plurality of butadiene monomers... | The complaint alleges that Defendants were licensed to use, and continued to use post-termination, Plaintiff's patented "Gelastic" material, which is described as an oil-extended tri-block copolymer. | ¶14, ¶17-18, ¶48 | col. 47:53-56 |
- Identified Points of Contention:
- Technical Question: Does the gel used in Defendants' products meet the specific chemical definition of claim 1, particularly the requirement that the midblock polymer includes both isoprene and butadiene monomers? This will likely require chemical analysis of the accused products to resolve.
V. Key Claim Terms for Construction
The Term: "buckling" (’111 Patent, claim 1)
- Context and Importance: This term defines the central functional mechanism of the ’111 Patent’s invention. The outcome of the infringement analysis may depend on whether the deformation of the columns in the accused products constitutes "buckling" as understood in the patent. Practitioners may focus on this term because it distinguishes the invention from simple compression.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes buckling as a process that “markedly reduces the load on the protruding portion” and distinguishes it from mere compression (’111 Patent, col. 17:7-14). This functional language may support a broader definition that is not limited to a specific mode of collapse.
- Evidence for a Narrower Interpretation: The specification provides detailed figures (e.g., Figs. 11, 12, 13) illustrating specific ways in which a column wall can buckle (e.g., radially outward). A party could argue that these embodiments define and limit the scope of the term.
The Term: "a hydrogenated polymer including a plurality of isoprene monomers and a plurality of butadiene monomers" (’450 Patent, claim 1)
- Context and Importance: This term defines the specific chemical composition of the polymer midblock, which is presented as the basis for the material's improved properties. Infringement of the ’450 Patent may turn on whether the accused gel is made from this specific copolymer rather than other common elastomers.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The use of the word "including" could suggest that the presence of monomers other than isoprene and butadiene in the midblock does not preclude infringement, so long as both required types are present.
- Evidence for a Narrower Interpretation: The patent’s background and summary distinguish the invention from prior art materials, such as those based on SEBS (styrene-ethylene-butylene-styrene) copolymers (’450 Patent, col. 7:1-9). This context may support an interpretation that limits the claim to copolymers where the isoprene and butadiene combination is the essential characteristic of the midblock.
VI. Other Allegations
- Indirect Infringement: The complaint includes conclusory allegations of active inducement and contributory infringement but does not plead specific underlying facts, such as instructing third parties how to infringe or selling a non-staple component for use in an infringing product (Compl. ¶¶75-76).
- Willful Infringement: The complaint alleges that Defendants’ infringement is willful because they continued their activities after receiving "actual written notice" from Plaintiff requesting that they "cease and desist" (Compl. ¶78). The extensive factual background detailing the prior license agreement and its termination may be used to support the allegation of pre-suit knowledge of the patents (Compl. ¶¶15-52).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of technical identity: can Plaintiff produce sufficient evidentiary proof, such as from chemical analysis and structural inspection, to demonstrate that Defendants’ products are in fact made with the specific gelatinous elastomer and buckling column structure claimed in the patents-in-suit? The complaint’s direct allegations of copying and use of the "same molds" frame this as the primary factual dispute (Compl. ¶67).
- A key legal question will be one of willfulness based on prior relationship: given the detailed history of a licensing agreement between the parties, the case may focus significantly on whether Defendants' alleged post-termination sales constitute willful infringement. The dispute may turn on the facts surrounding the license, its termination, and Defendants' state of mind, rather than on nuanced claim construction arguments.