DCT

2:20-cv-01018

Studio 010 Inc v. Digital CASHFLOW LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:20-cv-01018, W.D. Wash., 04/20/2021
  • Venue Allegations: Venue is alleged based on Defendants' business activities in the district, including selling products on Amazon.com (which is headquartered in the district), having merchant agreements subject to Washington law, and utilizing a Washington-based law firm to prosecute the patent-in-suit.
  • Core Dispute: Plaintiff seeks a declaratory judgment that its earwax removal product does not infringe U.S. Patent No. 10,525,191, and further that the patent is invalid and/or unenforceable, following an infringement complaint Defendants filed against Plaintiff on the Amazon.com marketplace.
  • Technical Context: The dispute concerns consumer-grade ear canal irrigation systems, a market segment for at-home health and personal care products.
  • Key Procedural History: The complaint alleges a contentious history between the parties, who are direct competitors on Amazon.com. The dispute began with a trademark issue in 2018. Following the issuance of the patent-in-suit, Defendants filed an infringement complaint on Amazon, causing Plaintiff's product to be delisted. A central theme of the complaint is that Defendants allegedly knew of Plaintiff’s product and their own prior-selling product—both asserted to be material prior art—before filing the patent application and failed to disclose them to the USPTO, forming the basis for claims of invalidity and inequitable conduct. The patent was also transferred between defendant entities after the lawsuit was initiated.

Case Timeline

Date Event
2017-03-25 Alleged first use in commerce of Defendants' "Hear Clearly" product
2017 Plaintiff allegedly begins selling similar earwax removal products
2018-03-27 Plaintiff allegedly discloses its product design in a YouTube video
2018-05-01 Plaintiff's current product design allegedly on sale
2018-06-30 Trademark dispute between parties begins (approx.)
2019-06-12 ’191 Patent Priority Date (Application Filing Date)
2020-01-07 ’191 Patent Issue Date
2020-06-10 Defendants file patent infringement complaint on Amazon.com (approx.)
2020-06-30 Original lawsuit filed by Plaintiff
2020-12-03 ’191 Patent allegedly assigned to Defendant End Racism LLC
2021-04-20 Amended Complaint Filing Date

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

  • Patent Identification: U.S. Patent No. 10,525,191, "EAR CANAL IRRIGATION SYSTEM AND METHOD," issued January 7, 2020.

U.S. Patent No. 10,525,191 - "EAR CANAL IRRIGATION SYSTEM AND METHOD"

The Invention Explained

  • Problem Addressed: The patent's background section identifies risks associated with traditional at-home earwax removal, such as ear canal damage from cotton swabs and lack of pressure control with syringes. It also notes a need to prevent "splash back" during irrigation ('191 Patent, col. 1:15-48).
  • The Patented Solution: The invention is an ear irrigation kit centered on a hand-held spray bottle. Fluid is directed from the bottle through a "conduit tube" to a "connector" piece. This connector features a disc-shaped "splash guard" and transitions the fluid into a shorter, narrower "insertion tube" for use in or near the ear canal. The patent asserts that this transition from a wider tube to a narrower tube creates a "more powerful fluid stream" to dislodge earwax while the splash guard protects the user from backsplash ('191 Patent, Abstract; col. 2:1-10).
  • Technical Importance: The claimed system aims to provide a safer and more effective at-home ear cleaning method by increasing fluid pressure in a controlled manner while simultaneously managing fluid spray.

Key Claims at a Glance

  • The complaint seeks a declaratory judgment regarding "one or more claims" of the ’191 Patent (Compl. ¶104). Independent claim 1 is the broadest.
  • Independent Claim 1 requires:
    • a spray bottle with a reservoir for fluid;
    • a "conduit tube" for fluid passage;
    • a "connector" comprising a "disk-shaped" splash guard, a "first extension piece," and a "second extension piece";
    • the two extension pieces face in opposing directions from the splash guard;
    • an "insertion tube" that is "separate from the conduit tube";
    • the conduit tube connects to the first extension piece and the insertion tube connects to the second extension piece; and
    • the insertion tube has a smaller diameter aperture than the conduit tube, allowing the connector to transition the fluid and reduce its overall diameter.
  • The complaint does not specify dependent claims, but the plaintiff seeks a declaration of non-infringement for all "valid and enforceable" claims ('191 Patent, Prayer ¶2).

III. The Accused Instrumentality

Product Identification

  • Plaintiff's HEAR® ear cleaning kit, sold on Amazon.com (Compl. ¶¶21, 49).

Functionality and Market Context

  • The product is an at-home earwax removal kit. A screenshot in the complaint shows the kit includes a spray bottle with a trigger, a tube, a catch basin, and what appears to be a disposable tip. (Compl. ¶21, p. 9). The complaint alleges that this product was delisted from the Amazon marketplace as a direct result of the infringement notice filed by the Defendants (Compl. ¶49). Central to the Plaintiff's case is the allegation that its product was publicly disclosed and on sale in various forms since 2017 and in its current design since May 2018, both more than one year prior to the patent's June 12, 2019 filing date (Compl. ¶¶2, 28).

IV. Analysis of Infringement Allegations

As this is a declaratory judgment action, the complaint does not contain a formal claim chart alleging infringement. Instead, it denies infringement and presents facts to support invalidity and unenforceability. The following chart summarizes the likely points of contention by mapping the elements of claim 1 to the Plaintiff's product, as depicted in the complaint.

U.S. Patent No. 10,525,191 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a connector comprising a splash guard, a first extension piece, and a second extension piece... The Plaintiff's product includes a tip assembly at the end of the tube. ¶21 (p. 9) col. 10:4-9
an insertion tube, wherein the insertion tube is configured to be inserted into or near an ear of a user, wherein the insertion tube is separate from the conduit tube... The Plaintiff's product appears to use a single, continuous tube that connects the spray bottle to the tip assembly. ¶21 (p. 9) col. 10:1-2
wherein the aperture of the insertion tube is of a smaller diameter than the aperture of the conduit tube, wherein the connector allows a transition of the fluid... The tip assembly on the Plaintiff's product likely narrows the fluid channel to create a focused stream. ¶21 (p. 9) col. 10:5-13

Identified Points of Contention

  • Scope Questions: A central question for infringement will be whether the Plaintiff's product meets the structural requirements of the claims. For example, does the tip assembly of the Plaintiff's product constitute a "connector" with two distinct, opposing "extension pieces" as recited in Claim 1, or is it a simpler, single-piece nozzle? Further, does the product contain an "insertion tube" that is structurally "separate from the conduit tube," or is it a single, unitary tube?
  • Invalidity Questions: The complaint's primary focus is on invalidity. It raises the critical question of whether the Plaintiff's product—and allegedly the Defendants' own product—were on sale and publicly disclosed more than one year before the patent's filing date (Compl. ¶¶43-44, 108). If the patent claims are interpreted broadly enough to read on the Plaintiff's product, the complaint argues that same interpretation would render the claims invalid based on the product's own sales history under 35 U.S.C. § 102.

V. Key Claim Terms for Construction

  • The Term: "connector"

    • Context and Importance: Claim 1 requires a "connector" that itself comprises three distinct features: a splash guard, a first extension piece, and a second extension piece. The interpretation of this term is critical because if the Plaintiff's product tip is found to be a simple nozzle rather than this specific multi-part structure, infringement may be avoided.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent's abstract describes the connector functionally as a "connecting piece" that connects the conduit tube to the insertion tube. One might argue that any single component performing this connecting and transitioning function meets the spirit of the invention.
      • Evidence for a Narrower Interpretation: Claim 1 explicitly recites the connector as "comprising a splash guard, a first extension piece, and a second extension piece." The specification further details "two extensions such as extensions 164 and 166 facing outward in opposite directions on each side of splash guard portion 162" ('191 Patent, col. 7:17-21). This language supports a narrow construction requiring three distinct structural features, not just a functional connection.

  • The Term: "separate from the conduit tube"

    • Context and Importance: Claim 1 requires the "insertion tube" to be "separate from the conduit tube." If Plaintiff's device is found to use one continuous tube from bottle to tip, it may not meet this limitation.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: A party could argue that "separate" could refer to functionally distinct portions of a single tube, where the end portion is the "insertion tube" and the main length is the "conduit tube."
      • Evidence for a Narrower Interpretation: The claim language "wherein the insertion tube is separate from the conduit tube" strongly implies two structurally distinct and physically separable components ('191 Patent, col. 10:1-2). This is reinforced by the description of the two tubes connecting to opposite ends of the "connector" ('191 Patent, col. 10:3-5), suggesting a three-part assembly.

VI. Other Allegations

  • Indirect Infringement: The complaint seeks a declaratory judgment of non-infringement for direct, contributory, and induced infringement, but the factual allegations focus on invalidity and structural non-infringement rather than providing a basis to analyze theories of indirect infringement (Compl. ¶113).
  • Unenforceability / Exceptional Case: The complaint makes extensive allegations that may support a finding of an exceptional case under 35 U.S.C. § 285. It alleges that the inventor and his counsel intentionally concealed material prior art from the USPTO—namely, the Plaintiff's pre-existing product and the Defendants' own pre-existing product—with the intent to deceive the agency (Compl. ¶¶46-48, 109). These allegations form the basis for the claim of inequitable conduct, which, if proven, would render the entire ’191 Patent unenforceable.

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

  • A primary issue will be one of patent validity and enforceability: Does the evidence, as alleged in the complaint, show that the Plaintiff's accused product and/or the Defendants' own product were on sale or in public use more than one year before the patent's priority date, thereby invalidating the claims under 35 U.S.C. § 102? Flowing from this, did the alleged intentional withholding of this information from the USPTO constitute inequitable conduct?
  • A key question of claim scope will be dispositive if the patent survives the validity challenges: Can the "connector" limitation, which requires a disk-shaped splash guard and two opposing extension pieces, be construed to read on the tip assembly of the Plaintiff's product?
  • Finally, the case raises a question of anticompetitive conduct: Did the Defendants weaponize a patent they allegedly knew to be invalid or unenforceable to improperly remove a competitor's product from the Amazon marketplace, as alleged in the complaint's non-patent counts?