Case 6:24-cv-00032 Document 1 Filed 01/16/24 Page 1 of 9

UNITED STATES DISTRICT COURT

WESTERN DISTRICT OF TEXAS
WACO DIVISION

HYPER ICE, INC. and HYPERICE IP SUBCO,

LLC,
6:24-cv-32
Civil Action No. ___________________
Plaintiffs,
JURY TRIAL DEMANDED
v.

KOHL’S, INC.,

Defendant.

COMPLAINT FOR PATENT INFRINGEMENT

Plaintiffs Hyper Ice, Inc. and Hyperice IP Subco, LLC (“Plaintiffs” or, collectively,

“Hyperice”) bring this action for patent infringement against Kohl’s, Inc. (“Defendant” or

“Macy’s”).

THE PARTIES

1. Plaintiff Hyper Ice, Inc. is a corporation organized under the laws of the State of

California, with its principal place of business at 525 Technology Drive, Suite 100, Irvine, CA

92618.

2. Plaintiff Hyperice IP Subco, LLC is a limited liability company organized under

the laws of the State of Delaware.

3. On information and belief, Defendant is a Delaware corporation having a principal

place of business at N56 W17000 Ridgewood Drive, Menomonee Falls, WI 53051, and is

registered to do business in Texas. On information and belief, Defendant operates one or more

physical stores in this District, including a store at 2708 W. Loop 340, Waco, TX 76711.

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4. On information and belief, either itself or through its subsidiaries, Defendant sells

infringing products via its stores in this District and via its website, kohls.com, to consumers in

this District, throughout the State of Texas, and throughout the United States.

NATURE OF THE ACTION

5. This is an action for patent infringement under 35 U.S.C. §§ 271 et seq. brought by

Hyperice against Defendant for Defendant’s infringement of U.S. Patent No. 11,857,482 (“the

’482 Patent”), U.S. Patent No. D956,253 (“the D’253 Patent”), and U.S. Patent No. D886,317

(“the D’317 Patent”).

JURISDICTION AND VENUE

6. This Court has subject matter jurisdiction over Hyperice’s claims asserted herein

pursuant to 28 U.S.C. §§ 1331 and 1338(a) because those claims arise under the patent laws of the

United States, 35 U.S.C. §§ 1 et seq.

7. This Court has personal jurisdiction over Defendant by virtue of, inter alia,

Defendant’s conduct of business in this District; its purposeful availment of the rights and benefits

of Texas law; and its substantial, continuous, and systematic contacts with the State of Texas and

this District. On information and belief, Defendant: (1) intentionally markets and sells its

infringing products to residents of this State; (2) enjoys substantial income from this State; and (3)

owns and operates several stores in this District and throughout this State.

8. Venue is proper in this District pursuant to 28 U.S.C. § 1391(b) and 28 U.S.C. §

1400(b) because Defendant has committed acts of infringement in this District and has a regular

and established place of business in this District.

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GENERAL ALLEGATIONS

9. The ’482 Patent is entitled “Massage Device Having Variable Stroke Length” and

issued on January 2, 2024, claiming priority to Application No. 14/317,573, filed on June 27, 2014,

and Provisional Application No. 61/841,693, filed on July 1, 2013. A true and correct copy of the

‘482 Patent is attached hereto as Exhibit 1.

10. Philip C. Danby and John Charles Danby are the named inventors of the inventions

disclosed in the ’482 Patent. Hyperice IP Subco, LLC, a wholly owned subsidiary of Hyper Ice,

Inc., is the owner of the ’482 Patent. Hyper Ice, Inc. is a licensee that has been granted the express,

irrevocable right to, inter alia, sublicense, enforce, and defend the ’482 Patent.

11. This action arises out of Defendant’s direct infringement of the ’482 Patent.

12. Since at least 2018, Hyperice has developed, arranged for the manufacture of,

offered for sale, and sold the Hypervolt line of battery-powered percussive massage devices,

including the Hypervolt Go 2, Hypervolt 2, and Hypervolt 2 Pro, all of which are covered by one

or more claims of the ’482 Patent.

13. Defendant offers for sale and/or sells products that infringe the ’482 Patent,

including but not limited to Kohl’s (NHT Massage Gun with 6 Attachments); Therabody

(Theragun Prime Handheld Percussive Massage Device); Sharper Image (Powerboost 2.0 Deep

Tissue Percussion Massager; Powerboost Pro+ Move Hot & Cold Percussion Massager;

Powerboost Move Portable Percussion Massager, Powerboost Flex Pivot Percussion Massager);

LifePro (Sonic Pro Massage Gun, Sonic Massage Gun, DynaFlex Massage Gun, Sonic LX

Massage Gun, DynaMIni Massage Gun); Eleeels (X1t Percussion Massage Gun, G1 Percussive

Handheld Massage Gun, P2 Pocket Massage Gun); TRAKK (Punch Full Body Massage Gun, Hot

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& Cold Beast Massage Gun); iLive (Portable Handheld Massage Gun); and Homedics (Rebound

Essential Percussion Massager, Therapist Select Plus Percussion Massager).

14. The D’253 Patent is entitled “Percussive Massage Device” and issued on June 28,

2022 from Application No. 29/744,890, filed on July 31, 2020. A true and correct copy of the

D’253 Patent is attached hereto as Exhibit 2.

15. Robert Marton and Anthony Katz are the named inventors of the inventions

disclosed in the D’253 Patent. Hyperice IP Subco, LLC, a wholly owned subsidiary of Hyper Ice,

Inc., is the owner of the D’253 Patent. Hyper Ice, Inc. is a licensee that has been granted the

express, irrevocable right to, inter alia, sublicense, enforce, and defend the D’253 Patent.

16. This action arises out of Defendant’s direct infringement of the D’253 Patent.

17. Since at least 2018, Hyperice has developed, arranged for the manufacture of,

offered for sale, and sold the Hypervolt line of battery-powered percussive massage devices,

including but not limited to the Hypervolt 2 and Hypervolt 2 Pro, which are covered by the D’253

Patent.

18. Defendant offers for sale and/or sells products that infringe the D’253 Patent,

including but not limited to the Sharper Image Powerboost Deep Tissue Percussion Massager.

19. The D’317 Patent is entitled “Percussive Massage Device” and issued on June 2,

2020 from Application No. 29/716,546, filed on December 10, 2019, a continuation of application

No. 29/690,791, filed on May 10, 2019, now U.S. Patent No. D874,015, which is a division of

application No. 29/637,855, filed on Feb. 22, 2018, now U.S. Patent No. D855,822. A true and

correct copy of the D’317 Patent is attached hereto as Exhibit 3.

20. Robert Marton and Anthony Katz are the named inventors of the inventions

disclosed in the D’317 Patent. Hyperice IP Subco, LLC, a wholly owned subsidiary of Hyper Ice,

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Inc., is the owner of the D’317 Patent. Hyper Ice, Inc. is a licensee that has been granted the

express, irrevocable right to, inter alia, sublicense, enforce, and defend the D’317 Patent.

21. This action arises out of Defendant’s direct infringement of the D’317 Patent.

22. Since at least 2018, Hyperice has developed, arranged for the manufacture of,

offered for sale, and sold the Hypervolt line of battery-powered percussive massage devices,

including but not limited to the Hypervolt and Hypervolt Plus, which are covered by the D’317

Patent.

23. Defendant offers for sale and/or sells products that infringe the D’317 Patent,

including but not limited to the TRAKK Hot & Cold Beast Massage Gun.

COUNT 1 – PATENT INFRINGEMENT

24. Hyperice incorporates by reference the allegations in Paragraphs 1-13 above.

25. Defendant has infringed and continues to infringe the ’482 Patent under the Patent

Laws of the United States, 35 U.S.C §§ 271 et seq. Defendant offers for sale and/or sells the

infringing products at issue in this case.

26. Defendant infringes at least Claim 1 of the ’482 Patent. Defendant offers for sale

and/or sells infringing products, battery-powered percussive massagers that include the following

claim limitations, either literally or under the doctrine of equivalents:

a. a housing;

b. a piston having a proximal end and a distal end, the distal end of the piston having

a substantially cylindrical bore;

c. a motor at least partially within the housing and operatively connected to the

proximal end of the piston, wherein the motor is configured to cause the piston to

reciprocate at a first speed;

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d. a drive mechanism that controls a predetermined stroke length of the piston; and

e. a quick-connect system comprising the distal end of the piston and a first massaging

head, wherein the quick-connect system is configured to secure the first massaging

head to the percussive massager by a proximal end of the massaging head being

slid into the bore while the piston reciprocates the predetermined stroke length at

the first speed.

27. Defendant’s infringement of the ’482 Patent has caused, and will continue to cause,

significant damage to Hyperice. As a result, Hyperice is entitled to an award of damages adequate

to compensate it for the infringement in an amount that is in no event less than a reasonable royalty

pursuant to 35 U.S.C. §284. Hyperice is also entitled to recover prejudgment interest, post-

judgment interest, and costs.

28. As a result of Defendant’s infringement of the ’482 Patent, Hyperice has suffered

irreparable harm and impairment of the value of its patent rights, and Hyperice will continue to

suffer irreparable harm and impairment of the value of its patent rights, unless and until Defendant

is permanently enjoined by this Court from infringing the ’482 Patent under 35 U.S.C. §283.

Hyperice has no adequate remedy at law and is entitled to a permanent injunction against

Defendant.

COUNT 2 – PATENT INFRINGEMENT

29. Hyperice incorporates by reference the allegations in Paragraphs 1-13 above.

30. Defendant has infringed and continues to infringe the D’253 Patent under the Patent

Laws of the United States, 35 U.S.C §§ 271 et seq. Defendant offers for sale and/or sells the

infringing products at issue in this case.

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31. Defendant’s infringement of the D’253 Patent has caused, and will continue to

cause, significant damage to Hyperice. As a result, Hyperice is entitled to an award of damages

adequate to compensate it for the infringement in an amount that is in no event less than a

reasonable royalty pursuant to 35 U.S.C. §284 and/or Defendant’s total profit pursuant to 35

U.S.C. §289. Hyperice is also entitled to recover prejudgment interest, post-judgment interest, and

costs.

32. As a result of Defendant’s infringement of the D’253 Patent, Hyperice has suffered

irreparable harm and impairment of the value of its patent rights, and Hyperice will continue to

suffer irreparable harm and impairment of the value of its patent rights, unless and until Defendant

is permanently enjoined by this Court from infringing the D’253 Patent under 35 U.S.C. §283.

Hyperice has no adequate remedy at law and is entitled to a permanent injunction against

Defendant.

COUNT 3 – PATENT INFRINGEMENT

33. Hyperice incorporates by reference the allegations in Paragraphs 1-13 above.

34. Defendant has infringed and continues to infringe the D’317 Patent under the Patent

Laws of the United States, 35 U.S.C §§ 271 et seq. Defendant offers for sale and/or sells the

infringing products at issue in this case.

35. Defendant’s infringement of the D’317 Patent has caused, and will continue to

cause, significant damage to Hyperice. As a result, Hyperice is entitled to an award of damages

adequate to compensate it for the infringement in an amount that is in no event less than a

reasonable royalty pursuant to 35 U.S.C. §284 and/or Defendant’s total profit pursuant to 35

U.S.C. §289. Hyperice is also entitled to recover prejudgment interest, post-judgment interest, and

costs.

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36. As a result of Defendant’s infringement of the D’317 Patent, Hyperice has suffered

irreparable harm and impairment of the value of its patent rights, and Hyperice will continue to

suffer irreparable harm and impairment of the value of its patent rights, unless and until Defendant

is permanently enjoined by this Court from infringing the D’317 Patent under 35 U.S.C. §283.

Hyperice has no adequate remedy at law and is entitled to a permanent injunction against

Defendant.

PRAYER FOR RELIEF

WHEREFORE, Hyperice prays for the following relief:

1. That this Court enter judgment of infringement of the ’482 Patent, the D’253 Patent,

and the D’317 Patent in favor of Hyperice and against Defendant;

2. That this Court enter a permanent injunction against Defendant from infringing the

’482 Patent, the D’253 Patent, and the D’317 Patent;

3. That this Court award Hyperice compensatory damages for infringement of the

’482 Patent, the D’253 Patent, and the D’317 Patent, as well as interest thereon;

4. That this Court award Hyperice its costs of suit;

5. That this Court declare this an exceptional case under 35 U.S.C. §285 and award

Hyperice its attorneys’ fees and any other costs incurred in connection with this action;

6. That this Court award Hyperice prejudgment and post-judgment interest; and

7. That this Court grant such further relief as the Court deems just and proper.

JURY DEMAND

Hyperice requests a jury trial on any issues triable of right by a jury.

Dated: January 16, 2024 SCOTT DOUGLASS &

McCONNICO LLP

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Respectfully submitted,

/s/ Paige Arnette Amstutz

Paige Arnette Amstutz (No. 00796136)
303 Colorado Street, Suite 2400
Austin, TX. 78701
(512)495-6300
[email protected]

Ben Herbert
(pro hac vice application forthcoming)
Miller Barondess LLP
2121 Avenue of the Stars, 26th Floor
Los Angeles, CA 90067
310.552.4400
[email protected]

Attorneys for Plaintiffs Hyper Ice, Inc. and

Hyperice IP Subco, LLC