In a lawsuit filed on the last day of 2020 in the U.S. District Court for the District of Oregon, Novoluto GmbH, a German company that operates as part of the “WOW Tech Group,” alleges that Uccellini LLC (DBA “Lora DiCarlo”) has infringed on three Novoluto patents.
The three patents at issue are U.S. Patent Nos. 9,937,097 (“Stimulation Device Having an Appendage”), 9,849,061 and 9,763,851. In the complaint, following their first mention, each patent subsequently is referred to by its final three digits following an apostrophe – the ‘061 patent, the ‘851 patent and ‘097 patent. For clarity, this post hereafter will refer to the patents by those numbers and to the litigants as “Novoluto” and “Lora DiCarlo.”
In a press release issued Friday, January 8, Novoluto said the WOW Group is “committed to vigorously enforcing these intellectual property rights against all infringers, including retailers, distributors, and other market participants selling infringing products.”
“The WOW Tech team is working hard, investing much time, budget, and passion to create new and innovative products,” said Johannes von Plettenberg, the company’s CEO. “We will make sure that these achievements are protected. Therefore, we act with full force against all those who infringe our patents, be it brands, retailers or distributors. We also have a responsibility to our valued partners who sell our products. We want to ensure that copycats do not harm their businesses and sales.”
In response to the lawsuit, Lora DiCarlo issued a press release Monday in which the company stated it “remains committed to our engineering initiatives and innovative sex tech.”
“We value and respect the intellectual property of others within the sexual health and wellness industry,” the company added.
After acknowledging the lawsuit, the statement from Lora DiCarlo said the company “denies these claims” and added that they will “vigorously defend ourselves in court.”
“Our products implement technology that we own, and we warrant that our products do not infringe upon the intellectual property rights of others,” the company added in its statement.
The press release from Lora DiCarlo also asserted that the “real reason” Novoluto filed the lawsuit was not to defend its intellectual property, but to “use the case to threaten our distributors and retailers in a repugnant display of anti-competitive practices.”
“We believe our distributors and retailers have the right to work with any brand that they choose, based on the best interest of their customers,” Lora DiCarlo added in the statement. “In the highly unlikely event that a Lora DiCarlo product is found to infringe a patent, we will take back any offending products and issue a credit to our valued retailers.”
In its complaint, Novoluto asserts that Lora DiCarlo “has directly and indirectly infringed one or more claims” of the patents listed above.
“Defendant’s direct infringement includes making, using, selling, offering to sell, and/or importing stimulation devices such as the devices referred to as Osé, Osé 2, and Baci,” Novoluto states in its complaint.
As described in Novoluto’s complaint, the “’851 Patent is generally directed to a handheld sexual stimulation device with various components and features, including an opening through which modulated positive and negative pressures can be applied to female erogenous zones, particularly the clitoris.”
The ’097 and ’061 Patents are described as “generally directed to handheld sexual stimulation devices that, among other features, include an opening through which modulated positive and negative pressures can be applied to female erogenous zones, particularly the clitoris, as well as a vaginal dildo appendage.”
In its complaint, Novoluto asserts that after filing their patent applications and launching their first “commercial embodiments,” the pleasure products industry “saw an influx of devices attempting to capitalize on the innovative technology disclosed in the Asserted Patents, including Defendant’s Osé, Osé 2, and Baci products.”
The complaint also states that there has been communication between corporate officers of Lora DiCarlo and Novoluto which “confirmed Defendant’s knowledge of Plaintiff’s patents and familiarity with the associated commercial embodiment product lines.”
The complaint further states that around the middle of June, 2020, Lora DiCarlo sent out a letter to “various retailers and distributors in the industry,” signed by Lora DiCarlo’s general counsel, stating in part that “LDC’s engineering department is constantly monitoring new and existing patents in the field.”
“The LDC engineering and manufacturing teams have evaluated more than 30 publicly available patents for sexual pleasure devices in the USA and Europe, including all known patents from Novoluto GMBH… to determine whether they are in conflict with any existing or planned LDC product,” the letter continues, according to Novoluto’s complaint.
“Despite LDC’s assurances to the industry that its products are not ‘in conflict with’ any patents, including Novoluto’s, each of Defendant’s Osé, Osé 2, and Baci products includes each and every limitation of at least one claim of one or more of the Asserted Patents and, therefore, infringes,” Novoluto further asserts in its complaint.
In its complaint, Novoluto asks the court to find that the defendant has infringed on one or more of Novoluto’s patent claims, issue a judgment that the infringement is willful, award a permanent injunction barring the defendant from further infringing on the patents and require the defendant to pay “all damages to and costs incurred by Novoluto because of Defendant’s infringing activities.” The complaint also asks the court to grant “pre-judgment and post-judgment interest on the damages caused by Defendant’s infringing activities and other conduct complained of herein” and to declare the lawsuit “an exceptional case” so the company may be awarded “reasonable attorney’s fees and costs” in accordance with 35 U.S.C. § 285.
