UPDATE: The Teledildonics patent expires August 17, 2018 – Read my article on it here!
Innovation has been fast and furious in the sex toy industry over the past decade. The incorporation of sensors, virtual reality, and other related technologies has boosted sex gadgets to realms only previously imaginable in a dream resembling a dirty sci-fi film of years past. Naturally, patent proliferation has followed as companies have tried to protect their inventions, which has inevitably led to patent conflicts. As a patent attorney, I would be remiss in not beginning this blog with an article about likely the most infamous and hotly contested patent in the history of the sex toy industry. This patent has ensnared scores of aspiring titans of the sex toy industry, and should be required reading for anyone seeking to bring a technological edge to the sex toy business.
The story begins with a patent application filed August 17, 1998, titled “Method and Device for Interactive Virtual Control of Sexual Aids Using Digital Computer Networks.” “The Teledildonics Patent” (tele, i.e. “remote,” and dildonics, i.e. “dildos”), as it has come to be known in the industry, issued as U.S. Patent No. 6,368,268 on April 9, 2002. In the United States, a patent is valid for 20 years from the date of filing. This means that until August 17, 2018, anyone who makes, uses, or sells a product that is covered by the teledildonics patent may potentially be guilty of patent infringement, and liable for up to triple damages if the infringement is found to be willful.
The bulk of a patent application is usually a technical description, followed by what is called the “claims.” The claims are what the patent owner actually owns, and what the product is compared to in order to determine whether an infringement has taken place. A sample claim in the teledildonics patent reads:
1. A stimulation system comprising:
a display device;
a user interface connected to said display device, said user interface causing an image to be displayed on said display device and outputting a control signal; and,
a stimulation device receiving the control signal from the user interface, said stimulation device imparting stimulation to the user in response to the control signal.
So, if a company were to produce a product that includes all three of the listed elements, it could be found guilty of infringement. Since this claim, and the others in the patent, are very broad, many products of third-party companies are getting caught in the snare.
The teledildonics patent was initially owned by Hassex, Inc., and was recently transferred to Tzu Technologies, LLC. Tzu is a “non-practicing entity” (“NPE”), meaning that it owns the patent, but has produced no covered product. Non-practicing entities are referred to as “patent trolls,” by some who believe it wrong for a company to sue or threaten to sue others for infringement while producing no competing product itself.
Tzu brought seven lawsuits in 2015. Defendants include:
Comingle, LLC, which created an open source high-tech dildo (which never made it to market) that they named the “Mod”
Happy Haptics, Inc. d/b/a Frixion, which produced an online software platform for virtual sex
Holland Haptics BV, which provides the “Frebble,” a device for on-line handholding
Internet Services LLC and WMM Holdings, LLC, makes of the “RealTouch,” a male masturbator device
Kickstarter, a crowdfunding platform
Vibease, which makes a remote controlled vibrator
Winzz, LLC, which made the “LovePalz” vibrator for sex between long-distance partners
On June 30, 2016, Winzz, LLC was held liable for patent infringement after it failed to respond and defend itself against complaints. U.S. District Judge John A. Kronstadt ordered the defunct company to pay $56,100.71 in damages.
On October 2, 2015, the case against Kickstarter was dropped. Tzu had accused Kickstarter of infringement based on its role as the crowdfund platform for Holland Haptics’ Frebble project. When Kickstarter indicated it would battle it out on principle rather than pay a nuisance settlement, Tzu eventually dropped the suit (without dropping the suit relating to Frebble).
The releasing of Kickstarter is not surprising because NPEs typically make the bulk of their money off small companies that agree to settle because they do not have the money to litigate. Kickstarter certainly has the funds to fight, which could have been bad news for Tzu because almost inevitably one of Kickstarter’s defenses would be that the patent is invalid. A patent can be invalidated if, during the course of litigation, “prior art,” or published evidence, is produced which would render the claims non-novel or obvious, or if it could be shown that the technology was not enabled in the application at the time. If the teledildonics patent were to be held invalid in a federal court, or at the U.S. Patent and Trademark Office, it would be rendered useless against Kickstarter as well as the other defendants in the separate suits.
In an interesting twist, it appears that as of September 7, 2016, ALL of the lawsuits against the above-identified defendants have been dismissed based on settlements (dismissal order relating to Comingle here; others not included for brevity). This is huge news for the sex tech industry, and more information will follow as we can find it. Currently, we are not aware of the terms of the settlements. From the court documents, it looks like the cases are dismissed without prejudice, which means that the cases can be brought again at the plaintiff’s will. So, it will remain to be seen whether Tzu will re-file these suits, or new ones against other companies. The sex toy industry is fragmented with many small fish in a great big high-profit pond. This is ideal ground for a “patent troll,” whether it be Tzu, or another NPE with a different patent.
During this murky time in the pond, there are companies out there trying to work around the Tzu patent. For example, Intimuse, a start-up in Silicon Valley, says on its website:
As diligent players in the space know, there is an active patent troll creating uncertainty in the SexTech market. While one can wait for their core patent to run out of time, a better plan is to develop one’s own robust IP suite that is completely independent of their claims.
It’s safe to infer that Intimuse is referring to Tzu as the “active patent troll.” Intimuse, itself, has developed a sizable patent portfolio. Developing a robust patent portfolio, among the offensive benefits (to actively enforce against others), has many defensive benefits. For example, when two companies have large patent portfolios, and a product of the first company is infringing on a patent of the second company, it is likely that a product of the second company is infringing on a patent of the first company, as well. Accordingly, the parties may agree to cross-license (i.e. each party gives the other permission to use its patented technology) rather than litigate each case out to what becomes a wash of wasted money on lawyers.
The teledildonics patent has a little less than two years of life left until it will expire. For the time being, we don’t yet know whether Tzu will continue in its quest to try to take high-tech dildos off the market for patent infringement. They had big dreams of that (and maybe still do). As the saying goes, perhaps “bigger is better,” but still only if you can get the job done. On this topic, I side with the little guys trying to get their products to market. Here’s to hoping Tzu doesn’t get the job done…
You can read the full text of the teledildonics patent by clicking here. Subscribe to our mailing list for updates as the teledildonics lawsuits progress.