Sex-Toy Maker’s Patent Validity Wins Upheld at Federal Circuit

An administrative tribunal correctly shut down a German competitor’s validity challenge to three of Novoluto Gmbh’s sex-toy patents, a Federal Circuit panel ruled Monday.

The court summarily affirmed that the Patent Trial and Appeal Board did not ignore features of a therapeutic massager, a mechanical dildo, and “a table-top mannequin-like sexual aid” that included functionality similar to the patents when it upheld their validity.

The companies’ dispute originated with Novoluto’s 2016 lawsuit in Germany, which alleged EIS Gmbh’s Satisfyer Pro 2 product infringed its German patent. EIS sued Novoluto in 2019 in Delaware federal court, alleging unfair and deceptive trade practices meant to limit the commercial success of EIS’ products. That lawsuit is ongoing.

The Federal Circuit appeal concerned a trio of Novoluto patents that cover its Womanizer vibrator design, which includes a suction-like feature to emit “a pattern of negative and positive pressures.” EIS asked the PTAB to review the patents, but the board declined to knock out any of the challenged claims.

During oral arguments, EIS counsel Chetan Bansal focused on features of the health massager and how they could be combined with the other designs to equal the technology outlined in the challenged patents.

“The evidence is so one-sided that you can only draw a single conclusion: that the board erred,” he told the panel.

However, Novoluto attorney Tammy Terry maintained that just because various earlier designs may be “analogous doesn’t mean that there also exists a motivation to combine” the references. The Federal Circuit ultimately agreed without expanding upon its reasoning.

Circuit Judges Kimberly A. Moore, Sharon Prost, and Todd M. Hughes sat on the panel.

Paul Hastings LLP represents EIS. Osha Bergman Watanabe & Burton LLP represents Novoluto.

The case is EIS GmbH v. Novoluto GmbH, Fed. Cir., No. 21-02215, affirmed 3/13/23.