DCT
2:18-cv-06471
Nine Stars Group USA Inc v. Factory Direct Wholesale LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Nine Stars Group (U.S.A.) Inc. (California)
- Defendant: Factory Direct Wholesale, LLC (Georgia)
- Plaintiff’s Counsel: Leclairryan, LLP
- Case Identification: 2:18-cv-06471, C.D. Cal., 07/26/2018
- Venue Allegations: Plaintiff alleges venue is proper because Defendant has committed acts of infringement in the district and maintains a regular and established place of business in Fullerton, California.
- Core Dispute: Plaintiff alleges that Defendant’s motion-activated trash containers infringe patents related to sensor-based, automatically-opening container lids.
- Technical Context: The technology at issue involves hands-free lids for containers, such as household trash cans, which use sensors to detect a user's presence and a motorized mechanism to open and close the lid.
- Key Procedural History: The complaint asserts three patents from the same family. U.S. Patent No. 7,911,169 and U.S. Patent No. 8,129,930 are continuations of the application that resulted in U.S. Patent No. 7,750,591, indicating a related inventive effort and a shared specification.
Case Timeline
| Date | Event |
|---|---|
| 2006-10-07 | Priority Date for '591, '169, and '930 Patents |
| 2010-07-06 | U.S. Patent No. 7,750,591 Issued |
| 2011-03-22 | U.S. Patent No. 7,911,169 Issued |
| 2012-05-06 | U.S. Patent No. 8,129,930 Issued |
| 2018-07-26 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,750,591 - "Induction Actuated Container" (Issued Jul. 6, 2010)
The Invention Explained
- Problem Addressed: The patent describes the inconvenience of opening conventional containers, such as trash cans, when one's hands are full. It notes that foot-pedal mechanisms can be difficult for some users and that prior electrically-operated containers suffer from sub-optimal sensor placement and a lack of control over the lid's motion, which can cause damage or premature closing. (’591 Patent, col. 1:11 - col. 2:12).
- The Patented Solution: The invention proposes an "induction actuated container cover" featuring an automatic driving arrangement. This system uses a sensor to detect a user's approach and an actuation unit with a motor and gear transmission to controllably lift and lower the lid "in a hydraulic manner," a phrase used to describe a smooth, stable, and controlled motion rather than a sudden or free-falling one. (’591 Patent, Abstract; col. 7:6-13). The physical design, including a trapezoidal cross-section, is also described as a way to maximize the usable opening area when the lid is raised. (’591 Patent, col. 5:8-17).
- Technical Importance: The technology aimed to improve the reliability and user experience of automated containers by providing more precise sensor activation and controlled lid movement, addressing known durability issues with prior art designs. (’591 Patent, col. 2:1-20).
Key Claims at a Glance
- The complaint asserts independent claim 1. (Compl. ¶28).
- The essential elements of independent claim 1 include:
- A control housing with a cover opening.
- A cover panel pivotally mounted to the housing.
- An automatic driving arrangement, itself comprising:
- A sensor mounted on a front portion of the control housing.
- An actuation unit linked to the sensor that generates a force to pivotally move the cover panel "in a hydraulic manner."
- Structural features including "two L-shaped retaining slots" for engaging with the cover panel.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 7,911,169 - "Induction Actuated Container" (Issued Mar. 22, 2011)
The Invention Explained
- Problem Addressed: As a continuation of the application leading to the '591 Patent, this patent addresses the same problems of inconvenient manual container operation and the shortcomings of prior automated systems. (’169 Patent, col. 1:15 - col. 2:12).
- The Patented Solution: The invention is an automated container cover that uses a sensor-driven actuation unit. This patent places particular emphasis on the quality of the force generated by the mechanism, describing it as a "decelerating and torque enhancing force" that moves the cover panel in a controlled, "hydraulic manner." (’169 Patent, Abstract; col. 4:60-65).
- Technical Importance: This patent further defines the specific mechanical characteristics intended to solve the problem of uncontrolled lid movement, focusing on the force profile that produces a smooth and reliable motion. (’169 Patent, col. 2:9-23).
Key Claims at a Glance
- The complaint asserts independent claim 1. (Compl. ¶35).
- The essential elements of independent claim 1 include:
- A control housing with a cover opening.
- A cover panel pivotally mounted to the housing.
- An automatic driving arrangement, itself comprising:
- A sensor for detecting a user.
- An actuation unit that is actuated to "generate a decelerating and torque enhancing force to move said cover panel between said opened and closed position in a hydraulic manner."
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 8,129,930 - "Induction Actuated Container" (Issued May 6, 2012)
The Invention Explained
- Technology Synopsis: This patent claims a method of controlling an automated container lid. The claimed process involves detecting a user's movement, generating a signal to an actuation unit, generating an output force from that unit that is "decelerating and torque enhancing," and pivotally opening the lid. The method also includes a step for automatically closing the lid after a predetermined time. (’930 Patent, Abstract; col. 9:16 - col. 10:2).
- Accused Features: The accused features are the operational steps performed by the accused products when a user approaches, the lid opens, and it subsequently closes. (Compl. ¶43).
Key Claims at a Glance
- Asserted Claims: The complaint asserts independent claim 1. (Compl. ¶42).
III. The Accused Instrumentality
Product Identification
The accused products are identified as "FDW's 13-Gallon Touch-Free Sensor Automatic Trash Can (Model Nos. TC-1350R-SS, TC-1350R-W, and TC-S13G), and 13 and 2.4 Gallon Touch-Free Sensor Automatic Stainless-Steel Trash Can (Model No. TC-1309R)" (collectively, the "Infringing Products"). (Compl. ¶22).
Functionality and Market Context
The complaint describes the accused products as "knock-off motion sensor trash containers" that are sold on Defendant's websites, such as www.paylesshere.com. (Compl. ¶¶16, 22). The infringement allegations suggest the products incorporate a sensor to detect a user and a motorized mechanism to automatically open and close the container lid. The complaint alleges these products embody the inventions claimed in the patents-in-suit. (Compl. ¶¶29, 36, 43). The complaint includes a reference to Exhibit 15, which allegedly shows an infringing product offered for sale on Defendant's website. (Compl. ¶22).
IV. Analysis of Infringement Allegations
'591 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a control housing, having a cover opening, adapted for mounting at said container body... | The complaint alleges the accused products include a control housing with a cover opening. | ¶29 | col. 4:25-32 |
| a cover panel pivotally mounted to said control housing... | The complaint alleges the accused products include a pivotally mounted cover panel. | ¶29 | col. 4:33-42 |
| an automatic driving arrangement, which comprises: a sensor mounted on a front portion of said control housing for detecting a target movement of a user... | The complaint alleges the accused products include an automatic driving arrangement with a sensor mounted on a front portion. | ¶29 | col. 4:43-47 |
| and an actuation unit supported in said control housing... wherein when said sensor is activated... said actuation output generates a force to pivotally move said cover panel... in a hydraulic manner... | The complaint alleges the accused products include an actuation unit that generates a force to move the lid in this manner. | ¶29 | col. 4:48-59 |
| wherein said control housing has two L-shaped retaining slots indently formed at said two outer sidewalls of said control housing to engage with said two side covering rims of said cover panel respectively for enclosing said cover opening. | The complaint alleges the accused products include the recited L-shaped retaining slots. | ¶29 | col. 5:1-6 |
'169 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a control housing, having a cover opening, adapted for mounting at said container body... | The complaint alleges the accused products include a control housing. | ¶36 | col. 3:40-44 |
| a cover panel pivotally mounted to said control housing... | The complaint alleges the accused products include a pivotally mounted cover panel. | ¶36 | col. 3:45-50 |
| an automatic driving arrangement, which comprises: a sensor mounted at said control housing for detecting a target movement of a user; and | The complaint alleges the accused products include an automatic driving arrangement with a sensor. | ¶36 | col. 3:55-57 |
| an actuation unit supported in said control housing to operatively link with said sensor, wherein said actuation unit is actuated to generate a decelerating and torque enhancing force to move said cover panel... in a hydraulic manner. | The complaint alleges the accused products' actuation unit generates a force with the claimed characteristics to move the cover panel in the claimed manner. | ¶36 | col. 3:58-65 |
Identified Points of Contention
- Technical Questions: The complaint makes broad allegations that the accused products infringe, but provides minimal technical detail on how they operate. A central evidentiary question will be whether the accused products’ drive mechanisms function "in a hydraulic manner" or generate a "decelerating and torque enhancing force" as required by the claims. The outcome will depend on technical evidence regarding the actual force profiles and motion characteristics of the accused products.
- Scope Questions: The term "hydraulic manner" is described in the specification not as requiring hydraulic fluid, but as being "as though it is lifted up and down hydraulically," suggesting a functional analogy for smooth, controlled motion. (’591 Patent, col. 7:10-13). A dispute may arise over whether this term requires a specific, measurable motion profile or can be read more broadly to cover any non-abrupt lid movement.
V. Key Claim Terms for Construction
The Term: "in a hydraulic manner" (asserted in claims of the '591 and '169 Patents)
Context and Importance: This term defines the quality of motion for the container lid and is a key point of distinction from prior art that may have simply dropped or slammed shut. The construction of this term will be critical to determining whether the accused products, which use a motor and gears, perform the claimed function.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states the cover panel moves "as though it is lifted up and down hydraulically," which may support an interpretation that "hydraulic manner" is a general descriptor for any smooth, controlled, and stable motion, rather than a specific technical process. (’591 Patent, col. 7:10-13).
- Evidence for a Narrower Interpretation: The same passage also describes this motion as the "generation of a decelerating and torque enhancing force in a stable and controllable manner." (’591 Patent, col. 7:11-13). This language, coupled with the detailed description of the gear transmission unit, may support a narrower construction requiring a specific, engineered force profile.
The Term: "decelerating and torque enhancing force" (asserted in claims of the '169 and '930 Patents)
Context and Importance: This term provides a more specific definition of the force that achieves the "hydraulic manner" of movement. Practitioners may focus on this term because infringement will depend on whether the accused product's motor and gear system can be shown to generate a force with these specific physical properties.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Parties may argue this describes the general, inherent function of any geared motor system designed to lift a weighted object against gravity in a controlled way.
- Evidence for a Narrower Interpretation: The specification links this force directly to the described embodiment of a "servo motor" and a "gear transmission unit," suggesting the force must exhibit the specific controlled output characteristic of such a system, as opposed to a simpler, unregulated motor. (’169 Patent, col. 7:7-22).
VI. Other Allegations
- Indirect Infringement: The complaint alleges direct and induced infringement of the '930 Patent. (Compl. ¶43). The complaint does not, however, plead specific facts to support the knowledge and intent required for an inducement claim, such as referencing defendant's user manuals or marketing materials that instruct customers on how to use the products in an infringing manner.
- Willful Infringement: Willfulness is alleged for all three patents. (Compl. ¶¶32, 39, 46). The allegations are made "upon information and belief" and are based on the parties being "business competitors" and Plaintiff publishing its patents on its website, which allegedly provided Defendant with pre-suit knowledge of the patents. (Compl. ¶¶23, 24).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can functional terms like "hydraulic manner" be construed broadly to mean any smooth, controlled lid motion, or do they require a specific, measurable force profile, such as the "decelerating and torque enhancing force" also claimed? The answer will define the boundary between the patented invention and generic automated lids.
- The central evidentiary question will be one of technical operation: does the accused products' motor and gear mechanism actually function in the specific manner required by the claims? As the complaint provides conclusory infringement allegations, the case will likely turn on evidence developed in discovery that details the precise force characteristics and motion profiles of the accused devices.