DCT
2:18-cv-09662
Tsann Kuen Zhangzhou Enterprises Co Ltd v. Ningbo Golden Age Electric Co Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Tsann Kuen (Zhangzhou) Enterprise Co., Ltd. (China)
- Defendant: Ningbo Golden Age Electric Co. Ltd (China); Ningbo Zhonghao Electric Co. Ltd (China); J.C. Penney Co., Inc. (Delaware)
- Plaintiff’s Counsel: Wang IP Law Group, P.C.
- Case Identification: 2:18-cv-09662, C.D. Cal., 11/15/2018
- Venue Allegations: Venue is alleged to be proper for the foreign defendants under 28 U.S.C. § 1391(c) as they may be sued in any judicial district. For defendant J.C. Penney, venue is alleged to be proper under 28 U.S.C. § 1400(b) based on it having a regular and established place of business in the district, making sales to the district, and storing and distributing products from within the district.
- Core Dispute: Plaintiff alleges that Defendants’ rotatable waffle maker infringes a patent related to a mechanical design that allows for more compact vertical storage via an interlocking drip tray.
- Technical Context: The technology concerns the mechanical design of countertop kitchen appliances, specifically addressing the common consumer problem of limited storage space for bulky items like waffle makers.
- Key Procedural History: The patent-in-suit was filed as a U.S. application on November 2, 2007, and issued on December 23, 2014. The patent was assigned to the Plaintiff on May 2, 2017. The complaint does not mention any prior litigation or administrative proceedings involving the patent.
Case Timeline
| Date | Event |
|---|---|
| 2006-11-03 | ’179 Patent Priority Date |
| 2014-12-23 | ’179 Patent Issue Date |
| 2017-05-02 | ’179 Patent Assigned to Plaintiff |
| 2018-11-15 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,915,179 - "Muffin Baker"
The Invention Explained
- Problem Addressed: The patent’s background section identifies a problem with conventional waffle makers: the collecting plate, or drip tray, is bulky and "takes up too much room," making the appliance inconvenient to store when not in use (’179 Patent, col. 2:45-52).
- The Patented Solution: The invention proposes a mechanical design where the collecting plate can be detached from its horizontal, in-use position and re-mounted to the support base in a vertical orientation. This is achieved through an "inserted structure" or "inosculating portion" (e.g., a groove on the base and a corresponding edge on the plate) that allows the plate to be secured in a "storage position" where its normal line is perpendicular to the normal line of the pedestal, thereby minimizing the appliance's storage footprint (’179 Patent, col. 2:53-68; Fig. 2D).
- Technical Importance: The design offers a practical improvement in product usability by directly addressing the consumer desire for space-efficient storage of countertop appliances.
Key Claims at a Glance
- The complaint asserts independent claim 1.
- The essential elements of independent claim 1 are:
- A support provided with a pedestal, at least one support arm with a rotary device, and a first inosculating portion.
- A main body connected to the rotary device.
- A collecting plate mounted on the support device, provided with a second inosculating portion for connecting with the first portion when the main body is in a storage position.
- A requirement that the normal line of the collecting plate is perpendicular to the normal line of the pedestal in the storage position.
- A specific definition wherein the first inosculating portion is a groove, and the second is an edge of the collecting plate.
- The complaint also asserts dependent claims 2, 3, and 4 (Compl. ¶41).
III. The Accused Instrumentality
Product Identification
The "Rotating Waffle Maker GH-825," which is sold under the "Cooks" brand name (Compl. ¶10; Compl. p. 9).
Functionality and Market Context
- The accused product is a rotating waffle maker imported by Defendants Golden Age and Zhonghao and sold by Defendant J.C. Penney through its online and physical retail stores (Compl. ¶¶21-25).
- The complaint alleges the product includes a support device with a pedestal, a main body, and a collecting plate that "could be mounted in two different positions" (Compl. ¶¶30, 31, 35).
- The complaint specifically alleges the product features "grooves on both sides of the supporting device to allows the collecting plate to slide into a position that is perpendicular to the base of the device," a feature central to the infringement allegations (Compl. ¶38). An annotated photograph in the complaint shows the accused product's drip tray removed and mounted vertically on the base (Compl. ¶41, p. 11).
IV. Analysis of Infringement Allegations
U.S. Patent No. 8,915,179 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a support provided with a pedestal, at least one support arm provided with a rotary device, and a first inosculating portion | The complaint identifies a support structure with a base (pedestal), support arms, a rotary mechanism, and a "First Inosculating Portion" alleged to be a groove. A provided image labels these components on the accused product (Compl. p. 10). | ¶¶30, 41 | col. 4:1-4 |
| a main body connected to said rotary device | The product's main rotating cooking body is alleged to connect to the rotary device on the support arm. The complaint also alleges the main body has separable baking plates (Compl. p. 13). | ¶¶31, 41 | col. 4:32-37 |
| a collecting plate mounted on said support device and provided with a second inosculating portion used for connecting with said first inosculating portion when said main body is in a storage position | The complaint alleges the product's drip tray ("collecting plate") can be mounted on the support base by connecting its edge ("second inosculating portion") with the groove on the base ("first inosculating portion"). | ¶¶35, 38, 41 | col. 5:25-27 |
| wherein the normal line of said collecting plate is perpendicular to the normal line of said pedestal when the collecting plate is in the storage position | The complaint alleges and provides a photograph purporting to show that the collecting plate can be mounted vertically, making its normal line perpendicular to the base. This annotated photograph depicts the alleged storage position (Compl. p. 11). | ¶¶37, 38, 41 | col. 2:9-12 |
| wherein the said first inosculating portion is a groove, and said second inosculating portion is an edge of said collecting plate | The complaint alleges the product contains "grooves on both sides of the supporting device" that function as the first portion, and that an edge of the collecting plate functions as the second portion. | ¶¶38, 41 | col. 5:34-36 |
Identified Points of Contention
- Scope Questions: A central question may be whether the accused product's structures for mounting the drip tray constitute "inosculating portions" as claimed. The patent uses the non-standard term "inosculating," and its interpretation relative to the more common "inserted portion" also used in the specification could become a point of dispute.
- Technical Questions: Claim 1 requires the connection between the portions to occur "when said main body is in a storage position." The complaint alleges the accused product has this storage feature, but the evidence required to prove that this specific condition is met will be critical. The court will need to determine if the accused product's vertical plate mounting is functionally tied to the main body being in its own unique storage orientation, as described in the patent.
V. Key Claim Terms for Construction
The Term: "inosculating portion"
- Context and Importance: This term appears in the independent claim and is not a standard term of art. Its construction is critical because infringement depends on whether the accused product's specific structures (allegedly a groove and an edge) fall within its scope. Practitioners may focus on this term because its ambiguity provides a potential avenue for a non-infringement defense.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification also uses the more general phrase "inserted device" to describe the invention, stating it "supplies a muffin maker having two inserted devices between the support device and the collecting plate" (’179 Patent, col. 2:2-4). This could be argued to support a broader functional definition covering various interlocking mechanisms.
- Evidence for a Narrower Interpretation: Claim 1 itself provides an explicit definition, stating "wherein said first inosculating portion is a groove, and said second inosculating portion is an edge of said collecting plate" (’179 Patent, col. 7:20-22). This language strongly suggests the term is not meant to be broad, but is instead defined by the specific structures recited within the claim itself.
The Term: "storage position"
- Context and Importance: The claim's functionality is conditioned on the "main body" being in a "storage position." Defining this state is necessary to determine if and when infringement occurs.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that "storage position" refers to any non-operational state where the device is being put away, without regard to the specific orientation of the main cooking body.
- Evidence for a Narrower Interpretation: The specification describes a specific action for storage: "the handle 240 is turned to rotate about 90 degrees... in order to make the normal line 221 of the main body perpendicular to the normal line 213 of the pedestal 212" (’179 Patent, col. 4:53-57). Figures 2D and 2F illustrate this precise vertical orientation of the main body, suggesting "storage position" is a specific, defined configuration and not merely any state of non-use.
VI. Other Allegations
Indirect Infringement
The complaint does not plead separate counts for inducement or contributory infringement, focusing its allegations on direct infringement under 35 U.S.C. § 271(a) for the defendants' alleged acts of making, using, selling, offering for sale, and importing the accused product (Compl. ¶40).
Willful Infringement
The complaint alleges that Defendants' infringement "is and have been willful" (Compl. ¶47). It claims Defendants had "actual or constructive notice of the existence of the '179 Patent" but does not provide specific facts detailing when or how any pre-suit notice was provided (Compl. ¶44).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction: can the non-standard term "inosculating portion" be interpreted broadly based on the specification's general description, or is its meaning strictly limited by the explicit "groove" and "edge" language within Claim 1 itself?
- A key evidentiary question will be one of conditional infringement: does the evidence show that the accused product's vertical drip-tray mounting (the alleged perpendicular orientation) is functionally performed "when the main body is in a storage position," as that specific state is defined by the patent's specification and figures?