DCT
2:19-cv-01593
Ep Family Corp v. Yuanmin Chen
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: EP FAMILY CORP. d.b.a Simple Houseware (California)
- Defendant: Yuanmin Chen; Global Skyline, Inc. (California)
- Plaintiff’s Counsel: Wang IP Law Group, P.C.
- Case Identification: 2:19-cv-01593, C.D. Cal., 03/05/2019
- Venue Allegations: Venue is asserted based on Defendants allegedly committing acts of infringement within the district and placing infringing products into the stream of commerce with the intent that they would be sold in California.
- Core Dispute: Plaintiff alleges that Defendant’s stackable can racks and under-shelf storage baskets infringe two of its utility patents related to modular and collapsible houseware storage assemblies.
- Technical Context: The dispute centers on the mechanical design and features of wire-frame organizational products, a competitive segment of the consumer housewares market.
- Key Procedural History: The complaint alleges that Plaintiff discovered the alleged infringement of one patent around August 2018 and the second patent around January 2019. No prior litigation or inter partes proceedings are mentioned.
Case Timeline
| Date | Event |
|---|---|
| 2016-12-02 | Priority Date for '979 Patent |
| 2016-12-02 | Priority Date for '953 Patent |
| 2017-05-16 | U.S. Patent 9,648,953 Issues |
| 2018-08-XX | Plaintiff alleges discovery of '953 Patent infringement |
| 2018-08-21 | U.S. Patent 10,051,979 Issues |
| 2019-01-XX | Plaintiff alleges discovery of '979 Patent infringement |
| 2019-03-05 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,051,979: Stackable Can Rack Assembly (Issued Aug. 21, 2018)
The Invention Explained
- Problem Addressed: The patent background describes the shortcomings of conventional shelving for canned goods in retail and home environments, noting that such shelves often have limited space, do not readily dispense cans, and can result in items tumbling when a consumer attempts to remove one (’979 Patent, col. 1:42-53).
- The Patented Solution: The invention is a modular rack assembly designed for stacking. The core of the solution lies in the side panels, which feature a top flat bar with a "convex hump" and a bottom flat bar with a "concave hump." These corresponding shapes are designed to couple when one rack is stacked on another, providing stability. The shelves are sloped to allow for gravity-fed dispensing of cans toward the front (’979 Patent, Abstract; col. 2:40-54).
- Technical Importance: This design sought to provide a stable, space-efficient, and user-friendly system for organizing and dispensing canned goods that could be easily configured by stacking multiple units (’979 Patent, col. 1:53-62).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶23, ¶88).
- The essential elements of independent claim 1 include:
- A plurality of shelves defined by wire mesh, disposed at an angle so the rear edge is elevated above the front edge.
- A pair of side panels featuring a top flat bar with a "convex hump having a flat surface" and a bottom flat bar with a "concave hump having a flat surface," where the humps of adjacent racks couple to enable stacking.
- At least one bracket configured to join the concave hump of a bottom bar to the top bar of a subjacent rack.
- A pair of support bars extending between the top and bottom flat bars of a side panel.
- A back panel disposed generally perpendicular to the side panels.
- The complaint also asserts rights under dependent claims 2-5 and 7-12 (Compl. ¶88).
U.S. Patent No. 9,648,953: Collapsible Hanging Storage Assembly (Issued May 16, 2017)
The Invention Explained
- Problem Addressed: The patent identifies a need for a storage unit that can be conveniently hung beneath a desk or other flat surface to provide accessible storage for office items, while also being collapsible for efficient shipping and stowage (’953 Patent, col. 1:6-20).
- The Patented Solution: The invention is a wire-frame basket assembly designed to hang from a surface. It features a base panel, two side panels that hingedly attach to the base, and a detachable rear panel. The entire structure can be collapsed into a "coplanar relationship." A pair of "L-shaped brackets" extends from the front vertical bars to allow for suspended mounting, and the rear panel attaches to the side panels using a system of hooks and cylinders (’953 Patent, Abstract; col. 2:1-7, 39-53).
- Technical Importance: The invention provides a dual benefit of space-saving under-surface storage and collapsibility, addressing both usability and logistical challenges of traditional desk organizers (’953 Patent, col. 3:41-49).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶54, ¶89).
- The essential elements of independent claim 1 include:
- A base panel and a pair of side panels configured to hingedly join and collapse into a coplanar relationship.
- At least one fastener, comprising an "elongated clip," to fasten the lower bars of the side panels to the side edges of the base panel.
- A pair of "L-shaped brackets" extending from the front vertical bars to enable suspended mounting.
- A plurality of "cylinders" attached to the rear vertical bars of the side panels.
- A rear panel with a pair of "hooks" configured to be inserted into the cylinders to create a detachable coupling with the side panels.
- The complaint also asserts rights under dependent claims 2-10 (Compl. ¶89).
III. The Accused Instrumentality
Product Identification
- "NEX Stackable Can Rack Organizer, 3-Tier Can Rack Holds Up To 36 Cans" (the "NEX Can Rack") is accused of infringing the ’979 Patent (Compl. ¶36).
- "NEX Under Shelf Basket, 2-Pack Under Cabinet Hanging Storage Wire Basket Organizer" (the "NEX Under Shelf Basket") is accused of infringing the ’953 Patent (Compl. ¶65).
Functionality and Market Context
- The complaint alleges that the NEX Can Rack is a stackable organizer with features including a plurality of shelves, wire mesh construction, rectangular side panels, and a convex/concave hump system for stacking that creates a "friction fit relationship" (Compl. ¶38, ¶42-43). The complaint includes a reference to a printout of the accused NEX Can Rack being sold on Amazon.com and the website dealelement.com, attached as Exhibit 4 (Compl. ¶49).
- The complaint alleges the NEX Under Shelf Basket is a collapsible hanging basket with features including a base panel, hingedly collapsing side panels, L-shaped brackets, a rear panel, and a hook-and-cylinder attachment mechanism (Compl. ¶66-72). The complaint also references a printout of the accused NEX Under Shelf Basket from the same online retailers, attached as Exhibit 6 (Compl. ¶78).
IV. Analysis of Infringement Allegations
’979 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a plurality of shelves defined by wire mesh... disposed at an angle, whereby the rear edge is elevated above the front edge | The NEX Can Rack is alleged to have a plurality of shelves defined by wire mesh arranged in a spaced-apart relationship. | ¶38 | col. 8:8-17 |
| a pair of side panels... a top flat bar defined by a convex hump having a flat surface; a bottom flat bar defined by a concave hump having a flat surface, whereby the concave hump couples to a convex hump of a subjacent modular rack | The accused product's side panels allegedly have a convex and concave hump that are configured to form a "friction fit relationship" for stacking. | ¶43 | col. 8:18-25 |
| at least one bracket configured to... at least partially fasten the bottom flat bar to a top flat bar of the subjacent modular rack | The NEX Can Rack is alleged to comprise a "generally U-shape" component that encapsulates the top flat bar when racks are stacked. | ¶44 | col. 8:26-31 |
| a pair of support bars... disposed to extend between the top flat bar and the bottom flat bar | The NEX Can Rack is alleged to have a pair of support bars disposed perpendicular to its flat bars. | ¶45 | col. 8:32-35 |
| a back panel disposed generally perpendicular to the pair of side panels | The accused product is alleged to comprise a rectangular and flat back panel. | ¶46 | col. 8:36-40 |
- Identified Points of Contention:
- Technical Question: What evidence demonstrates that the accused product's shelves are "disposed at an angle"? While this is inherent to a gravity-fed design, the complaint does not explicitly allege this feature (Compl. ¶38).
- Scope Question: Does the accused "friction fit relationship" (Compl. ¶43) meet the claim requirement that the humps "couple... to enable stacking"? The analysis may focus on whether this alleged fit provides the structural stability implied by the patent's coupling mechanism.
’953 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a pair of side panels... configured to hingedly join with the... base panel... whereby the base panel and the pair of side panels are configured to hingedly collapse in a coplanar relationship | The accused product's base panel and side panels are alleged to be configured to hingedly collapse in a coplanar relationship. | ¶67 | col. 7:42-52 |
| at least one fastener... wherein the at least one fastener comprises an elongated clip | The accused product's fastener is alleged to be "integral with the pair of lower horizontal bars." | ¶74 | col. 7:53-57 |
| a pair of L-shaped brackets disposed to extend from the pair of front vertical bars... configured to enable mounting... in a suspended manner | The accused product is alleged to have a pair of L-shaped brackets that extend from its front vertical bars. | ¶68 | col. 8:1-12 |
| a plurality of cylinders attached to the pair of rear vertical bars of the pair of side panels | The accused product is alleged to have a plurality of cylinders attached to the rear vertical bars of its side panels. | ¶72 | col. 8:13-16 |
| a rear panel... and a pair of hooks... configured to be inserted within the plurality of cylinders... to enable detachable coupling | The accused product is alleged to have a rear panel with hooks that are inserted within the cylinders to dispose the rear panel to the base panel and side panels. | ¶71, ¶76 | col. 8:17-27 |
- Identified Points of Contention:
- Scope Question: Does the accused "fastener" (Compl. ¶74) meet the specific claim limitation of an "elongated clip"? The complaint does not describe the structure of the accused fastener, raising the question of whether it reads on this specific element or if the plaintiff will need to rely on the doctrine of equivalents.
- Technical Question: Does the accused product's hook and cylinder system (Compl. ¶71, ¶72) create a "detachable coupling" that functions in the same way and achieves the same result as the mechanism described in the patent specification?
V. Key Claim Terms for Construction
For the ’979 Patent:
- The Term: "flat bar" (Claim 1)
- Context and Importance: The patent repeatedly emphasizes that the "flat surface" of the bars and their associated humps provides stability for stacking (’979 Patent, col. 2:45-54). The definition of "flat" is therefore critical to determining the scope of the claim.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that "flat" should be given its plain and ordinary meaning, not requiring geometric perfection, and that any surface that is not intentionally curved or rounded would qualify.
- Evidence for a Narrower Interpretation: The specification states that the "entire length of the top flat bar... [is] substantially flat" and the "entire length of the bottom flat bar... [is] substantially flat" (’979 Patent, col. 6:45-52). A party could argue this repeated emphasis limits the term to surfaces that are flat enough to ensure the stable stacking function described as a key benefit of the invention.
For the ’953 Patent:
- The Term: "elongated clip" (Claim 1)
- Context and Importance: This term defines the specific structure of the fastener that connects the side panels to the base panel. As the complaint only alleges a "fastener" without describing its form (Compl. ¶74), the construction of "elongated clip" will be central to the infringement analysis.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specification describes the element as "at least one fastener" that is an "elongated clip" but does not provide an explicit definition (’953 Patent, col. 2:33-38). A party might argue the term should cover a range of fastening structures that are elongated and perform a clipping function.
- Evidence for a Narrower Interpretation: The patent states that in one embodiment, "the fastener 118a, 118b is an elongated clip integral with the lower horizontal bars" (’953 Patent, col. 5:15-17). A party could point to the depiction of this element in figures (e.g., FIG. 5) as defining the required structure, arguing that it must be a specific wire-form clip and not merely any generic fastener.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendants have the specific intent to induce infringement by their customers (Compl. ¶91) and are contributorily infringing (Compl. ¶92). The factual basis alleged is the act of manufacturing, marketing, and selling the accused products.
- Willful Infringement: Willfulness is alleged based on "information and belief" that Defendants were aware of Plaintiff's rights before beginning the accused activities and had "full knowledge" of the patents, rendering the infringement "intentional, deliberate, and willful" (Compl. ¶82, ¶93).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: for the ’953 patent, can the accused product's unspecified "fastener" be proven to meet the specific claim limitation of an "elongated clip"? The outcome of this construction may determine literal infringement for a key element of the claim.
- A key evidentiary question will be one of structural correspondence: for the ’979 patent, does the accused product's stacking mechanism, described only as a "friction fit relationship," possess the specific "convex hump" and "concave hump" structures with "flat surfaces" as claimed? The analysis will likely focus on whether the accused product's design is merely functionally similar or is structurally the same as that required by the claims.