DCT
2:22-cv-07633
Shenzhen Smoore Technology Co Ltd v. Calico Group Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Shenzhen Smoore Technology Co., Ltd. (China)
- Defendant: The Calico Group Inc. (Nevada)
- Plaintiff’s Counsel: Crowell & Moring LLP
- Case Identification: 2:22-cv-07633, C.D. Cal., 10/19/2022
- Venue Allegations: Plaintiff alleges venue is proper in the Central District of California based on Defendant’s residence, acts of infringement, sales to customers in the district, and a regular and established place of business in Los Angeles.
- Core Dispute: Plaintiff alleges that Defendant’s oil-vaping cartridges infringe two utility patents and three design patents related to electronic cigarette atomizer technology.
- Technical Context: The technology concerns the design of electronic cigarette atomizers, focusing on the use of ceramic heating elements for improved vapor production and mechanical structures designed to prevent e-liquid leakage during assembly.
- Key Procedural History: The complaint alleges that Defendant has had knowledge of the patents-in-suit since at least September 23, 2021, the date it received a cease and desist letter from the Plaintiff.
Case Timeline
| Date | Event |
|---|---|
| 2015-10-21 | U.S. Patent No. 10,791,762 Earliest Priority Date |
| 2017-02-23 | U.S. Patent Nos. D817,544, D823,534, D853,635 Priority Date |
| 2017-06-06 | U.S. Patent No. 10,791,763 Earliest Priority Date |
| 2018-05-08 | U.S. Patent No. D817,544 Issued |
| 2018-07-17 | U.S. Patent No. D823,534 Issued |
| 2019-07-09 | U.S. Patent No. D853,635 Issued |
| 2020-10-06 | U.S. Patent No. 10,791,762 Issued |
| 2020-10-06 | U.S. Patent No. 10,791,763 Issued |
| 2021-09-23 | Plaintiff allegedly sent cease and desist letter to Defendant |
| 2022-10-19 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,791,762 - “Electronic cigarette and method for manufacturing atomizing assembly thereof”
- Issued: October 6, 2020.
The Invention Explained
- Problem Addressed: The patent describes conventional electronic cigarette atomizers, which often use a heating wire wrapped around a wick, as suffering from inefficient liquid absorption. This can lead to "inadequate liquid supply to the wick, thus resulting in dry burning as well as production of a burning smell" (’762 Patent, col. 1:32-35).
- The Patented Solution: The invention replaces the traditional wick with a "liquid absorption element made of porous ceramic" that has a heating element "embedded in an interior" of the ceramic itself (’762 Patent, Abstract; col. 2:58-62). This design ensures the heating element is in complete contact with the e-liquid held within the ceramic's pores, enabling more uniform heating and better atomization (’762 Patent, col. 5:8-15).
- Technical Importance: This integrated ceramic heater design sought to improve the consistency and quality of vapor production compared to earlier wick-based systems.
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 2 and 7 (Compl. ¶10, 25).
- Independent Claim 1 requires:
- A liquid reservoir configured to store liquid;
- An atomizing assembly comprising a liquid absorption element made of porous ceramic, which is connected to the reservoir and has a liquid absorption surface and an atomizing surface;
- A heating element embedded in the interior of the liquid absorption element, where an edge of the heating element is internally tangent to the atomizing surface; and
- A power source assembly connected to the atomizing assembly.
- Plaintiff reserves the right to assert additional claims (Compl. ¶1).
U.S. Patent No. 10,791,763 - “Atomizer capable of preventing liquid leakage caused by air inside a liquid reservoir and electronic cigarette with the same”
- Issued: October 6, 2020.
The Invention Explained
- Problem Addressed: The patent identifies a problem that occurs during the assembly of some e-cigarettes: when a mouthpiece is mounted to seal the liquid reservoir, the air inside is compressed. This pressure can "push the e-liquid in the liquid reservoir to flow into the atomization core, thereby causing the leakage of the e-liquid" (’763 Patent, col. 1:31-35).
- The Patented Solution: The invention discloses a mechanical solution where the cartridge has an "engaging portion" with a "discharging hole." As the mouthpiece is inserted, this hole allows the trapped air to vent to the outside. Once the mouthpiece is fully seated, its "inserting portion" blocks the discharging hole, creating a final seal (’763 Patent, Abstract; col. 5:35-42).
- Technical Importance: This invention provides a solution to a manufacturing and final assembly challenge, aiming to reduce product defects and leakage caused by air pressurization.
Key Claims at a Glance
- The complaint asserts independent claims 1 and 11 (Compl. ¶12, 27).
- Independent Claim 1 requires:
- An atomizer with a cartridge assembly and a mouthpiece assembly.
- The cartridge assembly includes a liquid reservoir, an opening, and an "engaging portion" adjacent to the opening.
- The mouthpiece assembly includes an "inserting portion" that is inserted into the engaging portion.
- The engaging portion defines a "discharging hole" for discharging air while the inserting portion is being inserted.
- After insertion, the inserting portion "blocks" the discharging hole.
- Independent Claim 11 recites an electronic cigarette comprising the atomizer of claim 1.
U.S. Patent No. D817,544 - “Atomizer for electronic cigarette”
- Issued: May 8, 2018.
- Technology Synopsis: This patent claims the ornamental design for an electronic cigarette atomizer. The design features a transparent, cylindrical liquid reservoir section atop a metallic base, with a distinct, non-tapered, wide-bore mouthpiece.
- Asserted Claims: The single design claim is asserted (Compl. ¶14).
- Accused Features: The overall ornamental appearance of certain of Defendant’s vaporizer cartridges is alleged to infringe (Compl. ¶41).
U.S. Patent No. D823,534 - “Atomizer for electronic cigarette”
- Issued: July 17, 2018.
- Technology Synopsis: This patent claims the ornamental design for an electronic cigarette atomizer. The design is characterized by a transparent cylindrical reservoir and a tapered, conical mouthpiece that narrows toward the tip.
- Asserted Claims: The single design claim is asserted (Compl. ¶16).
- Accused Features: The overall ornamental appearance of certain of Defendant’s vaporizer cartridges is alleged to infringe (Compl. ¶49).
U.S. Patent No. D853,635 - “Atomizer for electronic cigarette”
- Issued: July 9, 2019.
- Technology Synopsis: This patent claims the ornamental design for an electronic cigarette atomizer. The design features a transparent cylindrical reservoir and a flat, "duckbill"-style mouthpiece.
- Asserted Claims: The single design claim is asserted (Compl. ¶18).
- Accused Features: The overall ornamental appearance of certain of Defendant’s vaporizer cartridges is alleged to infringe (Compl. ¶57).
III. The Accused Instrumentality
Product Identification
- The complaint identifies Defendant's "oil-vaping cartridges," including at least the TH210 glass oil cartridges, TH205 glass oil cartridges, M6T05 resin oil cartridges, and M6T10 resin oil cartridges (Compl. ¶17, 21).
Functionality and Market Context
- The complaint alleges these products are components that include a "liquid reservoir for containing a vaporizable oil" and an "atomizer coil assembly" (Compl. ¶17-19). Drawing 2 in the complaint provides a visual breakdown of an atomizer into a "mouthpiece assembly," a "liquid reservoir," and an "atomizer core assembly" (Compl. p. 7, Drawing 2). These cartridges are designed to be assembled with a battery to form a complete vaping device, as depicted in Drawing 1 (Compl. p. 6, Drawing 1). The complaint alleges that Defendant offers these products for sale and sells them within the Central District of California (Compl. ¶17, 25).
IV. Analysis of Infringement Allegations
Note: The complaint refers to claim charts in Exhibit B, which was not included with the public filing. The following analysis is based on the complaint's narrative allegations, visual evidence, and the patent claims.
’762 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a liquid reservoir configured to store liquid; | The accused cartridges contain a "liquid reservoir for containing a vaporizable oil." This is visually represented in the complaint's Drawing 2. | ¶17, 20 | col. 2:56-57 |
| a liquid absorption element ... being made of porous ceramic ... having a liquid absorption surface ... and an atomizing surface; | The accused cartridges include an "atomizer core assembly" which allegedly performs the function of the claimed liquid absorption element and is made of porous ceramic. | ¶19-20 | col. 2:58-62 |
| a heating element embedded in an interior of the liquid absorption element, wherein an edge of the heating element is internally tangent to the atomizing surface... | The "atomizer core assembly" allegedly contains a heating element embedded within it in the manner claimed. | ¶19-20 | col. 2:62-65 |
Identified Points of Contention
- Technical Questions: A primary factual dispute may center on the composition and construction of the accused "atomizer core assembly." The litigation will need to determine if the accused element is in fact made of "porous ceramic" and if the heating element is truly "embedded in an interior" and "internally tangent" to the atomizing surface, as the claim requires.
’763 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An atomizer applicable in an electronic cigarette, comprising a cartridge assembly (10), a mouthpiece assembly (20); | The accused product is an atomizer composed of a cartridge and a mouthpiece, which are assembled with a power source. | ¶20 | col. 7:15-17 |
| the cartridge assembly (10) comprises an engaging portion (141) located adjacent to the opening (130)... | The accused cartridge allegedly has a structure corresponding to the claimed "engaging portion" where the mouthpiece connects. | ¶20 | col. 7:24-25 |
| the engaging portion (141) defines a discharging hole (1210) for discharging air inside the liquid reservoir (14) while the inserting portion (22) is being inserted... | Plaintiff's infringement theory must be that the accused cartridge has an aperture that allows air to vent during assembly of the mouthpiece. | ¶33 | col. 7:27-30 |
| and after the inserting portion (22) is inserted ... the discharging hole (1210) is blocked. | The complaint alleges that after assembly, the mouthpiece of the accused product blocks the feature that allows air to discharge. | ¶33 | col. 7:30-32 |
Identified Points of Contention
- Scope Questions: Does any gap or channel that vents air during assembly meet the definition of a "discharging hole" as used in the patent? The defense may argue the term requires a specific, intentionally designed structure rather than an incidental manufacturing tolerance.
- Technical Questions: A key factual question will be whether the accused products physically contain a structure that functions as a "discharging hole" and whether that structure is subsequently "blocked" by the mouthpiece, as the claim requires. The high-level diagrams in the complaint do not resolve this question.
V. Key Claim Terms for Construction
Term: "embedded in an interior" (’762 Patent, Claim 1)
Context and Importance
- This phrase is central to defining the relationship between the heating element and the ceramic body, which is the core of the '762 patent’s asserted novelty. The infringement analysis will depend heavily on whether the accused product's heating element is situated "in an interior" of its absorbent material, as opposed to being wrapped around it or merely in surface contact.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The specification describes the invention as having the heating element "completely embedded inside the liquid absorption element" (’762 Patent, col. 5:9-10), which a plaintiff might argue simply means being surrounded by the ceramic material.
- Evidence for a Narrower Interpretation: The patent also discloses specific arrangements, such as a "spiral tubular heating wire" within the ceramic (’762 Patent, col. 3:47-48), and figures like FIG. 3A show the element fully enclosed. A defendant could argue "embedded in an interior" requires the heating element to be fully encased and not exposed on any surface.
Term: "discharging hole" (’763 Patent, Claim 1)
Context and Importance
- The presence and function of a "discharging hole" is the key element for preventing leakage as described in the '763 patent. Whether the accused device infringes will likely turn on whether any aperture or pathway in its construction meets the structural and functional requirements of this term.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: Plaintiff may argue that the term should be construed functionally to cover any structure that performs the recited function of "discharging air inside the liquid reservoir" during assembly (’763 Patent, col. 7:27-30).
- Evidence for a Narrower Interpretation: The patent figures, such as FIG. 3, depict a distinct, defined hole (1210) in the wall of the "engaging portion" (141). A defendant could argue that the term requires a specific, dedicated aperture, not an incidental gap or a general lack of a perfect seal.
VI. Other Allegations
Indirect Infringement
- The complaint alleges that Defendant induces infringement by its customers and end-users, asserting that they are encouraged to use the accused cartridges in an infringing manner (Compl. ¶¶ 26-27, 34-35). For the design patents, the complaint specifically alleges inducement of infringement by others (customers and end-users) who assemble the provided components into a finished product (Compl. ¶¶ 43, 51, 59).
Willful Infringement
- The complaint alleges that Defendant had knowledge of all five patents-in-suit "at least as of its receipt of Smoore's cease and desist letter dated September 23, 2021" (Compl. ¶¶ 24, 32, 40, 48, 56). This allegation of pre-suit knowledge forms the basis for the claim of willful infringement and the prayer for enhanced damages (Compl. p. 15, ¶h).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of technical evidence: For the ’762 patent, can Plaintiff prove through discovery that the accused products' "atomizer core assembly" is made of porous ceramic and contains a heating element that is "embedded" and "internally tangent" in the specific manner required by the claim?
- A key question will be one of structural interpretation: For the ’763 patent, does the accused atomizer possess a specific, dedicated "discharging hole" for venting air during assembly that is subsequently "blocked" by the mouthpiece, or does the infringement allegation rely on incidental gaps that may not meet the claim's specific structural and functional requirements?
- Finally, a primary dispute for the design patents will be one of visual comparison: Would an ordinary observer, comparing the patented designs to the accused cartridges, be deceived into believing the accused products are the same as the patented designs, considering the overall ornamental appearance of each?