DCT

2:23-cv-05982

Transform Partners LLC v. Dbest Product Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: Transform Partners LLC v. dbest products, Inc., 2:23-cv-05982, C.D. Cal., 07/24/2023
  • Venue Allegations: Venue is based on the allegation that both the corporate and individual defendants reside within the Central District of California.
  • Core Dispute: Plaintiff seeks a declaratory judgment that Defendant's patent is invalid, alleging that its own products—which Defendants accuse of infringement—were on sale more than a year before the patent’s priority date and thus constitute invalidating prior art.
  • Technical Context: The technology at issue involves collapsible, wheeled utility carts designed for consumer use, focusing on features that enhance structural rigidity when the cart is in its open, usable configuration.
  • Key Procedural History: The dispute arose after Defendants sent infringement notices to Amazon based on the '835 Patent, leading to the removal of Plaintiff's product listings. The complaint alleges that Plaintiff provided Defendants with evidence of its prior sales and demanded a retraction of the notices, which was ignored, prompting this lawsuit for declaratory judgment and claims for tortious interference.

Case Timeline

Date Event
2018-04-05 Plaintiff's alleged first sale of cart MI-906
2018-04-25 Plaintiff's alleged first sale of cart MI-905
2018-06-25 Plaintiff's alleged first sale of cart MI-904
2020-01-06 U.S. Patent No. 11,338,835 earliest priority date
2022-05-24 U.S. Patent No. 11,338,835 issue date
2022-10-05 Defendants allegedly sent infringement notice to Amazon regarding cart MI-906
2023-01-15 Defendants allegedly sent infringement notices to Amazon regarding carts MI-905 and MI-904
2023-02-07 Plaintiff allegedly contacted Defendants to demand retraction of infringement notices
2023-07-24 Complaint for Declaratory Judgment filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 11,338,835 - "High Load Capacity Collapsible Carts"

  • Patent Identification: U.S. Patent No. 11,338,835, "High Load Capacity Collapsible Carts", issued May 24, 2022.

The Invention Explained

  • Problem Addressed: The patent addresses a perceived deficiency in prior art collapsible carts, noting that their collapsible nature may render their sidewalls insufficiently "sturdy to allow for transporting heavy objects" (’835 Patent, col. 2:9-12).
  • The Patented Solution: The invention claims to solve this problem through a specific structural design. The cart’s sidewalls are constructed from two separate panels joined by a vertical hinge, allowing them to fold inward for storage (’835 Patent, col. 4:15-22). To enhance rigidity when unfolded, the design includes one or more "slideable members" that move along "tracks" which span the two panels of a sidewall. Moving the slideable member to a closed position locks the two panels together, reinforcing the sidewall structure (’835 Patent, col. 4:51-67). The design may also include a "rotatable base panel" that drops into place to further stabilize the cart's frame (’835 Patent, col. 4:35-42).
  • Technical Importance: The described solution aims to combine the storage convenience of a collapsible cart with the structural integrity and load capacity of a rigid cart, a key design trade-off in this product category (’835 Patent, col. 2:9-12).

Key Claims at a Glance

  • The complaint seeks a declaration that the '835 Patent is invalid in its entirety (Compl. ¶31). The patent’s independent claims are 1, 9, and 17.
  • Independent Claim 1 recites the following essential elements:
    • A rigid frame with front, rear, right, left, and bottom walls.
    • The right sidewall comprises a first and second right panel coupled along a first vertical axis.
    • The left sidewall comprises a first and second left panel coupled along a second vertical axis.
    • A rotatable base panel coupled to the bottom wall.
    • A "first track" extending across the first vertical axis from the first right panel to the second right panel.
    • A "first slideable member" that engages the track and is movable between an open position (allowing the sidewall to fold) and a closed position to "selectively lock" the panels together.
  • The complaint does not reserve the right to assert dependent claims but targets the patent as a whole.

III. The Accused Instrumentality

Product Identification

  • The instrumentalities at issue are Plaintiff’s rolling utility carts, identified as SKU MI-906, SKU MI-905, and SKU MI-904 (collectively "the three Mount-It! carts") (Compl. ¶¶ 8, 11, 13, 15).

Functionality and Market Context

  • The complaint describes the products as rolling utility carts sold through Amazon.com (Compl. ¶¶ 8-14). A photograph provided in the complaint shows the MI-906 cart, which is a black, wheeled, collapsible container with a telescoping handle (Compl. p. 3). The complaint alleges these products are the subject of "valuable business relations with Amazon" and that their removal from the platform has caused lost sales (Compl. ¶¶ 1, 25).

IV. Analysis of Infringement Allegations

The complaint does not plead infringement but rather alleges that Defendants accused Plaintiff's products of infringement (Compl. ¶28). The Plaintiff's central legal theory is that if the products do infringe, the patent must be invalid because the products are prior art (Compl. ¶¶ 1, 29). The following chart summarizes the presumed infringement theory for Claim 1 that underpins the invalidity action.

'835 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a rigid frame forming a compartment...having a front wall, a rear wall, a right sidewall, a left sidewall, and a bottom wall... The Mount-It! carts are depicted as having a box-like frame composed of four vertical walls and a bottom, forming a compartment. A photograph of the MI-906 cart shows this general structure (Compl. p. 3). ¶8 col. 4:11-14
the right sidewall comprising a first right panel and a second right panel, the first right panel is coupled to the second right panel along a first vertical axis... The sidewalls of the pictured Mount-It! carts appear to be constructed of two panels connected by a central vertical hinge, allowing them to fold inward. ¶8 col. 4:15-19
a rotatable base panel rotatably coupled to the bottom wall within the compartment... The infringement allegation would presume that the Mount-It! carts operate with a base panel that pivots downward from a vertical storage position to a horizontal use position to stabilize the frame. ¶8 col. 4:35-42
a first track formed along the first right panel and the second right panel extending across the first vertical axis... The photos show horizontal reinforcing ribs on the sidewall panels. The infringement theory would map these structures to the claimed "track." ¶8 col. 4:42-48
a first slideable member cooperatively engaged to the first track, the first slideable member is movable...to a closed position to selectively lock the first right panel to the second right panel... The infringement theory would allege that the Mount-It! carts contain a latching mechanism that slides along the horizontal ribs to lock the two side panels in their open, unfolded position. ¶8 col. 4:51-56
  • Identified Points of Contention:
    • Scope Questions: A primary question for the court, antecedent to the invalidity analysis, is whether the structures on the accused carts meet the claim limitations. Specifically, do the horizontal ribs on the Mount-It! carts constitute a "track" as that term is used in the patent, and is there a "slideable member" that moves along this track to lock the panels?
    • Technical Questions: The complaint's photographs do not provide sufficient detail to definitively confirm the existence or operation of a "slideable member." The invalidity claim hinges on the assertion that the accused products embody the patented invention; if they do not, the on-sale bar argument under 35 U.S.C. § 102 fails, though the Plaintiff would consequently be found not to infringe.

V. Key Claim Terms for Construction

  • The Term: "slideable member"

    • Context and Importance: This term describes the locking mechanism that allegedly provides the cart's enhanced rigidity, a key feature of the invention. The presence and function of a corresponding feature in the accused products is central to both infringement and the subsequent invalidity argument. Practitioners may focus on this term because its construction will determine whether a simple latch or clip on the accused product falls within the scope of the claim.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification describes the member's function as being "movable between an open position...to a closed position to selectively secure or lock the first right panel to the second right panel" (’835 Patent, col. 4:53-56). A party could argue this functional language supports a construction covering any component that moves to lock the panels.
      • Evidence for a Narrower Interpretation: The figures depict a specific physical embodiment (e.g., element 58 in FIG. 1) that appears to be a latch designed to slide along a defined path. A party could argue the term should be limited to such a structure that exhibits a sliding motion along a track, as opposed to a snapping or pivoting motion.

  • The Term: "track"

    • Context and Importance: The "track" is the structure on which the "slideable member" operates. Its definition is inextricably linked to that of the "slideable member" and is equally critical to the scope of the claims.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: Claim 1 describes the track as "formed along the first right panel and the second right panel extending across the first vertical axis" (’835 Patent, col. 6:60-63). This could be argued to encompass any surface or edge that guides the locking member, including the horizontal ribs visible on the accused products.
      • Evidence for a Narrower Interpretation: The patent figures (e.g., element 46 in FIG. 1) illustrate the track as a distinct, defined rail-like structure. A party may argue that "track" requires more than an incidental surface and must be a purpose-built guiding structure.

VI. Other Allegations

  • Indirect Infringement: The complaint does not provide sufficient detail for analysis of any indirect infringement theories.
  • Willful Infringement: This is not applicable, as the Plaintiff is seeking a declaratory judgment of invalidity. Instead, the complaint alleges that Defendants' assertion of the '835 Patent was done in "bad faith, with malice, oppression, and fraud," because Defendants were allegedly informed that the patent was invalid due to Plaintiff's prior-selling products (Compl. ¶¶ 34, 40). These allegations form the basis for the tortious interference and unfair competition claims.

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of invalidity under the on-sale bar: Can the Plaintiff produce sufficient evidence to establish that its accused carts—which allegedly practice the invention—were in fact sold or offered for sale in the U.S. before January 6, 2019, the patent's critical date? The complaint's specific sales dates from 2018 suggest this will be a central evidentiary battleground.
  • The second key question is one of claim scope and identity: Do the Plaintiff's prior art carts fully embody every limitation of the asserted patent claims, particularly the "track" and "slideable member" locking system? If there is a technical mismatch, the Plaintiff's primary argument for invalidity would fail, even if the prior sales dates are proven.
  • Finally, the case presents a question of enforcement conduct: Assuming the patent is found invalid, did Defendants' actions in sending infringement notices to Amazon after being informed of the Plaintiff's prior art sales rise to the level of bad faith required to sustain claims for tortious interference and unfair competition under California law?