DCT

5:19-cv-00212

Maxchief Investments Ltd v. Wok Pan Ind Inc

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 5:19-cv-00212, C.D. Cal., 02/01/2019
  • Venue Allegations: Venue is asserted based on Defendant WP Banquet, LLC being a California entity residing in the district, Defendant Wok & Pan, Ind., Inc. being a foreign corporation subject to jurisdiction there, and a substantial part of the events giving rise to the claims occurring in the district.
  • Core Dispute: Plaintiff, a manufacturer of folding tables, seeks a declaratory judgment that its products do not infringe Defendants' patents and/or that the patents are invalid, in response to a series of infringement lawsuits filed by Defendants against Plaintiff's retail customers.
  • Technical Context: The technology concerns structural improvements to foldable banquet tables, a mature product category where enhancements in durability, stability, and load-bearing capacity are key competitive differentiators.
  • Key Procedural History: The complaint details a lengthy history of conflict, alleging that Defendants have engaged in a campaign of suing Plaintiff's downstream customers (including Staples, Lowe's, and Wal-Mart) rather than the manufacturer directly. A prior declaratory judgment action filed by Plaintiff in Tennessee was dismissed for lack of personal jurisdiction over Defendant Wok & Pan, a decision affirmed by the Federal Circuit. The current action follows the dismissal of the Tennessee case and seeks to resolve the underlying infringement and validity disputes in the district where the customer suits were filed. Plaintiff repeatedly alleges that many of its accused products were on sale publicly for years prior to the effective filing date of three of the four patents-in-suit, framing a significant invalidity challenge.

Case Timeline

Date Event
1998-05-29 '061 Patent Priority Date
1999-09-28 '061 Patent Issue Date
2005-01-01 Alleged public sale of Office Star BT-06FQ table begins ("at least 2005")
2007-01-01 Alleged public sale of Coleman Tables begins ("at least 2007")
2008-01-01 Alleged public sale of UT-18 Table begins ("at least 2008")
2010-11-28 '308 Patent (not in suit) expired
2012-11-01 Earliest Priority Date for '661, '421, and '204 Patents
2014-10-08 Defendant Wok & Pan sends infringement notice letter to Ace Hardware
2014-11-11 '661 Patent Issue Date
2015-01-13 '421 Patent Issue Date
2015-02-04 Defendant Wok & Pan files infringement suit against Staples
2015-07-28 '204 Patent Issue Date
2015-08-12 Defendant Wok & Pan sends infringement notice letter to The Coleman Company
2015-08-25 Staples customer suit is stayed
2015-10-31 Defendant Wok & Pan sends infringement notice letter to Samsonite
2016-01-04 Defendant Wok & Pan sends infringement notice letter to Wal-Mart
2016-03-29 Defendant Wok & Pan files infringement suit against Lowe's
2016-08-25 Lowe's customer suit is stayed
2017-09-29 Plaintiff's Tennessee declaratory judgment action is dismissed
2018-11-29 Federal Circuit affirms dismissal of Tennessee action
2019-02-01 Complaint for Declaratory Judgment filed

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

U.S. Patent No. 5,957,061 - "Banquet Table"

Issued September 28, 1999

The Invention Explained

  • Problem Addressed: The patent describes prior art folding tables as having structurally weak designs where pressure is concentrated on screws connecting the legs to the tabletop, and on the central pin of hinges in two-section foldable tables, leading to damage and instability (’061 Patent, col. 1:31-59).
  • The Patented Solution: The invention proposes a more robust structure using "upper frames" made of rectangular tubing that run along the underside of the table, to which the leg frames pivotally connect. This distributes the load across the frame instead of concentrating it at the connection points. For two-section tables, it introduces a specialized hinge with two "pressure resisting sections" that abut each other when the table is open, transferring pressure to the body of the hinge brackets rather than subjecting the pivot pin to shear stress (’061 Patent, col. 2:9-29; Fig. 9).
  • Technical Importance: The design aimed to improve the longevity and load-bearing capacity of folding tables by fundamentally changing how forces are managed within the support structure (’061 Patent, col. 2:60-67).

Key Claims at a Glance

  • The complaint seeks a declaration of non-infringement and invalidity as to all claims of the patent (Compl. ¶¶ 52-53). The patent contains one independent claim.
  • Independent Claim 1 requires, in part:
    • A table surface comprising two sections.
    • A plurality of upper frames fixedly installed on the bottom side of the table surface.
    • Leg frames pivotably connected to the upper frames.
    • A plurality of hinges connecting the upper frames of the two table sections.
    • Each hinge comprising a first bracket with a first pressure resisting section and a second bracket with a second pressure resisting section that faces the first section "to absorb pressure when said banquet table is extended."

U.S. Patent No. 8,881,661 - "Foldable Table"

Issued November 11, 2014

The Invention Explained

  • Problem Addressed: The patent notes that while improvements have focused on leg frames, making the tabletop itself foldable can compromise overall stability and security (’661 Patent, col. 1:33-41). The objective is to create a table that is both compact for storage and secure in its unfolded, usable state.
  • The Patented Solution: The invention discloses a foldable table with a comprehensive reinforcing frame that includes longitudinal reinforcing members and, critically, transverse members that are "affixed... in a non-rotatably movable manner" to the longitudinal members. This non-rotational connection is described as enhancing the rigid support of the frame. The solution also includes a hinge arrangement with locker devices to securely lock the table halves in the open position (’661 Patent, Abstract; col. 4:40-52).
  • Technical Importance: This technology represents a more advanced approach to frame reinforcement, seeking to create a rigid, unified support structure for a two-part tabletop, thereby improving stability over simpler hinged designs (’661 Patent, col. 1:45-52).

Key Claims at a Glance

  • The complaint seeks a declaration of non-infringement and invalidity as to all claims of the patent (Compl. ¶¶ 56-57). The patent contains multiple independent claims, including Claim 1.
  • Independent Claim 1 requires, in part:
    • A tabletop with first and second panels, a hinge arrangement, and first and second leg frames.
    • A reinforcing frame which includes first through fourth elongated reinforcing members.
    • A first transverse member extended between the first and second reinforcing members, with its ends "affixed... in a non-rotatably movable manner."
    • A second transverse member similarly affixed in a "non-rotatably movable manner" between the third and fourth reinforcing members.

U.S. Patent No. 8,931,421 - "Foldable Table"

("the '421 Patent"), Issued January 13, 2015

  • Technology Synopsis: Belonging to the same patent family as the ’661 Patent, this invention also describes a foldable table with an extensive reinforcing frame and a locking hinge mechanism (Compl. ¶11). The patent provides significant detail on a locker device intended to minimize any gaps or "play" between the two halves of the table when locked, using a locker pin with distinct threaded and free-end portions to create a tight, wobble-free connection (’421 Patent, Abstract; col. 12:1-24).
  • Asserted Claims: The complaint seeks a declaration of non-infringement and invalidity of all claims (Compl. ¶¶ 60-61). Independent Claim 1 is representative.
  • Accused Features: Defendants have accused various tables manufactured by Plaintiff, which are sold by retailers such as Staples, Lowe's, Samsonite, and others, of infringing the ’421 Patent (Compl. ¶¶ 23, 31, 34, 59).

U.S. Patent No. 9,089,204 - "Foldable Table"

("the '204 Patent"), Issued July 28, 2015

  • Technology Synopsis: Also in the family of the ’661 and ’421 patents, this invention covers a similar foldable table structure (Compl. ¶12). The focus remains on a robust reinforcing frame coupled with a hinge and locker system designed to ensure stability. The claims detail a specific locker device and a hinge with joint members that pivotally couple to "define a pivotal movable gap" that is then minimized and secured by the locker device to prevent lateral movement (’204 Patent, Abstract; cl. 1).
  • Asserted Claims: The complaint seeks a declaration of non-infringement and invalidity of all claims (Compl. ¶¶ 64-65). Independent Claim 1 is representative.
  • Accused Features: Defendants have accused tables manufactured by Plaintiff and sold by retailers such as Samsonite, Wal-Mart, and Lowe's of infringing the ’204 Patent (Compl. ¶¶ 34, 37, 43, 63).

III. The Accused Instrumentality

Product Identification

The complaint identifies a range of plastic folding tables manufactured by Plaintiff and sold by various retailers. These include, but are not limited to, the "UT-18 Table" (sold by Meco), "Coleman Tables," "Samsonite 7700 Series" tables, and tables sold by Wal-Mart under the Cosco and Mainstays brands, as well as an Office Star table (model BT-06FQ) (Compl. ¶¶ 22, 31, 34, 37-38, 40).

Functionality and Market Context

The complaint does not provide a detailed technical description of the accused tables' operation. Instead, it asserts that Plaintiff is a direct competitor to Defendants in the business of selling plastic folding tables (Compl. ¶15). The commercial significance of these products is underscored by Defendants' alleged infringement actions against major national retailers that distribute them, such as Staples, Lowe's, and Wal-Mart (Compl. ¶¶ 23, 37, 43). Plaintiff's central allegation is that these tables do not infringe the patents-in-suit and, for the '661, '421, and '204 patents, that sales of these tables predate the patents' effective filing date, thereby constituting invalidating prior art (Compl. ¶¶ 26, 33, 41). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint seeks a declaratory judgment of non-infringement and does not contain a claim chart. It references detailed non-infringement charts allegedly provided to Defendants pre-suit, but these are not attached as exhibits (Compl. ¶¶ 20, 24, 32, 38, 40). The primary theory articulated in the complaint is not one of claim element-by-element non-infringement, but rather a challenge to the validity of the '661, '421, and '204 patents. The complaint repeatedly alleges that Plaintiff's accused tables were "publicly sold in the United States" for years before the November 1, 2012 priority date of those patents (Compl. ¶¶ 26, 33, 41). This forms the basis for an argument that, if the tables are found to infringe, the patents must be invalid as anticipated by prior art under 35 U.S.C. §102. For the older '061 patent, the complaint makes only a conclusory assertion of non-infringement (Compl. ¶52).

  • Identified Points of Contention:
    • Validity Based on Prior Sale: The case for the '661, '421, and '204 patents may turn on a question of fact: can Plaintiff produce sufficient evidence to demonstrate that its accused table models were publicly sold or in use before November 1, 2012, and that these prior models contain all the elements of the asserted claims? (Compl. ¶¶ 26, 33, 41).
    • Scope of "pressure resisting section" ('061 Patent): For the '061 Patent, a central issue may be the interpretation of the hinge mechanism. The dispute will likely focus on whether the hinges on Plaintiff's tables function by having two dedicated surfaces abut to "absorb pressure," as required by Claim 1, or if they operate in a manner more akin to prior art where the pivot pin bears the load (’061 Patent, cl. 1).
    • Scope of "non-rotatably movable manner" ('661 Patent): For the '661 Patent, a key technical question may be how the transverse members of the support frame are connected. The analysis will question whether Plaintiff's tables employ a connection that is "affixed... in a non-rotatably movable manner," such as by welding, or if they use a different method (e.g., fasteners) that falls outside the scope of this claim limitation (’661 Patent, cl. 1).

V. Key Claim Terms for Construction

  • Term: "pressure resisting section" ('061 Patent, Claim 1)

    • Context and Importance: This term is the central feature of the '061 patent's improved hinge, distinguishing it from prior art where the hinge pin was the primary load-bearing component. The definition of what constitutes such a "section" will be critical to determining infringement.
    • Intrinsic Evidence for a Broader Interpretation: The claim language itself is functional, requiring the sections to "absorb pressure when said banquet table is extended" (’061 Patent, col. 4:32-34). A party could argue that any two surfaces on the opposing hinge brackets that make contact to stop rotation and bear weight meet this functional definition.
    • Intrinsic Evidence for a Narrower Interpretation: The specification and Figure 9 show specific, flat surfaces (411, 421) on the brackets designed for this purpose, stating "the pressure will be primarily applied on the pressure resisting sections, instead of the pin shafts" (’061 Patent, col. 2:23-26). A party could argue the term requires dedicated structural features, not merely incidental contact points.

  • Term: "affixed ... in a non-rotatably movable manner" ('661 Patent, Claim 1)

    • Context and Importance: This limitation describes the connection between the transverse and longitudinal members of the reinforcing frame, which is key to the patent's claimed improvement in rigidity. Whether Plaintiff's tables use such a connection is a likely point of infringement dispute.
    • Intrinsic Evidence for a Broader Interpretation: The term "affixed" is not explicitly defined, which may support an interpretation that includes any method of joining that prevents rotation under normal operating loads, potentially including tight-fitting fasteners.
    • Intrinsic Evidence for a Narrower Interpretation: The specification suggests a permanent, rigid bond, noting that welding is a preferred method and highlighting that the design avoids holes in the reinforcing members for bolts, which would "weaken the structure thereof" (’661 Patent, col. 4:45-46, 62-64). Practitioners may focus on this term because it suggests an intent to claim a more robust, integrated frame than one assembled with conventional fasteners.

VI. Other Allegations

  • Indirect Infringement: The complaint does not allege indirect infringement. Rather, it is filed in response to Defendants' alleged pattern of suing Plaintiff's customers, which would be the basis for Defendants' own claims of indirect infringement against Plaintiff (Compl. ¶¶ 23, 43-44).
  • Willful Infringement: The complaint does not face an allegation of willfulness. Instead, it makes affirmative allegations that Defendants' conduct is intentional and constitutes bad faith, forming the basis for Plaintiff's claims of Intentional Interference with Prospective Economic Advantage and Federal Unfair Competition (Compl. Counts V and VI). The basis for this allegation is that Defendants continued to file lawsuits and send notice letters to Plaintiff's customers even after Plaintiff's counsel allegedly provided them with "detailed claim chart[s]" showing non-infringement and/or invalidity (Compl. ¶¶ 24, 32, 68).

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

  1. Invalidity via Prior Public Use: A core issue will be one of evidentiary proof: Can Plaintiff produce clear and convincing evidence that its table models sold before the critical date of November 1, 2012, are functionally identical to the accused products and embody the claimed inventions of the '661, '421, and '204 patents, thereby rendering them invalid?
  2. Claim Construction and Technical Equivalence: A central legal and technical question will be one of definitional scope: For the '061 Patent, does the hinge on Plaintiff's tables contain "pressure resisting sections" that operate as claimed, or a different mechanism? For the later patents, do the frames use transverse members "affixed in a non-rotatably movable manner," or a connection that is technically distinct?
  3. Bad Faith Litigation: A key question for the non-patent counts will be whether Defendants' alleged "campaign to actively harass Maxchief's customers" (Compl. ¶16) after being put on notice of substantial non-infringement and invalidity defenses rises to the level of objectively baseless and subjectively motivated bad faith required to sustain claims for intentional interference and unfair competition.