DCT
8:17-cv-00426
Kuyou Sports Goods Co Ltd v. Fountain Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Kuyou Sports Goods Co., Ltd (China)
- Defendant: Fountain, Inc. (California)
- Plaintiff’s Counsel: One LLP
- Case Identification: Kuyou Sports Goods Co., Ltd v. Fountain, Inc., 8:17-cv-00426, C.D. Cal., 03/10/2017
- Venue Allegations: Venue is alleged to be proper as the defendant is a resident of the district, and a substantial part of the events giving rise to the claim occurred there.
- Core Dispute: Plaintiff seeks a declaratory judgment that its full-face snorkeling masks do not infringe Defendant’s patent directed to a mounting system for securing a camera to headwear.
- Technical Context: The technology concerns mounting accessories for attaching action cameras to recreational headwear, such as diving and snorkeling masks.
- Key Procedural History: The complaint alleges that Defendant is a non-practicing entity engaged in an aggressive enforcement campaign involving over 200 lawsuits and the use of "take-down" procedures on online marketplaces like Amazon.com. Plaintiff further alleges that the patent-in-suit was narrowed during prosecution to overcome prior art, which may give rise to prosecution history estoppel and limit the scope of the patent claims.
Case Timeline
| Date | Event |
|---|---|
| 2012-07-12 | ’877 Patent Priority Date |
| 2013-07-10 | ’877 Patent Application Filing Date |
| 2015-07-07 | ’877 Patent Issue Date |
| 2017-03-10 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,077,877 - Active headwear for detachably mounting an imaging device, Issued July 7, 2015
The Invention Explained
- Problem Addressed: The patent’s background section states that commercially available headwear, such as diving masks, typically lack provisions for integrating cameras, and that prior attempts to do so involved "substantial design tradeoffs" ('877 Patent, col. 1:19-34).
- The Patented Solution: The invention provides a system for mounting an imaging device to active headwear. The specification describes embodiments including a separate attachment base that clamps onto a mask frame, as well as an "integrated headwear frame and attachment base" where the mounting features are built into the mask structure itself ('877 Patent, Abstract; col. 4:16-18). A key embodiment, central to the asserted claims, describes this integrated frame as having a "right lens frame attached to a left lens frame by a nosepiece" ('877 Patent, col. 4:19-21, FIG. 10).
- Technical Importance: The technology provides a dedicated and stable structure for hands-free mounting of action cameras to headwear, intended for use during activities like diving or snorkeling ('877 Patent, col. 2:41-46).
Key Claims at a Glance
- The complaint states that Defendant has asserted infringement of claims 6-8 (Compl. ¶22). The primary focus of the non-infringement analysis is independent claim 6.
- Independent Claim 6 recites, in part:
- An integrated headwear frame and attachment base configured for placement over a user's face, with the base including at least two engagement tabs for a camera mount.
- The integrated frame and base further has "a right lens frame and a left lens frame, wherein the right lens frame is attached to the left lens frame by nosepiece."
- The base also includes a "retainer engagement" adjacent to the tabs, which are spaced to define slots for inserting a camera mount.
- The complaint seeks a declaration of non-infringement of "any claim of the ’877 patent" (Compl. ¶44).
III. The Accused Instrumentality
Product Identification
- The accused product is "Kuyou's full-face snorkeling mask w/ camera mount" (Compl. ¶13).
Functionality and Market Context
- The product is described as a mask designed to cover the user's entire face, featuring a "full-face bulbous undivided viewing glass" and a single surrounding frame (Compl. ¶¶9, 13, p. 8). Photographs depict the accused product as a full-face snorkeling mask with a single, undivided front lens and an integrated camera mount at the top (Compl. p. 4). The mask's design allows the user to breathe naturally without a separate snorkel mouthpiece (Compl. ¶8).
- The complaint alleges that Kuyou sells these masks to online retailers, who in turn sell to consumers, and that Defendant has targeted these retailers with infringement accusations and takedown demands on platforms like Amazon.com (Compl. ¶¶12, 15).
IV. Analysis of Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement. The analysis below summarizes the plaintiff's arguments for why its product does not meet the limitations of the asserted patent claim.
’877 Patent Infringement Allegations
| Claim Element (from Independent Claim 6) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an integrated headwear frame and attachment base... | The complaint does not contest that the accused mask has an integrated frame and mount. | ¶13 | col. 6:10-16 |
| wherein said integrated headwear frame and attachment base further has a right lens frame and a left lens frame, wherein the right lens frame is attached to the left lens frame by nosepiece... | The accused product is a full-face mask with "only one bulbous transparent front shield with a single surrounding frame." It allegedly "does not have a right lens frame; it does not have a left lens frame; and it does not have a connecting nosepiece therebetween." | ¶23, ¶24, p. 8 | col. 4:19-21 |
- Identified Points of Contention:
- Scope Questions: The complaint presents a central dispute over claim scope: whether the specific language "a right lens frame and a left lens frame... attached... by nosepiece" can be construed to read on the accused product's single-pane, full-face design. A comparative chart in the complaint shows the patent's two-lens embodiment from Figure 10 alongside a photograph of the accused single-pane, full-face mask to highlight this structural difference (Compl. p. 8).
- Legal Questions: The complaint argues that applying the doctrine of equivalents to cover the accused mask would "completely eliminate a claim element" and is therefore impermissible under the doctrine of claim vitiation (Compl. ¶¶29, 32). It further alleges that the patentee added the specific "right lens frame and a left lens frame" limitation during prosecution to overcome a prior art rejection, which may give rise to prosecution history estoppel and bar any argument that the claim scope extends to single-frame designs (Compl. ¶¶33-38).
V. Key Claim Terms for Construction
- The Term: "a right lens frame and a left lens frame, wherein the right lens frame is attached to the left lens frame by nosepiece"
- Context and Importance: The interpretation of this phrase appears to be dispositive. The plaintiff's entire non-infringement argument is premised on its product lacking this specific two-part structure. Practitioners may focus on this term because the plaintiff has built a detailed argument around it, including allegations of claim vitiation and prosecution history estoppel.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent defines "Active headwear" broadly to include "eyeglasses, goggles, masks, or other objects worn over the eyes" (’877 Patent, col. 2:36-38). A party seeking a broader construction might argue that the specific "right/left lens frame" structure is merely an exemplary embodiment of a "mask."
- Evidence for a Narrower Interpretation: The claim language itself is highly specific. The specification's description of the relevant embodiment (FIG. 10) explicitly recites this structure: "Mounting assembly 100 includes frame 102 and a right lens frame 104 attached to a left lens frame 106 by a nosepiece 108" (’877 Patent, col. 4:18-21). The complaint alleges that this limitation was added via amendment during prosecution to distinguish prior art, which, if true, would provide strong evidence for a narrow construction and could create prosecution history estoppel (Compl. ¶¶36-37).
VI. Other Allegations
- Indirect Infringement: The complaint seeks a judgment declaring that its products do not "directly or indirectly infringe any claim of the '877 patent" (Compl. ¶44). The factual allegations do not detail a theory of indirect infringement but focus on establishing a controversy based on Defendant's accusations against Plaintiff and its third-party retailers (Compl. ¶¶15, 17).
- Willful Infringement: This being a declaratory judgment action, willfulness is not alleged against the Plaintiff. Instead, the complaint alleges that Defendant's enforcement activities constitute a "sham enforcement campaign" and are based on "knowingly false and unsupported accusations," which forms the basis for Plaintiff's claims of tortious interference and its request for a finding that the case is exceptional under 35 U.S.C. § 285 (Compl. ¶¶14, 53; Prayer for Relief ¶ F).
VII. Analyst’s Conclusion: Key Questions for the Case
- A primary issue will be one of claim scope and prosecution history estoppel: Can the claim limitation "a right lens frame and a left lens frame... attached... by nosepiece" be interpreted to cover a single-pane, full-face mask, and if not, is the patentee estopped from arguing for an equivalent scope based on amendments allegedly made during prosecution to overcome prior art?
- A related question is the viability of the Doctrine of Equivalents: Does the structural difference between the claimed two-lens configuration and the accused single-pane mask represent a difference in kind, such that finding equivalence would impermissibly vitiate a specific limitation of the claim?
- Finally, the case raises questions about enforcement conduct: Will the Plaintiff's allegations that the Defendant has engaged in a "sham enforcement campaign" against its online retailers be sufficient to support its ancillary claims for tortious interference and a finding that this is an exceptional case justifying an award of attorneys' fees?