DCT
8:19-cv-01602
One Eyed Jack Holdings Inc v. Above & Beyond Balloons Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: One Eyed Jack Holdings, Inc. o/a Roadie Products (Canadian company)
- Defendant: Above & Beyond Balloons, Inc. et al. (California)
- Plaintiff’s Counsel: Cislo & Thomas LLP; Merchant & Gould P.C.
- Case Identification: 8:19-cv-01602, C.D. Cal., 08/20/2019
- Venue Allegations: Venue is alleged to be proper as Defendants reside in the Central District of California, have a regular and established place of business in the district, and have committed the alleged acts of infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s "RoadTripper" vehicle window cover infringes a patent related to a multi-feature vehicle window cover with a deployable canopy.
- Technical Context: The technology relates to vehicle accessories for car camping, specifically fabric covers that fit over a vehicle's door to allow the window to be open for ventilation while providing protection from insects and rain.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendants with notice of the patent and its infringement on May 23, 2019, approximately three months before filing suit. This event is cited as a basis for willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2014-04-09 | '856 Patent Priority Date |
| 2016-07-19 | '856 Patent Issued |
| 2017-06-01 | Plaintiff began commercial use of ROADIE® product (approx.) |
| 2019-05-23 | Plaintiff sent notice letter to Defendants |
| 2019-08-20 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,393,856 - "Vehicle Window Cover with Deployable and Retractable Canopy," issued July 19, 2016
The Invention Explained
- Problem Addressed: The patent's background section notes that prior art vehicle window screens and covers suffered from several drawbacks. They either provided inadequate protection against rain, were mechanically complex and bulky, or failed to cover the entire door, leaving gaps that could allow water ingress ('856 Patent, col. 2:1-24).
- The Patented Solution: The invention is a comprehensive, all-in-one window cover apparatus made of a flexible material that fits over the entire vehicle door. It integrates a mesh screen for ventilation, a deployable canopy to shield the window opening from rain, and a separate, roll-up window shade for privacy or blocking light ('856 Patent, Abstract; col. 2:34-64). The entire unit is secured to the door using an elastic member around its perimeter, designed to create a universal fit ('856 Patent, col. 5:1-14).
- Technical Importance: The invention aims to provide a single, compact, and easily installed accessory that combines the functions of an insect screen, a rain guard, and a privacy shade for people using their vehicles for camping or lodging ('856 Patent, col. 8:19-42).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 (Compl. ¶ 11).
- The essential elements of independent claim 1 include:
- A flexible main sheet configured to attach to a vehicle door and span the window space.
- A window opening in the sheet.
- A mesh screen attached to the sheet over the window opening.
- A movable canopy connected to the sheet above the window opening, which can be deployed outward or collapsed back.
- A flexible window shade that is "separate and distinct from" and "movable independently of" the canopy, attached at the bottom of the window opening.
- A "whereby" clause stating that deploying the canopy and opening the shade enables a "weather-protected airflow-enabled mode," while collapsing the canopy and closing the shade enables an "airflow-blocking and light-obstructing mode."
- The complaint does not explicitly reserve the right to assert dependent claims, but the allegation of infringing "at least claim 1" preserves this option.
III. The Accused Instrumentality
- Product Identification: The accused product is the "RoadTripper vehicle window cover with canopy" (Compl. ¶ 9).
- Functionality and Market Context: The complaint alleges the RoadTripper is a "copy of Roadie's product" that performs the same functions (Compl. ¶¶ 4, 17). The product is described as a vehicle window cover apparatus comprising a flexible main sheet that attaches to a vehicle door, a window opening with a mesh screen, a movable canopy, and a flexible window shade (Compl. ¶ 9, pp. 4-6). The complaint states that both parties sell their respective products on Amazon.com (Compl. ¶ 18). An image in the complaint shows the accused product, branded "Roadtripper," installed on an SUV, demonstrating its use for ventilation (Compl. p. 3, Figure "VENTILATION").
IV. Analysis of Infringement Allegations
'856 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a flexible main sheet configured for selective attachment to a vehicle door in an installed position spanning over a window space bound by a frame of said vehicle door; | The EasyGo RoadTripper has a flexible main sheet that can be selectively attached to a vehicle door, spanning the window space. An image shows the accused product's main sheet covering a vehicle door (Compl. p. 4). | ¶9, p. 4 | col. 2:37-40 |
| a window opening in the flexible main sheet at a location that overlies the window space of the vehicle door with the flexible main sheet in the installed position; | The product has a window opening in its main sheet that overlies the vehicle's window space. A provided image highlights this opening (Compl. p. 5). | ¶9, p. 5 | col. 2:41-44 |
| a mesh screen attached to the flexible main sheet in a position spanning over the window opening therein; | The product has a mesh screen attached to and spanning its window opening. An image points out this feature (Compl. p. 5). | ¶9, p. 5 | col. 2:45-47 |
| a movable canopy connected to the flexible main sheet at an area thereof spanning across a top end of the window opening, the canopy being movable between a deployed position... and a collapsed position...; | The product has a movable canopy connected above the window opening. The complaint includes images showing the canopy in both deployed and collapsed positions (Compl. pp. 5-6). | ¶9, pp. 5-6 | col. 2:48-54 |
| a flexible window shade separate and distinct from the movable canopy, attached to the flexible main sheet at an area spanning across a bottom end of the window opening, and movable independently of the movable canopy between a closed position... and an open position...; | The product has a flexible window shade, alleged to be separate from the canopy and attached at the bottom of the window opening, which can be moved between open and closed positions. An image shows the shade in a partially open state, distinct from the canopy (Compl. p. 6). | ¶9, p. 6 | col. 2:55-60 |
| whereby deployment of the canopy and opening of the flexible window shade places the vehicle window cover in a weather-protected airflow-enabled mode, and collapse of the canopy and closing of the flexible window shade places the vehicle window cover in an airflow-blocking and light-obstructing mode. | The complaint alleges that the accused product operates in two modes: a weather-protected, airflow-enabled mode when the canopy is deployed and shade is open, and an airflow/light-blocking mode when the canopy is collapsed and the shade is closed. | ¶9, p. 7 | col. 2:60-64 |
- Identified Points of Contention:
- Scope Questions: The interpretation of the phrase "separate and distinct from the movable canopy" will be critical. The court will need to determine if this requires the components to be completely detached or merely to be constructed as different pieces of fabric that are attached to the main sheet at different locations (e.g., canopy at top, shade at bottom).
- Technical Questions: A key question will be whether the accused product’s components are "movable independently" as required by the claim. While the complaint's photos suggest separate components, the litigation may focus on whether the operation of one (e.g., rolling up the shade) has any practical effect on the other (e.g., the position of the canopy), and if such an effect would negate the "independent" nature of the movement. The functionality of the final "whereby" clause is defined by the preceding structural limitations, so its satisfaction will depend entirely on the proof for those elements.
V. Key Claim Terms for Construction
- The Term: "separate and distinct from the movable canopy"
- Context and Importance: This limitation defines the structural relationship between the rain-blocking canopy and the light-blocking shade. Infringement may hinge on whether the accused product's shade is sufficiently "separate and distinct." Practitioners may focus on this term because the complaint alleges a near-identical copy, making any subtle structural differences a primary non-infringement argument for the defense.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the canopy as being attached "across a top end of the window opening" and the shade as being attached "across a bottom end of the window opening" ('856 Patent, col. 2:48-59). Plaintiff may argue that being attached at opposite ends of the opening inherently makes them "separate and distinct," regardless of their proximity or method of manufacture.
- Evidence for a Narrower Interpretation: A defendant might argue that the term implies more than just being different pieces of fabric. For example, if the components were manufactured as part of a single, complex assembly before being attached to the main sheet, one could argue they are not truly "separate." The specification consistently refers to them as independent features designed to solve different problems (rain vs. light) ('856 Patent, col. 8:25-42), which may support an interpretation requiring a significant degree of structural independence.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendants are "actively inducing others to infringe the '856 patent" (Compl. ¶ 24). The pleading does not provide a specific factual basis for inducement, such as references to user manuals or advertising that instruct users on infringing uses, but this is a common allegation preserved for discovery.
- Willful Infringement: The complaint alleges willful infringement based on Defendants having had notice of the '856 patent and the alleged infringement "since at least May 23, 2019, when a letter and copy of the patent was sent to Defendants" (Compl. ¶¶ 10, 11, 28). This alleged pre-suit notice forms a basis for willfulness for any infringing conduct after that date.
VII. Analyst’s Conclusion: Key Questions for the Case
This case appears to be a dispute over a direct competitor product that Plaintiff alleges is a copy. The resolution will likely depend on the answers to two central questions:
- A core issue will be one of structural definition: Does the accused product’s window shade meet the claim requirement of being "separate and distinct from" and "movable independently of" the canopy? The case may turn on how much structural separation and operational independence the court finds is required by the patent.
- A secondary question will be one of functionality: Will the evidence show that the accused product, through its structure, operates in the two specific modes recited in the claim’s "whereby" clause? While dependent on the structural analysis, this functional language provides a distinct check on the scope of infringement.