DCT
8:20-cv-00917
With U E Commerce Shanghai Co Ltd v. Global Shade Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: WITH-U E-COMMERCE (SHANGHAI) CO., LTD. (China)
- Defendant: Global Shade Corp (California); Jian He (California)
- Plaintiff’s Counsel: BUCHE & ASSOCIATES, Associates
- Case Identification: 8:20-cv-00917, C.D. Cal., 05/18/2020
- Venue Allegations: Venue is alleged to be proper in the Central District of California because Defendant Global Shade’s principal place of business is located in the district, and both the corporate and individual defendants reside there.
- Core Dispute: Plaintiff alleges that Defendant’s "Eagle Peak" line of pop-up canopies, which feature a central push-button locking hub for single-person setup, infringes a patent on a central lock mechanism for collapsible canopies.
- Technical Context: The technology concerns collapsible outdoor canopies, specifically a central locking mechanism designed to simplify and expedite the process of erecting the canopy frame, a feature with significant consumer appeal.
- Key Procedural History: Subsequent to the filing of this complaint, an Inter Partes Review (IPR) proceeding (IPR2021-00365) was initiated against the patent-in-suit. The resulting IPR Certificate, issued December 20, 2022, cancelled claims 8, 9, and 11 of the patent. As the complaint’s sole infringement count is predicated on infringement of "at least claim 8," this cancellation presents a significant development for the viability of the infringement cause of action.
Case Timeline
| Date | Event |
|---|---|
| 2015-08-18 | ’710 Patent Priority Date |
| 2017-08-06 | Assignment of ’710 Patent application recorded with USPTO |
| 2019-04-30 | ’710 Patent Issued |
| 2020-05-18 | Complaint Filed |
| 2020-12-22 | IPR Petition (IPR2021-00365) Filed against '710 Patent |
| 2022-12-20 | IPR Certificate Issued, Cancelling Claims 8, 9, and 11 |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,273,710 - "Central Lock and Canopy"
The Invention Explained
- Problem Addressed: The patent’s background section identifies inefficiencies in conventional collapsible canopies, which typically require a user to lock each supporting leg individually. This process is described as "cumbersome," often requiring multiple people, and the holes drilled in the legs for locking pins are said to weaken the canopy’s structural strength (’710 Patent, col. 1:30-51).
- The Patented Solution: The invention is a "central lock" that allows a user to secure the entire canopy frame in an open position from a single central point. As described in the specification, a user pushes a "center bottom cap" (3) upwards along a "center pole" (2). A locking piece (4) within the bottom cap then automatically engages a "clamping groove" (21) on the pole, locking the frame open and ensuring uniform stress across the structure (’710 Patent, col. 2:27-44, Fig. 1). This design aims to make setup a quick, one-person operation.
- Technical Importance: This type of central-locking mechanism simplifies the user experience for a common consumer product, potentially reducing setup time and effort while improving the structural integrity of the frame by eliminating the need for locking pin holes in the legs (’710 Patent, col. 1:45-51).
Key Claims at a Glance
- The complaint asserts independent claim 8 (’710 Patent, col. 13:20-14:20).
- The essential elements of independent claim 8 are:
- A collapsible canopy with a center lock, comprising:
- A. at least three supporting legs;
- B. a plurality of outer retractable units connected between adjacent supporting legs;
- C. a plurality of inner retractable units connected to each supporting leg, forming a roof frame with the outer units; and
- D. a center lock connecting the inner retractable units, which itself comprises:
- i. a center top cap;
- ii. a center pole, which includes a top end, a bottom end, a clamping groove, and a clamp locking part; and
- iii. a center bottom cap detachably connected to the pole’s bottom end, which includes (1) a spring loaded locking piece for engaging the clamping groove and (2) a receiving section for the clamp locking part.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The accused products are a line of "Eagle Peak" pop-up canopies, including the "EAGLE PEAK One Person Setup 10'x10' Straight Leg Pop Up Canopy" and other similar models (Compl. ¶¶ 11-12).
Functionality and Market Context
- The complaint alleges the Accused Products are marketed with an "Easy Peak Center Push Pull Technology" that "allows one person to easily open and close the canopy from the center without the hassle of locking and unlocking the canopy leg sliders" (Compl. ¶ 14). This functionality is achieved via an "Easy Peak Center-Push mechanism" where the user pushes up on a central hub to raise and lock the canopy frame (Compl. ¶ 12, p. 7). A diagram from the accused product's marketing material illustrates this single-person setup process. (Compl. ¶ 12, p. 7). The complaint asserts these products are sold through the defendant’s website and on Amazon.com (Compl. ¶ 11).
IV. Analysis of Infringement Allegations
’971 Patent Infringement Allegations
| Claim Element (from Independent Claim 8) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A. at least three supporting legs, | The accused product has four supporting legs, as shown in instruction manual diagrams. | ¶18, p. 10 | col. 4:48-49 |
| B. a plurality of outer retractable units connected between every two adjacent supporting legs, and | The accused product includes four "G Eave assembly" units, which are identified as the outer retractable units, connected between adjacent legs. | ¶18, p. 11 | col. 4:49-50 |
| C. a plurality of inner retractable units connected to each supporting leg, wherein said outer retractable units and said inner retractable units form a roof frame for said collapsible canopy, and | The accused product has four "F Ceiling assembly" units, identified as the inner retractable units, which are connected to the supporting legs and form a roof frame with the eave assemblies. | ¶18, p. 11 | col. 4:50-53 |
| D. a center lock, wherein said plurality of inner retractable units are connected through said center lock, | The accused product has a center lock ("A Center pole" and "B Central bottom hub") through which the "F Ceiling assembly" units are connected. | ¶18, p. 12 | col. 4:53-57 |
| said center lock comprising: i. a center top cap, | The accused product’s center lock is alleged to have a center top cap. A provided image circles this component in the instruction manual. | ¶18, p. 13 | col. 4:13-14 |
| said center lock comprising: ii. a center pole, comprising: 1. a center pole top end rigidly connected to said center top cap, 2. a center pole bottom end, 3. a clamping groove, and 4. a clamp locking part... | The accused product's "A Center pole" is alleged to have a top end, a bottom end, a clamping groove, and a clamp locking part, all illustrated with photographs and diagrams. | ¶18, pp. 14-15 | col. 4:24-27 |
| said center lock comprising: iii. a center bottom cap detachably connected to said center pole bottom end, said center bottom cap comprising: 1. a spring loaded locking piece for engaging said clamping groove, and 2. a clamp locking part receiving section... | The accused product's "B Central bottom hub" is alleged to be a center bottom cap. A photograph of the disassembled hub shows a "spring loaded locking piece" and a corresponding receiving section. (Compl. ¶18, p. 17). | ¶18, pp. 16-18 | col. 14:10-14 |
- Identified Points of Contention:
- Procedural Question: The most significant issue is procedural. The complaint's patent infringement claim is based entirely on Claim 8, which has since been cancelled by the USPTO in an IPR proceeding. This raises the fundamental question of whether the plaintiff can maintain this cause of action or if it must seek to amend its complaint to assert a surviving claim, such as Claim 7.
- Scope Questions: Assuming the case could proceed on a similar claim, a potential dispute may arise over the interpretation of "spring loaded locking piece." While the accused product appears to use a coil spring (Compl. ¶18, p. 17), the patent specification also discloses an alternative embodiment with a "U-shaped elastic wire" (’710 Patent, col. 8:20-21). The scope of this term could become a focus of claim construction.
- Technical Questions: A key technical question would have been whether the specific geometry and interaction of the accused product's "locking piece" and "clamping groove" (Compl. ¶18, p. 15, 17) function in the same way as the mechanism described and claimed in the patent, particularly regarding how the components engage and disengage to achieve the locked and unlocked states.
V. Key Claim Terms for Construction
As the asserted claim has been cancelled, this analysis is presented based on the original dispute as framed in the complaint.
The Term: "spring loaded locking piece"
Context and Importance: This term is at the mechanical heart of the invention. The infringement analysis depends on whether the accused product's biasing mechanism falls within the scope of this term. Practitioners may focus on this term because the patent discloses multiple distinct embodiments for creating the "spring load," and the precise definition could either limit the claim to specific structures or broaden it to cover various biasing means.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself is functional ("spring loaded"), which could suggest it is not limited to a particular structure but rather to any piece that is loaded by a spring-like element. Claim 9 (now cancelled) separately claimed a "spring compressed between said locking piece and said center bottom cap," which could imply the independent claim 8 term is broader than just a coil spring (’710 Patent, col. 14:21-23).
- Evidence for a Narrower Interpretation: The primary embodiment shown in Figure 1 and described extensively features a coil spring (5) that acts on the locking piece (4) (’710 Patent, col. 7:49-54). A party could argue that the term should be limited to the structures explicitly disclosed, such as the coil spring or the U-shaped wire, rather than any conceivable spring mechanism.
The Term: "detachably connected"
Context and Importance: The ability to attach and detach the center pole from the bottom hub is the core function that allows the canopy to be locked and unlocked. The meaning of this term is critical to defining how the two main components of the central lock must interact.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states that in the unlocked state, the "center pole 2 can be moved out of the center bottom cap 3 such that the center pole 2 is separated from the center bottom cap 3" (’710 Patent, col. 4:40-43). This functional description could support a broad interpretation covering any mechanism that allows for such separation.
- Evidence for a Narrower Interpretation: The detailed description explains the specific interaction where the "clamp locking part 22 can thread the first through hole 41" to achieve the detached state (’710 Patent, col. 4:31-33). An argument could be made that "detachably connected" requires this specific pass-through mechanism and is not met by other forms of non-permanent connection.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement, stating that Defendant "instructs its customers to directly infringe the patent" through its sales and instruction manuals (Compl. ¶¶ 17, 24). The infringing use by a customer, following those instructions, would constitute the direct infringement.
- Willful Infringement: Willfulness is alleged based on "information and belief" that Defendants knew of the ’710 Patent at the time of their infringing activities (Compl. ¶ 20). No specific facts supporting pre-suit knowledge, such as a notice letter, are alleged in the complaint.
VII. Analyst’s Conclusion: Key Questions for the Case
The litigation appears to be at a critical juncture due to post-filing developments. The central questions for the case are now predominantly procedural and strategic:
- A dispositive procedural question: Given that the sole asserted patent claim (Claim 8) has been cancelled by the USPTO, can the Plaintiff’s patent infringement cause of action survive? The court will likely need to address whether Plaintiff will be granted leave to amend its complaint to assert a different, surviving claim from the ’710 patent, such as Claim 7.
- A key evidentiary question for the non-patent counts: The complaint includes separate causes of action for false marking and unfair competition, based on the allegation that Defendant advertises its products as "patented" without owning rights to any covering patents (Compl. ¶¶ 14, 28). A central question for these claims will be whether Defendant’s advertising statements were literally false or misleading and made with an intent to deceive the public, an inquiry that may proceed independently of the now-compromised patent infringement claim.