DCT

8:22-cv-01885

Fan Bao v. Wenzhou Haoke Electric Appliance Co Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 8:22-cv-01885, C.D. Cal., 10/14/2022
  • Venue Allegations: Venue is alleged to be proper in any U.S. judicial district because all defendants are foreign entities, pursuant to 28 U.S.C. § 1391(c)(3).
  • Core Dispute: Plaintiff alleges that Defendants’ electronic cigarette rolling machines infringe a U.S. design patent covering the product's ornamental appearance and a U.S. utility patent directed to the system's internal automated tobacco packing and dispensing mechanisms.
  • Technical Context: The technology concerns automated, electrically powered "roll-your-own" devices that are designed to enable consumers to consistently pack loose tobacco into empty cigarette tubes.
  • Key Procedural History: The complaint alleges that Plaintiffs provided Defendants with written, pre-suit notice of both the asserted patents and the corresponding infringement allegations, which is asserted as a basis for willful infringement.

Case Timeline

Date Event
2009-03-09 U.S. Patent 10,701,965 Priority Date
2020-07-07 U.S. Patent 10,701,965 Issued
2020-07-13 U.S. Design Patent D961,152 Priority Date
2022-08-16 U.S. Design Patent D961,152 Issued
2022-10-14 Complaint Filed

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

U.S. Design Patent No. D961,152 - “Tobacco Tube Filler Device,” issued August 16, 2022

The Invention Explained

  • Problem Addressed: Design patents protect the ornamental, non-functional appearance of an article of manufacture.
  • The Patented Solution: The patent claims the specific ornamental design for a tobacco tube filler device, characterized by its overall shape, the configuration of its top-surface features including a recessed tobacco hopper and adjacent flat surfaces, and its profile view, as depicted in the patent's figures (Compl. ¶13; D'152 Patent, Figs. 1-7).
  • Technical Importance: The complaint alleges this design is embodied in Plaintiff's "Powermatic IV" cigarette rolling device (Compl. ¶13).

Key Claims at a Glance

  • Design patents contain a single claim for the ornamental design as shown in the drawings.

U.S. Patent No. 10,701,965 - “Systems, Methods, and Devices for Delivering Tobacco into Tobacco Casing Tubes,” issued July 7, 2020

The Invention Explained

  • Problem Addressed: The patent's background section identifies shortcomings in prior art cigarette rolling machines, including the inconsistency and effort of manual devices, and the tendency of early automatic machines to be bulky, expensive, jam-prone, or to shred tobacco in a way that creates a messy smoking experience ('965 Patent, col. 1:4-42).
  • The Patented Solution: The patent describes an electrically powered, automatic cigarette filling system that uses a combination of integrated mechanical and electronic modules to improve the packing process ('965 Patent, Abstract). Key aspects include a "packer module" with movable "fingers" to compress tobacco to a predetermined density, a compression adjustment module allowing user control, and an electronic control system that automates the sequence of packing and dispensing the tobacco into a cigarette tube ('965 Patent, col. 13:8-14:54).
  • Technical Importance: The technology aims to provide a consumer-level device that automates the creation of consistently packed cigarettes, replicating the "dexterity that would be expected from human fingers" without requiring user skill ('965 Patent, col. 3:20-25).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 ('965 Patent, Compl. ¶33).
  • The essential elements of independent claim 1 include:
    • A housing body with a tobacco holding compartment and a nozzle.
    • A packer module with a packing motor, a packing platform, a movable packer arm, and at least one finger "slidably coupled" with the platform to pack tobacco.
    • A dispensing spoon to dispense the packed tobacco.
    • A tobacco compression adjustment module with a motor and an arm to contact the packing platform.
    • A control system with a user interface and an electrical control module that, upon user input, actuates the packer motor to pack tobacco and then uses the dispensing spoon, and separately actuates the compression adjustment motor upon another user input.

III. The Accused Instrumentality

Product Identification

  • The "Hawkmatic HK-2" and "Hawkmatic HK-3" cigarette rolling devices (Compl. ¶16).

Functionality and Market Context

  • The Hawkmatic HK-2 is accused of infringing the '152 design patent. Its functionality relevant to this claim is its external ornamental appearance, which the complaint alleges is a "blatant knock-off" of Plaintiff's patented design (Compl. ¶¶17-18). A visual in the complaint depicts a side-by-side comparison of the Hawkmatic HK-2 and a figure from the '152 Patent (Compl. p. 8).
  • The Hawkmatic HK-3 is accused of infringing the '965 utility patent. It is described as an "automatic cigarette filling system for packing and filling cigarette tubes with tobacco" (Compl. ¶34). The complaint provides detailed allegations supported by annotated photographs of the device's internal components, purporting to show the presence of each element of asserted claim 1, including its packer module, dispensing spoon, compression adjustment module, and control system (Compl. ¶¶34-40). For example, one photograph purports to show the accused device's internal "PACKER ARM AND FINGER" assembly (Compl. p. 10). Another shows the "COMPRESSOR ADJUSTMENT MOTOR" and "COMPRESSOR ADJUSTMENT ARM" (Compl. p. 11).

IV. Analysis of Infringement Allegations

D'152 Patent Infringement Allegations

  • The complaint alleges that the Hawkmatic HK-2 infringes the '152 design patent because the two designs are "substantially the same" from the perspective of an "ordinary observer," such that the observer would be deceived (Compl. ¶25). The complaint provides a side-by-side photographic comparison to support this allegation (Compl. p. 8). The central question for the court will be a visual one: whether the overall aesthetic impression of the accused product is confusingly similar to the patented design.

'965 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a housing body, comprising: a tobacco holding compartment to receive tobacco; and a nozzle to dispense packed tobacco from the tobacco holding compartment into a cigarette casing tube The Hawkmatic HK-3 is alleged to have a housing body with a tobacco holding compartment and a nozzle for dispensing tobacco into a cigarette casing tube (Compl. p. 10). ¶34 col. 23:12-16
a packer module, located at least partially within the tobacco holding compartment, comprising: a packing motor; a packing platform coupled to the packing motor by a movable packer arm; and at least one finger slidably coupled with the packing platform to pack tobacco to a predetermined compression The Hawkmatic HK-3 is alleged to include a packer module with a packing motor, a packer arm, and at least one finger coupled to a packing platform, which packs tobacco to a predetermined compression (Compl. p. 10). ¶35 col. 23:17-25
a dispensing spoon to dispense packed tobacco from the tobacco holding compartment via the nozzle The Hawkmatic HK-3 is alleged to include a dispensing spoon that dispenses the packed tobacco through the nozzle. ¶36 col. 23:26-29
a tobacco compression adjustment module, comprising: a compressor adjustment motor; and a compressor adjustment arm operable to contact the packing platform... The Hawkmatic HK-3 is alleged to have a tobacco compression adjustment module, including a motor and an arm that contacts the packing platform (Compl. p. 11). ¶37 col. 23:30-36
a control system, comprising: a user interface to receive input from a user; and an electrical control module comprising non-transitory computer readable memory and at least one processor... The Hawkmatic HK-3 is alleged to possess a control system with a user interface (buttons and a screen) and an electrical control module with a processor and memory (Compl. p. 11). ¶38 col. 23:37-44
wherein, when connected to a power supply and upon receiving an input from the user, the electrical control module causes the packing motor to actuate the packer arm and thereby pack the tobacco... before dispensing it... using the dispensing spoon Upon user input, the Hawkmatic HK-3's control module is alleged to cause the packing motor to actuate the packer arm and finger to pack tobacco, before using the dispensing spoon to dispense it into a cigarette casing tube. ¶39 col. 23:45-53
and upon receiving a compression adjustment user input, the electrical control module causes the compressor adjustment motor to actuate the compressor adjustment arm and thereby change the compression of the tobacco being packed. Upon receiving a user input for compression adjustment, the Hawkmatic HK-3's control module is alleged to actuate the compressor adjustment motor and arm, thereby changing the compression of the packed tobacco. ¶40 col. 24:1-5
  • Identified Points of Contention:
    • Scope Questions: The complaint presents a direct, element-for-element mapping of the '965 patent's Claim 1 to the accused HK-3 device. A potential point of contention may arise over the precise meaning of claim terms. For example, the case may raise the question of whether the accused "packer arm and finger" arrangement functions as a "finger slidably coupled with the packing platform" as required by the claim.
    • Technical Questions: While the complaint provides photographic evidence, a key technical question will be whether the actual operation of the accused HK-3's modules, particularly the control system's logic and the interaction between the packer and compressor modules, corresponds to the specific sequence and relationships defined in the claim language.

V. Key Claim Terms for Construction

  • The Term: "at least one finger slidably coupled with the packing platform" ('965 Patent, Claim 1)

  • Context and Importance: This term defines the core mechanism for compressing the tobacco. Its construction is critical because the nature of the "finger," its movement, and its "slidable coupling" to the platform are central to the packing function. Practitioners may focus on this term to determine if the accused device's packing mechanism, which may have its own unique engineering, falls within the scope of the claim.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification describes the fingers as "spring loaded 'fingers' 1002" that utilize "reciprocating motion that slides them back and forth" within the platform, suggesting the key is the general sliding action ('965 Patent, col. 14:31-41).
    • Evidence for a Narrower Interpretation: Specific embodiments depict "three fingers 1002 that are oriented parallel with one another" and are "generally rectangularly box shaped" ('965 Patent, col. 14:35-38, Fig. 10). A party could argue that the term should be limited to a similar multi-finger, parallel configuration.

  • The Term: "dispensing spoon" ('965 Patent, Claim 1)

  • Context and Importance: This term describes the element that ejects the packed tobacco into the cigarette tube. Its structure and orientation are important for infringement.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The claim itself simply requires "a dispensing spoon to dispense packed tobacco," suggesting any component that performs this function could meet the limitation.
    • Evidence for a Narrower Interpretation: The specification describes an advantage of orienting the spoon "upside-down" so that its "curved outer surface of the spoon 1624 is positioned above a compression chamber channel," allowing gravity to help clear away excess tobacco debris ('965 Patent, col. 20:25-33). A party could argue that the term "dispensing spoon" should be construed to include this functional orientation, as it is presented as a solution to problems with prior art.

VI. Other Allegations

  • Indirect Infringement: The complaint does not contain specific counts for indirect infringement (inducement or contributory infringement). It alleges direct infringement under 35 U.S.C. § 271 (Compl. ¶¶24, 32).
  • Willful Infringement: The complaint alleges that Defendants' infringement was willful, asserting that Plaintiffs provided pre-suit notice in writing that identified both asserted patents and the infringement concerns (Compl. ¶¶26-27, 42-43). The complaint alleges that Defendants continued their infringing activities despite this knowledge, which forms the basis for the willfulness claim and the request for treble damages (Compl. ¶43; Prayer for Relief, ¶c).

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

  1. A question of visual perception: For the '152 design patent, the case will turn on a factual determination by the finder of fact: is the overall ornamental appearance of the accused Hawkmatic HK-2 "substantially the same" as the patented design in the eyes of an ordinary observer, or are the differences sufficient to avoid confusion?
  2. A question of technical fidelity: For the '965 utility patent, the complaint provides photographic evidence suggesting literal infringement. The central dispute will likely be whether discovery reveals subtle technical or operational differences between the Hawkmatic HK-3's components and the specific functions and relationships required by the claim limitations, thereby creating a non-infringement argument.
  3. A question of intent and damages: The allegation of pre-suit notice is central to the willfulness claim. A key issue will be whether this notice is proven and, if so, whether it is sufficient to establish the "wanton and malicious" conduct necessary to justify an award of enhanced damages under 35 U.S.C. § 284.