DCT
8:23-cv-02047
Shenzhen City Sanhu Technology Co. Ltd. v. Linda Albanese
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Shenzhen City Sanhu Technology Co., Ltd. (China)
- Defendant: Lindsay Albanese, and Hats On LLC, d.b.a. TopTote (United States)
- Plaintiff’s Counsel: J. Zhang and Associates, P.C.
- Case Identification: 23-cv-07691, E.D.N.Y., 10/16/2023
- Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of New York because Defendants transact business in the district by marketing and shipping their products to New York via online platforms.
- Core Dispute: Plaintiff seeks a declaratory judgment that its hat clip products do not infringe Defendants' patent for a "hat holder."
- Technical Context: The technology relates to portable accessories for carrying hats, typically by using magnetic clasps to attach a hat to a bag or belt loop.
- Key Procedural History: This action arises from Defendants having repeatedly reported Plaintiff to Amazon.com, alleging that Plaintiff's products infringe the patent-in-suit. These reports led to the removal of Plaintiff's product listings, which were later reinstated by Amazon after Plaintiff submitted a non-infringement analysis. Plaintiff alleges Defendants' continued complaints create a justiciable controversy.
Case Timeline
| Date | Event |
|---|---|
| 2017-06-27 | '047 Patent Priority Date (Provisional App. 62/525,431) |
| 2019-09-17 | '047 Patent Issued |
| 2023-05-10 | Defendants, via counsel, advised Amazon of Plaintiff's infringement |
| 2023-06-13 | Amazon reinstated Plaintiff's product listings |
| 2023-09-28 | Defendants again advised Amazon of Plaintiff's infringement |
| 2023-10-16 | Complaint for Declaratory Judgment Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,413,047 - "Hat holder", issued September 17, 2019
The Invention Explained
- Problem Addressed: The patent addresses the problem of how to conveniently carry a fashion hat when it is not being worn. Traditional solutions like hat boxes are described as cumbersome and not portable, while simply carrying the hat by hand is inconvenient and exposes it to damage (’047 Patent, col. 1:20-44).
- The Patented Solution: The invention is a device featuring two straps connected at one end, typically to a hook or carabiner. The other ends of the straps each contain a ferromagnetic member or magnet. These magnetic ends are configured to clamp onto a portion of a hat, such as its brim, holding it securely. The hook allows the entire assembly, with the hat, to be attached to a bag, purse, or belt loop (’047 Patent, col. 2:6-21). The design aims to be small, fashionable, and portable (’047 Patent, col. 1:51-56).
- Technical Importance: The claimed solution provides a compact, hands-free method for transporting a hat that avoids the bulk of a hat box and the risk of compression damage associated with storing it inside a bag (’047 Patent, col. 1:36-44).
Key Claims at a Glance
- The complaint identifies independent claims 1 and 16 as exemplary (Compl. ¶¶30-31).
- Independent Claim 1 recites a system comprising:
- the hat;
- a first strap having a first end and a second end;
- a second strap having a first end and a second end, the second strap joined to the first strap;
- a first ferromagnetic member disposed at the first end of the first strap;
- a second ferromagnetic member disposed at the first end of the second strap;
- a hook coupled to the first strap;
- wherein the straps are configured to be separably joined at their first ends by magnetic attraction between the ferromagnetic members; and
- wherein the straps are configured to retain a portion of the hat therebetween.
- Independent Claim 16 is similar to claim 1, but recites "a magnet" and "a ferromagnetic member" instead of two "ferromagnetic members," and specifies the straps are joined at their "respective second ends."
- The complaint asserts non-infringement of all claims of the '047 Patent (Compl. ¶32).
III. The Accused Instrumentality
Product Identification
- The "Niveaya Products," specifically a hat clip sold under model number HCT-05 on Amazon.com (Compl. ¶3).
Functionality and Market Context
- The complaint describes the Niveaya Products as clips that can be used to hang various items, not exclusively hats (Compl. ¶33). Visual evidence provided in the complaint shows a device consisting of a single strap of material that is folded over, with magnets at its free ends and a carabiner-style hook at the folded end (Compl. Ex. 4). This image shows the Niveaya Product, a magnetic clip with a carabiner, separate from any hat. (Compl. Ex. 4). The product is sold on Amazon.com, where it competes with Defendants' "TopTote" product (Compl. ¶¶ 4, 10).
IV. Analysis of Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement. The following table summarizes the Plaintiff's primary non-infringement arguments for exemplary claim 1, as detailed in the complaint.
'047 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Plaintiff's Non-Infringement Position | Complaint Citation | Patent Citation |
|---|---|---|---|
| [a] the hat | The Niveaya Products are sold as standalone clips and do not include "the hat" as part of the product. The product itself is shown to not include a hat. | ¶33 | col. 13:5-6 |
| [b] a first strap having a first end and a second end | The Niveaya Products are constructed from a single strap that is folded in half, not two separate and distinct straps. | ¶34 | col. 13:7-8 |
| [c] a second strap having a first end and a second end, the second strap joined to the first strap | As the product allegedly contains only one strap, it cannot meet the limitation of a "second strap" that is "joined to the first strap." The complaint argues the product has one folded strap, not two joined straps. | ¶34 | col. 13:9-11 |
| [g] wherein the first strap and the second strap are configured to be separably joined... | The complaint does not provide sufficient detail for analysis of this element, but the arguments for elements [b] and [c] would logically extend here. | N/A | col. 13:17-22 |
- Identified Points of Contention:
- Scope Questions: The primary dispute raises the question of whether a "system" claim reciting "the hat" requires the accused infringer to sell the hat and the holding device together as a single unit. Alternatively, the patentee may argue that infringement occurs when the end-user combines the accused clip with a hat, potentially raising issues of indirect infringement.
- Technical Questions: A central issue will be whether the accused product's single, folded strap construction meets the claim requirement of "a first strap" and "a second strap" that are "joined." The complaint's position is that this language requires two physically distinct pieces of material being connected (Compl. ¶34).
V. Key Claim Terms for Construction
The Term: "a first strap... a second strap... the second strap joined to the first strap"
Context and Importance: This phrase is central to the dispute, as the Plaintiff's non-infringement argument rests on its assertion that its product is a single folded strap, not two joined straps (Compl. ¶34). The court's construction of "joined" will be critical to determining infringement.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A patentee might argue that folding a single piece of material creates two distinct strap portions and that the fold itself constitutes a "join." The claims do not explicitly require the straps to be separate pieces of material before being joined.
- Evidence for a Narrower Interpretation: The specification explicitly discloses an embodiment that appears to contradict the Plaintiff's argument. It states, "The rear strap 110 and the front strap 120 can be formed from a single piece of material that is folded approximately in half... Thus, although the rear strap 110 and the front strap 120 are referred throughout the specification as separate straps, those of skill in the art will appreciate that the rear strap 110 and the front strap 120 can be formed from a single piece of material" (’047 Patent, col. 4:38-44). This passage may strongly support a construction where a single folded strap meets the "two straps joined" limitation.
The Term: "the hat"
Context and Importance: Plaintiff argues that because its product is sold without a hat, it cannot infringe a system claim that explicitly recites "the hat" as an element (Compl. ¶33). This term's construction will determine whether direct infringement requires the accused product to be sold with a hat.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A patentee may argue that the claim is to a "system for holding a hat" and that the claim is met when the accused device is used for its intended purpose with a hat, even if the hat is supplied by the end-user. The preamble and the functional language of the claim support this view.
- Evidence for a Narrower Interpretation: The plain language of the claim body lists "the hat" as a required element of the "system," alongside the straps and ferromagnetic members. Plaintiff's argument relies on this literal reading, suggesting that an accused system must contain all listed components to infringe directly.
VI. Other Allegations
- Indirect Infringement: The complaint does not allege indirect infringement. However, by seeking a declaration that its "customers using Niveaya Products do not infringe," Plaintiff preemptively addresses the potential for Defendants to assert claims of indirect infringement against it (Compl., Prayer for Relief B).
- Willful Infringement: This being a declaratory judgment action by the accused infringer, there is no allegation of willful infringement. Instead, Plaintiff requests that the court find the case "exceptional" under 35 U.S.C. § 285 and award attorneys' fees, alleging Defendants' "false and repeated" infringement complaints to Amazon constitute improper business conduct (Compl. ¶24; Prayer for Relief C).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of claim construction: does the phrase "a first strap" and "a second strap... joined to the first strap" require two initially separate pieces of material, or can it be read, in light of the patent's own specification, to cover a single piece of material folded in half?
- A second key question concerns system claim interpretation: for the purpose of determining direct infringement, must the accused "system" as sold by the Plaintiff include "the hat," or is it sufficient that the accused device is made and sold to be combined with a hat by the end-user?
- A significant procedural question will be whether Defendants' enforcement actions via Amazon's reporting system, which allegedly continued after Amazon's reinstatement of the products, rise to a level that would cause a court to declare this an "exceptional case" warranting an award of attorneys' fees to the Plaintiff.