DCT
8:24-cv-01840
Meridian Intl Co Ltd v. Toughbuilt Industries Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Meridian International Co., Ltd. (People's Republic of China)
- Defendant: ToughBuilt Industries, Inc. (Nevada)
- Plaintiff’s Counsel: Eversheds Sutherland (US) LLP
- Case Identification: 8:24-cv-01840, C.D. Cal., 08/21/2024
- Venue Allegations: Plaintiff alleges venue is proper because Defendant resides in the district, maintains a principal place of business and physical location in the district, and committed acts of infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s modular storage systems, including the StackTech and CaseStack product lines, infringe two patents related to interlocking and latching mechanisms for storage containers.
- Technical Context: The technology pertains to the field of modular, stackable storage systems, such as toolboxes, where the ease and reliability of connecting and disconnecting individual units is a significant feature for professional and consumer users.
- Key Procedural History: The complaint alleges that Plaintiff sent a cease-and-desist letter to Defendant on June 5, 2024, regarding the ’946 Patent, which included claim charts and demanded a response that was allegedly never received. For the ’689 Patent, the complaint asserts that its filing constitutes actual notice to the Defendant.
Case Timeline
| Date | Event |
|---|---|
| 2019-11-27 | Priority Date for U.S. Patent No. 11,192,689 |
| 2021-12-07 | U.S. Patent No. 11,192,689 Issued |
| 2022-03-04 | Priority Date for U.S. Patent No. 11,986,946 |
| 2024-05-21 | U.S. Patent No. 11,986,946 Issued |
| 2024-06-05 | Cease-and-Desist Letter Sent (re: '946 Patent) |
| 2024-08-21 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,986,946 - Connection Structure of Module, Storage Box and Storage Box Assembly (Issued May 21, 2024)
The Invention Explained
- Problem Addressed: The patent identifies a need for improved interlocking mechanisms for modular storage boxes, particularly for connecting boxes of different sizes and shapes, to facilitate easier transport and use for professionals who carry diverse tools (’946 Patent, col. 1:26-49).
- The Patented Solution: The invention describes a connection system featuring a resiliently biased, movable locking buckle that automatically locks when one storage box is placed onto another (’946 Patent, col. 2:1-4). A key component is a retractable "stop part" which, when extended, prevents this automatic locking and holds the connection in an "unlocked state," freeing the user from manually holding a latch open during separation (’946 Patent, col. 2:5-18).
- Technical Importance: The technology aims to provide both an "automatic locking" function for convenience during stacking and a selectable "holding unlocked" state to simplify the process of detaching modules, addressing user workflow inefficiencies in existing systems (’946 Patent, col. 3:10-28).
Key Claims at a Glance
- The complaint asserts independent Claim 1 (Compl. ¶17).
- Essential elements of Claim 1 include:
- A storage box with a first connection part comprising a mounting body, a movable locking buckle, and a first resilient member that biases the buckle into a locked state.
- A second connection part on another storage box with a mating part that the locking buckle is configured to automatically engage upon alignment.
- A locking part that cooperates with the locking buckle, where manual movement of the locking part moves the buckle to an unlocked state.
- A retractable stop part that, when projecting outward, prevents automatic locking and maintains a "holding unlocked state," and when compressed, allows the connection part to be in a locked state.
- The complaint does not explicitly reserve the right to assert dependent claims, but this is standard litigation practice.
U.S. Patent No. 11,192,689 - Stacked Storage Container Latch (Issued Dec. 7, 2021)
The Invention Explained
- Problem Addressed: The patent notes a "constant need in the industry to improve upon existing container storage systems by making them more efficient, easy to use, modular, and/or multifunctional" (’689 Patent, col. 1:16-20).
- The Patented Solution: The invention provides a stackable system where a first container has a "locking groove" and a second container has a "sliding mechanism" to engage that groove (’689 Patent, col. 2:25-31). The defining characteristic of the mechanism is its position relative to the container's side: a portion of the slider "extends laterally away" from the side surface when disengaged but becomes "coplanar with the side surface" when engaged, providing a distinct physical and visual indicator of the locked state (’689 Patent, Abstract).
- Technical Importance: This approach offers a clear method for a user to ascertain the locked/unlocked status of the latch through both tactile and visual feedback, simplifying the operation of connecting modular containers.
Key Claims at a Glance
- The complaint asserts independent Claim 1 (Compl. ¶44).
- Essential elements of Claim 1 include:
- A stackable storage system with first and second storage containers.
- The first container has at least one locking groove, and the second has a sliding mechanism to selectively engage the groove.
- A portion of the sliding mechanism extends laterally away from a side surface of the second container when disengaged.
- The same portion of the sliding mechanism is coplanar with the side surface of the second container when it is engaged with the locking groove.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- For the ’946 Patent, the complaint accuses the ToughBuilt StackTech® line of products, using the TOUGHBUILT STACKTECH 21-in Black Plastic/Metal Tool Box (Model TB-B1-B-30) as a primary example (Compl. ¶¶13, 19).
- For the ’689 Patent, the complaint accuses the Kobalt CaseStack Blue Polyester 20-in Zippered Tool Bag and Tool Tote, which are alleged to be manufactured by Defendant ToughBuilt for the third-party "Kobalt" brand (Compl. ¶¶36-37).
Functionality and Market Context
- The StackTech products are a system of hard-sided, interlocking toolboxes and organizers that compete with Plaintiff's offerings and are sold through major retailers (Compl. ¶¶11, 25). The accused functionality involves a central latching mechanism that automatically locks when a box is lowered onto another (Compl. ¶27). The complaint includes a series of images showing the accused automatic locking sequence. (Compl. ¶27, Figs. 7A-7D).
- The CaseStack products are modular soft-sided tool bags and totes designed to connect with other hard-sided CaseStack storage containers (Compl. ¶¶39, 46). The complaint alleges this interconnectivity is a promoted feature and that the accused mechanism involves a sliding latch on a hard box engaging a groove on the tool bag (Compl. ¶¶39, 48-49). An image in the complaint shows the accused tool bag, with a red circle identifying the area with the relevant technology (Compl. ¶46, Fig. 11).
IV. Analysis of Infringement Allegations
’946 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A storage box | The TOUGHBUILT STACKTECH 21-in Black Plastic/Metal Tool Box is a storage box. An image of the accused tool box is provided. (Compl. ¶19, Fig. 1). | ¶19 | Abstract |
| a first connection part disposed on one area of said storage box connectable to a second connection part of another storage box | The accused tool box includes a first connection part on its front face that is connectable to a second connection part on another box. | ¶20 | col. 6:25-30 |
| said first connection part comprises a mounting body, a locking buckle movable with respect to said mounting body, and a first resilient member...keeping said locking buckle automatically in a locked state | The connection part allegedly includes a mounting body, a movable locking buckle, and resilient members that bias the buckle into an outward, locked position. A disassembled view is provided. (Compl. ¶23, Fig. 5). | ¶¶22-23 | col. 6:50-57 |
| the locking buckle is configured to slide inward with respect to the mounting part so that the locking buckle is automatically lockable with the mating part of the other storage box by action of said first resilient member... | When one box is lowered onto another, the locking buckle is forced to slide inward and then automatically extends into a recess (the mating part) on the other box, locking the units together. | ¶¶26-27 | col. 8:20-35 |
| a locking part cooperating with the locking buckle, wherein manual movement of the locking part causes the locking buckle to move to an unlocked state | A silver-colored handle ("locking part") is manually moved, which causes the locking buckle to retract into an unlocked state. | ¶29 | col. 8:36-38 |
| a stop part, wherein when the stop part projects outward... said locking part is not automatically lockable... [and] wherein the stop part is retractable, said stop part being extended when said first connection part is in a holding unlocked state...and...compressed... | A horizontal bar acts as a stop part. When extended, it prevents automatic locking. It is allegedly extended in the "holding unlocked state" and compressed in the "locked state". | ¶¶31-34 | col. 2:5-18 |
- Identified Points of Contention:
- Scope Questions: The complaint alleges the "locking part" (the user-operated handle) includes the "locking buckle" (the physical latch) (Compl. ¶29). Claim 1 requires the locking part to "cooperat[e] with" the buckle. A question for the court will be whether this "includes" relationship satisfies the "cooperating with" limitation, or if the claim requires two distinct but interacting components.
- Technical Questions: Claim 1 recites a specific sequence for the "stop part," requiring it to be "extended" in a "holding unlocked state" and "compressed" in a "locked state." A key factual question is whether the accused horizontal bar mechanism (Compl. ¶31, Fig. 10A-10B) actually operates in this claimed "extended" versus "compressed" manner, or if its function differs in a way that avoids infringement.
’689 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A stackable storage system comprising: a first storage container...and a second storage container | The system is comprised of the Accused Modular Tool Bag (first container) and the Kobalt Box (second container). | ¶¶46-47 | col. 2:25-28 |
| the first storage container comprises...at least one locking groove and the second container comprises a sliding mechanism for selectively engaging the locking groove to connect and hold the first storage container... | The Tool Bag has at least one locking groove, and the Kobalt Box includes a blue sliding mechanism designed to engage it. | ¶48 | col. 2:28-31 |
| wherein a portion of the sliding mechanism extends laterally away from a side surface of the second container when the sliding mechanism is disengaged from the locking groove | When the blue sliding mechanism is in its open (disengaged) position, it extends away from the side of the Kobalt box. An image shows this disengaged state. (Compl. ¶49, Fig. 16). | ¶49 | col. 2:32-36 |
| and wherein the portion of the sliding mechanism is coplanar with the side surface of the container when the sliding mechanism is engaged with the locking groove | When the blue sliding mechanism is in its closed (engaged) position, it is allegedly coplanar with the side of the Kobalt Box. An image shows this engaged state. (Compl. ¶49, Fig. 17). | ¶49 | col. 2:36-40 |
- Identified Points of Contention:
- Scope Questions: The infringement analysis will turn on the construction of "coplanar" and "extends laterally away from a side surface." The court will need to determine the precise geometric relationship required by these terms. This raises the question of whether "coplanar" requires the slider to be perfectly flush with the side surface or merely aligned in the same general plane.
- Technical Questions: The complaint alleges "upon information and belief" that ToughBuilt manufactures the accused Kobalt-branded products (Compl. ¶36). A primary factual hurdle for the plaintiff will be to produce evidence proving that ToughBuilt is the actual manufacturer and seller, and therefore the direct infringer, of the accused "CaseStack" tool bags.
V. Key Claim Terms for Construction
For the ’946 Patent: "stop part" (Claim 1)
- Context and Importance: This term is central to the patent's asserted novelty—the ability to maintain a "holding unlocked state." The viability of the infringement claim depends on whether the accused horizontal bar mechanism (Compl. ¶31, item E) falls within the scope of this term.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent summary describes the function broadly: "When said stop part is in the locking path of the locking portion, said locking part cannot be automatically locked" (’946 Patent, col. 2:5-9). This functional language could support a construction covering any component that selectively obstructs the automatic locking feature.
- Evidence for a Narrower Interpretation: The claim language is more specific, requiring the stop part to be "retractable," "extended" in the unlocked state, and "compressed" in the locked state (’946 Patent, Claim 1). A defendant may argue the term should be limited to a mechanism that performs this exact sequence of actions, as opposed to any structure that merely blocks movement.
For the ’689 Patent: "coplanar" (Claim 1)
- Context and Importance: Practitioners may focus on this term because it defines the required geometric condition of the "engaged" state, forming the core of the infringement allegation. The contrast between being "coplanar" (when engaged) and "extend[ing] laterally away" (when disengaged) is the key distinction.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states "the portion of the sliding mechanism is coplanar with the side surface of the container when the sliding mechanism is engaged" (’689 Patent, col. 2:36-40). Plaintiff could argue this requires only that the relevant surfaces lie on the same plane, not that they be perfectly flush or contiguous.
- Evidence for a Narrower Interpretation: The patent figures, such as Figure 1, depict the interconnected containers as having a smooth, continuous side profile when latched. A defendant could cite these illustrations to argue that "coplanar" implies a stricter, flush alignment that creates this seamless appearance.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement for both patents. The allegations for inducement are based on Defendant's marketing, instructions, and product documentation, which allegedly encourage customers to use the accused products in an infringing manner (Compl. ¶¶ 53, 60). The allegations for contributory infringement are based on the assertion that the accused products are a material part of the patented inventions, are not staple articles of commerce, and are especially made for infringing use (Compl. ¶¶ 54, 61).
- Willful Infringement: The complaint alleges willful infringement of the ’946 Patent based on Defendant’s alleged failure to respond to a June 5, 2024 cease-and-desist letter, suggesting knowledge and deliberate continuation of infringement (Compl. ¶¶ 56-57). For the ’689 Patent, willfulness is alleged based on the notice provided by the filing of the complaint itself, constituting a claim for post-suit willfulness (Compl. ¶¶ 63-64).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue for the ’946 Patent will be one of functional correspondence: Does the accused StackTech system's horizontal bar and handle mechanism perform the specific, multi-state sequence of operations required by the "stop part" limitations in Claim 1, or is there a material difference in its mechanical operation?
- A key question for the ’689 Patent will be one of definitional scope: Can the term "coplanar" be construed to read on the alignment of the accused CaseStack sliding latch, and what degree of geometric precision is required by the claim language in light of the patent's specification and figures?
- A threshold evidentiary question for the ’689 Patent claim will be one of attribution: Can the plaintiff substantiate its "information and belief" allegation and prove that Defendant ToughBuilt is the entity responsible for manufacturing and selling the accused Kobalt-branded tool bags, thereby establishing direct infringement?