DCT

3:22-cv-01650

Tech E Inc v. XM Works Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:22-cv-01650, S.D. Cal., 10/24/2022
  • Venue Allegations: Venue is alleged to be proper based on the Defendants conducting business, including selling products, within the Southern District of California.
  • Core Dispute: Plaintiff seeks a declaratory judgment that its "Skywin Air Tent" products do not infringe Defendants' patents related to inflatable air forts, and that those patents are invalid.
  • Technical Context: The technology at issue involves children's inflatable play structures, commonly known as "air forts," which are inflated and kept aloft by a continuous airflow from a standard household fan.
  • Key Procedural History: The dispute began with a patent infringement assertion letter sent to the Plaintiff in May 2021, followed by an infringement complaint filed by the Defendants with Amazon.com in June 2022. Plaintiff notes it previously filed a declaratory judgment action in July 2022 which was subsequently dismissed without prejudice after it allegedly modified its products to be non-infringing, but Defendants have allegedly not withdrawn their Amazon complaint.

Case Timeline

Date Event
2015-08-06 Priority Date for ’375 and ’393 Patents
2020-04-14 U.S. Patent No. 10,619,375 Issued
2021-05-18 Defendants send infringement letter to Plaintiff
2022-05-03 U.S. Patent No. 11,318,393 Issued
2022-06-17 Plaintiff receives Amazon notice of infringement report
2022-06-23 Plaintiff's president emails Defendants to resolve dispute
2022-06-27 Defendants decline to retract Amazon complaint
2022-07-07 Plaintiff files initial Declaratory Judgment complaint
2022-10-24 Current Complaint Filing Date

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

U.S. Patent No. 10,619,375 - "Hovering Air Fort" (issued Apr. 14, 2020)

The Invention Explained

  • Problem Addressed: The patent's background section describes prior art inflatable play structures as being difficult for children to enter and exit, and once inflated, they cannot be easily moved or relocated without deflation because they are secured by heavy anchor weights (ʼ375 Patent, col. 1:62 - col. 2:2).
  • The Patented Solution: The invention is a floor-less, inflatable structure that "hovers" over a surface, inflated by a continuous stream of air from a device like a household fan. The key feature is a "single chord" secured along the bottom edge of the structure's walls. This chord has just enough weight to keep the walls taut but is light enough to allow the entire bottom edge to be lifted slightly off the ground by the air pressure, permitting air to escape uniformly and enabling the fort to be moved easily while inflated (ʼ375 Patent, Abstract; col. 2:3-6; Fig. 1).
  • Technical Importance: This design purports to create a more user-friendly inflatable play structure that is both easily accessible from any point along its perimeter and movable without deflation (ʼ375 Patent, col. 2:3-6).

Key Claims at a Glance

  • The complaint seeks a declaration of non-infringement of "any of the claims" of the '375 Patent (Compl. ¶46). The patent contains two independent claims.
  • Independent Claim 1 recites a "hovering air fort" comprising:
    • An unstructured cover with front, rear, and side panels, forming an opening at the bottom.
    • A "chord hemmed into" the cover at the periphery of the opening.
    • The chord has a weight that allows the periphery to be lifted above a surface when air is forced into the fort.
    • The forced air provides lift for the cover.
  • Independent Claim 5 recites a "hovering air fort" comprising:
    • A circular side panel with an aperture, top edge, and bottom edge.
    • A domed top panel joined to the circular side panel's top edge.
    • A shroud secured to the circular side panel to channel air from a fan through the aperture.
    • A "single chord" secured at the bottom edge of the circular side panel, secured along "about 75% to 100%" of the bottom edge.
    • The chord has a weight that allows the bottom edge to be lifted above a surface when the fan forces air in.

U.S. Patent No. 11,318,393 - "Hovering Air Fort" (issued May 3, 2022)

The Invention Explained

  • Problem Addressed: As a continuation-in-part of the '375 Patent, the '393 Patent addresses the same limitations of prior art inflatable forts, namely the difficulty of entry/exit and lack of mobility once inflated (ʼ393 Patent, col. 1:60 - col. 2:8).
  • The Patented Solution: This patent describes the invention in slightly broader terms. The abstract describes an "inflatable housing" with an "open base" and an aperture for airflow. One embodiment includes "at least one connecting panel" affixed to the side walls around the open base periphery, which "does not cover a majority of the open base." Another embodiment recites a "chord hemmed into the periphery of the open base." In both cases, the structure is designed to allow airflow to provide lift and create the "hovering" effect (ʼ393 Patent, Abstract; col. 5:27-37).
  • Technical Importance: The '393 Patent appears to generalize the invention from the '375 Patent, potentially capturing a wider variety of shapes and base configurations beyond the specific rectangular and circular embodiments of the parent patent (ʼ393 Patent, col. 5:1-8).

Key Claims at a Glance

  • The complaint seeks a declaration of non-infringement of "any of the claims" of the '393 Patent (Compl. ¶37). The patent contains two independent claims.
  • Independent Claim 1 recites a "hovering air fort" comprising:
    • An inflatable housing with side walls, an open base, and an aperture for airflow.
    • "at least one connecting panel" affixed to the housing's open base periphery, connected to "at least two" of the side walls.
    • The connecting panel "does not cover a majority of the open base."
    • Airflow through the aperture provides structure and lift.
  • Independent Claim 8 recites a "hovering air fort" comprising:
    • An inflatable housing with an open base and an aperture for airflow.
    • A "chord hemmed into said periphery" surrounding the open base.
    • Airflow provides structure and lift when the hemmed opening is positioned against a surface.

III. The Accused Instrumentality

Product Identification

  • The accused products are the "Skywin Air Tent Fort Playhouse for Kids," sold on Amazon.com under specific ASINs, including B0916K35B4, B0916K76CN, B097QR232N, and B097QRL5V2 (Compl. ¶8, 18).

Functionality and Market Context

  • The complaint alleges that the Defendants conducted "test purchases and inspecting the products" to confirm infringement, but it does not provide a technical description of how the Skywin Air Tent operates (Compl. ¶29). The dispute's initiation through an Amazon infringement report suggests that Amazon is a significant commercial channel for the product (Compl. ¶18). The complaint also states that after the initial dispute, Plaintiff "modified the product that it was selling on Amazon to a design that is clearly non-infringing" (Compl. ¶33).

IV. Analysis of Infringement Allegations

The complaint, a declaratory judgment action, does not contain a detailed element-by-element infringement analysis or claim chart for the accused product. The infringement controversy is described based on allegations attributed to the Defendants. The complaint states that counsel for XM Works sent a letter "asserting a claim of patent infringement" against Tech-E (Compl. ¶14), and later submitted a complaint to Amazon against four of Tech-E's products for infringing the '393 Patent (Compl. ¶18). Defendants' counsel allegedly confirmed that this Amazon complaint was filed "after conducting test purchases and inspecting the products [it] received to confirm infringement" (Compl. ¶29).

No probative visual evidence provided in complaint.

  • Identified Points of Contention:
    • Factual Questions: A central factual dispute will be whether the original, accused Skywin Air Tent products incorporate the specific structures recited in the independent claims. For the '375 Patent and '393 Patent's Claim 8, this involves determining if the product has a "chord" with the claimed weight and functional characteristics that enable it to "hover." For the '393 Patent's Claim 1, the question is whether the product has a "connecting panel" that is affixed to at least two side walls and "does not cover a majority of the open base."
    • Scope Questions: The dispute may raise questions about the scope of the claims. For instance, what range of structures qualifies as a "chord" or a "connecting panel" under the patents' definitions? The functional language requiring the structure to be "lifted above a surface" by airflow will be critical in defining the boundaries of the claims (e.g., '375 Patent, col. 5:65 - col. 6:3).

V. Key Claim Terms for Construction

  • The Term: "chord" (from '375 Patent, Claim 5; '393 Patent, Claim 8)

    • Context and Importance: This term is fundamental to the "hovering" concept that distinguishes the invention. The infringement analysis will depend heavily on whether the accused product's base structure meets the definition of the claimed "chord," which provides tension without acting as a fixed anchor.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification states the chord "may be made of a variety of linearly uniform materials such as rope, cable, a flexible tube or chain" ('375 Patent, col. 7:2-4). This suggests the term is not limited to a specific material like rope.
      • Evidence for a Narrower Interpretation: The claims impose a functional limitation: the chord must have "a weight that allows said bottom edge to be lifted above the surface when the fan forces air into the air fort" ('375 Patent, col. 5:65 - col. 6:3). This could be used to argue that any weighted edge that is too heavy to allow for this "hovering" lift falls outside the claim scope.

  • The Term: "at least one connecting panel ... [that] does not cover a majority of the open base" (from '393 Patent, Claim 1)

    • Context and Importance: This term appears to be a broader alternative to the "chord" for defining the open-bottom structure. The case may turn on whether the accused product has any structure at its base that could be characterized as such a panel and whether that panel leaves a "majority" of the base open.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification provides examples, such as "an elongated rectangle" or a "triangle" connecting sidewalls, suggesting some flexibility in the panel's shape ('393 Patent, col. 7:35-49). Practitioners could argue this language supports a broad reading of what constitutes a "panel."
      • Evidence for a Narrower Interpretation: The explicit limitation that the panel "does not cover a majority of the open base" is a key constraint ('393 Patent, col. 9:44-45). This negative limitation, combined with the overall function of enabling lift, suggests the term excludes structures that substantially enclose the bottom of the fort.

VI. Other Allegations

  • Willful Infringement: The complaint, a declaratory judgment action, does not indicate that the Defendants have alleged willful infringement against the Plaintiff.
  • Exceptional Case and Tortious Interference: The Plaintiff seeks a declaration that the case is exceptional under 35 U.S.C. § 285 and damages for tortious interference with business relations (Compl. ¶¶ 61-68, Prayer F, G). The basis for these claims is the allegation that Defendants are maintaining their Amazon takedown request for the purpose of economically harming the Plaintiff, despite allegedly knowing that Plaintiff's currently-offered modified products do not infringe the patents-in-suit (Compl. ¶¶ 64-66).

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

  • A central issue will be one of invalidity: Plaintiff alleges that the patents are invalid as anticipated or obvious in light of prior art "air-forts" not considered by the USPTO. The key question for the court will be whether the claimed "hovering" mechanism, enabled by either a specifically weighted "chord" or a "connecting panel," was actually disclosed or suggested in the prior art.
  • The case will also turn on a question of infringement and claim scope: Does the accused "Skywin Air Tent" possess a structure at its base that falls within the scope of either the claimed "chord" or the "connecting panel"? This will require the court to first construe the scope of these terms and then conduct a factual comparison with the accused product's design.
  • Finally, a key procedural and equitable question will be one of enforcement conduct: Did the Defendants' use of Amazon's IP complaint system, particularly their alleged refusal to withdraw the complaint after Plaintiff modified its product, constitute bad faith litigation tactics or tortious interference sufficient to declare the case exceptional and award damages?