DCT
1:23-cv-01855
Shenzhen Keenray Innovations Ltd v. Global Proton LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Shenzhen Keenray Innovations Limited (People's Republic of China)
- Defendant: Global Proton LLC (Colorado)
- Plaintiff’s Counsel: Glacier Law LLP
- Case Identification: 1:23-cv-01855, D. Colo., 07/20/2023
- Venue Allegations: Venue is asserted as proper in the District of Colorado because the Defendant, Global Proton LLC, is a Colorado corporation that resides in the judicial district.
- Core Dispute: Plaintiff seeks a declaratory judgment that its towel warmer products do not infringe Defendant's patent and that the patent is invalid and unenforceable, alleging the patent was revived from an expired state through fraudulent representations to the USPTO.
- Technical Context: The technology concerns portable, electrically powered devices designed to warm textiles, such as bath towels, in a home setting.
- Key Procedural History: The complaint alleges that U.S. Patent No. 8,481,895 expired in July 2021 for failure to pay maintenance fees. It further alleges that in June 2023, the former owner filed a petition to reinstate the patent based on a "fraudulent" statement that the failure to pay was "unintentional." Following the patent's revival and transfer to the Defendant, the Defendant filed an infringement complaint with Amazon, prompting this declaratory judgment action. These allegations directly challenge the patent's enforceability.
Case Timeline
| Date | Event |
|---|---|
| 2004-12-27 | ’895 Patent Priority Date |
| 2013-07-09 | ’895 Patent Issue Date |
| 2021-07-10 | ’895 Patent allegedly expired for failure to pay maintenance fee |
| 2022-11-13 | Defendant Global Proton LLC registered in Colorado |
| 2023-06-08 | Former owner filed Petition to Accept Late Payment of Maintenance Fee |
| 2023-06-23 | Ownership of ’895 Patent transferred to Defendant |
| 2023-07-09 | Amazon notified Plaintiff of infringement report from Defendant |
| 2023-07-20 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 8,481,895, "Portable Warming Device and Method for Warming an Article," issued July 9, 2013.
The Invention Explained
- Problem Addressed: The patent's background section describes the discomfort individuals experience when exiting a warm shower or bath into a cooler ambient environment and using a towel that is at room temperature (U.S. Patent No. 8,481,895, col. 1:30-54). Existing towel warming solutions are described as often being expensive, not portable, or requiring invasive structural modifications to a bathroom (col. 2:6-16).
- The Patented Solution: The invention is a portable, low-cost warming device that uses "dry heat" to warm towels and other textiles (col. 2:17-24). The specification describes multiple embodiments, including a bucket-style device with an inner and outer shell and a hinged lid designed to encapsulate a towel (col. 24:64-67; Fig. 1). The device uses a heating arrangement, such as a resistance heating mat, and a controller to heat the towel without introducing moisture (col. 3:50-57).
- Technical Importance: The invention claims to provide a convenient, portable, and non-invasive way to enjoy a heated towel, overcoming the cost and installation barriers of prior art devices (col. 2:17-24).
Key Claims at a Glance
- The complaint seeks a declaratory judgment of non-infringement of "any claim" of the ’895 Patent (Compl. ¶32). Independent claim 1 is representative of the bucket-style embodiment.
- Independent Claim 1 elements:
- A portable textile warmer designed to dry heat warm a textile.
- A housing body with a bottom portion, top portion, an inner shell, and a lid.
- The inner shell forms a warming cavity with a base and side wall, sized to hold at least one standard bath towel.
- A lid movable between a closed position (encapsulating the textile) and an open position (allowing insertion/removal).
- A heating arrangement with a resistive heating element, a heating controller, a current connector, and an activation switch.
- The resistive heating element is positioned on an outer surface of the inner shell.
- The heating controller terminates current flow based on a predetermined time period or a sensed temperature.
- The complaint does not specify any dependent claims but seeks a declaration of non-infringement as to the entire patent (Compl. ¶35).
III. The Accused Instrumentality
Product Identification
- The "Keenray Towel Warmer, Luxury Towel Warmer Bucket," identified by Amazon Standard Identification Number (ASIN) B08ZMXQRPZ (Compl. ¶¶ 11, 25; p. 6).
Functionality and Market Context
- The complaint describes the accused product as a bucket-style towel warmer that features an "Auto Shut Off" and is large enough to fit "Up to Two 40"X70" Oversized Towels, Bathrobes, Blankets, PJ's and More" (Compl. p. 3). A screenshot from an Amazon product page shows the Keenray Towel Warmer (Compl. p. 3). The complaint alleges the product is well-established, enjoys quality customer reviews, and ranked as the "#1 Best Seller" in its category on Amazon (Compl. ¶¶ 12-13).
IV. Analysis of Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement in response to a patent infringement report filed by the Defendant with Amazon (Compl. ¶¶ 6, 24). The complaint itself does not articulate a detailed infringement theory but instead makes a general denial of infringement (Compl. ¶32). The following chart maps the publicly described features of the accused product to the elements of a representative claim, reflecting the potential infringement theory that prompted the lawsuit.
’895 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A portable textile warmer designed to dry heat warm a textile comprising: | The accused product is marketed as a "Keenray Towel Warmer" (Compl. p. 3). | ¶11 | col. 55:31-33 |
| a housing body having a bottom portion, a top portion, an inner shell, and a lid; | The accused product is a "Luxury Towel Warmer Bucket," which has a body and lid as depicted in a product screenshot (Compl. p. 3). | ¶13 | col. 55:34-36 |
| said warming cavity having a volume to hold at least one standard bath towel; | The product is advertised as fitting "Up to Two 40"X70" Oversized Towels" (Compl. p. 3). | ¶13 | col. 55:40-41 |
| said lid movable between an open and a closed position... | The bucket-style design of the accused product includes a lid that opens to allow towel insertion (Compl. p. 3). | ¶13 | col. 55:42-48 |
| a heating arrangement... including a resistive heating element, a heating controller... and an activation switch; | The product is an electric warmer that includes an "Auto Shut Off" feature, which suggests the presence of a heating element and a controller (Compl. p. 3). | ¶13 | col. 55:50-55 |
| said heating controller terminating a flow of current... after a user has actuated said activation switch... | The "Auto Shut Off" feature suggests a controller that terminates power after some predetermined event (Compl. p. 3). | ¶13 | col. 56:1-12 |
Identified Points of Contention
- Scope Questions: A central question may be the construction of "portable." The patent specification provides specific, non-limiting weight and volume examples (e.g., "no more than about 30 lbs") which could be used to argue for a narrower definition than simply "capable of being moved" (col. 2:56-62). The complaint does not specify the weight or dimensions of the accused product.
- Technical Questions: A key technical dispute may arise over whether the accused product's "Auto Shut Off" function meets the specific limitations of the "heating controller" as claimed, which terminates current after a "predetermined period of time" or after a "temperature sensor senses a predetermined temperature" (col. 56:7-12). The evidence required to prove how the accused product's control circuit actually operates will be critical.
V. Key Claim Terms for Construction
The complaint does not provide sufficient detail for a definitive analysis of claim construction disputes. However, based on the patent and the nature of the accused product, the following terms may be central to the case.
- The Term: "heating controller"
- Context and Importance: This term is critical because infringement will depend on whether the accused product's "Auto Shut Off" mechanism performs the functions recited for the "heating controller." Practitioners may focus on this term because its definition dictates the specific logic (e.g., timer-based, thermostat-based, or both) the accused product must possess to infringe.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Claim 1 itself presents disjunctive options for the controller's function: terminating current after a "predetermined period of time," or after a "temperature sensor senses a predetermined temperature," or "combinations thereof" (col. 56:7-12). This language may support a construction covering any controller that performs at least one of these functions.
- Evidence for a Narrower Interpretation: The detailed description provides specific examples, such as a timer that causes elements to stop generating heat after up to 60 minutes (col. 15:38-44) or a thermostat that cuts current at a specific temperature (e.g., 250° F) (col. 31:21-26). A party could argue these specific embodiments limit the scope of what constitutes the claimed "controller."
VI. Other Allegations
- Indirect Infringement: The complaint seeks a declaratory judgment of non-infringement for direct, contributory, and vicarious infringement but offers no specific factual allegations regarding any theory of indirect infringement (Compl. ¶2).
- Willful Infringement: As a declaratory judgment action, the complaint does not allege willfulness by the Plaintiff. However, it makes strong allegations of bad faith against the Defendant, asserting that the Defendant's business is to "enforce the '895 Patent" which it "fraudulently procured" after its expiration (Compl. ¶¶ 16, 46). A screenshot from the defendant's website stating "Please do not infringe this patent from other manufacturers" is provided as evidence of its enforcement-focused business model (Compl. p. 4). These allegations form the basis for the Plaintiff's prayer for a finding that the case is exceptional and an award of attorneys' fees (Compl. Prayer for Relief ¶4).
VII. Analyst’s Conclusion: Key Questions for the Case
- A dispositive threshold issue will be one of patent viability: was U.S. Patent No. 8,481,895 validly revived from its expired status, or was the revival procured through a false or fraudulent statement to the USPTO that the failure to pay maintenance fees was "unintentional," rendering the patent unenforceable?
- Should the patent be deemed valid, a central question will be one of technical operation: does the accused product’s "Auto Shut Off" feature function as the specific "heating controller" recited in the patent's claims, which requires terminating power based on a predetermined time or a sensed temperature?
- Separate from the patent issues, a key question for the court will be one of tortious conduct: did the Defendant's act of reporting alleged infringement to Amazon, based on a patent the Plaintiff claims was fraudulently revived, constitute tortious interference with the Plaintiff's business relationships, potentially giving rise to damages regardless of the outcome of the infringement and validity claims?