DCT
1:19-cv-00678
Everite Transworld Ltd v. Mieh Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Ever Victory Technology Limited (Hong Kong); Everite Transworld Limited (Hong Kong)
- Defendant: Mieh, Inc. (Delaware)
- Plaintiff’s Counsel: Bishop Diehl & Lee, LTD.
- Case Identification: 1:19-cv-00678, N.D. Ill., 02/01/2019
- Venue Allegations: Venue is alleged to be proper as the Defendant resides in the district through its principal place of business, and because a substantial part of the events giving rise to the claim allegedly occurred in the district.
- Core Dispute: Plaintiff EVTL alleges that Defendant's "ZIPES SPEED PIPES" toy car infringes a patent directed to the mechanical design of a toy vehicle for moving within an enclosed track system, while Plaintiff ETL alleges breach of contract and account stated claims related to a prior licensing agreement.
- Technical Context: The technology relates to toy vehicles specifically designed to operate at high speeds inside enclosed, configurable tubular tracks, a market segment for children's toys.
- Key Procedural History: The complaint is set against the backdrop of a significant dispute over patent ownership and licensing rights. Plaintiffs allege that Defendant Mieh, Inc. previously filed its own lawsuit (the "Tekno Suit") asserting rights to the patent-in-suit based on an "Exclusivity and Exploitation Agreement." This complaint challenges Mieh's standing to assert the patent, claiming that Plaintiff EVTL is the true owner by assignment and that Mieh's license from Plaintiff ETL did not convey rights to the patent-in-suit. The complaint also notes that Plaintiffs' counsel sent a letter to Defendant prior to filing suit, asserting Plaintiffs' ownership claims and alleging infringement.
Case Timeline
| Date | Event |
|---|---|
| 2015-02-02 | U.S. Patent No. 9,731,212 Priority Date |
| 2016-10-01 | "Exclusivity and Exploitation Agreement" executed |
| 2017-08-15 | U.S. Patent No. 9,731,212 Issues |
| 2019-01-07 | Defendant Mieh, Inc. files the "Tekno Suit" |
| 2019-01-14 | Plaintiffs' counsel sends letter to Defendant's counsel |
| 2019-02-01 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,731,212 - "Toy Track System and a Toy Vehicle for Moving Therein", issued August 15, 2017
The Invention Explained
- Problem Addressed: The patent identifies shortcomings in conventional toy track systems, noting that vehicles on open-top tracks can easily "fall out or shoot off," which is potentially hazardous. It also states that existing track sets often have limited configurations, which does not promote creativity (U.S. Patent No. 9,731,212, col. 1:12-22).
- The Patented Solution: The invention claims a toy vehicle specifically engineered to operate stably within an enclosed track. The design relies on a key mechanical arrangement: a driving wheel on one side of the vehicle body is opposed by a "presser" on the other side that is "resiliently biased" to push against the inner track wall, thereby maintaining constant frictional engagement for the driving wheel. This is supplemented by two distinct sets of "guiding members" at the front and rear of the vehicle to keep it centered within the track during movement ('212 Patent, col. 2:28-55).
- Technical Importance: This design purports to enable a self-propelled toy vehicle to travel reliably at high speeds through complex, three-dimensional enclosed track layouts without dislodging.
Key Claims at a Glance
- The complaint asserts independent claim 10 (Compl. ¶36) and alleges infringement of "one or more of the claims" of the patent (Compl. ¶39).
- The essential elements of independent claim 10 are:
- A toy vehicle for moving in and along a toy track system... comprising:
- a vehicle body having opposite first and second end portions and opposite first and second sides;
- a driving wheel provided at the first end portion on the first side of the vehicle body for frictional engagement with an inner surface of said track system to move the vehicle body;
- an electric motor provided in the vehicle body for rotating the driving wheel;
- gears provided in the vehicle body for transmitting drive from the electric motor to the driving wheel for rotating the driving wheel;
- a presser mounted at the first end portion on the second side of the vehicle body and resiliently biased in a direction directly opposite and away from the driving wheel for bearing against said inner surface to maintain said frictional engagement of the driving wheel;
- at least two principal guiding members provided on the first end portion of the vehicle body, the principal guiding members being angular displaced from the driving wheel and the presser for maintaining the driving wheel substantially in a said central plane when the toy vehicle moves along the toy track system;
- and at least three auxiliary guiding members provided on the second end portion of the vehicle body and angularly displaced from the principal guiding members for maintaining the driving wheel substantially in a said central plane when the toy vehicle moves along the toy track system.
III. The Accused Instrumentality
Product Identification
- The accused product is a toy car and track system sold under the name "ZIPES SPEED PIPES" ("ZIPES") (Compl. ¶35).
Functionality and Market Context
- The ZIPES product is alleged to be a "motorized toy car that runs inside tube assemblies" (Compl. ¶29). Defendant Mieh, Inc. is alleged to offer the product for sale in the United States through online channels, including its own website and retailers such as Amazon.com (Compl. ¶35). The complaint provides an image of the accused vehicle, which depicts a small, wheeled vehicle with a translucent green body, an on/off switch, and visible gearing. An arrow in the complaint's visual evidence points to a wheeled arm on top of the vehicle, identified as the "presser" (Compl. p. 9).
IV. Analysis of Infringement Allegations
'212 Patent Infringement Allegations
| Claim Element (from Independent Claim 10) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A toy vehicle for moving in and along a toy track system having a longitudinal central plane including a longitudinal central axis, comprising: a vehicle body having opposite first and second end portions and opposite first and second sides | The complaint provides an image of the accused ZIPES vehicle, identifying the vehicle body with arrows pointing to its front and rear ends and its sides. | ¶37 | col. 7:16-22 |
| a driving wheel provided at the first end portion on the first side of the vehicle body for frictional engagement with an inner surface of said track system to move the vehicle body; | An image of the accused product shows a toothed wheel on the vehicle's underside, which the complaint identifies as the driving wheel (Compl. p. 8). | ¶37 | col. 7:22-26 |
| an electric motor provided in the vehicle body for rotating the driving wheel; | The complaint alleges the vehicle body includes a motor to rotate the driving wheel. | ¶37 | col. 7:26-30 |
| gears provided in the vehicle body for transmitting drive from the electric motor to the driving wheel for rotating the driving wheel; | The complaint alleges that gears in the vehicle body drive the driving wheel. | ¶37 | col. 7:26-30 |
| a presser mounted at the first end portion on the second side of the vehicle body and resiliently biased in a direction directly opposite and away from the driving wheel for bearing against said inner surface to maintain said frictional engagement of the driving wheel; | A side-view image of the accused vehicle highlights a top-mounted, wheeled arm, which the complaint alleges is the claimed presser (Compl. p. 9). | ¶37 | col. 7:30-36 |
| at least two principal guiding members provided on the first end portion of the vehicle body, the principal guiding members being angular displaced from the driving wheel and the presser for maintaining the driving wheel substantially in a said central plane when the toy vehicle moves along the toy track system; | An overhead image of the accused product points to two wheels located at the front of the vehicle body, alleging these are the principal guiding members (Compl. p. 9). | ¶37 | col. 7:38-46 |
| and at least three auxiliary guiding members provided on the second end portion of the vehicle body and angularly displaced from the principal guiding members for maintaining the driving wheel substantially in a said central plane when the toy vehicle moves along the toy track system. | An angled image of the rear of the accused vehicle points to a set of wheels, alleging they constitute the at least three auxiliary guiding members (Compl. p. 9). | ¶37 | col. 7:48-56 |
- Identified Points of Contention:
- Scope Questions: The complaint's infringement theory raises the question of whether the accused vehicle's top-mounted wheeled arm can be properly characterized as a "presser" that is "resiliently biased." The defense may argue that the structure is merely a passive guide wheel on a flexible arm, not a component actively biased (e.g., by a spring) to apply continuous force as the patent's embodiment describes.
- Technical Questions: A potential dispute may arise over the distinction between "principal" and "auxiliary" guiding members. The claim requires specific numbers (two principal, three auxiliary) in specific locations (first vs. second end portion). The court may need to determine if the accused vehicle's wheels are organized and function in a manner that maps onto this specific claimed architecture, or if they represent a different, non-infringing configuration of guide wheels.
V. Key Claim Terms for Construction
The Term: "presser"
- Context and Importance: This term is central to the claimed invention's mechanism for ensuring traction inside a tube. The definition will be critical for determining whether the accused product's top-mounted wheeled arm infringes. Practitioners may focus on this term because the allegation that the arm is "resiliently biased" may be a key point of factual dispute.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language is primarily functional, describing a component "for bearing against said inner surface to maintain said frictional engagement" (col. 10:17-19). This could support an interpretation covering any structure that achieves this result.
- Evidence for a Narrower Interpretation: The detailed description discloses a preferred embodiment where "the presser 303 includes an arm biased by the spring" (col. 7:34-36). A party could use this specific disclosure to argue for a narrower construction that requires a spring or a similar dedicated biasing element.
The Term: "principal guiding members" / "auxiliary guiding members"
- Context and Importance: The claim's use of two distinct terms for the guiding elements, with specific numerical and positional requirements, suggests this configuration is a key aspect of the invention. The infringement analysis depends on whether the wheels on the accused vehicle can be categorized according to this claimed structure.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not provide a formal definition distinguishing the two beyond their location (front vs. rear), number (two vs. three), and their shared function of "maintaining the driving wheel substantially in a said central plane" (col. 10:21-29). This could support a reading where any guide wheels meeting the location and count requirements satisfy the limitation.
- Evidence for a Narrower Interpretation: The patent's use of two different terms ("principal" and "auxiliary") could imply a functional or structural difference beyond mere location. The detailed description states the auxiliary members "assist the maintenance of the driving wheel" (col. 7:47-48), which may be argued to connote a secondary or different role from the principal members, potentially narrowing the scope of what qualifies.
VI. Other Allegations
- Indirect Infringement: The complaint does not include a separate count for indirect infringement. The allegations focus on direct infringement by Defendant Mieh, Inc. for its alleged acts of making, using, selling, and offering for sale the accused product (Compl. ¶39).
- Willful Infringement: The complaint explicitly alleges that Mieh's infringement "has been and continues to be willful" (Compl. ¶43). This allegation is based on alleged pre-suit knowledge. Specifically, the complaint alleges that Mieh had "actual knowledge of the '212 Patent at all times relevant to this action" (Compl. ¶40) because Mieh itself had previously asserted the patent in a separate lawsuit (Compl. ¶20). The complaint further alleges that Plaintiffs' counsel put Mieh on express notice of its alleged infringement via a letter dated January 14, 2019 (Compl. ¶31).
VII. Analyst’s Conclusion: Key Questions for the Case
- A threshold issue, preceding any technical infringement analysis, will be one of standing: does Plaintiff EVTL, and not Defendant Mieh, possess the ownership rights in the ’212 patent necessary to bring this infringement suit? The resolution will likely require a detailed examination of the patent's chain of title and a judicial interpretation of a prior "Exclusivity and Exploitation Agreement" involving the parties.
- Assuming the case proceeds to the merits, a central question will be one of claim scope and factual correspondence: can the claim term "resiliently biased," as applied to the "presser," be construed to read on the accused vehicle's top-mounted wheeled arm? This will likely require evidence on how the accused component actually operates and whether it functions in the specific manner required by the patent.
- A final key question will be one of structural equivalence: does the arrangement of wheels on the accused "ZIPES" vehicle meet the specific numerical and locational requirements for "principal" and "auxiliary" guiding members as claimed in the patent, or does it represent a distinct, non-infringing design?