DCT

1:22-cv-03815

With U E Commerce Shanghai Co Ltd v. Partnerships Unincorp Associations

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:22-cv-03815, N.D. Ill., 11/18/2022
  • Venue Allegations: Venue is alleged to be proper on the basis that Defendants are foreign business entities and have targeted sales to consumers in Illinois through interactive e-commerce websites.
  • Core Dispute: Plaintiff alleges that Defendants’ pop-up canopy tent products infringe two patents related to collapsible canopies that feature a central locking mechanism.
  • Technical Context: The technology concerns central locking systems for pop-up canopies, which are designed to simplify the setup process and enhance the structural stability of the frame.
  • Key Procedural History: The asserted patents have been subject to separate Inter Partes Review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB). Notably, Claim 1 of the ’738 Patent, the sole claim asserted from that patent in this complaint, was subsequently cancelled. In contrast, Claim 7 of the ’710 Patent, the sole asserted claim from that patent, was challenged in a separate IPR and found patentable.

Case Timeline

Date Event
2015-08-18 Earliest Priority Date for '710 and '738 Patents
2019-04-30 U.S. Patent No. 10,273,710 Issued
2020-06-02 U.S. Patent No. 10,669,738 Issued
2020-12-22 IPR Petition Filed against '710 Patent (IPR2021-00365)
2022-11-18 Amended Complaint Filed
2022-12-20 IPR Certificate Issued for '710 Patent; Claim 7 found patentable, other claims cancelled
2023-02-09 IPR Petition Filed against '738 Patent (IPR2023-00580)
2024-11-08 Anticipated IPR Certificate Issue Date for '738 Patent; Claims 1, 2, 4, 13, and 14 cancelled

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

U.S. Patent No. 10,669,738: Collapsible Canopy Frame Having a Central Lock (Issued June 2, 2020)

The Invention Explained

  • Problem Addressed: The patent describes conventional collapsible canopies as cumbersome, often requiring multiple people for setup and involving the individual locking of each support leg. This process can create uneven stress on the frame, and the holes drilled in the legs for locking pins can weaken the structure and lead to damage. (’738 Patent, col. 1:15-46).
  • The Patented Solution: The invention is a collapsible canopy frame featuring a "central lock." This mechanism allows a user to lock the entire canopy structure in an open and erect state from a single, central point. The lock connects the inner ends of the canopy's roof-forming retractable units, so that engaging the central lock secures the entire frame, eliminating the need for individual leg-locking pins and simplifying setup. (’738 Patent, Abstract; col. 4:18-40).
  • Technical Importance: This design aims to make pop-up canopy setup a one-person task while simultaneously improving the frame's structural integrity by distributing forces more evenly and removing the structural weak points associated with leg-locking pins. (’738 Patent, col. 4:47-65).

Key Claims at a Glance

  • The complaint asserts independent Claim 1. (Compl. ¶29).
  • Essential elements of Claim 1 include:
    • A collapsible canopy frame with at least three supporting legs, outer retractable units, and inner retractable units.
    • A "central lock" comprising a center top cap, a center bottom cap, and a center pole.
    • The central lock locks the frame in an unfolded state when the center pole connects the top and bottom caps.
    • The inner ends of the inner retractable units are connected through this central lock.
  • Subsequent to the filing of the complaint, Claim 1 was cancelled in an Inter Partes Review proceeding (IPR2023-00580).

U.S. Patent No. 10,273,710: Central Lock and Canopy (Issued April 30, 2019)

The Invention Explained

  • Problem Addressed: As with the related ’738 patent, the technology seeks to solve the problem of complex, multi-step locking procedures for canopies, which are inefficient and can compromise the frame's strength. (’710 Patent, col. 1:20-52).
  • The Patented Solution: The ’710 patent details the specific mechanics of a detachable central lock. The core components are a center pole with a "clamping groove" and a "locking piece" housed within a center bottom cap. The locking piece can move radially to engage or disengage with the pole's groove. When engaged, the pole is locked into the bottom cap; when disengaged, the pole can slide out, unlocking the canopy frame for folding. (’710 Patent, Abstract; col. 4:12-43).
  • Technical Importance: The invention provides a specific and robust mechanical implementation for a one-touch canopy lock, focusing on a reliable and convenient detachable connection to improve usability and structural performance. (’710 Patent, col. 2:26-44).

Key Claims at a Glance

  • The complaint asserts independent Claim 7. (Compl. ¶37).
  • Essential elements of Claim 7 include:
    • A central lock with a center pole, a fixed top cap, and a detachable bottom cap.
    • A "locking piece" received in the bottom cap, capable of moving "back and forth along a radial direction."
    • The locking piece has a "first through hole" that itself comprises two distinct parts: a "clamping hole part (411)" and a "through hole part (412) arranged side by side."
    • The center pole has a "clamping groove" and a "clamp locking part."
    • In a locked state, the clamping hole part engages the clamping groove; in an unlocked state, it separates, allowing the clamp locking part to pass through the through hole part.
  • This claim was challenged in an Inter Partes Review proceeding (IPR2021-00365) and was subsequently found to be patentable.

III. The Accused Instrumentality

Product Identification

The complaint identifies the accused instrumentalities as "various pop-up canopy tent products" sold by the Defendants under brand names that include Vingli, EzyFast, Cobizi, and others. (Compl. ¶2, ¶25).

Functionality and Market Context

The accused products are alleged to be collapsible canopies that practice Plaintiff's "patented center lock technology" and have "similar design features." (Compl. ¶27). They are marketed and sold to U.S. consumers through e-commerce platforms like Amazon as well as the Defendants' own websites. (Compl. ¶11, ¶26). A representative example is depicted in a screenshot of a "VINGLI 10x10ft Easy Pop Up Canopy Tent." (Compl. p. 6). This image shows a pop-up canopy with a central hub structure where the inner roof support arms converge, which Plaintiff alleges is the infringing central lock. (Compl. p. 6).

IV. Analysis of Infringement Allegations

The complaint references but does not include its exemplary infringement chart exhibits. (Compl. ¶29, ¶37). The infringement theories are therefore summarized based on the complaint's narrative allegations.

The core of the infringement allegation is that the Defendants' pop-up canopies incorporate a central locking hub that functions in the same way as the patented inventions. (Compl. ¶27). For the ’738 patent, the complaint alleges the accused canopies possess the claimed combination of legs, retractable units, and a central lock that secures the inner retractable units to lock the frame in an unfolded state. (Compl. ¶29). For the ’710 patent, the infringement allegation is more mechanically specific, contending that the internal components of the accused central locks contain a radially moving locking piece with a specific dual-part hole structure that engages a grooved center pole, as recited in Claim 7. (Compl. ¶37).

  • Identified Points of Contention:
    • Legal Viability: A threshold issue for the ’738 patent is the legal effect of the PTAB's cancellation of Claim 1. As this is the only asserted claim from this patent, its cancellation raises a fundamental question about the viability of this count of the complaint.
    • Technical Questions: For the surviving Claim 7 of the ’710 patent, the dispute will likely center on the precise internal structure of the accused locks. A key factual question is whether the accused locking mechanisms contain a piece with a "clamping hole part (411) and a through hole part (412) arranged side by side." The litigation will require evidence, such as physical inspection or teardowns of the accused products, to determine if this specific structure is present.

V. Key Claim Terms for Construction

Analysis focuses on the surviving asserted claim of the '710 patent.

  • The Term: "locking piece (4) capable of moving back and forth along a radial direction of the center pole (2)"

    • Context and Importance: This term defines the essential motion of the locking component. The outcome of the infringement analysis may depend on whether the accused mechanism's movement meets this definition. Practitioners may focus on this term because the specific type of motion ("radial") could be a point of distinction from prior art or the accused device.
    • Intrinsic Evidence for a Broader Interpretation: The patent's objective is to provide a detachable connection, so a party could argue that any component that moves generally inward and outward relative to the pole's center to achieve a lock/unlock function falls within the scope. (’710 Patent, col. 2:26-33).
    • Intrinsic Evidence for a Narrower Interpretation: The figures and description show a specific embodiment where the piece slides linearly in a channel. (’710 Patent, FIG. 4, FIG. 6). A party could argue the term is limited to this type of sliding motion, as opposed to a pivoting, rotating, or otherwise non-linear movement.

  • The Term: "a clamping hole part (411) and a through hole part (412) arranged side by side"

    • Context and Importance: This limitation defines a very specific geometry for the aperture in the locking piece and appears to be a key distinguishing feature of the claim. Infringement will likely require finding this exact dual-part structure.
    • Intrinsic Evidence for a Broader Interpretation: A party might argue that a single, non-uniform opening could have two functionally distinct sections—one that clamps and one that allows passage—that satisfy the "part" language without requiring two discrete, separate holes.
    • Intrinsic Evidence for a Narrower Interpretation: The claim language "arranged side by side" and the clear depiction in Figure 13 of two distinct areas (411 and 412) strongly suggest a structural requirement for two adjacent, defined regions within the locking piece's aperture, not merely two different functions within a single opening. (’710 Patent, FIG. 13).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that Defendants knowingly induced infringement by their customers who use the accused products "in their intended manner." (Compl. ¶32, ¶40).
  • Willful Infringement: Willfulness is alleged based on constructive knowledge through Plaintiff’s patent marking and actual knowledge from at least the filing of the complaint. (Compl. ¶30-31, ¶38-39). Plaintiff seeks enhanced damages on this basis. (Compl. p. 8, Prayer for Relief ¶B).

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

  1. Impact of IPRs: A primary issue for the court will be the procedural and substantive impact of the completed IPRs. How does the cancellation of the asserted claim of the ’738 patent affect that count, and, conversely, does the confirmation of the ’710 patent's asserted claim's patentability by the PTAB influence the court's perspective on its validity and potential infringement?
  2. Structural Infringement: For the surviving claim of the ’710 patent, the case will likely turn on a key evidentiary question of structural mapping. Does the internal mechanism of the accused products’ central lock contain a locking piece with the specific "clamping hole part and a through hole part arranged side by side," as narrowly defined by the claim language and patent figures, or is there a material difference in its mechanical structure and operation?
  3. Knowledge and Intent: A third key question, relevant to willfulness and indirect infringement, will be one of notice. Can Plaintiff establish that the foreign-based Defendants had the requisite pre-suit knowledge of the patents and infringement to support a claim for enhanced damages, particularly based on constructive notice via patent marking on products sold in the U.S. market?