DCT
1:22-cv-06794
Shenzhen Kangdi Electronic & Plastic Co Ltd v. Kehoe
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Shenzhen Kangdi Electronic & Plastic Co. Ltd. and six other Chinese entities
- Defendant: Michael Kehoe d/b/a Shamrock Triple Gym (Republic of Ireland)
- Plaintiff’s Counsel: Ni Wang & Massand PLLC
- Case Identification: 1:22-cv-06794, N.D. Ill., 12/02/2022
- Venue Allegations: Venue is alleged to be proper as the Defendant is a foreign citizen who resides in Ireland. The complaint also alleges Defendant operates an Amazon storefront through which products practicing the patents-in-suit are sold within the district.
- Core Dispute: Plaintiffs, a group of online sellers, seek a declaratory judgment that their workout equipment products do not infringe Defendant’s patents and that the patents are invalid, and further allege tortious interference based on Defendant’s filing of infringement complaints on the Amazon marketplace.
- Technical Context: The technology concerns door-mountable exercise equipment that provides functionality for both chin-ups and dips and is designed to be foldable for compact storage.
- Key Procedural History: This action arises from several Amazon Infringement Complaints filed by Defendant in or around October 2022, which caused Plaintiffs' product listings to be delisted. Plaintiffs allege that after being contacted, Defendant admitted the products do not infringe the ’752 Patent but assert they infringe the ’746 Patent, yet refused to withdraw the Amazon complaints.
Case Timeline
| Date | Event |
|---|---|
| 2020-08-01 | Priority Date for U.S. 10,898,752 and U.S. 11,484,746 Patents |
| 2021-01-26 | U.S. Patent 10,898,752 Issued |
| 2022-10-01 | Defendant files Amazon Infringement Complaints (approx. date) |
| 2022-11-01 | U.S. Patent 11,484,746 Issued |
| 2022-11-10 | Plaintiff's counsel sends letter to Defendant regarding non-infringement |
| 2022-11-11 | Defendant responds via email |
| 2022-12-02 | Complaint for Declaratory Judgment Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,898,752, "Foldable Exercise Device", issued January 26, 2021
The Invention Explained
- Problem Addressed: The patent identifies a need for home exercise equipment that is less bulky, easier to store, and provides neutral-grip parallel bars for chin-ups, which typical doorway-mounted devices fail to offer (’752 Patent, col. 1:16-28).
- The Patented Solution: The invention is a modular system comprising a chin-up apparatus and a separate dip exercise apparatus that can be suspended from it. The central innovation is that key components, such as the chin-up handles and dip station grips, can rotate between a deployed "exercise configuration" and a "flat configuration," allowing the entire device to be folded for compact storage (’752 Patent, Abstract; col. 2:52-66).
- Technical Importance: The design seeks to combine multiple exercise functions into a single piece of equipment that addresses the storage constraints common in apartments and small homes (’752 Patent, col. 1:21-28).
Key Claims at a Glance
- The complaint contests independent claims 1, 5, and 12 (Compl. ¶48).
- Independent Claim 1 recites a dip exercise apparatus comprising:
- Two vertical members with top ends for suspension from a chin-up apparatus and bottom ends with grips.
- The bottom grip "can be rotated from a flat configuration to an exercise configuration."
- A "bottom grip biasing mechanism" to hold the grip in the exercise configuration.
- A horizontal connecting member spacing the vertical members.
- In the "exercise configuration," the grips are perpendicular to the vertical members for dip exercises.
- In the "flat configuration," the grips are "substantially parallel" to the horizontal connecting member.
- The complaint reserves the right to seek judgment on other claims, including dependent claims (Compl. ¶45).
U.S. Patent No. 11,484,746, "Foldable Exercise Device", issued November 1, 2022
The Invention Explained
- Problem Addressed: Similar to its child patent, the ’746 Patent addresses the problem of home exercise equipment being bulky and difficult to store (’746 Patent, col. 1:14-20).
- The Patented Solution: This patent focuses on a foldable chin-up apparatus itself. The device includes a horizontal member with two connecting members extending from it. Each connecting member features a "door header hook and parallel chin-up handle that rotate... from a flat configuration to an exercise configuration," allowing the device to be compactly stored when not in use (’746 Patent, Abstract; col. 1:33-45).
- Technical Importance: The invention provides a door-mounted chin-up bar that includes a neutral-grip option and can be folded flat, a combination of features designed for the home fitness market (’746 Patent, col. 1:21-25).
Key Claims at a Glance
- The complaint contests independent claims 1, 8, and 14 (Compl. ¶65).
- Independent Claim 1 recites a foldable chin-up exercise device comprising:
- A horizontal member and two connecting members in the same plane.
- Each connecting member has a "door header hook and parallel chin-up handle that rotate on the connecting member from a flat configuration to an exercise configuration."
- The hook and handle are on opposite sides of the connecting members.
- In the exercise configuration, the apparatus can engage a door frame for neutral chin-ups.
- The complaint reserves the right to seek judgment on other claims, including dependent claims (Compl. ¶62).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are "identical workout equipment" sold by the various Plaintiffs under different brand names (e.g., KAKICLAY, Doeplex, Fimor) on the Amazon marketplace (Compl. ¶25).
Functionality and Market Context
The complaint alleges these are workout equipment products, and provides several images showing door-mountable chin-up bars. For example, the complaint includes an image of the "Armpow" branded product, which depicts a chin-up bar with multiple grip positions (Compl. ¶25, p.6). The core of Plaintiffs' non-infringement argument is that their products are static and "simply not foldable" (Compl. ¶49, ¶66). The complaint states that the products were enjoying "considerable commercial success" on Amazon before being delisted as a result of Defendant's infringement complaints (Compl. ¶24, ¶35).
IV. Analysis of Infringement Allegations
This is a declaratory judgment action, and the analysis below summarizes Plaintiffs' allegations of non-infringement.
’752 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| where the bottom grip can be rotated from a flat configuration to an exercise configuration | Plaintiffs’ workout equipment products "do not have a bottom grip rotated from a flat configuration to an exercise configuration. There is no rotation capable." | ¶50 | col. 8:33-35 |
| and in the flat configuration the bottom grips and the horizontal connecting member are substantially parallel. | Plaintiffs’ products "do not meet the limitation" because they lack the ability to rotate and therefore do not have a "flat configuration" as claimed. | ¶50 | col. 8:42-44 |
’746 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| each connecting member has a door header hook and parallel chin-up handle that rotate on the connecting member from a flat configuration to an exercise configuration... | Plaintiffs' workout equipment products "do not have a door header hook and parallel chin-up handle that rotate from a flat configuration to an exercise configuration. There is no rotation capable." | ¶67 | col. 8:25-28 |
Identified Points of Contention
- Technical Question: The central dispute appears to be factual: do the accused products possess components that can "rotate" or "transition" between distinct configurations as claimed? The complaint asserts they are static structures (Compl. ¶49, ¶66). The resolution will likely depend on a physical inspection of the products.
- Scope Questions: A primary legal question will be the construction of the phrase "rotate... from a flat configuration to an exercise configuration." Does this phrase require an integrated, tool-less pivoting mechanism as depicted in the patents' embodiments, or could it be interpreted more broadly to include disassembly and reassembly?
V. Key Claim Terms for Construction
- The Term: "rotate... from a flat configuration to an exercise configuration" (and variants like "transitions")
- Context and Importance: This functional language appears in the independent claims of both patents-in-suit and is the foundation of Plaintiffs' non-infringement arguments (Compl. ¶50, ¶67). The viability of the non-infringement case rests almost entirely on whether the accused products perform this claimed function. Practitioners may focus on this term because its construction will likely be dispositive.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party seeking a broader construction might argue that the claim language itself does not specify the mechanism of rotation, only the end states. They might contend that any method of changing the components' orientation between the two defined configurations meets the claim language.
- Evidence for a Narrower Interpretation: The specifications of both patents describe specific biasing mechanisms with sleeves, pins, and detents designed to facilitate this rotation and lock the components in place (’752 Patent, Abstract; col. 4:51-67; ’746 Patent, col. 4:39-58). The detailed description of these mechanisms in the preferred embodiments may be used to argue that the term "rotate" should be construed to require a built-in, integrated pivoting function, rather than simple assembly or disassembly.
VI. Other Allegations
- Tortious Interference: The complaint includes counts for tortious interference with contract and with prospective business expectancy (Compl. ¶¶ 71-81). Plaintiffs allege that Defendant knew of their contractual and business relationships with Amazon and the public (Compl. ¶73, ¶79). It is alleged that Defendant intentionally and unjustifiably interfered with these relationships by filing "bad faith" and "objectively false" Amazon Infringement Complaints, knowing the products were not infringing, which caused Plaintiffs' products to be removed from the marketplace and resulted in economic harm (Compl. ¶74-76, ¶80-81).
- Bad Faith / Exceptional Case: Plaintiffs allege that Defendant's Amazon complaints were filed in "bad faith" and that Defendant made "knowingly and objectively false" allegations (Compl. ¶29, ¶34). These allegations form the basis for Plaintiffs' request for a declaration that the case is exceptional and an award of attorney fees pursuant to 35 U.S.C. § 285 (Compl. ¶18.e).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of claim construction and technical fact: What is the proper scope of the claim term "rotate... from a flat configuration to an exercise configuration"? And do the accused products, as physically constructed, perform this function? The case may turn on whether the patents' detailed descriptions of pivoting mechanisms limit the claims to devices with integrated folding capabilities.
- A key evidentiary question will be one of litigation conduct: Can Plaintiffs prove that Defendant acted in "bad faith" by filing the Amazon Infringement Complaints? The resolution will depend on evidence of Defendant's knowledge and intent, particularly the alleged admission that the products do not infringe the ’752 patent, which will be critical for both the tortious interference claims and the request for exceptional case status under § 285.
- Finally, the case presents a parallel question of patent validity: Independent of the infringement dispute, can Plaintiffs demonstrate with clear and convincing evidence that the asserted claims of the ’752 and ’746 patents are anticipated by the prior art references identified in the complaint?