DCT
1:24-cv-02943
Dongguan Saien Chuangke Technology Co., Ltd. v. Shenzhen Huamingjun Rubber Co. Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Dongguan Saien Chuangke Technology Co., Ltd. (People's Republic of China)
- Defendant: Shenzhen Huamingjun Rubber Co., Ltd. (People's Republic of China)
- Plaintiff’s Counsel: Glacier Law LLP
- Case Identification: 1:24-cv-02943, N.D. Ill., 04/11/2024
- Venue Allegations: Plaintiff alleges venue is proper because both parties do business in the district through online marketplaces such as Amazon, and Defendant has targeted sales to Illinois residents.
- Core Dispute: Plaintiff seeks a declaratory judgment that Defendant's patent for a reusable toy water ball is invalid, unenforceable due to inequitable conduct, and not infringed by Plaintiff's products.
- Technical Context: The technology concerns reusable, magnetically sealed water balloons, designed as an environmentally friendly alternative to single-use water balloons for recreational use.
- Key Procedural History: Plaintiff alleges its own extensive product development and public sales history, predating the patent-in-suit's priority date, forms the basis for invalidity. The complaint asserts that the patent applicant utilized the USPTO's prioritized "TrackOne" examination program to expedite prosecution and failed to disclose Plaintiff’s pre-existing products and patent applications to the USPTO, which Plaintiff alleges constitutes inequitable conduct.
Case Timeline
| Date | Event |
|---|---|
| 2020-08-29 | Plaintiff alleges development of its "R0 Version" water balloon (Compl. ¶12.a). |
| 2022-04-20 | Plaintiff alleges development of its "R15 Version" water balloon (Compl. ¶12.p). |
| 2022-07-11 | Earliest dated public evidence of Plaintiff's R15 product sale (Amazon customer review) (Compl. ¶14.a). |
| 2022-09-02 | Article published introducing Plaintiff's R15 product (Compl. ¶14.c). |
| 2023-04-07 | '835 Patent priority date, based on Chinese application CN 202320769008.9 (Compl. ¶8; ’835 Patent, p.1). |
| 2023-05-24 | '835 Patent U.S. application filing date (Compl. ¶8; ’835 Patent, p.1). |
| 2023-10-17 | '835 Patent issues (Compl. ¶28; ’835 Patent, p.1). |
| 2024-04-11 | Complaint for Declaratory Judgment filed (Compl. p.1). |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 11,786,835, "Toy water ball," issued October 17, 2023.
The Invention Explained
- Problem Addressed: The patent's background describes prior art recyclable toy water balls where magnetic members, used to hold the shells together, were prone to becoming stressed and dislodging from their installation grooves during use, causing the toy to fail (’835 Patent, col. 1:32-41).
- The Patented Solution: The invention proposes a design where each shell has a "mounting frame" with an "accommodation groove" to hold a magnet. A flexible "water pocket" is connected to the frame and covers the opening ("notch") of the groove, thereby sealing the magnet within the frame (’835 Patent, Abstract; col. 3:6-14). This structure is intended to prevent the magnet from falling out under force and to protect it from rusting (’835 Patent, col. 4:50-57).
- Technical Importance: This design aims to improve the durability and service life of reusable magnetic water toys by better securing the closure mechanism.
Key Claims at a Glance
- The complaint seeks a declaration of invalidity and non-infringement of the patent generally, with Independent Claim 1 being representative.
- Independent Claim 1:
- A toy water ball comprising at least two shells enclosable to form a water storage cavity.
- Each shell comprises a mounting frame, a magnetic member, and a water pocket.
- The mounting frame has a first and second surface.
- The mounting frame has an accommodation groove with a notch located on the first surface.
- The magnetic member is installed in the accommodation groove.
- The water pocket is connected to the first surface and covers the notch of the accommodation groove to seal the magnetic member in the mounting frame.
- When enclosed, magnetic members of adjacent shells attract, and second surfaces of adjacent mounting frames abut each other.
III. The Accused Instrumentality
Product Identification
- Plaintiff's "R15 Version" of its reusable water balloon product (Compl. ¶13).
Functionality and Market Context
- The complaint describes the R15 Version as the culmination of at least 15 design iterations beginning in 2020 (Compl. ¶12). The design allegedly features a structure for fixing magnets to address issues of "magnet floating during mass production" (Compl. ¶12.p).
- The complaint alleges that the R15 Version was sold publicly on platforms like Amazon as early as July 2022 (Compl. ¶14.a). An image from an Amazon review shows the product being used (Compl. p.13). The complaint asserts that the Defendant became aware of the R15 Version's "excellent market performance" and then filed for the '835 Patent (Compl. ¶25).
- Crucially, the complaint alleges that the '835 Patent "mirrors the design of the R15 Version," providing detailed visuals of the R15 product to support this claim (Compl. ¶13). One visual is a CAD drawing showing the two halves of the R15 product's frame with magnet placement slots (Compl. p.12).
IV. Analysis of Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement but focuses its factual allegations on invalidity, asserting that the '835 Patent "mirrors the design of the R15 Version" (Compl. ¶13). This creates the "actual controversy" for jurisdiction. The following table summarizes how the Plaintiff's R15 Version, as described and depicted in the complaint, corresponds to the elements of the patent's lead claim.
'835 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality (Plaintiff's R15 Version) | Complaint Citation | Patent Citation |
|---|---|---|---|
| A toy water ball, comprising: at least two shells that are enclosable to form a water storage cavity | The R15 Version is a reusable water balloon composed of two halves that form a sphere (Compl. p.12). | ¶12.p; p.12 | col. 4:18-21 |
| each of the shells comprising: a mounting frame, a magnetic member and a water pocket | The R15 Version has a frame structure for fixing magnets and a silicone body that forms the water pocket (Compl. p.12). | ¶12.p | col. 4:19-22 |
| the mounting frame being provided with an accommodation groove, a notch of the accommodation groove being located on the first surface | CAD drawings of the R15 Version show slots in the frame for holding magnets (Compl. p.12). | ¶12.p; p.12 | col. 4:23-26 |
| the magnetic member being installed in the accommodation groove | The R15 Version was modified "to address issues such as magnet floating," with a modified structure for "fixing the magnets" (Compl. p.12). | ¶12.p | col. 4:25-26 |
| the water pocket being connected to the first surface, and covering the notch of the accommodation groove on the first surface to seal the magnetic member in the mounting frame | Plaintiff alleges its design involves embedding magnets into molded components to form the silicone water balloon body, which could be interpreted as sealing the magnet. A CAD drawing depicts the frame and magnet slots (Compl. p.12). | ¶12.a; ¶12.p | col. 4:26-29 |
Identified Points of Contention
- Scope Questions: Because the complaint alleges the patent "mirrors" the R15 product, the primary dispute is not one of infringement scope but of patent validity. The core question is whether the R15 product, as allegedly sold in 2022, embodies every element of the asserted claims.
- Technical Questions: The central technical question for the invalidity analysis will be whether the public disclosures of Plaintiff's R15 Version (e.g., via Amazon sales, YouTube videos) were sufficiently detailed to teach one of ordinary skill in the art the specific "sealing" mechanism recited in Claim 1. The complaint includes a close-up image from a YouTube video review highlighting the magnet-holding structure of the R15 Version (Compl. p.14).
V. Key Claim Terms for Construction
- The Term: "covering the notch ... to seal the magnetic member"
- Context and Importance: This phrase captures the core of the purported invention: solving the problem of magnets falling out. The definition of "seal" will be critical. If Plaintiff's prior art R15 product is found to "seal" the magnet in the same way claimed by the patent, the patent may be invalid. Practitioners may focus on this term to determine if the protection offered by the R15 Version's structure is coextensive with the "sealing" function claimed in the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states the water pocket "covers the notch... to seal the magnetic member in the mounting frame," which prevents it from being "easy to come out" and from getting wet (’835 Patent, col. 4:48-57). This could support an interpretation where any form of covering that achieves these functional results constitutes "sealing."
- Evidence for a Narrower Interpretation: The patent repeatedly describes the water pocket being processed "onto the mounting frame" after the magnet is placed inside (’835 Patent, col. 6:21-25). A defendant could argue this implies a specific manufacturing process, such as overmolding, is required to achieve the claimed "seal," potentially narrowing the claim scope to exclude products made differently.
VI. Other Allegations
Inequitable Conduct
The complaint makes extensive allegations of inequitable conduct, which, if proven, would render the '835 Patent unenforceable (Compl. ¶¶ 29-42). The core allegations are:
- Improper Inventorship: Plaintiff alleges that it, not the named inventor Bin Xiong, is the true inventor of the technology (Compl. ¶20, 32).
- Failure to Disclose Material Prior Art: The complaint alleges the applicant and its associates knew of Plaintiff's prior art products (the R15 Version) and its numerous patent applications but intentionally withheld this information from the USPTO (Compl. ¶16, 37).
- Intent to Deceive: The complaint alleges specific intent based on the defendant's alleged awareness of the plaintiff's product's market success (Compl. ¶25) and a personal relationship between the owners of the plaintiff and defendant companies, who are alleged to be former classmates (Compl. ¶21, 33).
VII. Analyst’s Conclusion: Key Questions for the Case
- Validity over Prior Public Use: The central issue is one of anticipation. Can the Plaintiff provide clear and convincing evidence that its "R15 Version" product was publicly used or on sale in the U.S. before the patent's April 7, 2023 priority date, and that this prior art product contained every element of the asserted claims? The Amazon reviews and YouTube videos cited in the complaint will be critical evidence.
- Enforceability and Inventorship: A key question for the court will be whether the Plaintiff can prove inequitable conduct. This will require showing not only that the named inventor failed to disclose material prior art (such as the R15 product), but that this failure was done with a specific intent to deceive the USPTO. The allegations of direct copying and personal relationships between the parties' principals will be central to the inquiry of intent.