DCT

1:24-cv-04682

Dongguan Kaiju Electronic Technology Co. Ltd. v. Waters Industries, Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:24-cv-04682, N.D. Ill., 06/10/2024
  • Venue Allegations: Venue is asserted based on Defendants being domiciled in the judicial district.
  • Core Dispute: Plaintiffs seek a declaratory judgment that their "Lighted Hats" do not infringe Defendants' patent for lighted headgear accessories and that the patent is invalid, following Defendants' infringement reports to Amazon.com that resulted in the removal of Plaintiffs' product listings.
  • Technical Context: The technology concerns removable, self-contained lighting modules for headwear, a product category within the consumer electronics and outdoor accessories markets.
  • Key Procedural History: The current lawsuit was precipitated by infringement notifications sent by Defendants to Amazon.com in May 2024, which Plaintiffs characterize as creating a justiciable controversy requiring judicial resolution. The complaint also raises invalidity challenges based on several prior art patents and alleged deficiencies under 35 U.S.C. § 112.

Case Timeline

Date Event
2010-04-30 '035 Patent - Earliest Priority Date
2022-10-25 '035 Patent - Issue Date
2023-08-05 '035 Patent assigned to Waters Industries, Inc.
2024-05-15 Defendant sends infringement notification to Amazon regarding HIGHEVER DIRECT STORE
2024-05-18 Defendant sends infringement notification to Amazon regarding Zhonghe Fangzhi
2024-06-10 Amended Complaint for Declaratory Judgment filed

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

U.S. Patent No. 11,478,035 - "LIGHTED HEADGEAR AND ACCESSORIES THEREFOR"

  • Patent Identification: U.S. Patent No. 11,478,035, "LIGHTED HEADGEAR AND ACCESSORIES THEREFOR," issued October 25, 2022.

The Invention Explained

  • Problem Addressed: The patent's background section acknowledges the general desire for hands-free lighting and references existing lighted headgear, suggesting an aim to improve upon prior solutions ('035 Patent, col. 1:25-47).
  • The Patented Solution: The invention is a self-contained, removable light module designed for headgear. As described in the abstract and detailed description, the module contains its own light sources and power source and is configured to be slidably attached to a cap via a friction-fit engagement, such as with a clip mechanism that engages the hat's brim ('035 Patent, Abstract; col. 15:50-63; FIG. 21). A key feature is that the module is reversible, allowing it to be secured in two different forward-facing orientations that are rotated 180 degrees from each other ('035 Patent, col. 16:61-68).
  • Technical Importance: This approach provides a versatile, user-friendly lighting accessory that can be easily attached to, removed from, and reoriented on standard headwear without requiring permanent modification to the hat itself ('035 Patent, col. 7:35-46; col. 16:57-68).

Key Claims at a Glance

  • The complaint asserts non-infringement and invalidity of claims 1-6, with claim 1 being the sole independent claim (Compl. ¶¶ 21, 24, 32).
  • Independent Claim 1 requires:
    • A cap configured to be worn by a user.
    • A self-contained light module removably securable to the cap, containing a housing with multiple light sources and a rechargeable power source.
    • The light module is "slidable in a first direction to form a friction-fit engagement" with the cap and slidable in an opposite direction for removal.
    • The light module is securable in a first forward-facing orientation and a second forward-facing orientation rotated 180 degrees from the first.
    • The housing has "opposite first and second cap-engaging walls" for engagement with the cap.
  • The complaint notes that dependent claims 2-6 are also not infringed if independent claim 1 is not infringed (Compl. ¶27).

III. The Accused Instrumentality

Product Identification

  • "Lighted Hats" sold on Amazon.com by Plaintiffs Shenzhen Zhonghe Textile Co. Ltd. and HIGHEVER DIRECT STORE (Compl. ¶¶ 1, 12, 15).

Functionality and Market Context

  • The complaint alleges that the accused products are designed for "brimless hats" (Compl. ¶25).
  • The light module is allegedly secured not by a sliding friction-fit, but by an "elastic rubber ring, which needs to be stretched when installing the light module and is used to apply radial force to secure the light module" (Compl. ¶25).
  • Plaintiffs assert that their products are sold through the Amazon marketplace, which constitutes their "primary sales channel into the United States" (Compl. ¶17).

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

The complaint seeks a declaratory judgment of non-infringement. The central allegations focus on Plaintiffs' contention that their products do not meet key limitations of claim 1.

Claim Element (from Independent Claim 1) Alleged Non-Infringing Functionality Complaint Citation Patent Citation
the self-contained light module is slidable in a first direction to form a friction-fit engagement between the housing and the cap... and is slidable in a second direction opposite the first direction to remove the self-contained light module from the cap Plaintiffs' Lighted Hats are designed for brimless hats and the light module is not slidable. The module is equipped with an elastic rubber ring that is stretched to apply radial force for attachment, which Plaintiffs allege is not a "sliding" action that results in a "friction-fit engagement." ¶25 col. 44:19-27
the self-contained light module is removably securable to the cap in a first forward-facing orientation, and is removably securable to the cap in a second forward-facing orientation that is rotated 180 degrees from the first forward-facing orientation Plaintiffs allege their products have an "entirely different structure" and do not meet this limitation, flowing from the different attachment mechanism. ¶¶25-26 col. 44:28-33
  • Identified Points of Contention:
    • Scope Questions: The primary dispute over infringement will involve claim construction. A central question is: Does the term "slidable ... to form a friction-fit engagement," as used in the '035 Patent, cover an attachment method using a stretched "elastic rubber ring" that applies "radial force," as Plaintiffs allege their product does? (Compl. ¶25).
    • Technical Questions: A factual question for the court will be the precise mechanical operation of Plaintiffs' attachment mechanism. The court will need to determine if this operation falls within the scope of the patent's claims, particularly when compared to the clip-on embodiments disclosed in the patent's specification (e.g., FIG. 21).

V. Key Claim Terms for Construction

  • The Term: "slidable ... to form a friction-fit engagement"

  • Context and Importance: This term is the crux of the non-infringement argument. Plaintiffs' entire theory rests on their product's attachment mechanism (a stretched elastic ring) not being "slidable" to form a "friction-fit." The definition of this phrase could be dispositive of infringement.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: A patentee might argue the term is not limited to a specific track-and-rail system. The specification discloses a "clip-on light module" where the "mouth... slidably receive[s] the brim" ('035 Patent, col. 15:50-63; FIG. 21), suggesting "slidable" can describe the action of pushing a clip onto a surface to achieve a friction-based hold. This could support a construction covering any attachment that involves sliding one component relative to another to achieve a secure fit.
    • Evidence for a Narrower Interpretation: Plaintiffs may argue that "slidable" implies a linear motion path distinct from the act of stretching an elastic ring over a feature, which they contend relies on "radial, not sliding, force" (Compl. ¶25). The patent’s focus on brimmed caps for the clip embodiments could be used to argue the term is context-specific and does not read on the mechanism used for the alleged "brimless hats" (Compl. ¶25).

  • The Term: "rechargeable power source"

  • Context and Importance: This term is central to the complaint's validity challenge. Plaintiffs allege the term lacks adequate written description support in the specification, which could render the claims invalid under 35 U.S.C. § 112 (Compl. ¶38).

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The term appears explicitly in the independent claim and the abstract ('035 Patent, Abstract; col. 44:16-17). A patentee would likely argue that "rechargeable power source" is a well-understood term of art and that the specification need not detail every possible implementation to demonstrate possession of the invention.
    • Evidence for a Narrower Interpretation: The detailed description of the embodiments in the specification consistently refers to replaceable batteries, such as "coin-cell batteries" ('035 Patent, col. 9:41-43), and does not appear to describe a rechargeable embodiment. Plaintiffs may argue that this absence demonstrates that the inventor had not invented the "rechargeable" aspect at the time of filing, potentially creating a significant written description issue for the patentee to overcome (Compl. ¶38).

VI. Other Allegations

The complaint includes a count for a declaratory judgment of invalidity, asserting that claims 1-6 are invalid under 35 U.S.C. §§ 102, 103, and 112 (Compl. ¶¶ 30-39).

  • Anticipation/Obviousness (§§ 102/103): Plaintiffs identify three prior art patents—Dae (U.S. 7,163,309), Sohn (U.S. 7,427,149), and Nicholas (U.S. 5,541,816)—as rendering the claims invalid (Compl. ¶¶ 33-35). The complaint presents element-by-element arguments that Dae, or the combination of Sohn and Nicholas, discloses the limitations of the asserted claims (Compl. ¶¶ 36-37).
  • Indefiniteness/Written Description (§ 112): Plaintiffs allege that the terms "rechargeable," "opposite first and second cap-engaging walls," and "self-contained" lack written description or are indefinite (Compl. ¶38).

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

  • A central issue will be one of claim construction: Can the phrase "slidable... to form a friction-fit engagement," which the patent illustrates as a clip engaging a hat brim, be construed to encompass the elastic ring mechanism that Plaintiffs allege is used to attach a light module to a brimless hat?
  • A key validity question will be one of written description: Does the '035 Patent’s specification, which primarily describes embodiments with replaceable batteries, provide adequate written description support for the independent claim's requirement of a "rechargeable power source," as required by 35 U.S.C. § 112?
  • An evidentiary question will concern obviousness: Do the prior art references cited by Plaintiffs, particularly the Dae patent, disclose all elements of the asserted claims, and if not, would a person of ordinary skill in the art have been motivated to combine the teachings of Sohn and Nicholas to arrive at the claimed invention?