DCT
1:24-cv-05225
Taiyuan Feishang Trading Co Ltd v. Shenzhen Huamingjun Rubber Co Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Taiyuan Feishang Trading Co., Ltd. (China)
- Defendant: Shenzhen Huamingjun Rubber Co. Ltd. (China)
- Plaintiff’s Counsel: Glacier Law LLP
- Case Identification: 1:24-cv-05225, N.D. Ill., 06/24/2024
- Venue Allegations: Plaintiff alleges venue is proper because Defendant targets business activities toward consumers in Illinois through the e-commerce platform Amazon, has sold products to Illinois residents, and wrongfully accused Plaintiff of infringement in the United States, including Illinois.
- 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 sealing water balloons, a segment of the toy market focused on providing an environmentally friendly alternative to single-use water balloons.
- Key Procedural History: The dispute arose from Defendant's patent infringement complaint filed with Amazon against Plaintiff's products. The complaint alleges the patent was procured through inequitable conduct, specifically by failing to disclose material prior art and by naming an incorrect inventor. Plaintiff alleges the patented invention was developed and sold publicly by its own supplier well before the patent's priority date. The patent application was expedited through the USPTO's Track One prioritized examination program.
Case Timeline
| Date | Event |
|---|---|
| 2020-08-29 | Plaintiff's supplier ("Saien") develops "R0 Version" |
| 2020-12-10 | Saien develops "R4 Version" with independent lobes |
| 2020-12-25 | Saien files first related Chinese patent application |
| 2022-04-20 | Saien develops "R15 Version," allegedly mirrored by the patent |
| 2022-07-11 | Alleged first public sale of Saien's R15 product (via Amazon review) |
| 2022-07-24 | YouTube video allegedly showing Saien's R15 product published |
| 2023-04-07 | '835 Patent Priority Date (based on Chinese application) |
| 2023-05-18 | Named inventor Bin Xiong signs declaration of originality |
| 2023-05-24 | '835 Patent U.S. application filed |
| 2023-10-17 | U.S. Patent No. 11,786,835 issues |
| 2024-06-19 | Amazon informs Plaintiff of Defendant's infringement complaint |
| 2024-06-24 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,786,835 - "Toy water ball"
Issued October 17, 2023
The Invention Explained
- Problem Addressed: The patent's background describes an issue with prior art reusable water balls where the magnets used for sealing them are prone to being stressed and dislodging from their installation grooves during use, causing the toy to fail (U.S. Patent No. 11,786,835, col. 1:33-41).
- The Patented Solution: The invention proposes a structure where each half-shell of the water ball has a "mounting frame" with an "accommodation groove" to hold a magnet. A flexible "water pocket" is then connected over this frame, covering the opening (notch) of the groove. This design purports to "seal the magnetic member in the mounting frame," preventing it from falling out during use and protecting it from water and rust (U.S. Patent No. 11,786,835, col. 4:45-60; Abstract).
- Technical Importance: This design seeks to improve the durability and service life of reusable magnetic water toys by more securely retaining the magnetic closing mechanism within the toy's structure (U.S. Patent No. 11,786,835, col. 3:15-18).
Key Claims at a Glance
- The complaint does not specify which claims were asserted by Defendant on Amazon, but its invalidity allegations appear to target the patent's core claims (Compl. ¶45). The analysis focuses on Independent Claim 1, which defines the fundamental structure.
- 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 and is provided with an accommodation groove, with a notch for the groove 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 each other.
III. The Accused Instrumentality
Product Identification
- The complaint identifies four of Plaintiff's products by Amazon Standard Identification Numbers (ASINs): B0CSD97JXW, B0CSD8P4W8, 0CSDCHKCV, and B0CSD8YPSX (Compl. ¶9).
Functionality and Market Context
- The complaint alleges these products are based on the "R15 Version" design developed by Plaintiff's supplier, Dongguan Saien Chuangke Technology Co., Ltd (“Saien”) (Compl. ¶13, ¶15). The complaint provides a detailed design history for Saien's products, culminating in the R15 Version, which allegedly features a modified structure for fixing magnets to address issues in mass production (Compl. ¶14p). The complaint asserts that the R15 version began sales as early as July 2022, citing an Amazon customer review as evidence (Compl. ¶16). A screenshot from the complaint shows the R15 version, which appears as two hemispherical shells joined by a flexible bridge, with embedded magnets for sealing. (Compl. p.12). The complaint contends that Saien's product had "excellent market performance," which motivated the Defendant to file a patent on the design (Compl. ¶27).
IV. Analysis of Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement and invalidity. The infringement theory is that which Defendant presumably asserted to Amazon. The invalidity theory is based on the allegation that Saien's R15 product, which Plaintiff sells, is identical to the patented invention and constitutes invalidating prior art. The following table maps the elements of the patent's claim to the features of the Saien R15 product as described in the complaint.
'835 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality (based on Saien 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 Saien R15 product consists of two hemispherical shells that connect to form a sphere for holding water. An image in the complaint shows the two-shell structure. (Compl. p.12) | ¶14p, ¶15 | col. 9:51-53 |
| each of the shells comprising: a mounting frame, a magnetic member and a water pocket, | The complaint alleges the '835 Patent "mirrors the design of the R15 Version," which includes magnets fixed within a structure. The complaint's images depict a distinct frame holding magnets, covered by a flexible outer shell. (Compl. p.12) | ¶15, ¶14p | col. 9:54-56 |
| the mounting frame being provided with an accommodation groove, a notch of the accommodation groove being located on the first surface, | The R15 design allegedly modified the structure for "fixing the magnets," which would necessitate a groove or pocket in the underlying frame to hold them in place during molding or assembly. | ¶14p | col. 9:60-62 |
| the magnetic member being installed in the accommodation groove, | The R15 design involves fixing magnets in the structure, as shown in detailed design images provided in the complaint. A diagram shows magnets (purple) set into recesses in a frame. (Compl. p.12) | ¶14p, ¶15 | col. 9:63-64 |
| 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; | The R15 Version is shown to have a silicone body molded over an inner frame that holds the magnets, thereby covering and sealing them within the structure. The complaint shows this evolution from earlier versions where magnets were manually assembled. (Compl. ¶14d, ¶14m) | ¶14p, ¶15 | col. 9:65-67; col. 10:1-2 |
Identified Points of Contention
- Invalidity: The central dispute is whether Saien's R15 product was in public use or on sale in the U.S. more than one year prior to the patent's effective filing date (April 7, 2023). The complaint presents an Amazon review from July 11, 2022, as evidence of a prior sale, which, if substantiated, could invalidate the patent under 35 U.S.C. § 102(b) (Compl. ¶16, ¶45).
- Inventorship: The complaint raises a direct challenge to inventorship, alleging that the named inventor, Bin Xiong, is not the actual inventor and that the invention was "stolen" from Plaintiff's supplier, Saien (Compl. ¶13, ¶22, ¶40). Proving derivation will be a key factual question for the court.
V. Key Claim Terms for Construction
- The Term: "to seal the magnetic member in the mounting frame"
- Context and Importance: This functional language is at the heart of the patent's purported solution to the prior art problem of magnets falling out. The definition of "seal" will be critical. The Plaintiff's invalidity case rests on its supplier's R15 product meeting this limitation. Practitioners may focus on whether "seal" implies a hermetic, waterproof enclosure or simply a mechanical capture that prevents the magnet from dislodging.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation (Mechanical Capture): The main purpose described is to solve the problem of magnets "to be stressed and come out of the notch" (U.S. Patent No. 11,786,835, col. 1:38-39). This suggests the primary function of "seal" is mechanical retention, not necessarily a perfect waterproof barrier.
- Evidence for a Narrower Interpretation (Waterproof Seal): The specification also notes that the claimed structure "prevents the magnetic member 120 from getting wet," which would prevent rust and extend the product's service life (U.S. Patent No. 11,786,835, col. 4:53-58). This language could support a narrower construction requiring a waterproof or water-resistant seal.
VI. Other Allegations
- Inequitable Conduct: The complaint makes extensive allegations that form the basis for a claim of inequitable conduct (Compl. ¶¶29-41). It alleges the "Defendant Group" (the inventor, a prior assignee, and the Defendant) knew about Saien's prior art products and its Chinese and U.S. patent applications but intentionally concealed this material information from the USPTO with an intent to deceive (Compl. ¶33, ¶37). The complaint points to the alleged personal relationship between the owners of Defendant and Plaintiff's supplier ("classmates") as evidence of knowledge (Compl. ¶33).
- Willful Infringement: This is a DJ action, so willfulness is not alleged against the Plaintiff. However, Plaintiff seeks a declaration that this is an exceptional case under 35 U.S.C. § 285, which would entitle it to attorneys' fees (Compl., Prayer for Relief ¶7). The basis for this claim is the allegation that Defendant engaged in fraudulent and inequitable conduct before the USPTO and then brought "frivolous and spurious" infringement complaints on Amazon (Compl. ¶57).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this case appears to depend on three key questions, two of which are intensely factual and may turn on evidence of the parties' conduct in China.
- A core issue will be one of inventorship and derivation: Can Plaintiff prove with clear and convincing evidence that the named inventor, Bin Xiong, did not invent the claimed subject matter but instead derived it from Plaintiff’s supplier, Saien? This will likely involve discovery into the relationship between the parties and the development history of their respective products.
- A second key issue is one of statutory prior art: Does the evidence presented, such as the Amazon review from July 2022, definitively establish that the Saien R15 product was "on sale" in the United States more than one year before the patent’s April 2023 priority date, thereby rendering the patent invalid under the on-sale bar of 35 U.S.C. § 102?
- A final question is one of intent and materiality: If the Saien products are found to be material prior art, can Plaintiff prove by clear and convincing evidence that Defendant’s failure to disclose them to the USPTO was done with a specific intent to deceive, which would render the patent unenforceable for inequitable conduct?