DCT

1:24-cv-05331

Dongguan Chongli Trading Co Ltd v. Shenzhen Huamingjun Rubber Co Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:24-cv-05331, N.D. Ill., 07/01/2024
  • Venue Allegations: Venue is asserted based on Defendant's business activities targeting consumers in the United States, including Illinois, through interactive e-commerce platforms such as Amazon, with alleged sales and shipping to Illinois residents.
  • Core Dispute: Plaintiffs, a group of online sellers, seek a declaratory judgment that Defendant's patent is unenforceable due to inequitable conduct, invalid, and not infringed by their reusable water ball products, following Defendant's patent infringement complaints to Amazon.
  • Technical Context: The technology concerns reusable, self-sealing toy water balls that employ magnets to form a water-tight cavity, offered as a durable and environmentally friendly alternative to single-use water balloons.
  • Key Procedural History: This declaratory judgment action was precipitated by Defendant’s filing of a patent infringement complaint with Amazon, which could lead to the de-listing of Plaintiffs' products. The complaint alleges the patent is invalid due to derivation of inventorship from Plaintiffs' supplier ("Saien") and an on-sale bar based on public sales of the product more than one year prior to the patent's effective filing date. The complaint also alleges the patent is unenforceable for inequitable conduct, based on the applicant's alleged failure to disclose material prior art and misrepresentations regarding inventorship to the USPTO. The patent application was notably expedited through the USPTO's Track One Prioritized Patent Examination Program.

Case Timeline

Date Event
2020-08-29 Plaintiffs' supplier allegedly develops "R0 Version" of water ball.
2022-04-20 Plaintiffs' supplier allegedly develops "R15 Version" of water ball.
2022-07-11 Amazon customer review allegedly shows public sale of R15 product.
2022-07-24 YouTube video allegedly introduces R15 product version.
2023-04-07 U.S. Patent No. 11,786,835 Priority Date (via CN application).
2023-05-24 U.S. Patent No. 11,786,835 Application Filing Date.
2023-10-17 U.S. Patent No. 11,786,835 Issue Date.
2024-06-24 Plaintiffs allegedly receive infringement notice emails from Amazon.
2024-07-01 Complaint Filing Date.

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

U.S. Patent No. 11,786,835 - "Toy water ball"

  • 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 section describes an issue with prior art reusable water balls where the magnets used for closure could be stressed and "come out of the notch of the installation grooves during water fights," causing the toy to fail and diminishing user experience (’835 Patent, col. 1:32-42).
  • The Patented Solution: The invention proposes a specific construction to secure the magnets. It comprises at least two shells, each with a flexible "mounting frame" and a "water pocket." The mounting frame has an "accommodation groove" on its first surface to hold a magnet. The flexible water pocket is then connected over this first surface, covering the groove's opening and thereby sealing the magnet within the frame. This configuration is intended to prevent the magnet from becoming dislodged or getting wet and rusting (’835 Patent, Abstract; col. 4:45-60).
  • Technical Importance: This design purports to enhance the durability and extend the service life of reusable magnetic water toys by providing a more robust method for securing the magnetic closing mechanism (’835 Patent, col. 3:11-18).

Key Claims at a Glance

  • The complaint does not specify which claims Defendant asserted to Amazon. The analysis focuses on the sole independent claim, Claim 1.
  • Essential elements of Independent Claim 1 include:
    • At least two shells forming a water storage cavity.
    • Each shell has a mounting frame, a magnetic member, and a water pocket.
    • The mounting frame has an accommodation groove on a 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 groove, thereby sealing the magnetic member within the mounting frame.
  • The complaint seeks a declaration of non-infringement for the entire ’835 Patent (Compl. ¶[Prayer] 4).

III. The Accused Instrumentality

Product Identification

  • The products are Plaintiffs' "re-usable water ball" toys sold on Amazon (Compl. ¶15-16). The complaint specifically identifies the "R15 Version" developed by Plaintiffs' supplier, Dongguan Saien Chuangke Technology Co., Ltd ("Saien"), as the product that was allegedly sold publicly before the patent's priority date and whose design the patent "mirrors" (Compl. ¶19, 21, 22).

Functionality and Market Context

  • The products are self-sealing water toys that use magnets to close two halves of a sphere, creating a water-retaining cavity (Compl. ¶20). The complaint details a multi-year, multi-version development history for the product by Saien, culminating in the R15 version which allegedly modified the "structure for fixing the magnets" to address manufacturing issues (Compl. ¶20.p). The complaint alleges these are "good selling products" whose market presence is threatened by Defendant's infringement assertions to Amazon (Compl. ¶2). The complaint provides an image of the "R15 Version," alleging its magnet-fixing structure was misappropriated by the patentee (Compl. p. 13).

IV. Analysis of Infringement Allegations

The complaint, being a declaratory judgment action, does not contain a claim chart or a detailed infringement theory. It states that Defendant filed a patent infringement complaint with Amazon (Compl. ¶15) and that Defendant "purports to be the owner of a patent '835 Patent allegedly" covering a toy water ball with shells, a mounting frame, and a magnetic member (Compl. ¶18).

The complaint's primary assertion is not a detailed rebuttal of an infringement read, but rather an argument that any such read is moot because the patent is invalid and unenforceable. The complaint alleges that the ’835 Patent "mirrors the design of the R15 Version" (Compl. ¶21), which, while potentially serving as an admission for establishing declaratory judgment jurisdiction, is framed as evidence of copying and derivation of inventorship. An Amazon customer review dated July 11, 2022, is provided as evidence of prior public sale of the allegedly inventive product (Compl. p. 14).

  • Identified Points of Contention: The core of the dispute, as framed by the complaint, revolves around patent validity and enforceability rather than claim construction or technical infringement.
    • Inventorship and Derivation: A central question is whether the named inventor, Bin Xiong, is the true inventor or if, as alleged, the invention was derived from the prior work of Plaintiffs' supplier, Saien (Compl. ¶19, 28, 46).
    • Public Use/On-Sale Bar: The case raises the question of whether Saien's alleged commercial activities in 2022, including sales via Amazon and product videos on YouTube, constitute an invalidating public use or on-sale bar under 35 U.S.C. § 102 against the ’835 Patent, which claims a priority date of April 7, 2023 (Compl. ¶22, 51).
    • Inequitable Conduct: The complaint raises the question of whether the applicant intentionally withheld material information from the USPTO, such as Saien's prior products and foreign patent applications, with an intent to deceive the office (Compl. ¶37, 43).

V. Key Claim Terms for Construction

While the complaint focuses on invalidity, the construction of certain claim terms could become relevant if the case proceeds.

  • The Term: "seal the magnetic member in the mounting frame"
  • Context and Importance: This phrase captures the core of the purported inventive concept. Its construction is critical because it defines the required relationship between the water pocket, the mounting frame, and the magnet. Practitioners may focus on this term because its definition—whether it requires a simple physical enclosure or a complete hermetic/waterproof barrier—will determine the scope of the claim and could be dispositive on the issue of infringement.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent states the water pocket "covers the notch" to "seal the magnetic member," which could be interpreted as merely enclosing or physically trapping the magnet to prevent it from "com[ing] out of the installation groove" ('835 Patent, col. 4:49-54). This reading focuses on the physical restraint aspect.
    • Evidence for a Narrower Interpretation: The specification repeatedly highlights that a benefit of the structure is to "prevent[] the magnetic member 120 from getting wet" and rusting ('835 Patent, col. 4:55-57). This purpose suggests "seal" implies a more stringent, water-resistant or waterproof function, which would narrow the claim's scope.

VI. Other Allegations

The complaint contains affirmative claims for declaratory relief based on the following patent-specific allegations:

  • Inequitable Conduct (Count I): The complaint alleges the patent is unenforceable due to inequitable conduct. The factual bases asserted include that the patent applicant, Bin Xiong, was not the true inventor and thus filed a false inventor's oath (Compl. ¶38), and that the applicant and Defendant intentionally concealed material prior art from the USPTO with an intent to deceive (Compl. ¶43). The allegedly concealed prior art includes Saien's pre-existing products and its own patent applications in China and other jurisdictions (Compl. ¶23, 37, 43).
  • Invalidity (Count II): The complaint alleges the ’835 Patent is invalid under 35 U.S.C. § 102 (anticipation) and § 103 (obviousness). The primary basis is the alleged prior invention, public disclosure, and commercial sale of the "Saien R15 Version" product, which allegedly occurred more than one year before the patent’s priority date (Compl. ¶51-52).

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

This declaratory judgment action appears poised to turn on fundamental questions of patent validity and enforceability, rather than nuanced claim construction. The key issues for the court will likely be:

  1. A threshold question of inventorship and derivation: Will discovery substantiate the claim that the patented invention was derived from Plaintiffs' supplier, Saien, rather than being independently conceived by the named inventor, potentially rendering the patent invalid for improper inventorship?
  2. An evidentiary question of prior public activity: Does the evidence of online sales, customer reviews, and marketing videos from 2022 constitute clear and convincing proof of an invalidating on-sale or public use bar under 35 U.S.C. § 102, given the patent's April 2023 priority date?
  3. A question of patentee conduct: Can Plaintiffs demonstrate by clear and convincing evidence that the patent applicant knew of material prior art (i.e., Saien's products) and withheld it from the USPTO with a specific intent to deceive, which would render the patent unenforceable for inequitable conduct?