Shenzhen Yuanyun Acoustic Technology Co Ltd v. Waters Industries Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Shenzhen Yuanyun Acoustic Technology Co. Ltd., et al. (People's Republic of China)
  • Defendant: Waters Industries, Inc. (Illinois)
  • Plaintiff’s Counsel: Glacier Law LLP
• Case Identification: 1:24-cv-05548, N.D. Ill., 07/01/2024
• Venue Allegations: Venue is alleged to be proper as the Defendant is a company organized in and located in the Northern District of Illinois.
• Core Dispute: Plaintiffs, a group of online sellers, seek a declaratory judgment that their "Lighted Hats" do not infringe Defendant's patent on lighted headgear and that the patent is invalid, following infringement complaints filed by the Defendant on the Amazon marketplace.
• Technical Context: The technology concerns wearable lighting, specifically headgear such as baseball-style caps that incorporate removable, self-contained light modules.
• Key Procedural History: The action was prompted by notifications from Amazon.com, beginning in May 2024, informing Plaintiffs that their product listings for "Lighted Hats" were removed due to infringement complaints lodged by the Defendant. These takedown notices form the basis for the Plaintiffs’ claim of an actual and justiciable controversy necessary for a declaratory judgment action.

Case Timeline

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

• 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 addresses the need for hands-free lighting, noting that holding a conventional flashlight can be cumbersome and detract from a task. The invention aims to improve upon existing lighted headgear. ('035 Patent, col. 1:25-34).
• The Patented Solution: The patent discloses lighted headgear featuring removable, self-contained light modules. These modules house light sources (e.g., LEDs) and a power source (e.g., rechargeable batteries) and are designed to be removably secured to a cap, for instance through a clip-on mechanism or a sliding engagement with the cap's brim. ('035 Patent, Abstract; col. 9:46-53, FIG. 21). This modular approach allows for flexibility and convenience.
• Technical Importance: The invention provides a modular system where a light source can be detached from headgear, allowing the hat to be worn normally or the light module to be used separately or with other apparel, a key feature for recreational activities like camping or fishing. ('035 Patent, col. 1:42-46).

Key Claims at a Glance

• The complaint asserts non-infringement and invalidity of claims 1-6, with a focus on independent claim 1 (Compl. ¶¶ 50, 58).
• Independent Claim 1 of the ’035 Patent requires:
  • A cap configured to be worn by a user.
  • A self-contained light module removably securable to the cap, including a housing, a plurality of light sources, and a rechargeable power source.
  • The self-contained light module is slidable in a first direction to form a friction-fit engagement with the cap.
  • The module is slidable in a second, opposite direction to be removed.
  • The module is removably securable in both a first forward-facing orientation and a second forward-facing orientation rotated 180 degrees from the first.
  • The housing includes opposite first and second cap-engaging walls configured for engagement with the cap.
• The complaint notes that dependent claims 2-6 cannot be infringed if independent claim 1 is not infringed (Compl. ¶53).

III. The Accused Instrumentality

Product Identification

• The accused instrumentalities are various "Lighted Hats" sold by the Plaintiffs on the Amazon marketplace, identified in the complaint by numerous Amazon Standard Identification Numbers (ASINs) (Compl. ¶¶ 21, 23, 25, et al.).

Functionality and Market Context

• The complaint alleges that the Plaintiffs' "Lighted Hats" are designed for brimless hats (Compl. ¶51).
• The core of the non-infringement argument rests on the attachment mechanism. The complaint states the accused products' light modules are not "slidable" but are instead equipped with 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. ¶51).
• The complaint highlights the commercial importance of the Amazon marketplace as the Plaintiffs' "primary sales channel into the United States," alleging significant harm from the delisting of their products (Compl. ¶43).

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint seeks a declaratory judgment of non-infringement, arguing that the accused "Lighted Hats" have an entirely different structure from what is claimed. The complaint references a non-infringement chart in an exhibit not provided with the filing; the analysis below is based on the narrative allegations.

'035 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: The central dispute concerns the meaning of "slidable" and "friction-fit engagement." The case will question whether a mechanism that uses a stretched "elastic rubber ring" to apply "radial force" falls within the scope of a "slidable" module that achieves a "friction-fit engagement," as recited in the claim.
  • Technical Questions: A key factual question is how the accused products actually function. The complaint's description of an "elastic rubber ring" suggests a securing method based on tension rather than the surface-to-surface sliding friction implied by the patent's language and figures (e.g., FIGS. 42-45). Evidence will be needed to establish the precise operational nature of both the claimed invention and the accused products.

V. Key Claim Terms for Construction

• The Term: "slidable"

• Context and Importance: This term is at the heart of the non-infringement dispute. Plaintiffs contend their products, which allegedly use an elastic ring, are not "slidable." The patentee (Defendant) would need to argue for a construction of "slidable" that encompasses the accused mechanism.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The patent uses "slidable" in various contexts, which a patentee might argue supports a general meaning of "movable along a surface." For example, a door is described as "slidably attached" to a base portion of a light source (Compl. ¶62(c), citing the Dae prior art patent). The patentee may argue any mechanism allowing movement into a secured position qualifies.
  • Evidence for a Narrower Interpretation: The patent specification includes figures explicitly titled as showing a "slidable light module" (e.g., FIGS. 42-45), which depict a device moving linearly along a track. Plaintiffs will likely argue these specific embodiments limit the term "slidable" to a linear, track-based motion, thereby excluding their elastic ring mechanism.

• The Term: "friction-fit engagement"

• Context and Importance: This term is directly linked to "slidable" in the claim. Plaintiffs argue their "radial force" mechanism is distinct from a "friction-fit engagement." The definition will determine if different types of securing forces are encompassed by the claim.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: A patentee might argue that any secure connection that relies on the force of friction between two surfaces, however generated, constitutes a "friction-fit engagement."
  • Evidence for a Narrower Interpretation: Claim 1 explicitly links the "friction-fit engagement" to the action of being "slidable." Plaintiffs will likely argue that this requires the friction to be generated by the sliding action itself, rather than by a separate tensional force from an elastic ring. The specification also discusses features like "brim-engaging teeth" and "rough portion[s]" to enhance this fit, suggesting a focus on surface-on-surface friction. ('035 Patent, col. 16:47-52).

VI. Other Allegations

The complaint makes significant allegations regarding the invalidity of the ’035 Patent under 35 U.S.C. §§ 102, 103, and 112 (Compl. ¶¶ 58-65).

• Obviousness (§ 103): Plaintiffs allege that claims 1-6 are rendered obvious by several prior art references. The complaint provides detailed mappings, arguing that U.S. Patent No. 7,163,309 ("Dae") alone, or U.S. Patent No. 7,427,149 ("Sohn") in view of U.S. Patent No. 5,541,816 ("Nicholas"), discloses all elements of the claims. For instance, Plaintiffs allege Dae teaches a "clip type light emitter" that is slidable, can be inverted 180 degrees, and forms a friction-fit engagement on a hat brim (Compl. ¶62).
• Indefiniteness and Lack of Written Description (§ 112): The complaint further alleges that claim 1 is invalid under 35 U.S.C. § 112. It asserts that the terms "rechargeable" and "opposite first and second cap-engaging walls" lack adequate written description in the specification and that the term "self-contained" is indefinite (Compl. ¶64).

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

• A core issue will be one of mechanistic scope: Can the claim phrase "slidable... to form a friction-fit engagement," which the patent illustrates with linear-motion mechanisms, be construed broadly enough to cover the accused products' alleged use of a stretched "elastic rubber ring" applying "radial force"? The outcome of this claim construction will be pivotal to the non-infringement analysis.
• A second key issue will be the strength of the prior art: Do the Dae and Sohn patents, which describe slidable and clip-on lights for headwear, teach every element of the asserted claims to the level required to render the '035 patent obvious to a person of ordinary skill in the art at the time of the invention?
• A final question will be one of written support: Does the patent's specification provide sufficient description to support the full scope of key terms like "rechargeable" and "self-contained," or are these terms indefinite or inadequately described as Plaintiffs allege, potentially invalidating the claims under § 112?