Yiwu Meidi E Commerce Co Ltd v. Waters Industries Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Yiwu Meidi E-commerce Co., Ltd. and Shenzhen Xinjia Yu Rubber & Plastic Co., Ltd. (People's Republic of China)
  • Defendant: Waters Industries, Inc. (Illinois)
  • Plaintiff’s Counsel: Glacier Law LLP
• Case Identification: 1:24-cv-05928, N.D. Ill., 07/13/2024
• Venue Allegations: Venue is based on Defendant being domiciled in the judicial district.
• Core Dispute: In this Declaratory Judgment action, Plaintiffs seek a ruling that their "Lighted Hats" do not infringe Defendant's patent on lighted headgear, and that the patent is invalid as obvious over prior art and indefinite.
• Technical Context: The technology concerns methods for removably attaching self-contained, powered light modules to headwear, a feature common in consumer products for hands-free illumination.
• Key Procedural History: This action was precipitated by patent infringement notifications sent by Defendant Waters Industries to Amazon.com, resulting in the removal of Plaintiffs' product listings. The complaint presents detailed invalidity contentions, asserting that the patent-in-suit is obvious in light of three prior art patents: Dae (U.S. 7,163,309), Sohn (U.S. 7,427,149), and Nicholas (U.S. 5,541,816). The complaint also raises indefiniteness and written description challenges under 35 U.S.C. § 112.

Case Timeline

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 addresses the need for hands-free lighting, noting that while light sources can be mounted to headgear, existing devices are often cumbersome and may detract from the task at hand (’035 Patent, col. 1:24-34).
• The Patented Solution: The invention provides lighted headgear with removable, self-contained light modules. These modules, containing light sources and a power source, are designed to be secured to a cap, often by sliding a clip-like structure onto the brim to create a friction-fit engagement, preserving the appearance of a traditional hat while adding illumination (’035 Patent, Abstract; col. 7:31-45).
• Technical Importance: The invention aims to offer a more integrated and aesthetically pleasing solution for lighted headwear compared to bulkier, externally mounted lights, making hands-free lighting more convenient for recreational activities like camping or fishing (’035 Patent, col. 1:41-46).

Key Claims at a Glance

• The complaint asserts non-infringement of independent claim 1 and, by extension, dependent claims 2-6 (’035 Patent, ¶¶22, 25).
• Independent Claim 1 requires:
  • A cap configured to be worn by a user.
  • A self-contained light module removably securable to the cap, the module including a housing with a plurality of light sources and a rechargeable power source.
  • The module is "slidable in a first direction to form a friction-fit engagement between the housing and the cap" for security, and "slidable in a second direction" for removal.
  • The module is securable in two different "forward-facing" orientations, one rotated 180 degrees from the other.
  • The housing includes "opposite first and second cap-engaging walls" configured for engagement with the cap.
• The complaint reserves the right to challenge any claims asserted by the Defendant.

III. The Accused Instrumentality

Product Identification

• The accused products are identified as "Lighted Hats" sold by Plaintiffs Yiwu Meidi (store name: MOXTOYU) and Xinjia Yu (store name: Attikee) on Amazon.com (Compl. ¶¶1, 4, 5).

Functionality and Market Context

• The complaint alleges the Lighted Hats are designed for brimless hats and that their light module is not slidable (Compl. ¶23).
• Instead of a sliding friction-fit, the module is secured using an "elastic rubber ring" which is stretched during installation to "apply radial force" (Compl. ¶23).
• The complaint states that the Amazon marketplace is the Plaintiffs' "primary sales channel into the United States" and that the removal of their listings causes "immediate and irreparable harm" (Compl. ¶15).

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint does not provide a traditional infringement chart but instead details a theory of non-infringement. The following table summarizes the Plaintiffs' central non-infringement argument as presented in the complaint.

'035 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: A principal dispute will be whether the claimed "slidable... friction-fit engagement" can be interpreted to read on the Plaintiffs' "elastic rubber ring" mechanism that applies "radial force." The court will need to determine if "slidable" requires a linear, translational motion as depicted in the patent's figures or if it can encompass a stretching-and-seating action.
  • Technical Questions: The complaint distinguishes its product by its use with "brimless hats." This raises the question of whether the claimed "cap" and the "cap-engaging walls" require the presence of a brim, as shown in the patent's embodiments (e.g., '035 Patent, FIG. 1, FIG. 21), or if they can apply to brimless headwear.

V. Key Claim Terms for Construction

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

  • Context and Importance: This term is the core of the non-infringement defense. The Plaintiffs' entire theory rests on their product's attachment mechanism (a stretched elastic ring applying radial force) being technically distinct from a "slidable" friction fit. Practitioners may focus on this term because its construction could be dispositive of the infringement question.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent does not appear to provide an explicit definition of "slidable" or "friction-fit engagement," which may allow for an argument that it should be given its plain and ordinary meaning, potentially covering any method where movement and friction secure an object.
    • Evidence for a Narrower Interpretation: The specification repeatedly describes and illustrates a linear, clip-like sliding motion. For example, it describes a light module with a "mouth... configured to slidably receive the brim 16 therein" ('035 Patent, col. 15:39-41, FIG. 21). The figures consistently depict a module sliding onto a cap's brim (e.g., '035 Patent, FIG. 42-45), which may support a narrower construction limited to this type of engagement.

• The Term: "self-contained"

  • Context and Importance: Plaintiffs allege this term is indefinite under 35 U.S.C. § 112 (Compl. ¶36). The patent's validity may depend on whether this term, in the context of the full claim, provides a clear and objective boundary for the scope of the invention to a person skilled in the art.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation (Sufficiently Definite): Claim 1 itself provides a definition, stating the "self-contained light module" includes "a housing having a plurality of light sources and a rechargeable power source disposed within the housing" ('035 Patent, col. 43:53-56). The patentee may argue this provides sufficient structure to render the term definite.
    • Evidence for a Narrower Interpretation (Indefinite): Plaintiffs may argue that while some components are listed, the term "self-contained" fails to specify the metes and bounds of the claimed module with reasonable certainty, leaving it unclear what other components might be included or excluded, thus failing to inform the public of the scope of the invention.

VI. Other Allegations

The complaint does not allege indirect or willful infringement against the Plaintiffs. As a Declaratory Judgment action, it instead makes allegations against the Defendant, including that the Defendant’s infringement reports to Amazon were "objectively baseless" (Compl. ¶1) and seeks a finding that the case is "exceptional" to recover attorneys' fees (Compl. Prayer for Relief ¶D).

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

This case appears to center on three fundamental questions for the court's determination:

1. A core issue will be one of claim construction and infringement: Can the term "slidable... to form a friction-fit engagement," which the patent illustrates as a linear clip-on mechanism for a cap's brim, be construed to cover the Plaintiffs' described method of stretching an "elastic rubber ring" to apply "radial force" to a brimless hat?

2. A second key issue will be one of validity based on obviousness: Have the Plaintiffs presented a clear and convincing case that the invention claimed in the '035 patent would have been obvious to a person of ordinary skill in the art in light of the prior art clip-on light patents to Dae, Sohn, and Nicholas, as detailed in the complaint?

3. A final threshold question will be one of validity based on indefiniteness: Does the claim term "self-contained," even with the structural components listed in claim 1, fail to inform those skilled in the art about the scope of the invention with reasonable certainty, rendering the claim invalid under 35 U.S.C. § 112?