DCT
1:24-cv-07144
Shenzhen Wuyishi Technology Co Ltd v. Eagle Fan
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Shenzhen Wuyishi Technology Co., Ltd. d/b/a JS Digital US (China)
- Defendant: Eagle Fan (Taiwan)
- Plaintiff’s Counsel: Bishop Diehl & Lee, Ltd.
- Case Identification: 1:24-cv-07144, N.D. Ill., 08/13/2024
- Venue Allegations: Plaintiff alleges venue is proper because Defendant targets sales to Illinois residents through e-commerce stores on Amazon.com and directed a patent enforcement action at Plaintiff that impacted its business in the United States, including Illinois.
- Core Dispute: Plaintiff seeks a declaratory judgment that its "Airplane Phone Holder" product does not infringe Defendant's patent covering a foldable clamping device, and that the patent is invalid and/or unenforceable.
- Technical Context: The technology at issue involves mechanical, foldable clamping devices designed to hold mobile phones, particularly for hands-free use in mass transit environments like airplanes.
- Key Procedural History: The complaint states that this lawsuit was precipitated by Defendant filing a complaint against Plaintiff under the Amazon Patent Evaluation Express Procedure ("APEX"). This action allegedly resulted in the removal of Plaintiff's product listing from Amazon.com. The complaint notes that the APEX program considers infringement but not patent invalidity.
Case Timeline
| Date | Event |
|---|---|
| 2018-10-26 | '847 Patent Priority Date (Filing Date) |
| 2019-04-30 | '847 Patent Issue Date |
| 2024-02-24 | Plaintiff receives first notice of Defendant's APEX complaint |
| 2024-05-08 | Plaintiff receives second notice of Defendant's APEX complaint |
| 2024-07-22 | Amazon removes Plaintiff's product listing |
| 2024-08-13 | Complaint for Declaratory Judgment Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,272,847 - "Foldable Clamping Device"
- Patent Identification: U.S. Patent No. 10,272,847, "Foldable Clamping Device", issued April 30, 2019.
The Invention Explained
- Problem Addressed: The patent addresses the physical discomfort, such as neck and arm pain, that arises from holding a mobile phone for extended periods during long-distance travel on planes, trains, or buses. It notes that such mass transport systems typically do not provide built-in devices for holding personal electronic gadgets. (’847 Patent, col. 1:13-29).
- The Patented Solution: The invention is a foldable, multi-pivot clamping device. One end features a clamping unit to hold a mobile phone, while the other end has a separate clamp designed to attach to a surface like a seat-back tray table. A series of pivot members connect these two ends, allowing for adjustment to various viewing angles while also enabling the entire device to be folded into a compact form for storage and portability. (’847 Patent, Abstract; col. 1:33-50).
- Technical Importance: The described device offers a portable, hands-free solution for using a mobile phone in transit environments, aiming to improve user comfort and convenience where built-in holders are unavailable. (’847 Patent, col. 1:38-44).
Key Claims at a Glance
- The complaint’s non-infringement argument focuses on independent claim 1. (Compl. ¶21). It also references "at least one claim" generally. (Compl. ¶23).
- Independent Claim 1 requires, among other things:
- A first support member with a clamping unit for a mobile phone, pivotally connected to a first pivot member.
- A first pivot member that is a "T-shaped body" with a "first extension element."
- A second pivot member that is a "T-shaped body" with a "second extension element" pivotally connected to the first.
- A second support member pivotally connected to the second pivot member, which includes a "stationary clamp arm" and a "movable L-shaped clamp arm."
- A "wherein" clause requiring that the first and second support members can be folded so the clamping unit fits within a space defined by the stationary clamp arm.
III. The Accused Instrumentality
Product Identification
- The complaint identifies the "Accused Products" as Plaintiff's "Airplane Phone Holder" sold on Amazon.com, bearing at least ASIN B0CGZXBSV2. (Compl. ¶¶13, 19).
Functionality and Market Context
- The complaint describes the product only by its name, "Airplane Phone Holder." (Compl. ¶2). It alleges that the product was sold on the Amazon marketplace, accounting for a significant portion of Plaintiff's business, before being removed in response to Defendant's APEX complaint. (Compl. ¶¶12-13). The complaint does not provide a detailed technical description of the product's structure or operation.
IV. Analysis of Infringement Allegations
The complaint is for declaratory judgment of non-infringement and does not contain a traditional claim chart. Instead, it makes a specific allegation that its product is missing a key element of the asserted patent claim.
'847 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a first support member including a clamping unit for clamping a mobile phone, and having a pivot end connected pivotally to said first pivot member | The complaint does not provide specific allegations mapping the Accused Products to this element. | N/A | col. 6:24-27 |
| said first pivot member being a T-shaped body including a middle portion formed with a first extension element | The complaint does not provide specific allegations mapping the Accused Products to this element. | N/A | col. 6:28-29 |
| said second pivot member being a T-shaped body including a middle portion formed with a second extension element connected pivotally to said first extension element... | Plaintiff alleges this element is not present, stating that "the Accused Products lack a second pivot member as claimed in the '847 Patent." | ¶21 | col. 6:30-35 |
| said second support member having a pivot end connected pivotally to said second pivot member, including a stationary clamp arm...a movable L-shaped clamp arm...and a biasing element... | The complaint does not provide specific allegations mapping the Accused Products to this element. | N/A | col. 6:36-44 |
No probative visual evidence provided in complaint.
Identified Points of Contention
- Technical Questions: The primary factual dispute raised by the complaint is whether the Accused Product contains a structure that meets the limitations of the claimed "second pivot member." (Compl. ¶21). The case will require a direct comparison of the product's physical structure to the claim language.
- Scope Questions: The dispute raises the question of how broadly the claim term "second pivot member being a T-shaped body" should be construed. The court will need to determine whether this language requires a specific geometric shape as depicted in the patent's figures or if it can encompass other functionally similar pivoting mechanisms.
V. Key Claim Terms for Construction
- The Term: "second pivot member being a T-shaped body"
- Context and Importance: This term is central to the dispute, as Plaintiff's sole specific non-infringement argument is that its product lacks this element entirely. (Compl. ¶21). The construction of this term will likely be dispositive of the literal infringement question for Claim 1.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party arguing for a broader scope might contend that "T-shaped body" is merely a descriptive name for a component that provides a particular pivoting function, and that any structure achieving that function should fall within the claim's scope, even if not geometrically a perfect "T."
- Evidence for a Narrower Interpretation: The specification repeatedly and specifically refers to the first and second pivot members (2, 3) as "T-shaped" bodies. (’847 Patent, col. 3:38-44). The figures, such as FIG. 5, also depict distinct T-shaped structures. A party arguing for a narrower scope may assert that this consistent and specific description limits the claim to the embodiment shown and described.
VI. Other Allegations
- Indirect Infringement: The complaint seeks a declaratory judgment that it has not infringed "either directly or indirectly, literally or under the doctrine of equivalents." (Compl. ¶24). It does not, however, plead specific facts relating to indirect infringement beyond this general denial.
- Willful Infringement: As a declaratory judgment action, the complaint does not allege willfulness. Instead, Plaintiff seeks a judgment that the case is "exceptional" under 35 U.S.C. § 285, entitling it to attorneys' fees. (Compl., Prayer for Relief ¶4). The basis for this request is the allegation that Defendant's infringement claims in the APEX proceeding were "baseless" and constituted "anticompetitive actions aimed at eliminating a competitor's product." (Compl. ¶28; Prayer for Relief ¶4).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of structural correspondence: does the plaintiff's "Airplane Phone Holder" contain a physical component that satisfies all the limitations of the claimed "second pivot member," or is this element, as the plaintiff contends, entirely absent? This question merges a factual inquiry into the product's design with a legal one regarding claim scope.
- A related and critical question is one of claim construction: how narrowly must the term "T-shaped body" be defined? The case may turn on whether this term is limited to the specific geometry shown in the patent's figures or if it can be construed more broadly to cover other structures that provide a similar pivoting function.
- Finally, the litigation will involve a question of patent validity. Plaintiff has requested a declaratory judgment that the '847 patent is invalid under 35 U.S.C. §§ 101, 102, 103, and 112, among other grounds. (Compl. ¶31). Even if the accused product is found to infringe, the patent's survival of these invalidity challenges will be a determinative issue for the case's ultimate outcome.