Shenzhen Kaianhao Technology Co Ltd v. Waters Industries Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Shenzhen Kaianhao Technology Co., Ltd. (People's Republic of China)
  • Defendant: Waters Industries, Inc. (Illinois)
  • Plaintiff’s Counsel: Glacier Law LLP
• Case Identification: 1:24-cv-10866, N.D. Ill., 10/22/2024
• Venue Allegations: Venue is alleged to be proper in the Northern District of Illinois because the Defendant is domiciled in the district and targets business activities to consumers in the United States, including Illinois, through an interactive e-commerce store.
• Core Dispute: Plaintiff seeks a declaratory judgment that its "Lighted Hats" do not infringe Defendant's patent related to lighted headgear, and that the patent is invalid.
• Technical Context: The technology concerns lighted headwear, specifically removable, self-contained light modules designed to be attached to caps for hands-free illumination.
• Key Procedural History: The action was initiated after Defendant filed patent infringement complaints with Amazon.com, resulting in the removal of Plaintiff's product listings. This event establishes the "actual case or controversy" required for a declaratory judgment action.

Case Timeline

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

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 general need for hands-free lighting, noting that holding a flashlight can be cumbersome and detract from performing a task ('035 Patent, col. 1:24-34). The specification describes various ways to integrate light sources into headgear.
• The Patented Solution: The invention provides for a removable, self-contained light module that can be secured to a cap ('035 Patent, Abstract). While the specification discloses numerous embodiments, the sole independent claim is directed to a specific version where the module is "slidable" into a "friction-fit engagement" with the cap and is reversible, allowing for two different forward-facing orientations ('035 Patent, col. 44:1-7).
• Technical Importance: This approach provides a modular system for lighted headwear, allowing a user to remove the light for recharging or use it with different caps, while aiming to provide a secure and reversible attachment mechanism ('035 Patent, Abstract).

Key Claims at a Glance

• The complaint asserts non-infringement and invalidity of claims 1-6, with a focus on the sole independent claim, Claim 1 (Compl. ¶¶ 20, 28).
• 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 to secure it to the cap, and slidable in an opposite direction to remove it.
  • The module is securable in two different forward-facing orientations, rotated 180 degrees from each other.
  • The housing includes opposite first and second cap-engaging walls for engagement with the cap.
• The complaint notes that dependent claims 2-6 depend from claim 1 and are therefore also not infringed (Compl. ¶23).

III. The Accused Instrumentality

Product Identification

• The complaint identifies the accused products as Plaintiff's "Lighted Hats," sold on Amazon under the name "Kaimall" (Compl. ¶¶ 1, 4).

Functionality and Market Context

• The complaint alleges the Lighted Hats are designed for "brimless hats" (Compl. ¶21).
• The key functionality alleged to be non-infringing is the attachment mechanism. The product is described as being "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. ¶21).
• The complaint explicitly states that for the accused product, "[t]here is no sliding that results in a friction-fit engagement" (Compl. ¶21).
• The Amazon marketplace is identified as the Plaintiff's "primary sales channel into the United States," and removal of the products from this channel is alleged to cause "significant harm" (Compl. ¶¶ 1, 13).
• No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint seeks a declaratory judgment of non-infringement. The analysis below summarizes the Plaintiff's arguments for why its product does not meet the limitations of the patent's claims.

'035 Patent Infringement Allegations

Identified Points of Contention

• Scope Questions: The dispute raises a primary question about the scope of the claim terms "slidable" and "friction-fit engagement." The court will need to determine if "slidable" requires a specific track or guided path, as Plaintiff implies, or if it can be construed more broadly to cover the motion of stretching an elastic ring over a mounting point. Similarly, the court must decide if "friction-fit engagement" can encompass the "radial force" allegedly applied by Plaintiff's elastic ring.
• Technical Questions: A factual question exists regarding the actual operation of the accused Lighted Hats. The court will need evidence beyond the complaint's description to determine if the product's attachment mechanism involves any motion or force that could be characterized as "slidable" or a "friction-fit." The allegation that the accused products are for "brimless hats" (Compl. ¶21) may also raise a question about whether the claimed "cap" requires a brim, as depicted in the patent's figures.

V. Key Claim Terms for Construction

• The Term: "slidable"

  • Context and Importance: This term is central to the non-infringement argument. Plaintiff contends its product is secured by stretching an elastic ring, not by sliding. The construction of this term may be dispositive of infringement.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A patentee might argue that the plain and ordinary meaning of "slidable" is not limited to a specific track and could cover any movement along a surface to a secured position.
    • Evidence for a Narrower Interpretation: The specification describes a "slide down mechanism" that utilizes an "inclined channel, track, tongue-and groove, or the like" ('035 Patent, col. 22:30-32, discussing FIGS. 42-45). This specific embodiment may support an interpretation that "slidable" requires a guided, linear path, which would favor the Plaintiff's non-infringement position.

• The Term: "friction-fit engagement"

  • Context and Importance: This term is the other pillar of the non-infringement defense. Plaintiff alleges its product uses "radial force" from an elastic element, which it distinguishes from a friction-fit.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A patentee may argue that any engagement that relies on frictional forces between surfaces to hold parts together, including the force exerted by a stretched elastic ring, falls within the broad meaning of a "friction-fit."
    • Evidence for a Narrower Interpretation: The claim language links "slidable" directly to forming the "friction-fit engagement" ('035 Patent, col. 44:2-3). This may suggest a fit created by the interference of two components being slid together, rather than a fit created by an external elastic member. The complaint's description of a separate "elastic rubber ring" (Compl. ¶21) could be argued as distinct from the claimed engagement mechanism.

VI. Other Allegations

• Indirect Infringement: Not applicable, as this is a declaratory judgment action filed by the product manufacturer.
• Willful Infringement: Not applicable.
• Invalidity Allegations: The complaint includes a count for a declaratory judgment of invalidity, asserting two primary grounds:
  • Obviousness (§ 103): Plaintiff alleges that claims 1-6 are invalid as obvious in light of several prior art patents, including U.S. Patent No. 7,163,309 to Dae (either alone or in combination) and U.S. Patent No. 7,427,149 to Sohn in view of U.S. Patent No. 5,541,816 to Nicholas (Compl. ¶¶ 28-33). These references are alleged to disclose similar clip-on light technology for headwear.
  • Lack of Written Description and Indefiniteness (§ 112): Plaintiff alleges that Claim 1 is invalid because the terms "rechargeable," "opposite first and second cap-engaging walls," and "self-contained" lack adequate written description and/or are indefinite (Compl. ¶34).

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

• A core issue will be one of claim construction: Can the terms "slidable" and "friction-fit engagement," which describe the patented attachment method, be construed to cover the accused product's alleged mechanism of stretching an "elastic rubber ring" to apply "radial force"? The outcome of the non-infringement claim will likely depend on the court's interpretation of this language.
• A second central issue will be one of validity: Do the prior art references cited in the complaint, which disclose other forms of lights for headwear, render the specific combination of features in the '035 Patent's claims obvious to a person of ordinary skill in the art at the time of the invention?
• A key evidentiary question will be one of technical operation: The court will need to assess evidence beyond the pleadings to determine the precise mechanical function of the accused product's attachment system and compare it to the properly construed claims of the '035 Patent.