DCT
1:24-cv-11127
Hubeisi Guangyuan Kejiyou Xiangongsi v. Beauty Union Global Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Hubeisi Guangyuan Kejiyou Xiangongsi d/b/a AnningAn (China)
- Defendant: Beauty Union Global Limited (Hong Kong)
- Plaintiff’s Counsel: Bishop Diehl & Lee LTD.
- Case Identification: 1:24-cv-11127, N.D. Ill., 10/29/2024
- Venue Allegations: Plaintiff alleges venue is proper because Defendant targets business activities and sells products to customers in Illinois via interactive e-commerce storefronts, and directed its patent assertion campaign into the district, thereby impacting Plaintiff's business in Illinois.
- Core Dispute: Plaintiff seeks a declaratory judgment that its mini portable travel perfume bottles do not infringe Defendant’s patent and/or that the patent is invalid, following Defendant's infringement allegations made through the Amazon Patent Evaluation Express (APEX) program.
- Technical Context: The technology concerns small, portable perfume atomizers designed to be easily refilled from larger, commercially sold perfume spray bottles.
- Key Procedural History: The dispute arises from an infringement complaint filed by Defendant against Plaintiff under the Amazon APEX program on or about October 16, 2024. This private enforcement action prompted Plaintiff to file this declaratory judgment lawsuit in federal court to preemptively resolve the questions of infringement and validity, which Plaintiff notes are not both considered in the APEX process.
Case Timeline
| Date | Event |
|---|---|
| 2004-04-20 | ’388 Patent Priority Date |
| 2011-12-20 | ’388 Patent Issue Date |
| 2024-10-16 | Defendant allegedly files Amazon APEX complaint against Plaintiff |
| 2024-10-16 | Plaintiff receives notice of APEX complaint from Amazon |
| 2024-10-29 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,079,388 - “Refill Perfume Bottle”
The Invention Explained
- Problem Addressed: The patent addresses the difficulty of transferring expensive liquids like perfume from large, non-openable spray bottles into smaller, travel-sized containers without spillage or waste (Compl. ¶2; ’388 Patent, col. 1:10-24).
- The Patented Solution: The invention is a small, refillable bottle with a special refill mechanism, such as a check valve, located in its base. This mechanism allows the user to press the bottle's base directly onto the exposed stem of a larger perfume bottle, enabling a pressurized transfer of liquid into the travel bottle. The valve is designed to open under pressure during filling and close automatically when removed to prevent leaks (’388 Patent, Abstract; col. 3:31-38).
- Technical Importance: The technology provides a method for consumers to easily and cleanly create travel-sized portions of their preferred perfumes from sealed, commercial spray bottles, which was not previously possible with conventional funnels or pour-transfer methods (’388 Patent, col. 1:25-29).
Key Claims at a Glance
- The complaint focuses its non-infringement arguments on independent claim 1 (Compl. ¶20).
- Independent Claim 1 Elements:
- A portable refillable non compressible liquid dispenser adapted to receive non-compressible liquid from a bottle provided with a spraying means having a stem.
- The dispenser consists of a body having an upper portion with a first opening and a bottom portion with a second opening.
- The first opening has a vaporizer mechanism for dispensing the liquid, including a tube, a pump, and a nozzle.
- The second opening has a refill mechanism comprising a check valve adapted to receive the stem of the bottle.
- The check valve is open to and receives the liquid when the stem is pushed through it.
- The check valve is closed to prevent leakage when the stem is withdrawn.
- The complaint seeks a declaration that all claims are invalid and not infringed, but does not specify other independent or dependent claims for analysis (Compl. p. 8, ¶¶ 1-2).
III. The Accused Instrumentality
Product Identification
- The "Accused Product" is Plaintiff’s "mini portable travel perfume bottle" sold on Amazon.com under various ASINs (Compl. ¶2, ¶12).
Functionality and Market Context
- The complaint describes the Accused Product as a small perfume bottle designed for travel that can be refilled from a larger perfume bottle (Compl. ¶2).
- Instead of the claimed "check valve," the Plaintiff alleges its product utilizes "sealing o-rings to prevent it from leakage" (Compl. ¶20). A photograph provided in the complaint shows a disassembled component of the accused product with two small, white rings identified as "Sealing Rings" (Compl. p. 6). The complaint alleges these products are a significant portion of Plaintiff's business on the Amazon marketplace (Compl. ¶17).
IV. Analysis of Infringement Allegations
- Claim Chart Summary: The following table summarizes the Plaintiff's (declaratory judgment plaintiff) arguments for non-infringement of U.S. Patent No. 8079388.
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| wherein the second opening has a refill mechanism comprising a check valve adapted to receive the stem of the bottle so that when the stem is pushed through the check valve, the check valve is open to... and when the stem is withdrawn from the check valve, the check valve is closed to prevent leakage... | The complaint alleges the Accused Products "lack a check valve as claimed" and instead utilize "sealing o-rings to prevent it from leakage." A visual comparison is provided to support this assertion. | ¶20; p. 6 | col. 4:39-49 |
- Identified Points of Contention: The complaint sets up a central dispute over the meaning and scope of the term "check valve."
- Scope Question: Does the term "check valve," as defined and described in the ’388 Patent, read on the "sealing o-rings" mechanism allegedly used in the Accused Product? The complaint's visual evidence juxtaposes a diagram of the patent's "Check Valve" with a photograph of the accused product's "Sealing Rings" to argue they are different structures with different anti-leakage methods (Compl. p. 6).
- Technical Question: What evidence demonstrates how the "sealing o-rings" in the Accused Product function? The primary point of contention will be whether this mechanism performs the claimed functions of opening when a stem is "pushed through" it and closing when the stem is "withdrawn" in a manner equivalent to the claimed check valve.
V. Key Claim Terms for Construction
- The Term: "check valve"
- Context and Importance: The entirety of the Plaintiff's non-infringement argument, as presented in the complaint, rests on the assertion that its product’s "sealing o-rings" are not a "check valve" (Compl. ¶20). The construction of this term will therefore be dispositive for infringement. Practitioners may focus on whether the term implies a specific mechanical structure or can be defined more broadly by its function of allowing one-way fluid flow.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims describe the check valve functionally: it must be "adapted to receive the stem," "open... when the stem is pushed through," and "closed to prevent leakage... when the stem is withdrawn" (Compl. ¶20; ’388 Patent, col. 4:42-49). A party could argue that any structure performing these specific functions meets the claim limitation, regardless of its name or specific mechanical design.
- Evidence for a Narrower Interpretation: The specification explicitly describes "Refill mechanism 30" as "basically a check valve 32" and illustrates it as a distinct mechanical component within the bottle's base in Figure 1b (’388 Patent, col. 3:31-35; Fig. 1b). A party could argue that this specific embodiment limits the term to a similar mechanical structure, as distinguished from a simple sealing gasket or o-ring system.
VI. Other Allegations
- Indirect Infringement: The complaint makes a general denial of any direct or indirect infringement but does not plead specific facts regarding inducement or contributory infringement, as is typical for a declaratory judgment complaint seeking a finding of non-infringement (Compl. ¶23).
- Willful Infringement: This is not applicable as this is a declaratory judgment action by the accused infringer. However, the Plaintiff does allege that the Defendant's infringement assertions are "baseless and exceptional" and seeks attorneys' fees under 35 U.S.C. § 285, claiming Defendant's actions constitute anticompetitive conduct (Compl. ¶27, p. 8, ¶4).
VII. Analyst’s Conclusion: Key Questions for the Case
This case appears to center on a classic patent dispute hinging on claim construction and technical comparison. The key questions for the court will likely be:
- A core issue will be one of definitional scope: Will the court construe the term "check valve" broadly based on its claimed function of allowing one-way refilling, or will it be limited to the more complex mechanical structure illustrated in the patent's preferred embodiment?
- A key evidentiary question will be one of technical and structural comparison: Does the accused product's "sealing o-rings" mechanism function in a substantially different way from the claimed "check valve," or does it meet every functional and structural requirement recited in Claim 1? The resolution of this question will flow directly from the court’s construction of the key claim term.