DCT

1:24-cv-12598

Shenzhen Lantianjinrun Trading Co Ltd v. Ga Exclusive Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:24-cv-12598, N.D. Ill., 12/07/2024
  • Venue Allegations: Venue is asserted on the basis that both defendants reside in the Northern District of Illinois.
  • Core Dispute: Plaintiff seeks a declaratory judgment that its barbecue skewer products do not infringe the Defendant's patent, and that the patent is invalid and unenforceable due to anticipation by prior art and inequitable conduct during prosecution.
  • Technical Context: The technology concerns barbecue skewers equipped with a sliding mechanism designed to facilitate the easy removal of cooked food.
  • Key Procedural History: The complaint alleges that the patent-in-suit was obtained through inequitable conduct, specifically by the inventor intentionally withholding a highly material Chinese patent (CN204071793) from the USPTO during prosecution. The lawsuit was precipitated by the Defendants allegedly submitting a takedown request to Amazon, accusing the Plaintiff's products of infringement and causing the removal of its product listings.

Case Timeline

Date Event
2015-01-07 Chinese Patent CN204071793 published
2017-01-01 GrillArt alleges it began selling grilling products in the U.S. (approx.)
2020-05-12 U.S. Provisional Patent Application No. 62/704,469 filed ('694 patent priority date)
2020-10-28 U.S. Patent Application No. 16/949,391 filed
2024-01-09 U.S. Patent No. 11,864,694 issued
2024-07-10 Defendants allegedly submitted an infringement-based takedown request to Amazon (on or before this date)
2024-12-07 Complaint for Declaratory Judgment filed

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

U.S. Patent No. 11,864,694 - "Skewer combined with a slidable push bar for easily removing cooked food from the skewer," issued January 9, 2024

The Invention Explained

  • Problem Addressed: The patent's background section identifies the difficulty of cleanly and safely removing cooked food from conventional barbecue skewers, which can be painful if done by hand when the skewer is hot ('694 Patent, col. 1:16-20).
  • The Patented Solution: The invention is a "self-locking slider" that fits onto the skewer's shaft. The slider is composed of two plates biased apart, which keeps it locked in place on the skewer. A user can pinch the plates together to unlock the mechanism, allowing the slider to be pushed down the shaft to urge food off the tip without needing external tools ('694 Patent, Abstract; col. 3:25-48). The core mechanism involves a "locking aperture" on one plate that engages the skewer until the plates are squeezed into an "unlocked engagement" ('694 Patent, col. 4:5-13).
  • Technical Importance: The design aims to provide an integrated, tool-free solution for a common problem in barbecue grilling, enhancing user convenience and safety ('694 Patent, col. 1:21-25).

Key Claims at a Glance

  • The complaint identifies claims 1, 3, and 5 as the independent claims of the ’694 patent (Compl. ¶32). The declaratory judgment action concerns all claims (Compl. ¶¶ 72, 84).
  • Independent Claim 1:
    • A self-locking slider for a skewer, comprising:
    • a first plate and a second plate, both extending from a push end to an engaged end, and both biased to be spaced apart;
    • two skewer passageways in an aligned orientation, one in the engaged end of the second plate and one in the push end;
    • a locking aperture in the engaged end of the first plate; and
    • the first plate and second plate are biased in a spaced apart orientation such that the locking aperture and the skewer passageway in the engaged end of the second plate are mutually exclusive,
    • wherein the first plate is movable so that the locking aperture and the skewer passageway in the engaged end of the second plate are mutually inclusive.
  • The complaint seeks a declaration of non-infringement, invalidity, and unenforceability for all claims of the patent (Compl., Prayer for Relief ¶¶ 1-3).

III. The Accused Instrumentality

Product Identification

  • The "GrillArt Skewers," sold on Amazon under ASIN B07QK4VMFG (Compl. ¶59). A product image shows a set of ten metal skewers, each with a flat blade, a looped handle, and a slidable metal piece for pushing food off (Compl. ¶14).

Functionality and Market Context

  • The complaint describes the GrillArt Skewers as "reusable barbeque skewers" (Compl. ¶13). The dispute arose after the patentee, Ga Exclusive Inc, allegedly filed a takedown request with Amazon asserting that the GrillArt Skewers infringed the ’694 patent (Compl. ¶¶ 62-63). This action resulted in Amazon terminating its seller agreement with GrillArt for that specific product, thereby preventing GrillArt from selling the skewers on the platform (Compl. ¶¶ 67-68).

IV. Analysis of Infringement Allegations

The complaint seeks a declaratory judgment of non-infringement and does not contain a traditional infringement claim chart from the patentee. It makes a broad assertion that "The GrillArt Skewers do not infringe any claim of the '694 patent" (Compl. ¶84). The primary basis stated for this conclusion is legal rather than technical: "Neither an invalid nor an unenforceable claim can be infringed" (Compl. ¶83).

The complaint's central focus is on invalidity, alleging that Chinese Patent No. CN204071793 ("CN793 patent") anticipates every claim of the ’694 patent (Compl. ¶¶ 45, 72). The complaint states that the reasons for this are "set forth in the claim chart that is Exhibit 9 to this complaint" (Compl. ¶73). However, Exhibit 9 was not filed with the complaint.

In lieu of a claim chart, the complaint provides visual comparisons to support its invalidity theory. For example, the complaint presents a side-by-side image comparison alleging that Figure 2 of the ’694 patent, which depicts the overall slider and skewer assembly, is identical in all material respects to Figure 1 of the CN793 patent (Compl. ¶48). Another visual comparison alleges that the slider's "hour-glass curvature and arched grips" as shown in the ’694 patent are identical to the slider shown in the CN793 patent (Compl. ¶49). A third visual shows that the "two detents" on the skewer shaft of the ’694 patent are also present in the CN793 patent (Compl. ¶50).

  • Identified Points of Contention:
    • Scope Questions: The core of the dispute is not over claim scope but over patent validity. The central question is whether the CN793 patent, published in 2015, discloses every element of the asserted claims of the ’694 patent, which has a 2020 priority date (Compl. ¶¶ 16, 28, 72).
    • Technical Questions: A key factual question will be whether the structures shown and described in the CN793 patent perform the functions required by the ’694 patent’s claims. For example, does the slider in the CN793 patent operate with "mutually exclusive" and "mutually inclusive" states as functionally claimed in Claim 1 of the ’694 patent? The complaint's visual evidence suggests a high degree of structural similarity between the devices (Compl. ¶¶ 48, 49, 52).

V. Key Claim Terms for Construction

  • The Term: "mutually exclusive" / "mutually inclusive"

  • Context and Importance: This functional language in Claim 1 describes the relationship between the "locking aperture" and the "skewer passageway." In the biased, locked state, they are "mutually exclusive," and when the plates are squeezed into the unlocked state, they become "mutually inclusive" ('694 Patent, col. 4:55-68). Practitioners may focus on this term because its definition will be critical to the invalidity analysis. The court will need to determine if the prior art CN793 patent discloses a structure that necessarily operates in this claimed manner.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification does not provide an explicit definition, which may support giving the terms their plain and ordinary meaning related to physical alignment and non-alignment of apertures.
    • Evidence for a Narrower Interpretation: The specification describes a specific structural arrangement where squeezing two plates moves the locking aperture relative to the skewer passageway to enable sliding ('694 Patent, col. 4:3-13). This specific embodiment could be used to argue for a narrower construction tied to the described pinching action and resulting alignment.

  • The Term: "biased to be spaced apart"

  • Context and Importance: This term describes the natural state of the first and second plates of the slider, which creates the default "locked" engagement. The complaint's invalidity argument hinges on the CN793 patent disclosing this feature. How "bias" is achieved (e.g., through material elasticity, a spring) could become a point of contention.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The claims do not specify the mechanism of the bias, allowing for any structure that urges the plates apart.
    • Evidence for a Narrower Interpretation: The specification describes and figures show a U-shaped push end where the "turn" of the "U" acts as an integrated spring to create the bias ('694 Patent, col. 2:11-20). A defendant could argue the term should be limited to such an integrally formed biasing structure.

VI. Other Allegations

  • Inequitable Conduct (Count II): The complaint contains a detailed claim for unenforceability due to inequitable conduct. It alleges that the inventor, Andrei Ababi, was aware of the CN793 patent during the prosecution of the ’694 patent (Compl. ¶42), that he knew it was material prior art (Compl. ¶43), and that he intentionally withheld it from the USPTO with the "specific intent of misleading the USPTO" into allowing the claims (Compl. ¶44, 78). The complaint further alleges that Ababi "copied the subject matter of the CN793 patent to prepare the '694 patent application" (Compl. ¶53).
  • False Accusations and Business Interference: While not a formal count, the complaint alleges that the defendants' takedown request to Amazon was based on "false accusations of infringement" and was made "with malice and an intent to harm GrillArt's business" (Compl. ¶¶ 66-67). These allegations form the basis for the request that the case be found "exceptional" under 35 U.S.C. § 285, which would entitle the plaintiff to attorney's fees (Compl., Prayer for Relief ¶4).

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

  1. A dispositive issue will be one of anticipation: does the prior art CN793 patent, which was not considered by the USPTO, disclose each and every element of the ’694 patent’s claims, as alleged by the plaintiff? The side-by-side visual comparisons in the complaint suggest this will be a central and fact-intensive inquiry.

  2. A second key question will be one of intent: can the declaratory judgment plaintiff prove by clear and convincing evidence that the patentee knew of the CN793 patent, knew of its materiality, and made a deliberate decision to withhold it from the USPTO with the intent to deceive? The allegation of direct copying, if substantiated, would be powerful evidence on this point.

  3. The case also raises a question of commercial conduct: were the patentee's infringement assertions to Amazon made in bad faith, sufficient to render the case "exceptional"? The outcome of the invalidity and unenforceability claims will likely dictate the answer to this question.