Dongguan Naquan E Commerce Co Ltd v. Binovo Mfg Co Ltd

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Dongguan Naquan E-Commerce Co., Ltd. and Guangzhou Zhongyao Technology Co., Ltd. (collectively, "OGERY") (People's Republic of China)
  • Defendant: Binovo Mfg Co., Ltd (People's Republic of China)
  • Plaintiff’s Counsel: Glacier Law LLP
• Case Identification: 1:25-cv-06108, N.D. Ill., 06/01/2025
• Venue Allegations: Plaintiff alleges venue is proper because Defendant availed itself of the United States, including Illinois, by filing patent infringement complaints with Amazon, which affected Plaintiff's sales in the state. Plaintiff also asserts personal jurisdiction under FRCP 4(k)(2) as the claims arise under federal law and Defendant is not subject to jurisdiction in any other state's courts.
• Core Dispute: Plaintiff seeks a declaratory judgment that Defendant's patent related to a retractable camping light is invalid and unenforceable.
• Technical Context: The technology concerns portable, reel-based LED light strips, commonly used for camping and decorative purposes, which combine the functionality of a tape measure with ambient lighting.
• Key Procedural History: The complaint alleges that Defendant’s corresponding Chinese patent was invalidated by the China National Intellectual Property Administration (CNIPA) based on three prior art references. Plaintiff alleges that Defendant was aware of this material prior art during the prosecution of the U.S. patent but failed to disclose it to the USPTO, forming the basis for an unenforceability claim due to inequitable conduct. The complaint also alleges Defendant misrepresented its size as a "small entity" to the USPTO.

Case Timeline

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

U.S. Patent No. 12,146,644 - "TAPE MEASURE ATMOSPHERE LAMP"

The Invention Explained

• Problem Addressed: The patent's background section identifies that storing conventional light strips is "laborious and inconvenient" and that existing tape measure-style lamps have a "relatively single function," meaning they cannot provide illumination while the light strip is wound up ('644 Patent, col. 1:24-34).
• The Patented Solution: The invention is a lamp with a light strip wound on a roller inside a housing. A key component is a "rocker assembly" (a handle) that is hinged to a base connected to the roller. A user can rotate the rocker assembly to wind or unwind the light strip. The rocker assembly can also be pivoted into different positions: one where it can be used as a handle, another where it acts as a hanging hook, and a third where it is hidden within the housing for compact storage ('644 Patent, Abstract; col. 2:4-18). Crucially, the housing is light-transmissive, allowing the device to function as a lamp even when the strip is fully wound ('644 Patent, col. 2:10-14).
• Technical Importance: This design seeks to provide a multi-functional, convenient, and compact solution for portable lighting by integrating storage, deployment, and multiple usage modes (hand-cranked reel, hanging lantern, and stowed unit) into a single device ('644 Patent, col. 2:38-49).

Key Claims at a Glance

• The complaint alleges invalidity and unenforceability of claims 1-17 ('644 Patent, col. 9:1-col. 10:73; Compl. ¶38). The patent contains one independent claim, Claim 1.
• Essential elements of Independent Claim 1 include:
  • A housing assembly, a rocker assembly, a base, a roller, a light strip, and a circuit module.
  • The rocker assembly is "hinged with the base."
  • The base is "fixedly connected with the roller."
  • The rocker assembly can be "turned over relative to the base, such that the rocker assembly protrudes out of or gets hidden in the housing assembly."
  • Rotating the rocker assembly drives the base and roller to extend or retract the light strip.
  • The rocker assembly comprises a rocker and a handle, and is hinged to the base via a rotational shaft.
• The complaint challenges all 17 claims of the patent ('644 Patent, col. 9:1-col. 10:73; Compl. ¶43).

III. The Accused Instrumentality

Product Identification

• The "OGERY Camping String Lights, 4 in 1 Quick Storage 32.8FT Rechargeable Tent Lights" sold by Plaintiffs on Amazon (Compl. ¶¶10-11).

Functionality and Market Context

• The complaint describes the product as a camping string light sold through Plaintiffs' Amazon store (Compl. ¶10). A provided screenshot shows a circular, reel-style device containing a string of lights, which is advertised for outdoor and party use (Compl. p. 3). The complaint notes the product's commercial success, highlighting its "Amazon's Choice" designation, high customer ratings, and bestseller rank in its category (Compl. ¶¶11-12). These allegations establish that the product is a primary sales channel for the Plaintiffs in the U.S. market (Compl. ¶15).

IV. Analysis of Infringement Allegations

The complaint, a declaratory judgment action, does not provide a detailed infringement theory or claim chart. It states that the Defendant "submitted infringement reports to Amazon against Plaintiffs alleging the infringement of its '644 Patent" (Compl. ¶8, ¶13). The complaint does not provide sufficient detail for an analysis of the specific infringement theory asserted by the Defendant. The focus of the pleading is on invalidity and unenforceability rather than non-infringement.

V. Key Claim Terms for Construction

• The Term: "rocker assembly"
• Context and Importance: This term appears central to the patent's claims of novelty. Its structure and multi-position functionality (protruding to act as a crank/hook, or hidden for storage) are described as key features. The invalidity allegations in the complaint target this element, asserting that prior art discloses a similar "handle or rocker mechanism" (Compl. ¶39). The precise construction of "rocker assembly" will therefore be critical in determining whether the prior art anticipates or renders obvious the claimed invention.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claims describe the component's function—being "turned over relative to the base" to protrude or be hidden—which could be argued to cover any hinged handle that achieves these states ('644 Patent, col. 9:3-6).
  • Evidence for a Narrower Interpretation: The specification provides a specific embodiment of an "arc-shaped" rocker (21) with a handle (22) perpendicular to it, which occupies only part of a mounting recess (31), allowing it to be turned over 180 degrees to be hidden ('644 Patent, col. 6:36-50, Fig. 2). A defendant could argue the term is limited to this disclosed structure.

VI. Other Allegations

The complaint's primary allegations seek to render the '644 Patent invalid and unenforceable.

Unenforceability (Inequitable Conduct)

Plaintiff alleges two distinct grounds for unenforceability.

• Misrepresentation of Entity Status: The complaint alleges Defendant "willfully misrepresented" its status as a "small entity" to the USPTO to pay reduced fees, when in fact it had more than the 500-employee limit in 2022 and 2023, as evidenced by its annual reports submitted to the Chinese government (Compl. ¶¶22-25).
• Failure to Disclose Material Prior Art: The complaint alleges that Defendant became aware of three material Chinese prior art references during a Chinese invalidity proceeding against its corresponding Chinese patent. It further alleges that Defendant knew this art would have prevented issuance of the '644 Patent but "intentionally concealed" it from the USPTO, despite knowing about it before the '644 Patent issued (Compl. ¶¶26-34). The complaint notes that the Chinese patent was ultimately invalidated on this art (Compl. ¶30).

Invalidity

Plaintiff alleges that claims 1-17 of the '644 Patent are invalid under 35 U.S.C. §§ 102 and/or 103 as anticipated or rendered obvious by at least three Chinese prior art references: Zhang (CN209655093U), Li (CN113819408A), and Xu (CN217763129U) (Compl. ¶¶38-41). The complaint asserts these references teach key elements of the claimed invention, including a housing, a roller for a light strip, and a handle or rocker mechanism for operation (Compl. ¶¶39-41).

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

1. A central issue will be one of inequitable conduct: did the Defendant, with deceptive intent, fail to disclose the Chinese prior art references to the USPTO after they were cited against its corresponding Chinese patent? The timeline of when Defendant became aware of the art versus the issue date of the U.S. patent will be a critical factual determination.
2. The case will also turn on the question of validity: do the Zhang, Li, and Xu prior art references, either alone or in combination, disclose all elements of the '644 Patent’s independent claim, thereby rendering it obvious or anticipated to a person of ordinary skill in the art?
3. A related question involves claim scope: can the term "rocker assembly" as claimed in the '644 Patent be distinguished from the "reel handle" and "operating wheel" mechanisms disclosed in the asserted prior art, or do these prior art structures fall within the scope of the claim term?