DCT
1:25-cv-08197
Uc Global Trade Inc v. Yan
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Uc Global Trade Inc (California) and Sunrise Global Chain Inc (California)
- Defendant: Bo Yan (China) and Dongguan Qunan Technology Co Ltd (China)
- Plaintiff’s Counsel: Arch & Lake LLP
- Case Identification: 1:25-cv-08197, N.D. Ill., 07/24/2025
- Venue Allegations: Plaintiffs allege venue is proper because a substantial part of Defendants' patent enforcement activities, including engaging local counsel and sending complaints that affected sales in the district, occurred in the Northern District of Illinois.
- Core Dispute: Plaintiffs seek a declaratory judgment that their personal massage devices do not infringe Defendants' patents, and further allege the patents are invalid and unenforceable due to improper inventorship and inequitable conduct before the USPTO.
- Technical Context: The technology concerns handheld personal massage devices that employ a swinging or reciprocating member to provide a percussive massage, a design intended to improve upon simpler vibrating massagers.
- Key Procedural History: The dispute arose after Defendants submitted infringement complaints to the Temu e-commerce platform, resulting in the removal of Plaintiffs' product listings. Plaintiffs allege the patents are invalid based on an on-sale bar, asserting a similar product was sold before the patents' critical date. Plaintiffs also allege the patents are unenforceable due to inequitable conduct, claiming the named inventor, Bo Yan, is not the correct inventor and that the applicant improperly claimed micro entity status to the USPTO.
Case Timeline
| Date | Event |
|---|---|
| 2022-12-06 | Plaintiff Sunrise allegedly began selling a related product. |
| 2023-01-17 | Earliest priority date for all patents-in-suit. |
| 2023-03-08 | Application for '619 Patent filed. |
| 2023-09-26 | Application for '634 Patent filed. |
| 2023-10-03 | U.S. Patent No. 11,771,619 issues. |
| 2024-04-15 | Application for '572 Patent filed. |
| 2024-04-16 | U.S. Patent No. 11,957,634 issues. |
| 2024-09-08 | Defendants begin submitting infringement complaints to Temu. |
| 2025-01-21 | U.S. Patent No. 12,201,572 issues. |
| 2025-07-24 | Declaratory Judgment Complaint filed. |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,771,619 - "Massage Device", Issued Oct. 3, 2023
The Invention Explained
- Problem Addressed: The patent’s background section states that conventional massage devices using simple linear reciprocating motion are often subject to resistance from the body part being massaged, which makes it "difficult to play good massage effect." (’619 Patent, col. 1:29-35).
- The Patented Solution: The invention proposes a device with a swinging massage member housed in a shell. The shell defines a specific "moving space" that allows the massage member to swing out beyond the confines of the shell itself, a design intended to generate a "strong force" and provide a "good massage effect" by overcoming the body's resistance. (’619 Patent, Abstract; col. 2:54-58).
- Technical Importance: This design seeks to enhance the therapeutic effect of personal massagers by replacing a simple vibratory or linear motion with a more forceful swinging or slapping action. (’619 Patent, col. 2:54-58).
Key Claims at a Glance
- The complaint challenges independent claim 1. (Compl. ¶¶38, 41).
- Essential elements of independent claim 1 include:
- An elongated shell with a "moving space" and an opening to the outside environment, where the moving space extends through two opposite exterior sides of the shell.
- A driving member located in a "chamber" adjacent to the moving space, where the chamber is defined by an "interior surface" of the shell and the moving space is defined by a surface "exterior to the interior surface of the chamber."
- An elongated massage member that is swingable, with its free end reciprocating between a position inside the moving space and a position outside the shell.
U.S. Patent No. 11,957,634 - "Massage Device", Issued Apr. 16, 2024
The Invention Explained
- Problem Addressed: As a continuation with a nearly identical specification, this patent addresses the same problem: the ineffectiveness of prior art linear massagers due to resistance from the user's body. (’634 Patent, col. 1:29-35).
- The Patented Solution: The solution is materially the same as in the parent '619 Patent. It describes a massage device with a swinging member that operates within a "moving space" and can extend outside the device's shell to deliver a strong, percussive massage. (’634 Patent, Abstract; col. 2:40-58).
- Technical Importance: The claimed technical contribution is consistent with the '619 patent, focusing on improving massage efficacy through a swinging mechanism.
Key Claims at a Glance
- The complaint challenges independent claim 1. (Compl. ¶39).
- Essential elements of independent claim 1 include:
- A shell with a "moving space" and an opening allowing communication with the outside environment.
- A driving member located in a "chamber" adjacent to the moving space, with the chamber and moving space defined by distinct "interior" and "exterior" surfaces of the shell.
- A massage member with a free end that swings in and out of the shell through the opening.
U.S. Patent No. 12,201,572 - "Massage Device", Issued Jan. 21, 2025
- Patent Identification: U.S. Patent No. 12,201,572, "Massage Device," Issued Jan. 21, 2025.
- Technology Synopsis: As a continuation in the same family, this patent also describes a massage device featuring a swinging massage member. The key concept is the use of a defined "moving space" and an opening in the device's shell, which together enable the member to swing outward and deliver a more forceful massage than conventional linear-motion devices. (’572 Patent, col. 1:31-38, col. 2:4-10).
- Asserted Claims: The complaint seeks a declaratory judgment of non-infringement of at least independent claim 1. (Compl. ¶40).
- Accused Features: Plaintiffs' "Layla" product is accused of infringement, but Plaintiffs contend it lacks the specific claimed configuration of the driving member, chamber, and shell. (Compl. ¶40).
III. The Accused Instrumentality
Product Identification
The complaint specifically identifies the "Layla, model number JT-32-033P" massage device and references other, unnamed products sold by Plaintiffs on the Temu e-commerce platform. (Compl. ¶¶14, 32, 38).
Functionality and Market Context
The products are described as consumer massage devices sold online. (Compl. ¶10). The complaint does not provide detailed technical descriptions or diagrams of the accused products' operation. However, the non-infringement arguments suggest that the internal construction of the accused products, particularly the housing and placement of the drive motor relative to the swinging arm, differs from the specific arrangements described in the patents-in-suit. (Compl. ¶¶38-40).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
'619 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged (Non-)Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a driving member arranged in a chamber of the shell...the chamber is defined by an interior surface of the shell and the moving space is defined by a surface of the shell that is exterior to the interior surface of the chamber | The complaint alleges that the accused "Layla" product lacks any corresponding element, suggesting its internal structure does not have this specific chamber configuration. | ¶38 | col. 10:9-16 |
| the first and second exterior sides are exposed to the outside environment | The complaint alleges the accused "Layla" product lacks any element corresponding to this limitation. | ¶41 | col. 10:6-7 |
'634 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged (Non-)Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a driving member arranged in a chamber of the shell, wherein the chamber is adjacent to the moving space, the chamber is defined by an interior surface of the shell and the moving space is defined by a surface of the shell that is exterior to the interior surface of the chamber | The complaint alleges that the accused "Layla" product lacks any corresponding element, reprising the same non-infringement theory asserted against the '619 patent. | ¶39 | col. 10:11-17 |
- Identified Points of Contention:
- Scope Questions: The core of the non-infringement dispute appears to concern the structural requirements of the claims. A key question is whether the limitation requiring a "chamber" defined by an "interior surface" and a "moving space" defined by an "exterior" surface mandates a distinct physical partition or wall separating the drive motor from the swinging massage member.
- Technical Questions: A dispositive factual question will be the actual physical construction of the accused Layla product. An analysis of the product's internal design will be required to determine if it possesses a structure that can be fairly characterized as having the separate "chamber" and "moving space" as defined in the patents.
V. Key Claim Terms for Construction
- The Term: "a chamber ... defined by an interior surface of the shell and the moving space ... defined by a surface of the shell that is exterior to the interior surface of the chamber"
- Context and Importance: This limitation appears in the independent claims of both the '619 and '634 patents and is the basis for Plaintiffs' primary non-infringement argument. (Compl. ¶¶38-39). Its construction is therefore critical. Practitioners may focus on this term because its specificity suggests a potential vulnerability if the accused product uses a more integrated or open internal design.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party seeking a broader construction may argue that the terms "chamber" and "space" should be given their ordinary meaning, and that the purpose of the invention is simply to provide "sufficient space for the swinging of the massage member," not to require a specific type of internal partition. (’634 Patent, col. 2:10-12).
- Evidence for a Narrower Interpretation: The claim language "exterior to the interior surface of the chamber" provides strong textual support for a narrower reading that requires a separating structure. The cross-sectional Figure 4 in the patents appears to depict the driving motor (20) in a compartment distinct from the moving space (12), which could be used to argue that the claims require such a partitioned arrangement. (’619 Patent, Fig. 4; ’634 Patent, Fig. 4).
VI. Other Allegations
- Invalidity: The complaint alleges that the patents-in-suit are invalid for anticipation under 35 U.S.C. § 102, arguing that a product with the "same core structure" was on sale more than a year before the patents' priority date. (Compl. ¶¶15, 45). The complaint also asserts invalidity based on anticipation and/or obviousness in view of a list of U.S. and Chinese prior art references. (Compl. ¶46).
- Unenforceability / Inequitable Conduct: Plaintiffs allege the patents are unenforceable due to inequitable conduct committed with an intent to deceive the USPTO. (Compl. ¶¶48-54). The allegations are based on two grounds:
- Inventorship Misrepresentation: The complaint alleges that Defendant Bo Yan is not the sole inventor, or possibly not an inventor at all, and that other individuals who contributed to the conception of the invention were intentionally omitted from the patent applications. (Compl. ¶¶20-23, 49-50).
- Micro Entity Status Misrepresentation: The complaint alleges that the applicant falsely claimed micro entity status, and paid reduced fees, despite the inventor's and/or an assignee's gross income exceeding the statutory limit. (Compl. ¶¶24-31, 51-52).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of patent validity and enforceability: Can Plaintiffs produce clear and convincing evidence to support their allegations of an invalidating on-sale bar or inequitable conduct based on improper inventorship and misrepresentation of entity status to the USPTO?
- A key question of claim construction will determine the infringement analysis: Must the term "chamber" be interpreted narrowly to require a physically partitioned internal structure, as suggested by the patent's specific language and figures, or can it read on a more integrated design?
- An underlying evidentiary question will be one of factual comparison: What is the actual internal construction of the accused "Layla" product, and how does it compare to the structure required by the court's construction of the key claim terms?