DCT
4:18-cv-10492
Shinmax Industry v. Great Lake Tech LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Shinmax Industry Co., Ltd. (Taiwan)
- Defendant: Great Lakes Technologies, LLC, d/b/a WEN Products (Illinois)
- Plaintiff’s Counsel: Butzel Long, PC; Burris Law, PLLC
- Case Identification: 4:18-cv-10492, E.D. Mich., 02/13/2018
- Venue Allegations: Venue is based on allegations that Defendant maintains a regular and established place of business in the district, holds a Certificate of Authority to transact business in Michigan, and sells the accused products through retailers and online channels within the district.
- Core Dispute: Plaintiff alleges that Defendant’s thickness planer infringes a patent related to a lightweight, modular carrier assembly designed to hold the planer's motor and cutter.
- Technical Context: The technology concerns the mechanical design of portable wood planers, where reducing weight and manufacturing cost are significant design considerations.
- Key Procedural History: The complaint alleges that Plaintiff notified Defendant of the asserted patent and potential infringement in a letter dated May 19, 2016, nearly two years prior to filing suit. This alleged pre-suit notice is the foundation for the willfulness claim.
Case Timeline
| Date | Event |
|---|---|
| 2008-05-15 | U.S. Patent No. 7,857,018 Priority Date |
| 2010-12-28 | U.S. Patent No. 7,857,018 Issues |
| 2016-05-19 | Plaintiff sends first notice letter to Defendant |
| 2016-06-20 | Defendant responds to Plaintiff's notice letter |
| 2016-10-06 | Plaintiff sends second notice letter to Defendant |
| 2018-02-13 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,857,018 - "Carrier of A Wood Planer for Carrying a Cutter and a Motor"
The Invention Explained
- Problem Addressed: The patent’s background section describes conventional wood planer carriers—the component that holds the motor and cutter—as being formed as a single, unitary body by casting (’018 Patent, col. 1:26-28). This method results in a carrier that is heavy and requires a large amount of material, increasing manufacturing costs ('018 Patent, col. 1:28-31).
- The Patented Solution: The invention proposes a modular carrier constructed from multiple, separate components that are fastened together. This assembly includes left and right mounting seats, various connecting rods, a motor mounting plate, and a rear cover, which reduces the total material required and, consequently, the carrier’s weight and cost ('018 Patent, col. 1:32-60; col. 3:62-col. 4:2).
- Technical Importance: This design aimed to facilitate the production of lighter and more economical benchtop power tools by replacing a single heavy cast component with an assembly of smaller, more easily manufactured parts ('018 Patent, col. 1:32-37).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 9 of the '018 Patent.
- Independent Claim 1 recites a carrier comprising:
- "left and right mounting seats" with "front and rear support blocks", "guide holes", and a "cutter mounting hole"
- a "front connecting rod" connected to the front support blocks
- a "rear connecting rod" connected to the rear support blocks
- a "motor mounting plate" fixed to the front support blocks
- a "top connecting rod" with end sections inserted into "second insert holes" on the mounting seats
- Independent Claim 9 recites a carrier comprising:
- "left and right mounting seats" with "front and rear support blocks", "guide holes", and a "cutter mounting hole"
- a "front connecting rod" connected to the front support blocks
- a "rear connecting rod" connected to the rear support blocks
- a "motor mounting plate" fixed to the front support blocks
- a "rear cover plate" fixed to the rear support blocks, which includes a "top plate portion", a "fence plate portion", and a "back plate portion"
III. The Accused Instrumentality
Product Identification
- WEN 6550 Thickness Planer ("the Accused Product") (Compl. ¶14).
Functionality and Market Context
- The complaint alleges the WEN 6550 is a wood planer that contains a carrier assembly for its motor and cutter (Compl. ¶14). The complaint asserts that this carrier is constructed from multiple distinct components, including mounting seats, connecting rods, and plates, thereby allegedly practicing the patented invention (Compl. ¶17). An annotated exploded-view diagram from the product's user manual is provided to identify parts alleged to be the "top connecting rod," "left mounting seat," and other claimed elements (Compl. p. 6).
- The complaint alleges the Accused Product is sold through major retail channels, including Home Depot, Walmart, Sears, K-Mart, and Amazon.com (Compl. ¶¶10-11).
IV. Analysis of Infringement Allegations
The complaint alleges that the Accused Product contains every element of claims 1 and 9, supported by annotated figures from the product’s user manual (Compl. ¶17). The complaint itself does not contain a claim chart, but refers to one in an un-provided exhibit (Compl. ¶18). The following tables summarize the allegations based on the complaint's recitation of the claims and its annotated figures.
’018 Patent Infringement Allegations (Claim 1)
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A carrier for a wood planer to carry a motor and a cutter and to move upward and downward along vertical guide posts | The WEN 6550 Thickness Planer contains a carrier assembly that holds a motor and cutter and moves along vertical guide posts. | ¶14, ¶17, p. 6 | col. 2:10-14 |
| said carrier comprising: left and right mounting seats each having front and rear support blocks, front and rear guide holes, and a cutter mounting hole... said front and rear support blocks projecting oppositely and inwardly from said left and right mounting seats... | The Accused Product allegedly has "left and right mounting seats" with "front and rear support blocks" and holes for the cutter and guide posts, as identified in annotated product diagrams. | ¶15, ¶17, p. 6 | col. 2:17-32 |
| a front connecting rod having left and right end sections respectively connected to said front support blocks of said left and right mounting seats | An element identified as the "front connecting rod" in an annotated photograph allegedly connects the front support blocks of the mounting seats. An annotated photograph shows a component labeled "front connecting rod" spanning the assembly (Compl. p. 7). | ¶15, ¶17, p. 7 | col. 2:53-57 |
| a rear connecting rod having left and right end sections respectively connected to said rear support blocks of said left and right mounting seats | An element identified as the "rear connecting rod" in an annotated photograph allegedly connects the rear support blocks of the mounting seats. | ¶15, ¶17, p. 7 | col. 2:53-57 |
| a motor mounting plate disposed above said front connecting rod and having left and right ends respectively fixed to said front support blocks of said left and right mounting seats | An element identified as the "motor mounting plate" is allegedly fixed to the front support blocks. | ¶15, ¶17, p. 6 | col. 3:18-25 |
| a top connecting rod having left and right end sections, said left and right mounting seats further having top ends which are provided with second insert holes, respectively, said left and right end sections of said top connecting rod being inserted into said second insert holes... | An element identified as the "top connecting rod" is allegedly inserted into "second insertion holes" at the top of the mounting seats. An annotated exploded-view diagram identifies these components in the Accused Product (Compl. p. 6). | ¶15, ¶17, p. 6 | col. 3:11-17 |
’018 Patent Infringement Allegations (Claim 9)
| Claim Element (from Independent Claim 9) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| [Preamble, mounting seats, connecting rods, and motor mounting plate elements are similar to Claim 1] | [Allegations are similar to those for Claim 1, based on the same product components] | ¶16, ¶17, p. 6-7 | col. 2:10-57 |
| a rear cover plate extending between said left and right mounting seats and fixed to said rear support blocks of said left and right mounting seats | The Accused Product allegedly has a "rear cover plate" fixed to the rear support blocks. An annotated photograph identifies this component (Compl. p. 8). | ¶16, ¶17, p. 8 | col. 3:26-28 |
| wherein the rear cover plate includes a top plate portion disposed above said rear connecting rod, a fence plate portion extending downwardly... in front of said rear connecting rod, and a back plate portion extending downwardly... behind said rear connecting rod. | The complaint alleges the accused "rear cover plate" has portions corresponding to the claimed top, fence, and back plates. An annotated exploded-view diagram explicitly labels the "rear cover plate," "top plate portion," "fence plate portion," and "back plate portion" (Compl. p. 7). | ¶16, ¶17, p. 7 | col. 3:28-34 |
- Identified Points of Contention:
- Scope Questions: A primary question may be whether the components of the Accused Product, as identified in the user manual, correspond in structure and function to the specific claim elements. For example, a dispute could arise over whether the accused "top connecting rod" (Claim 1) or "rear cover plate" (Claim 9) meet all the structural limitations defined in the patent.
- Technical Questions: The infringement analysis for Claim 9 raises the question of whether the accused "rear cover plate" is a single component that can be described as having distinct "top," "fence," and "back" portions, or if the claim requires more structurally differentiated sub-parts.
V. Key Claim Terms for Construction
The Term: "connecting rod"
- Context and Importance: This term appears in the limitations for the "front connecting rod", "rear connecting rod", and "top connecting rod" (Claim 1). The patent’s claims distinguish between "rods" and "plates" (e.g., "motor mounting plate", "rear cover plate"). Practitioners may focus on this term because the defense could argue that a component alleged to be a "rod" is functionally a brace or plate, or that it lacks the specific structural features of the rods disclosed in the specification, thereby avoiding infringement.
- Intrinsic Evidence for a Broader Interpretation: The specification does not provide an explicit definition of "connecting rod", which may support giving the term its plain and ordinary meaning.
- Intrinsic Evidence for a Narrower Interpretation: The detailed description discloses that the connecting rods (4) have specific features, including a "stepped" shape with an "end neck" (42), a "shoulder" (421), and "transversely opposite recessed flat faces" (45) for clamping ('018 Patent, col. 2:58-col. 3:10). An argument could be made that the term should be limited to structures possessing these characteristics.
The Term: "rear cover plate" including a "top plate portion", a "fence plate portion", and a "back plate portion"
- Context and Importance: The infringement of Claim 9 hinges on whether the accused component meets the definition of a "rear cover plate" with these three specific, directionally-defined portions. The dispute will likely center on whether a single piece of formed metal can satisfy these three limitations simultaneously.
- Intrinsic Evidence for a Broader Interpretation: Plaintiff may argue that a single, unitary component can have different "portions" that satisfy the claim, as long as they are oriented as described (i.e., above, in front of, and behind the rear connecting rod). The complaint's annotations labeling these distinct portions on a single part supports this view (Compl. p. 7).
- Intrinsic Evidence for a Narrower Interpretation: Defendant may argue that the claim requires structurally distinct or separately identifiable sections, rather than conceptual divisions of a single bent plate. The specification describes the "rear cover plate" (7) and its constituent "top plate portion" (71), "fence plate portion" (72), and "back plate portion" (73) in detail, including specific tabs (74, 75, 731) for fastening, which could support a narrower construction limited to this more complex arrangement ('018 Patent, col. 3:28-40).
VI. Other Allegations
- Indirect Infringement: The complaint does not plead a count for indirect infringement (inducement or contributory infringement). The sole count is for direct infringement under 35 U.S.C. § 271(a) (Compl. ¶20).
- Willful Infringement: Willfulness is alleged based on Defendant’s purported pre-suit knowledge of the '018 Patent. The complaint cites a May 19, 2016 notice letter from Plaintiff and a June 20, 2016 response from Defendant, which allegedly establishes actual notice almost two years before the lawsuit was filed (Compl. ¶¶24-25).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of structural correspondence: does the assembly of components in the accused planer map directly onto the specific arrangement of "connecting rods", "mounting seats", and "plates" as recited in the asserted claims, or are there material differences in their structure, connection, and function that place the product outside the claims' scope?
- The case will also turn on the distinction between claims. Given that Claim 1 requires a "top connecting rod" and Claim 9 requires a "rear cover plate", a key question is whether the accused product infringes one, both, or neither of these alternative configurations, and whether the accused structure can be permissibly characterized as both a "rod" and part of a "plate" assembly.
- Ultimately, the dispute may be resolved through claim construction: how the court defines key terms like "connecting rod" and "rear cover plate" will be critical. The central question is whether these terms will be construed broadly based on their plain meaning or more narrowly limited to the specific features and embodiments disclosed in the patent's specification.