DCT
0:22-cv-01730
Apex Brands Inc v. Jinhua Haode Technology Co Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Apex Brands, Inc.; Apex Tool Group, LLC (Delaware)
- Defendant: Jinhua Haode Technology Co., Ltd. (China)
- Plaintiff’s Counsel: Carlson, Caspers, Vandenburgh, & Lindquist, P.A.; Lewis Roca Rothgerber Christie LLP
- Case Identification: 0:22-cv-01730, D. Minn., 07/07/2022
- Venue Allegations: Plaintiff alleges that venue is proper because Defendant is a foreign corporation and has committed acts of infringement in Minnesota by making its products available for sale in the district through established distribution channels, such as Amazon and its own interactive website, thereby subjecting it to personal jurisdiction.
- Core Dispute: Plaintiff alleges that Defendant’s speed square measuring tools infringe two patents related to a speed square with a retractable extension element.
- Technical Context: The technology concerns hand tools for the construction and DIY markets, specifically improving the versatility of a standard "speed square" by incorporating an extendable measuring arm.
- Key Procedural History: The complaint alleges Plaintiff sent a notice letter to Defendant on April 13, 2022, identifying the '366 patent and a pending application that would issue as the '413 patent. It also notes that on March 15, 2022, the USPTO refused Defendant's trademark application for "Krecent" due to a likelihood of confusion with Plaintiff's CRESCENT® trademarks.
Case Timeline
| Date | Event |
|---|---|
| 2016-10-31 | Priority Date for '366 and '413 Patents |
| 2021-03-01 | Defendant's alleged first use of "Krecent" mark in commerce |
| 2021-11-02 | U.S. Patent No. 11,161,366 Issues |
| 2022-03-15 | USPTO refuses registration of "Krecent" trademark |
| 2022-04-13 | Plaintiff sends notice letter to Defendant |
| 2022-04-14 | Defendant's attorneys allegedly receive notice letter |
| 2022-05-10 | U.S. Patent No. 11,325,413 Issues |
| 2022-05-16 | Defendant allegedly receives notice letter via DHL |
| 2022-07-07 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,161,366 - "Speed Square with Extension" (Issued Nov. 2, 2021)
The Invention Explained
- Problem Addressed: The patent's background section notes that craftsmen often must switch between multiple speed squares of different sizes when working on various materials, which can be tedious and slow down production ('366 Patent, col. 1:30-34).
- The Patented Solution: The invention is a speed square featuring a retractable extension element. This element allows a user to extend the measuring surface for larger workpieces or retract it for smaller ones or for compact storage, thereby providing the functionality of multiple tools in a single device ('366 Patent, col. 2:38-43, Fig. 1). The extension element is designed so that its measurement markings form a continuation of the markings on the main triangular plate, creating a seamless, extended scale ('366 Patent, col. 1:45-48).
- Technical Importance: This design consolidates the utility of different-sized tools, for instance, combining a 7-inch and a 12-inch speed square into one, enhancing convenience and efficiency for the user ('366 Patent, col. 2:48-53).
Key Claims at a Glance
- The complaint asserts independent claim 14 (Compl. ¶23).
- The essential elements of independent claim 14 are:
- A triangular flat plate with measurement markings.
- A T-bar affixed along a first side of the plate.
- An extension element operably coupled to a second side of the plate, with measurement markings that continue those on the plate.
- The extension element has a second set of measurement markings on at least one of its surfaces.
- The complaint reserves the right to assert additional claims (Compl. ¶31).
U.S. Patent No. 11,325,413 - "Speed Square with Extension" (Issued May 10, 2022)
The Invention Explained
- Problem Addressed: As with its parent patent, the '413 patent addresses the inefficiency of requiring craftsmen to carry and switch between multiple speed squares for different tasks ('413 Patent, col. 1:31-36).
- The Patented Solution: The '413 patent claims a specific mechanical implementation for an extendable speed square. The solution features a "hinge" that connects the extension element to the main plate, allowing it to pivot between a stowed position (folded adjacent to the plate) and an open, in-plane position ('413 Patent, col. 5:26-36). The invention also discloses an "access window" in the plate, through which the stowed extension element is visible and can be manipulated by the user to initiate its deployment ('413 Patent, col. 5:37-43; Fig. 3).
- Technical Importance: The claimed invention provides a specific and robust hinged mechanism for extending and retracting the measurement surface, defining a particular structural approach to solving the problem.
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶40).
- The essential elements of independent claim 1 are:
- A triangular flat plate with a T-bar and an operably coupled extension element.
- A "hinge" that couples the extension element to the plate, configured to retract and extend the element between a stowed (out-of-plane) and open (in-plane) position.
- An "access window" in the flat plate, located near the T-bar intersection.
- The extension element is visible through the access window when stowed, and not visible through it when open.
- The complaint reserves the right to assert additional claims (Compl. ¶51).
III. The Accused Instrumentality
Product Identification
- The accused product is the "Haode speed square," also marketed as the "WX-2021HD 3D Multi-angle measuring ruler" (Compl. ¶11, fn. 1, 3).
Functionality and Market Context
- The complaint alleges the accused product is a speed square tool featuring a retractable extension arm that provides a longer measuring edge (Compl. ¶11). The product is sold in the U.S. through online channels, including Amazon and Defendant's own website, under the brand name "Krecent" (Compl. ¶11). An image included in the complaint shows the "Krecent" speed square, which has a triangular body, a T-bar, and an extendable arm with measurement markings (Compl. p. 6, Image). Plaintiff alleges that, other than its own products, Defendant’s product is the only speed square with an extension element sold on the market (Compl. ¶15).
IV. Analysis of Infringement Allegations
The complaint references, but does not include, claim chart exhibits. The following tables summarize the element-by-element infringement allegations made in the complaint's narrative.
'366 Patent Infringement Allegations
| Claim Element (from Independent Claim 14) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a triangular flat plate having measurement markings indicated on at least one face | The accused product has a triangular main body with measurement markings. | ¶25 | col. 9:48-50 |
| a T bar affixed to, and extending along, a length of a first side of the triangular flat plate | The accused product incorporates a T-bar feature along one of the sides of its triangular body. | ¶26 | col. 9:51-53 |
| an extension element operably coupled to an end of a second side of the triangular flat plate opposite the T bar, the extension element having measurement markings indicated on at least one face, such that the measurement markings of the triangular flat face continue on the extension element | The accused product includes an extendable arm that is attached to the main body and has measurement markings that appear to continue the scale from the main body. | ¶¶27-28 | col. 9:54-60 |
| wherein the extension element has a second set of measurement markings on at least one surface of the extension element | The extendable arm of the accused product includes its own set of measurement markings. | ¶¶29-30 | col. 12:12-15 |
'413 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a triangular flat plate having... a T bar... an extension element operably coupled to a first end of a second side... | The accused product is alleged to have a triangular plate, a T-bar, and an extension element coupled to the plate. | ¶¶42-44 | col. 5:14-25 |
| a hinge configured to extend and retract the extension element between an open position and a stowed position... | The complaint alleges the mechanism connecting the extension element to the body of the accused product functions as the claimed hinge. | ¶45 | col. 5:26-30 |
| wherein, in the stowed position, the extension element is disposed in a first plane that is adjacent and parallel to a plane of the triangular flat plate | The complaint alleges that when the accused product's arm is retracted, it lies in a plane parallel to the main body. | ¶46 | col. 5:31-33 |
| wherein, in the open position, the extension element is disposed in a second plane that is a same plane as the plane of the triangular flat plate | The complaint alleges that when the accused product's arm is extended, it lies in the same plane as the main body. | ¶47 | col. 5:34-36 |
| wherein an access window is disposed in the triangular flat plate... and wherein the extension element is visible through the access window in the stowed position and not visible... in an open position | The complaint alleges the accused product has a feature that meets the structural and functional requirements of the claimed "access window." An image in the complaint shows the defendant's product with a blurred logo, but the cutout area for the pivot is visible (Compl. p. 8, Image). | ¶¶48-50 | col. 5:37-43 |
Identified Points of Contention
- Technical Questions ('413 Patent): A central factual question will be whether the accused product's mechanism for attaching and moving its extension arm meets the specific definitions of a "hinge" and "access window" as claimed in the '413 patent. The complaint's visual evidence is not sufficiently detailed to definitively resolve the precise mechanical operation of the accused device, which will be a focus of discovery.
- Scope Questions ('366 Patent): The infringement analysis for the '366 patent will likely focus on the scope of the term "operably coupled". Given the breadth of this term, the key question is whether the specific connection mechanism used in the accused product falls within its scope as understood in light of the patent's specification and any prosecution history.
V. Key Claim Terms for Construction
The Term: "hinge" (from '413 Patent, Claim 1)
Context and Importance: The presence of a "hinge" is a critical limitation differentiating the '413 patent from the broader '366 patent. The infringement analysis for the '413 patent will depend entirely on whether the mechanism connecting the extension arm in the accused product can be construed as a "hinge."
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent states that the "speed square 100 may include a hinge 112 connected on a first side to the flat plate 102 and on a second side to the extension element 110" ('413 Patent, col. 3:66-col. 4:1). It also mentions alternative "hinge elements, such as opposing C couplings and shafts, aperture and tabs or snap fittings" (col. 4:2-4), which may support a functional definition rather than one limited to a traditional hinge.
- Evidence for a Narrower Interpretation: The figures consistently depict a specific pivoting mechanism at the connection point ('413 Patent, Figs. 1, 6). A party could argue the term should be limited to the disclosed embodiment, where a rotational axis is substantially parallel to the T-bar.
The Term: "access window" (from '413 Patent, Claim 1)
Context and Importance: This structural element is a key limitation of claim 1. If the accused product is found to lack a feature that meets the definition of an "access window," it cannot infringe this claim. The term's construction will determine what type of opening or cutout satisfies the claim.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent describes the function of the window: to make the extension element "visible" and to enable a user to "push the extension element 110 through the access window 180 in order to unlatch the retention element" ('413 Patent, col. 4:21-34). This functional language may support construing any opening that performs these functions as an "access window."
- Evidence for a Narrower Interpretation: Figure 3 shows the "access window" (180) as a distinct cutout in the body of the triangular flat plate ('413 Patent, Fig. 3). This may support an argument that the term requires a specific aperture through the plate, not merely a gap or space created between components.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement for both patents. The allegations for inducement are based on Defendant's advertising and sales, which allegedly instruct customers to use the product in an infringing manner (Compl. ¶¶34, 54). The allegations for contributory infringement assert that the product is not a staple article of commerce with substantial non-infringing uses and is especially adapted for infringement (Compl. ¶¶33, 53).
- Willful Infringement: Willfulness is alleged for both patents based on Defendant’s alleged pre-suit knowledge. The complaint pleads that Defendant was aware of the '366 patent and the impending '413 patent as of April 14, 2022, upon receiving Plaintiff's notice letter, and that it continued its infringing activities thereafter (Compl. ¶¶35, 55).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction and factual correspondence: Does the accused product’s physical structure meet the specific mechanical limitations of the '413 patent? In particular, discovery and expert testimony will be required to determine if the product’s pivoting mechanism qualifies as a "hinge" and if any aperture in its body functions as the claimed "access window."
- A second central question relates to willfulness and intent: The complaint alleges not just patent infringement but also deliberate copying and trademark infringement, citing the "Krecent" mark and the alleged blurring of product photos. A key question for the case will be what evidence demonstrates that Defendant's conduct was willful, as this could substantially impact potential damages.
- Finally, the case may raise a question of patent scope: For the '366 patent, the dispute may center on the breadth of the term "operably coupled." The court will need to determine if this general term, in the context of the patent's specification, is broad enough to read on the specific connection mechanism used in the accused product.