DCT
0:24-cv-04264
Go North Group Ab v. Che
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Go North Group AB (Sweden)
- Defendant: Xiaoling Che (China)
- Plaintiff’s Counsel: Conner IP
- Case Identification: 0:24-cv-04264, D. Minn., 11/22/2024
- Venue Allegations: Venue is alleged to be proper based on Defendant’s business activities targeting consumers in the United States and Minnesota through the Amazon.com marketplace, and on Defendant’s prior lawsuits filed in U.S. federal courts.
- Core Dispute: Plaintiff seeks a declaratory judgment that its puzzle boards, which feature a rotating base, do not infringe Defendant’s patent directed to a movable puzzle platform.
- Technical Context: The technology relates to mechanical assemblies, such as rotating bases, that are attached to puzzle boards to allow users to easily turn the board and access different sections of a puzzle.
- Key Procedural History: The action was precipitated by Amazon.com removing Plaintiff’s products from its platform following an infringement complaint filed by the Defendant. The complaint for declaratory judgment alleges that the specific claim limitations at issue were added during patent prosecution to avoid prior art, potentially giving rise to prosecution history estoppel against any claims of infringement under the doctrine of equivalents.
Case Timeline
| Date | Event |
|---|---|
| 2023-11-01 | Plaintiff begins selling the Accused Products (approx.) |
| 2024-02-06 | U.S. Patent No. 11,478,551 Issues |
| 2024-11-13 | Plaintiff receives notice of product removal from Amazon |
| 2024-11-22 | Complaint for Declaratory Judgment Filed |
II. Technology and Patent(s)-in-Suit Analysis
Note: The complaint at Exhibit 1 provides a copy of U.S. Patent No. 11,478,551 B2, titled “Long-Acting Adrenomedullin Derivative,” which appears to be unrelated to the subject matter of the lawsuit. The following analysis is therefore based exclusively on the complaint’s characterization of U.S. Patent No. 11,478,551, titled “MOVABLE PUZZLE PLATFORM.” Patent citations to the specification are not possible.
U.S. Patent No. 11,478,551 - MOVABLE PUZZLE PLATFORM
- Patent Identification: U.S. Patent No. 11,478,551 (“the ’551 Patent”), “MOVABLE PUZZLE PLATFORM,” issued February 6, 2024 (Compl. ¶17).
The Invention Explained
- Problem Addressed: The patent addresses the need for a mechanism to provide accessibility and movement for a puzzle board on a playing surface (Compl. ¶18).
- The Patented Solution: The patent discloses a “board accessible unit” that is coupled to the bottom of a puzzle board to allow it to slide (Compl. ¶18). This unit is depicted in the patent’s Figure 1 as a multi-component assembly comprising a first moving member, a second moving member, and a bearing unit that cooperate to allow movement (Compl. ¶19; Compl. p. 5, Figure 1). The specific structure and interaction of these three components form the basis of the patented solution.
- Technical Importance: The invention provides a means for a puzzle board to move in “different planar directions with respect to the playing surface,” facilitating user access to the entire board (Compl. ¶18).
Key Claims at a Glance
- The complaint seeks a declaratory judgment of non-infringement as to all claims, focusing on independent Claim 1 (Compl. ¶21).
- The essential elements of independent Claim 1, as described in the complaint, include:
- A puzzle board.
- A “board accessible unit” coupled to the puzzle board.
- The board accessible unit must include a “first moving member,” a “second moving member,” and a “first bearing unit.”
- The board accessible unit must have a specific configuration relating to these three components (Compl. ¶¶18-19, 24-26).
- The complaint notes that because all other claims depend from Claim 1, they necessarily include all of its limitations (Compl. ¶21).
III. The Accused Instrumentality
Product Identification
- The accused products are Go North’s “Puzzle Boards” sold under the PLAYVIBE brand on Amazon.com, identified by ASINs B0CKTW4TTL and B0CMBXMT9M (Compl. ¶6).
Functionality and Market Context
- The accused puzzle boards include a rotating base, which the complaint refers to as a “lazy Susan,” that allows the board to turn (Compl. ¶22). The complaint provides photographic evidence depicting this lazy Susan component disassembled, showing it is comprised of two plastic rings with semicircular grooves, loose ball bearings, and loose plastic cylinder segments that separate the balls during assembly. A photograph shows the two rings of the lazy Susan component. (Compl. ¶6, p. 7).
- The complaint alleges these puzzle boards are an important part of its business and that their removal from Amazon occurred during the peak holiday shopping season, causing substantial lost sales and harm to goodwill (Compl. ¶¶9-10).
IV. Analysis of Infringement Allegations
Note: The following chart summarizes the Plaintiff’s allegations for its declaratory judgment of non-infringement. Since the patent specification was not correctly provided with the complaint, citations to the patent are not possible.
’551 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| “the first bearing unit” | The accused product’s bearing mechanism consists of loose balls and plastic cylinder segments that are placed into a groove during assembly. Plaintiff alleges this collection of loose parts is not a “unit.” A photograph shows the loose balls and cylinder segments separate from the main rings. (Compl. ¶6, p. 6). | ¶24 | Specification not provided |
| “the second moving member having a flat base and a protrusion protruded from the center of the flat base toward the first moving member for engaging with the first bearing unit” | The accused product’s rotating mechanism is comprised of two rings. Plaintiff alleges that neither of these rings has a protrusion extending from the center of a flat base. Photographs show two rings, each with a semicircular groove, but without a central protrusion. (Compl. ¶7, p. 7). | ¶25 | Specification not provided |
| “wherein an outer circumferential surface of said first moving member is engaged with an inner circumferential surface of said second moving member via said first bearing unit to enable said second moving member being coaxially rotated with respect to said first moving member” | The two rings of the accused product are assembled such that their outer circumferential surfaces are aligned. Plaintiff alleges this is structurally different from a configuration where the outer surface of one member engages the inner surface of another. A photograph with an arrow highlights that the outer surfaces of the two rings are aligned when assembled. (Compl. ¶8, p. 8). | ¶26 | Specification not provided |
- Identified Points of Contention:
- Scope Questions: The dispute raises the question of how key structural terms in Claim 1 should be construed. Specifically, does the term “first bearing unit” require a single, integrated component, or can it be construed to cover a collection of loose parts that function as a bearing when assembled? Further, what specific structure is required to meet the “protrusion protruded from the center” limitation?
- Technical Questions: A central technical question is whether there is a fundamental structural mismatch between the claimed invention and the accused product. The complaint argues the accused lazy Susan, with its two aligned rings and loose parts, operates differently from the claimed unit, which allegedly requires one member to fit inside another and contain a specific central protrusion.
V. Key Claim Terms for Construction
The Term: “first bearing unit”
Context and Importance: The definition of this term is critical because the Plaintiff’s primary non-infringement argument is that its collection of loose balls and plastic separators does not constitute a “unit” (Compl. ¶24). Practitioners may focus on this term because its construction could be dispositive; if “unit” is construed to mean a single, pre-assembled, or integrated component, the accused product may not literally infringe.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specification is not available for analysis. A patentee would typically argue that the term should be given its plain and ordinary meaning, which might encompass components that form a functional unit when assembled.
- Evidence for a Narrower Interpretation: The complaint includes the patent’s Figure 1, which depicts the “first bearing unit” (23) as what appears to be a single, self-contained component, such as a bearing race with captured balls (Compl. p. 5, Fig. 1). Plaintiff will likely argue this depiction defines the term as an integrated structure, distinct from its loose parts.
The Term: “a protrusion protruded from the center of the flat base”
Context and Importance: Plaintiff alleges its product entirely lacks this feature, making its construction another potentially dispositive issue (Compl. ¶25).
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specification is not available for analysis. A patentee might argue that any feature on the accused ring that serves to engage the bearing, regardless of its shape, could be considered a "protrusion."
- Evidence for a Narrower Interpretation: Plaintiff will likely argue that the plain language of the claim requires a distinct, raised structure located at the center of a flat base, a feature it claims is absent from its two-ring lazy Susan design (Compl. ¶25, p. 7).
VI. Other Allegations
- Prosecution History Estoppel: The complaint alleges that the specific claim limitations at issue were added during prosecution to distinguish the invention from prior art cited by the patent examiner (Compl. ¶27). Plaintiff asserts that this act of amendment creates prosecution history estoppel, which would preclude the Defendant from arguing that the accused products infringe under the doctrine of equivalents if they are found not to infringe literally (Compl. ¶27).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction: Can the term “first bearing unit,” in the context of the patent’s claims and figures, be construed to cover a collection of loose, unassembled parts, or does it require an integrated structure? Similarly, what is the scope of the structural limitations requiring a “protrusion” and an “inner/outer” surface engagement?
- A key evidentiary question will be one of structural comparison: Does the evidence, including the photographs provided in the complaint and any future expert analysis, establish that the accused lazy Susan is, as Plaintiff alleges, “fundamentally different in structure” from the invention defined by the specific limitations of Claim 1?
- A central legal question will be the application of prosecution history estoppel: Should the court find no literal infringement, will the Defendant be estopped from asserting infringement under the doctrine of equivalents for the very limitations allegedly added to secure the patent's allowance?