DCT

1:18-cv-00281

Ultra MEK Inc v. United Furniture Industries Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:18-cv-00281, M.D.N.C., 09/24/2018
  • Venue Allegations: Venue is alleged to be proper in the Middle District of North Carolina because the defendants conduct substantial business in the state, including attending the High Point Furniture Market, derive substantial revenue from the district, and have established places of business there. Certain defendants are also alleged to have contractually waived any challenge to venue in this district as part of a prior settlement agreement.
  • Core Dispute: Plaintiff alleges that Defendants’ powered reclining and reciprocating (e.g., gliding or rocking) seating units and their internal mechanisms infringe two patents, and further alleges that certain defendants have breached a prior settlement agreement and violated a permanent injunction from a previous lawsuit.
  • Technical Context: The lawsuit concerns the mechanical components within motion furniture, specifically the complex linkages that enable a chair to recline, extend an ottoman, and reciprocate, all powered by an electric motor.
  • Key Procedural History: The complaint asserts that this case follows prior litigation between Ultra-Mek and defendants Man Wah (USA), Man Wah Holdings, and Remacro Machinery Technology (RMT). That prior case allegedly concluded in March 2017 with a settlement agreement and a permanent injunction that prohibited the Man Wah defendants and their affiliates from infringing the patents-in-suit. This history is central to the complaint’s allegations of willful infringement, breach of contract, and contempt of court.

Case Timeline

Date Event
2008-11-24 Earliest Priority Date for '348 and '693 Patents
2011-09-13 U.S. Patent No. 8,016,348 Issues
2012-10-30 U.S. Patent No. 8,297,693 Issues
2017-03-17 Permanent Injunction Order entered in prior litigation
2017-11-30 Defendant UFI allegedly received notice of asserted patents
2017-12-XX Man Wah Group allegedly acquires Cenro Group's business
2018-01-XX Defendants allegedly begin infringing sales post-acquisition
2018-09-24 First Amended Complaint Filed

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

U.S. Patent No. 8,016,348 - Reciprocating Seating Unit with Power Actuator, Issued Sep. 13, 2011

The Invention Explained

  • Problem Addressed: The patent describes a market desire to combine the functions of a reclining chair with the repetitive, relaxing motion of a rocking or gliding chair into a single piece of furniture. ('348 Patent, col. 1:11-16, 1:44-53).
  • The Patented Solution: The invention is a complex mechanical linkage system for a chair that allows for both powered reclining and footrest extension, as well as unpowered gliding ("reciprocating") motion. The solution uses a single power actuating unit (e.g., a motor) connected to the linkage in a specific way to move the chair between upright, partially-reclined ("TV"), and fully-reclined positions. A key aspect is the specific arrangement of interconnected links, including upper and lower swing links and a defined actuating mechanism with two "projections" that connect the motor to the rest of the linkage. ('348 Patent, Abstract; col. 2:1-29).
  • Technical Importance: This technology allows for the integration of multiple popular furniture features (power recline, gliding) into one unit, controlled by a specific and efficient powered linkage system. ('348 Patent, col. 1:44-53).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1. (Compl. ¶26).
  • Essential elements of Claim 1 include:
    • A seating unit with a base, seat, backrest, and ottoman.
    • A reclining mechanism comprising a plurality of pivotally interconnected links.
    • A reciprocating mechanism allowing the chair to glide or rock along a longitudinal path.
    • A power actuating unit configured to move the chair between upright, TV, and fully reclined positions.
    • An actuating mechanism that attaches the power unit to the linkage, comprising a cross-member with a first projection pivotally attached to the power unit and a second projection pivotally attached to a lower swing link of the reclining mechanism.
  • The complaint does not explicitly reserve the right to assert dependent claims, but such a reservation is standard practice.

U.S. Patent No. 8,297,693 - Reciprocating Seating Unit with Power Actuator, Issued Oct. 30, 2012

The Invention Explained

  • Problem Addressed: As a continuation of the application leading to the ’348 Patent, this patent addresses the same technical problem of combining powered reclining and unpowered reciprocating motion in a single seating unit. (’693 Patent, col. 1:21-23, 1:48-57).
  • The Patented Solution: The ’693 Patent describes a virtually identical mechanical system. The claims are structured similarly, focusing on a specific geometry of interconnected links, including a power actuating unit connected via a cross-member with distinct projections to drive the chair's motion between its various positions. (’693 Patent, Abstract; col. 2:1-32).
  • Technical Importance: This patent provides alternative or refined claim scope around the same core invention disclosed in the ’348 Patent, a common strategy to strengthen a patent portfolio. (’693 Patent, col. 1:6-12).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1. (Compl. ¶26).
  • Essential elements of Claim 1 are substantially similar to Claim 1 of the ’348 Patent, including:
    • A seating unit with a base, seat, backrest, and ottoman.
    • A reclining mechanism and a reciprocating mechanism.
    • A linear actuating unit with opposed ends that moves the chair through upright, TV, and fully reclined positions.
    • A requirement that the first end of the actuating unit moves forward as the chair goes from upright to TV, and the second end moves rearward as the chair goes from TV to fully reclined.
  • The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

  • Product Identification: The accused instrumentalities are reclining seating units and the internal mechanisms that enable their motion. Specific examples include mechanisms manufactured under the "Cenro" brand (e.g., models 5151 and 4311) and finished chairs sold under brands like "Simmons" or product lines such as "Genevieve," "George," and "Miracle Power Motion." (Compl. ¶¶ 26, 74).
  • Functionality and Market Context: The complaint alleges these products are "power-rocker and power-glider mechanisms for recliners." (Compl. ¶36). They are components imported into the U.S. and incorporated into finished seating units for sale. (Compl. ¶36). The complaint includes a photograph of an accused finished recliner, which illustrates a typical consumer product in this category. (Compl. p. 11, ¶26). The complaint alleges that the accused "Cenro mechanism 5151" is not colorably different from the "RMT No. 761X" mechanism that was subject to the permanent injunction in the prior litigation. (Compl. ¶48). An image of the enjoined RMT mechanism is provided to support this comparison. (Compl. p. 20, ¶48).

IV. Analysis of Infringement Allegations

The complaint alleges that the accused products infringe but does not provide a detailed, element-by-element infringement analysis in the form of a claim chart. The following table summarizes the infringement theory based on the narrative allegations in the complaint.

'348 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A seating unit, comprising: a base unit...a...seat...a...backrest...an extendable ottoman The accused products are reclining seating units that include these fundamental components. An example is depicted in a photograph. ¶¶ 26, 74; p. 11 col. 4:55-63
a reclining mechanism...comprising a plurality of pivotally interconnected links The accused products are alleged to be "reclining mechanisms" that necessarily contain such links to function. ¶¶ 26, 74 col. 4:64-67
a reciprocating mechanism...configured to enable the seat, backrest and reclining mechanism to reciprocate The accused products are identified as "power-rocker and power-glider mechanisms," which allegedly perform the claimed reciprocating function. ¶36 col. 2:5-9
a power actuating unit attached to the reclining mechanism, the actuating unit configured to move the seating unit between (a) an upright position... (b) an intermediate TV position... and (c) a fully reclined position The accused products are "power-rocker" and "power-glider" mechanisms, which are alleged to be powered and move through different positions. ¶¶ 26, 36 col. 2:9-20
an actuating mechanism, the actuating mechanism comprising: a cross-member...first and second projections fixed to the cross-member... The complaint makes a general allegation that the accused mechanisms fall within the scope of the claims, but does not provide specific facts identifying the claimed "actuating mechanism" or its "projections." ¶¶ 26, 74 col. 2:21-29
  • Identified Points of Contention:
    • Technical Questions: A primary question will be evidentiary. The complaint makes conclusory allegations of infringement without detailing how the accused mechanisms meet specific limitations, such as the "first and second projections" on the "actuating mechanism." The central technical dispute will be whether discovery reveals the accused Cenro and Simmons mechanisms contain the precise linkage geometry and power unit connections recited in the claims.
    • Scope Questions: The case may raise the question of whether the term "reciprocating mechanism", as used in the patent, is coextensive with the accused "rocker" and "glider" mechanisms. The patent's own background distinguishes these terms, which could be a focus during claim construction. ('348 Patent, col. 1:26-43).

V. Key Claim Terms for Construction

  • The Term: "reciprocating mechanism"

  • Context and Importance: This term defines the core gliding/rocking function of the invention. The complaint accuses both "power-rocker and power-glider mechanisms." (Compl. ¶36). Whether both types of motion fall within the scope of "reciprocating" as defined by the patent will be critical to determining the breadth of infringement. Practitioners may focus on this term because the patent specification appears to use "gliding" as its primary example of reciprocation, potentially creating an argument to exclude traditional "rocking."

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The claim itself describes the function broadly as enabling the chair "to reciprocate relative to the base unit along a longitudinal path." ('348 Patent, col. 9:30-34). This could be argued to cover any repetitive back-and-forth motion, including rocking.
    • Evidence for a Narrower Interpretation: The patent's Background section discusses "gliding" chairs, which use swing links, as an alternative to traditional "rocking" chairs. ('348 Patent, col. 1:29-43). The preferred embodiments all depict link-based gliding systems. This context could support an interpretation limited to gliding-type motion.

  • The Term: "actuating mechanism" (comprising a cross-member with first and second projections)

  • Context and Importance: This is the heart of the claimed invention, defining precisely how the power unit connects to and drives the linkage. Infringement will hinge on whether the accused products have a structure that meets this detailed definition. The complaint does not identify this structure in the accused products, making it a guaranteed point of dispute.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The claim language itself does not restrict the shape or material of the "projections" or "cross-member," allowing for various designs that perform the same function.
    • Evidence for a Narrower Interpretation: The specification and figures show a very specific Z-shaped cross-member (44) and associated brackets (42, 46) that embody the claimed projections. ('348 Patent, Figs. 2A, 4A; col. 6:56-64). A defendant may argue that the term should be construed as limited to the structures disclosed or their equivalents.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement. The inducement theory is based on allegations that Defendants had knowledge of the patents from prior litigation and direct notice, and then encouraged infringement by, for example, "posting videos on YouTube teaching and encouraging others how to directly infringe." (Compl. ¶¶ 31, 34, 75). Contributory infringement is based on the allegation that the accused mechanisms are especially made for use in an infringing manner and have "no substantial non-infringing uses." (Compl. ¶¶ 32, 76).
  • Willful Infringement: The complaint alleges willful infringement based on Defendants’ purported knowledge of the patents and infringement, stemming from the prior lawsuit, a resulting permanent injunction, and subsequent notice letters. (Compl. ¶¶ 28-30, 80, 88). The core of the willfulness claim is that certain defendants proceeded with the accused activities despite being subject to a court order and having been sued on the same patents previously.

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

  1. Evidentiary Match: A primary issue for the court will be a factual and technical one: does the specific mechanical structure of the accused "Cenro" and "Simmons" mechanisms, once revealed in discovery, actually embody the detailed linkage configuration—particularly the claimed "actuating mechanism" with its specific "projections"—recited in the asserted claims? The complaint's lack of specific technical allegations makes this the central, unresolved infringement question.
  2. Impact of Prior Litigation: The case will likely turn on the legal and factual consequences of the prior lawsuit and resulting March 2017 permanent injunction. Key questions will be whether the newly accused products are merely "colorable imitations" of the previously enjoined products and whether the defendants' conduct rises to the level of willful infringement, breach of contract, or contempt of court.
  3. Definitional Scope: A core legal issue will be one of claim construction. Can the term "reciprocating mechanism", which the patent illustrates with gliding-type linkages, be construed broadly enough to cover the "power-rocker" mechanisms also accused in the complaint, or is its scope limited by the specification to gliding motion only?