DCT

1:24-cv-04965

BQBP Electronics Inc v. Green Crown Ventures LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:24-cv-04965, E.D.N.Y., 10/21/2024
  • Venue Allegations: Venue is based on Defendant Green Crown Ventures, LLC residing in the district, all Defendants transacting business in the district, and a substantial part of the events giving rise to the claims occurring in the district.
  • Core Dispute: Plaintiff seeks a declaratory judgment that Defendants' patent for a collapsible chafer stand is invalid and unenforceable due to alleged derivation and incorrect inventorship, and alternatively seeks to correct inventorship to name its CEO as a co-inventor.
  • Technical Context: The technology concerns collapsible wire stands used to hold and warm chafing dishes, a common product in the food service and catering industries.
  • Key Procedural History: The action was precipitated by a June 3, 2024 letter from Defendants accusing Plaintiff of patent infringement, followed by a June 25, 2024 infringement report filed by Defendants with Amazon.com against Plaintiff's product listings. The complaint's central allegations are that the named inventor did not invent the patented subject matter but derived it from Plaintiff's CEO via a former employee of Plaintiff, giving rise to claims of invalidity and inequitable conduct before the USPTO.

Case Timeline

Date Event
2018-04-23 Defendant Wyler's employment with Plaintiff BQBP begins.
2020-01-01 Plaintiff's CEO, David Banda, allegedly conceives invention (earliest date).
2021-06-11 Defendant Wyler's employment with Plaintiff BQBP is terminated.
2022-05-23 Plaintiff executes first purchase order for its Chafing Stand Product.
2023-09-08 U.S. Patent Application No. 18/244,115 is filed.
2023-09-08 David Banda assigns his rights in the invention to Plaintiff BQBP.
2023-11-14 Plaintiff executes purchase order for second iteration of its product.
2023-12-17 Plaintiff makes second iteration of its product available on Amazon.
2024-05-21 U.S. Patent No. 11,986,126 issues.
2024-06-03 Defendants send letter to Plaintiff accusing it of infringement.
2024-06-25 Defendants allegedly contact Amazon to report infringement.
2024-07-03 Plaintiff receives a Notice of Patent Infringement from Amazon.
2024-10-21 Amended Complaint is filed.

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

U.S. Patent No. 11,986,126 - "CHAFING DISH"

The Invention Explained

  • Problem Addressed: The patent's background describes known chafing stands as having drawbacks, including bulky handles that can interfere with fuel holders and wire frames that are difficult to collapse into a compact package for storage and transport (ʼ126 Patent, col. 1:59-65).
  • The Patented Solution: The invention is a collapsible chafer stand designed for improved compactness and stability. It features a base frame, leg frames connected via "T-shaped members" that act as hinges, and poles that extend upward to support a removable top frame (ʼ126 Patent, Abstract). This construction, particularly the use of a single-rod base frame, is described as being "sleeker and [does] not interfere with the heating member" compared to prior art designs (ʼ126 Patent, col. 2:39-42).
  • Technical Importance: The claimed configuration purports to create an "easily stackable structure that can be folded for easy transportation and reduced shipping costs" by minimizing component parts and enabling a more compact folded state (ʼ126 Patent, col. 2:36-39).

Key Claims at a Glance

  • The complaint focuses on the apparatus claimed in the patent, which corresponds to independent claim 1.
  • Essential elements of independent claim 1 include:
    • a base frame;
    • leg frames connected to the base frame via T-shaped members;
    • each leg frame comprising a connecting bar and U-shaped members that extend outwardly from the connecting bars;
    • the connecting bars drawing through the T-shaped members;
    • poles extending from the leg frames;
    • a handle connected to the leg frames that does not extend past a height of the U-shaped members when the leg frames are collapsed.

III. The Accused Instrumentality

Product Identification

  • The instrumentality at issue is the Plaintiff’s "Chafing Stand Product," marketed as a "Foldable Wire Stand" (Compl. ¶¶2, 29; p. 6, Figure 1).

Functionality and Market Context

  • The complaint describes the Chafing Stand Product as a foldable wire rack for chafing dishes sold through an online storefront on Amazon.com (Compl. ¶29).
  • The product is alleged to incorporate several novel features conceived by Plaintiff's CEO, David Banda, including: a "sleeker base frame constructed of a single rod," a "T-shaped member which acts as a hinge member," leg frames that permit stacking, and a connecting bar and handle designed to minimize the folded size (Compl. ¶30). Figure 1 of the complaint is a product image from an online listing showing the assembled stand holding chafing trays (Compl. p. 6, Figure 1). Plaintiff alleges it has experienced "huge success" with the product (Compl. ¶27).

IV. Analysis of Infringement Allegations

The complaint is for a declaratory judgment of non-infringement and invalidity, so the "infringement allegations" are those made by the Defendants against the Plaintiff, which form the basis for the legal controversy. The complaint alleges that Defendants' patent claims read on Plaintiff's product, but only because Defendants allegedly misappropriated the invention. To illustrate the direct feature-for-feature overlap that is at the heart of the inventorship dispute, the complaint includes a figure from the patent itself. This figure, "FIG. 2" in the complaint, is presented to demonstrate how the patented design "mirrors many features of David Banda's Chafing Stand Product" (Compl. ¶39; p. 8, FIG. 2).

’126 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality (of Plaintiff's Product) Complaint Citation Patent Citation
a base frame The product includes a "sleeker base frame constructed of a single rod which does not interfere with the heating element." ¶30 col. 4:46-51
leg frames placed apart from one another, wherein said leg frames connect at distal ends of said base frame via T-shaped members... The product uses a "T-shaped member which acts as a hinge member allowing leg frames to pivot for easy folding and which acts to stabilize the product structure." ¶30 col. 4:52-59
...wherein each of said leg frames comprises a connecting bar and U-shaped member, wherein said U-shaped members extend outwardly... The complaint alleges conception of leg frames that allow for stacking and a connecting bar and handle to minimize folded size. ¶30 col. 5:1-12
poles extending from distal ends of each leg frame... The product includes leg frames that allow for stacking of the poles while adding minimal weight. ¶30 col. 5:15-18
...a handle ... does not extend past a height of the U-shaped members when the leg frames are collapsed A connecting bar and handle are "designed to minimize the folded size of the Chafing Stand Product for easier shipping and storage." ¶30 col. 6:62-65

Identified Points of Contention

  • Derivation: The central dispute is not over claim scope but inventorship. A key question for the court will be one of derivation: did the named inventor, Lauren Klein, independently conceive of the invention, or was the invention derived from BQBP's CEO, David Banda, via information allegedly passed by former BQBP employee Sol Wyler? (Compl. ¶¶32-34, 38).
  • Invalidity: The complaint alleges that Plaintiff's sales of its first iteration Chafing Stand Product began on or around May 23, 2022 (Compl. ¶27), more than one year before the '126 Patent's filing date of September 8, 2023 (Compl. ¶34). This raises the question of whether Plaintiff's own prior product constitutes an invalidating public use or on-sale bar under 35 U.S.C. § 102 against the patent's claims.

V. Key Claim Terms for Construction

While the primary dispute centers on inventorship rather than claim construction, the interpretation of certain terms could become relevant.

  • The Term: "T-shaped members"

  • Context and Importance: This term is foundational to the claimed collapsible structure, acting as the hinge connecting the leg frames to the base frame. Practitioners may focus on this term because its precise structural definition is critical to distinguishing the invention from other folding mechanisms and is a feature the Plaintiff explicitly claims its CEO conceived (Compl. ¶30).

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification describes the members functionally as enabling a pivotable connection, stating "first leg frame 38 and second leg frame 40 pivotably connects to base frame 32 via T-shaped frame 42" (Compl. '126 Patent, col. 5:30-32). This functional language could support a construction that covers various hinge structures achieving the same result.
    • Evidence for a Narrower Interpretation: The figures provide a very specific depiction of the "T-shaped member 42," showing a distinct structure through which the "connecting bar" of the leg frame passes (Compl. '126 Patent, FIG. 3A, 3B, 4). A party could argue the term should be limited to the specific configuration shown in these embodiments.

  • The Term: "handle...does not extend past a height of the U-shaped members when the leg frames are collapsed"

  • Context and Importance: This limitation defines a key functional advantage of the invention—its compactness for storage. The relative positioning of the handle and U-shaped members in the collapsed state is a potentially crucial point of distinction for infringement and validity.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification describes the general goal, stating the "handle is designed to minimize the folded size of the chafing stand for easier shipping and storage" (Compl. '126 Patent, col. 6:15-18). This purpose-driven language may support a more flexible interpretation of how the height and collapsed state are measured.
    • Evidence for a Narrower Interpretation: Claim 1 itself provides a specific geometric relationship. Furthermore, FIG. 6 shows a definitive collapsed state where the poles and handles are folded over the base frame, which could be used to argue that "collapsed" refers to this specific, fully-folded configuration and no other (Compl. '126 Patent, col. 5:35-38, FIG. 6).

VI. Other Allegations

  • Incorrect Inventorship and Derivation: The complaint alleges that Plaintiff's CEO, David Banda, is the true inventor of the subject matter claimed in the '126 Patent, having conceived of it as early as 2020 (Compl. ¶5). It is alleged that Defendant Sol Wyler, a former employee of Plaintiff, gained knowledge of the invention during his employment and subsequently disclosed it to the patent's named inventor, Lauren Klein (Compl. ¶¶32-33). Count II of the complaint seeks, in the alternative, to correct inventorship under 35 U.S.C. § 256 to add David Banda as a joint inventor (Compl. ¶¶57-68).
  • Inequitable Conduct: Plaintiff alleges that Defendants engaged in inequitable conduct by intentionally and with deceptive intent misrepresenting to the USPTO that Lauren Klein was the sole inventor, while knowing that she did not conceive of the invention or, alternatively, that David Banda was a co-inventor (Compl. ¶¶4, 81, 84). The complaint alleges this misrepresentation was material, stating the patent would not have issued had the examiner known the true facts of inventorship (Compl. ¶¶10, 83-84).

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

  • A primary factual question will be one of derivation and evidence: can Plaintiff provide sufficient corroborating evidence to prove its CEO conceived of the claimed invention prior to the patent's filing date, and that this conception was communicated to the Defendants? The case may depend heavily on evidence of conception and communication beyond the testimony of the alleged inventor himself.
  • A central legal question will be one of intent for inequitable conduct: if derivation is established, can Plaintiff prove by clear and convincing evidence that Defendants' misstatement of inventorship to the USPTO was not merely an error but was made with the specific intent to deceive the patent office?
  • A key validity question, separate from inventorship, will be one of statutory bars under 35 U.S.C. § 102: did Plaintiff's own commercial activities related to its Chafing Stand Product, which allegedly began more than one year prior to the patent's filing date, constitute an invalidating on-sale or public use bar that would render the patent's claims invalid regardless of who invented them?