DCT

1:24-cv-05119

ZDIRECT LLC v. Green Crown Ventures LLC

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:24-cv-05119, E.D.N.Y., 07/23/2024
  • Venue Allegations: Venue is alleged to be proper because a substantial part of the events occurred in the district, Defendant Green Crown Ventures resides in the district, all Defendants are subject to personal jurisdiction, and Plaintiff transacts business in the district.
  • Core Dispute: Plaintiff seeks to correct the inventorship of a patent owned by Defendants, alleging a third party was a co-inventor; in the alternative, Plaintiff seeks a declaration that the patent is invalid and unenforceable.
  • Technical Context: The lawsuit concerns patents on collapsible, portable stands for chafing dishes, a common product in the catering and home-use appliance market.
  • Key Procedural History: The complaint alleges that after Defendants obtained the patent-in-suit, they contacted Amazon.com to report Plaintiff’s product for patent infringement, prompting Amazon to send a "Notice of Patent Infringement" to the Plaintiff. The complaint also references a related action involving some of the same parties.

Case Timeline

Date Event
2020 Plaintiff alleges a co-inventor conceived of the invention
2023-09-08 U.S. Patent Application No. 18/244,115 filed
2024-05-21 U.S. Patent No. 11,986,126 issued
2024-07-02 Defendants allegedly contacted Amazon regarding infringement
2024-07-03 Plaintiff received Notice of Patent Infringement from Amazon
2024-07-23 Complaint filed

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

  • Patent Identification: U.S. Patent No. 11,986,126, "Chafing dish," issued May 21, 2024.

The Invention Explained

  • Problem Addressed: The patent's background section notes that existing chafing stands can be bulky and not easy to collapse and store efficiently, referencing issues with bulky handles and complex wire frames in prior art designs (’126 Patent, col. 1:10-65).
  • The Patented Solution: The invention is a collapsible chafing stand designed for easy transport and storage. It consists of a base frame and a removable top frame. The core of the design involves two leg frames that connect to the base frame via "T-shaped members," allowing them to pivot and fold. The leg frames include "U-shaped members" that act as feet and poles that support the removable top frame (’126 Patent, Abstract; col. 4:1-13). This structure is intended to be sleeker and more easily collapsible than prior designs (’126 Patent, col. 2:3-11).
  • Technical Importance: The design aims to reduce material usage, simplify manufacturing with fewer wire bends, and create a more compact, stackable unit for reduced shipping costs and easier storage (’126 Patent, col. 2:36-41).

Key Claims at a Glance

  • The complaint focuses on the single claim of the patent, which practitioners would recognize as Claim 1.
  • The essential elements of independent Claim 1 are:
    • a base frame;
    • leg frames connected at distal ends of the base frame via T-shaped members;
    • each leg frame comprising a connecting bar and U-shaped members, where the connecting bars draw through the T-shaped members;
    • poles extending from the leg frames;
    • a handle connected to the leg frames that does not extend past the height of the U-shaped members when collapsed;
    • a top frame comprising a rectangular frame with pole receiving sections to connect to the poles.
  • The complaint does not reserve the right to assert other claims, as the patent contains only one independent claim and several dependent claims.

III. The Accused Instrumentality

Product Identification

The "MeJOY Chafing Dish Buffet Set," which includes the "Chafing Stand Device," sold by Plaintiff ZDIRECT on Amazon.com (Compl. ¶2).

Functionality and Market Context

The complaint describes the MeJOY Chafing Stand Device as having several novel features allegedly conceived by an omitted co-inventor, David Banda (Compl. ¶¶ 22, 37). These features include a "sleek base frame," a removable top frame, "collapsable polls which fold over the base frame," and a "T-shaped member which acts as a hinge member allowing leg frames to pivot for easy folding" (Compl. ¶22). The complaint presents a product image from an Amazon storefront listing, which shows a wire-frame chafing stand in both folded and assembled states. (Compl. ¶21, Figure 1). Plaintiff alleges this is a "bestselling" product, and that Defendants' infringement accusations to Amazon have threatened its continued sale (Compl. ¶¶ 41, 62).

IV. Analysis of Infringement Allegations

The complaint does not contain a traditional infringement count. Instead, it seeks a declaratory judgment of non-infringement on the grounds that the patent is invalid or unenforceable due to improper inventorship (Compl. ¶32). To support its inventorship claim, the complaint alleges an overlap between the features of its own product (conceived by the alleged co-inventor) and the patented design. The following table summarizes these alleged overlapping features, which form the basis of the inventorship dispute.

’126 Patent Allegations of Feature Overlap (Basis for Inventorship Dispute)

Claim Element (from Independent Claim 1) Allegedly Co-Invented Feature in Plaintiff's Product Complaint Citation Patent Citation
a base frame A "sleek base frame" ¶22 col. 4:45-50
leg frames placed apart from one another... connect at distal ends of said base frame via T-shaped members A "T-shaped member which acts as a hinge member allowing leg frames to pivot for easy folding" ¶22 col. 4:53-58
poles extending from distal ends of each leg frame "collapsable polls which fold over the base frame when not in use" ¶22 col. 5:14-16
a top frame comprises a rectangular frame having pole receiving sections A "top frame incorporating pole receiving sections which is removable from the base frame" ¶22 col. 5:40-47
[Implicit in claim structure] A "stackable structure which folds for easy transportation" ¶22 col. 2:36-41

The complaint includes Figure 2, a reproduction of a patent drawing, to illustrate the design for which it claims co-inventorship. (Compl. ¶26, Figure 2).

Identified Points of Contention

  • Inventorship Questions: The central issue is factual: Did the named individual, David Banda, make a significant contribution to the conception of the invention as defined in Claim 1? (Compl. ¶¶ 37-39). The court will need to determine if Mr. Banda contributed to the "definite and permanent idea of the complete and operative invention."
  • Scope Questions: A secondary question may relate to the scope of the claimed elements. For example, the court may need to analyze what constitutes a "T-shaped member" or a "U-shaped member" under the patent's specification to determine if Mr. Banda's alleged contribution falls within the scope of the claims.

V. Key Claim Terms for Construction

The Term

"T-shaped members"

Context and Importance

This term appears central to the patent's novel folding mechanism and is explicitly mentioned in the complaint's description of the allegedly co-invented features (Compl. ¶22). The definition of this structural element will be critical for determining whether the alleged contribution by David Banda was to the claimed invention itself. Practitioners may focus on this term because the patent describes it as the hinge that connects the leg frames to the base frame, enabling the collapsible function.

Intrinsic Evidence for Interpretation

  • Evidence for a Broader Interpretation: The specification refers to the "T-shaped member" as enabling a pivot for folding, suggesting a functional definition rather than a strictly literal "T" shape (’126 Patent, col. 2:45-47).
  • Evidence for a Narrower Interpretation: The patent figures, such as FIG. 3A and 4, depict a specific structure (42) that receives the connecting bar of the leg frame. A party could argue the term is limited to the specific configuration shown in these embodiments (’126 Patent, col. 4:56-65).

VI. Other Allegations

Correction of Inventorship (Count I)

Plaintiff alleges that David Banda contributed significantly to the conception of at least one element of the claimed invention and was improperly omitted as a joint inventor (Compl. ¶¶ 37, 40). Plaintiff seeks a court order to correct the patent's inventorship under 35 U.S.C. § 256 (Compl. ¶43).

Patent Invalidity (Count II)

In the alternative, Plaintiff argues that if inventorship is not corrected, the patent should be declared invalid under 35 U.S.C. §§ 101 and 256, on the basis that a patent cannot be issued to someone who is not the true inventor (Compl. ¶¶ 46-47).

Inequitable Conduct (Count III)

Plaintiff alleges that Defendants intended to deceive the USPTO by failing to name a known joint inventor, that this omission was material, and that the patent would not have issued but for this misrepresentation. Plaintiff seeks a declaration that the patent is unenforceable (Compl. ¶¶ 51-54).

State Law Claims

The complaint also includes counts for tortious interference with prospective economic advantage and trade libel, based on Defendants' allegedly false claims of infringement to Amazon (Compl. ¶¶ 58-77).

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

The resolution of this case appears to depend on the answers to two primary questions:

  1. A core issue will be one of inventorship contribution: What is the evidentiary basis for the claim that David Banda conceived of a "significant" part of the patented invention? The case will likely turn on factual evidence—such as documents, prototypes, or testimony—demonstrating his contribution to the specific collapsible structure defined in Claim 1, particularly the "T-shaped" pivot members.

  2. A secondary question will be one of deceptive intent: If the court finds that inventorship is incorrect, it must then determine whether the omission of Mr. Banda was a mistake made without deceptive intention, which would allow for correction, or if it constituted inequitable conduct intended to deceive the USPTO, which could render the '126 Patent permanently unenforceable.