DCT
2:25-cv-01440
Unknown Case Title
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Chengdu Zhimokeli E-Commerce Co., Ltd. and four other e-commerce companies (Foreign)
- Defendant: Dongguan Mimao Electronic Technology Co., Ltd.; Shenzhen Zhonhongtian Technology Co., Ltd.; Junpeng Wu (Foreign)
- Plaintiff’s Counsel: Norris McLaughlin, P.A.
- Case Identification: 2:25-cv-01440, E.D.N.Y., 03/13/2025
- Venue Allegations: Plaintiffs allege venue is proper because Defendants are foreign entities over whom the court can exercise personal jurisdiction, and that Defendants committed tortious acts (wrongful assertion of patent rights) that caused substantial injury to Plaintiffs within New York.
- Core Dispute: Plaintiffs, a group of Amazon sellers, seek a declaratory judgment that their personal massager products do not infringe the Defendants' patent, which they allege is being improperly used to remove their product listings from Amazon.
- Technical Context: The technology relates to personal massagers, specifically devices designed with both a clamping mechanism for external stimulation and a positioning element to prevent the device from falling off during use.
- Key Procedural History: The complaint states that on February 20, 2025, Amazon removed Plaintiffs' product listings after Defendants filed an infringement complaint with Amazon (Complaint ID No. 17083197391) asserting U.S. Patent No. 12,178,773. Plaintiffs' central argument is that their accused products were sold prior to the patent's priority date, suggesting that any claim construction broad enough to cover their products would be invalid over this prior art.
Case Timeline
| Date | Event |
|---|---|
| 2024-02-17 | Date Plaintiffs allege an accused product was first sold |
| 2024-04-15 | Priority date of the ’773 Patent (from Chinese application) |
| 2024-04-24 | U.S. filing date of the ’773 Patent application |
| 2024-12-31 | Issue date of U.S. Patent 12,178,773 |
| 2025-02-20 | Plaintiffs receive notice from Amazon of product removal |
| 2025-03-13 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 12,178,773 - "Massager", issued December 31, 2024
The Invention Explained
- Problem Addressed: The patent identifies a problem with existing personal massagers: they "are easy to fall off during use, resulting in bad user experiences" (’773 Patent, col. 1:22-24).
- The Patented Solution: The invention addresses this problem by combining two key features: a "clamping part" that uses motor-driven swing arms to provide massage and stimulation, and a separate "positioning portion" comprising "at least one ring or an elongated stick" (’773 Patent, col. 1:26-40). The positioning portion is designed to be placed around a user's body part (e.g., penis) or inserted (e.g., into the vagina or rectum) to secure the device during use, thereby preventing it from falling off while the clamping part operates (’773 Patent, col. 2:41-55).
- Technical Importance: The claimed invention seeks to improve user experience by integrating an active securing mechanism with a dynamic massaging function, allowing for simultaneous stimulation of multiple areas while ensuring the device remains in place. (’773 Patent, col. 2:36-44).
Key Claims at a Glance
- The complaint focuses on the scope of "every claim" but specifically quotes language from independent claim 1 (Compl. ¶28). The analysis below is based on independent claim 1.
- Independent Claim 1:
- a clamping part, comprising a first engagement portion and a second engagement portion which are opposite to each other and made of a flexible material, with a cavity defined between them;
- a driving mechanism, comprising at least one swing arm which is disposed in at least one of the engagement portions for driving it to move toward or away from the other; and
- a positioning portion which comprises at least one ring or an elongated stick;
- wherein two ends of the first engagement portion are respectively connected to two ends of the second engagement portion to define two opposite connection portions, and the two engagement portions enclose the cavity.
- The complaint does not explicitly reserve the right to assert dependent claims but seeks a judgment of non-infringement as to all claims of the patent (Compl. p. 11, Prayer for Relief ¶A).
III. The Accused Instrumentality
Product Identification
The accused products are personal massage devices sold by the five Plaintiff companies on the Amazon marketplace under various brand names, including Zhimokeli, Yisheng, Enshi, Aoqi, and Qinjing (Compl. ¶¶ 18, 20, 22, 24, 26). Specific Amazon Standard Identification Numbers (ASINs) cited are B0DLMKKL4K, B0DLMDMWJZ, and B0D9PXBV8X (Compl. ¶4).
Functionality and Market Context
The complaint describes the accused products as "personal massage devices" (Compl. ¶19). It alleges that the design of these products is shown in Exhibit C to the complaint (Compl. ¶35). The complaint's primary technical assertion is that an example of the accused product was sold on February 17, 2024, prior to the patent's priority date (Compl. ¶8). An image in the complaint, labeled "Exhibit C," depicts a personal massager with a C-shaped clamping head and two rings below it. (Compl. ¶29). Plaintiffs state that the Amazon marketplace is their primary sales channel into the United States and that the delisting of their products causes them substantial competitive harm (Compl. ¶¶ 19, 43).
IV. Analysis of Infringement Allegations
The complaint is for declaratory judgment of non-infringement. The following table summarizes the Plaintiffs' position that their products do not meet the limitations of claim 1, primarily through an "ensnarement" theory—arguing that any construction covering their products would also cover invalidating prior art.
’773 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Plaintiffs' Stated Position on Non-Infringement | Complaint Citation | Patent Citation |
|---|---|---|---|
| a clamping part, comprising a first engagement portion and a second engagement portion which are opposite to each other and made of a flexible material, with a cavity defined between the first engagement portion and the second engagement portion; | The complaint globally asserts that none of the Accused Products infringe the ’773 Patent because their designs are like those shown in Exhibit C, which allegedly represents pre-critical date prior art. | ¶¶ 35-37 | col. 9:56-61 |
| a driving mechanism, comprising at least one swing arm which is disposed in at least one of the first engagement portion and the second engagement portion for driving the at least one... to move toward or away from the other; | The complaint does not specifically contest this element but relies on its overarching theory of non-infringement and invalidity via ensnarement. | ¶¶ 29, 36 | col. 9:62 - col. 10:2 |
| and a positioning portion which comprises at least one ring or an elongated stick; | The complaint does not specifically contest this element but relies on its overarching theory of non-infringement and invalidity via ensnarement. | ¶¶ 29, 36 | col. 10:3-4 |
| wherein two ends of the first engagement portion are respectively connected to two ends of the second engagement portion to define two opposite connection portions, and the first engagement portion and the second engagement portion enclose the cavity. | The complaint does not specifically contest this element but relies on its overarching theory of non-infringement and invalidity via ensnarement. | ¶¶ 29, 36 | col. 10:5-9 |
- Identified Points of Contention:
- Invalidity Pleading as Non-Infringement: The complaint's primary infringement argument is framed as an invalidity issue. It alleges that "there is no construction of the claims of the '773 Patent under which the Accused Products can be found infringing without also ensnaring the prior art," specifically the product allegedly sold on February 17, 2024 (Compl. ¶29). This raises the question of whether Plaintiffs will pursue a traditional element-by-element non-infringement case or focus on proving the claims are invalid.
- Technical Questions: A central factual question is whether the product sold on February 17, 2024 is identical in design and function to the currently accused products. A second question is whether that prior-sold product actually meets every limitation of the asserted claims. The complaint provides no detailed evidence on these points beyond a conclusory assertion and a reference to an exhibit (Compl. ¶¶ 8, 29).
V. Key Claim Terms for Construction
The complaint does not propose constructions for any specific claim terms, focusing instead on its prior art ensnarement theory. However, based on the patent's description, the following term appears central.
- The Term: "positioning portion"
- Context and Importance: This element is the patent's stated solution to the problem of massagers "falling off during use" (’773 Patent, col. 2:36-40). The scope of this term is critical because if the accused products' securing feature does not fall within the patent's definition of a "positioning portion," there can be no infringement. Practitioners may focus on this term because it distinguishes the invention from prior art that may have had a clamping mechanism but lacked this specific stabilizing feature.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim itself defines the term broadly as comprising "at least one ring or an elongated stick" (’773 Patent, col. 10:4). This language suggests the term could cover a wide variety of shapes and configurations that serve a positioning function.
- Evidence for a Narrower Interpretation: The specification heavily features a specific embodiment where the positioning portion consists of two distinct rings: a first, smaller ring for surrounding a penis and a second, larger ring for surrounding the testicles (’773 Patent, col. 3:37-44, Figs. 1-3). A defendant could argue that the term should be limited to structures that function in this specific, disclosed manner, especially given the detailed description of how this dual-ring structure improves the "sex life of both the man and the woman" (’773 Patent, col. 2:42-44).
VI. Other Allegations
- Indirect Infringement: This is not applicable, as Plaintiffs are seeking a declaratory judgment of non-infringement.
- Willful Infringement: This is not applicable.
- Patent Misuse and Unfair Competition: Plaintiffs allege that Defendants have engaged in patent misuse and unfair competition under New York law (Compl. ¶¶ 38-44, 45-47). The factual basis for these claims is the allegation that Defendants submitted infringement complaints to Amazon "while knowing that the '773 Patent is, in reality, not infringed," with the intent to "improperly stifle competition" (Compl. ¶¶ 33, 40).
VII. Analyst’s Conclusion: Key Questions for the Case
This case appears poised to turn on two key issues that blend non-infringement and invalidity concepts:
- A core issue will be one of chronology and identity: Can Plaintiffs prove with clear and convincing evidence that the product sold before the patent's April 15, 2024 critical date is functionally and structurally identical to both the currently accused products and the invention described in the '773 patent's claims?
- A key legal and strategic question is one of claim scope versus validity: Will the dispute be resolved on a traditional non-infringement analysis, or will it be determined by the Plaintiffs' "ensnarement" theory, which posits that any interpretation of the claims broad enough to read on their products would render the claims invalid over the alleged prior art sale?