Mieh Inc v. Tekno Products Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Ever Victory Technology Limited (Hong Kong)
  • Defendant: Tekno Products, Inc. (New Jersey) and Max Deluxe Limited (Hong Kong)
  • Plaintiff’s Counsel: Barclay Damon LLP; Bishop Diehl & Lee, Ltd.
• Case Identification: 1:19-cv-00178, S.D.N.Y., 04/13/2021
• Venue Allegations: Plaintiff alleges venue is proper because a substantial part of the events giving rise to the claim occurred in the district, Defendants have committed tortious acts in the district, and Defendants have admitted that venue is proper.
• Core Dispute: Plaintiff alleges that Defendants’ "TURBO PIPES RACE" toy vehicle system infringes a patent related to the design of a toy vehicle capable of moving within an enclosed track system.
• Technical Context: The technology concerns toy vehicles designed to operate within enclosed, tubular track systems, a market segment where vehicle stability and high-speed operation are key features.
• Key Procedural History: The complaint alleges that a prior entity put Defendants on notice of their infringing actions in or around December 2018. It further alleges that Defendants had actual knowledge of the patent-in-suit at all relevant times and continued to sell the accused product despite this notice.

Case Timeline

Date	Event
2015-02-02	U.S. Patent No. 9,731,212 Priority Date
2017-08-15	U.S. Patent No. 9,731,212 Issued
2018-09-27	Copyright Registration for "Zipes Speed Pipes" Instructions Issued
2018-12-01	Approx. date Defendants put on notice of alleged infringement
2021-04-13	Complaint Filed

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

• U.S. Patent No. 9,731,212, "Toy track system and a toy vehicle for moving therein," issued August 15, 2017
  • The Invention Explained:
    • Problem Addressed: The patent addresses shortcomings in conventional open-top toy track systems, where high-speed vehicles can easily fall off the track, creating a potential hazard and limiting play configurations (’212 Patent, col. 1:12-16).
    • The Patented Solution: The invention describes a toy vehicle specifically designed to operate stably within an enclosed, tubular track. The vehicle uses a combination of a powered driving wheel, a resiliently biased "presser" on the opposite side to maintain frictional contact with the track's inner surface, and two distinct sets of "guiding members" (principal and auxiliary) to keep the vehicle centered and stable, especially during turns (’212 Patent, col. 2:28-56; Fig. 4A-4D). This arrangement ensures the vehicle remains engaged with the track, allowing for complex, multi-directional layouts.
    • Technical Importance: This design aims to enable toy vehicles to travel at high speeds through fully enclosed, three-dimensional track layouts without derailing, enhancing both the safety and creative possibilities of the toy system (’212 Patent, col. 1:21-25).
  • Key Claims at a Glance:
    • The complaint asserts at least independent claim 10 (’212 Patent, ¶12).
    • Independent Claim 10 requires:
      • A toy vehicle for moving in a toy track system.
      • A vehicle body with first/second end portions and first/second sides.
      • A driving wheel at the first end portion on the first side for frictional engagement with the track's inner surface.
      • An electric motor and gears for rotating the driving wheel.
      • A presser at the first end portion on the second side, resiliently biased away from the driving wheel to maintain frictional engagement.
      • At least two principal guiding members on the first end portion, angularly displaced from the driving wheel and presser, for maintaining the driving wheel in a central plane.
      • At least three auxiliary guiding members on the second end portion, angularly displaced from the principal guiding members, for also maintaining the driving wheel in the central plane.
    • The complaint does not explicitly reserve the right to assert dependent claims, but alleges infringement of "one or more of the claims" (Compl. ¶17).

III. The Accused Instrumentality

Product Identification

• The "TURBO PIPES RACE" product (Compl. ¶10).

Functionality and Market Context

• The complaint identifies the "TURBO PIPES RACE" as a product that Defendants import, offer for sale, and sell in the United States through online retailers like Amazon.com (Compl. ¶10).
• The complaint alleges that the product includes all the elements of at least independent claim 10 of the ’212 Patent (Compl. ¶12). No specific technical functionality of the accused product is described in the complaint beyond the conclusory allegation of infringement.
• No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint alleges that the "TURBO PIPES RACE" product directly infringes at least independent claim 10 of the ’212 Patent (Compl. ¶12, 17). The complaint references "claim charts attached as Exhibit B" to demonstrate that the accused product "includes all the elements of at least independent claim 10" (Compl. ¶12). However, as these exhibits are not included with the complaint document, a detailed element-by-element analysis based on the complaint's direct filings is not possible. The infringement theory rests on the allegation that the accused toy vehicle embodies each of the structural and functional elements recited in claim 10, as detailed in Section II above.

• Identified Points of Contention:
  • Technical Question: A central question will be whether the accused "TURBO PIPES RACE" vehicle contains two structurally and functionally distinct sets of guiding members that correspond to the claimed "principal" and "auxiliary" members. The claim requires at least two principal members at the front and at least three auxiliary members at the rear, each contributing to vehicle stability.
  • Scope Question: The analysis may focus on whether the components in the accused product identified as the "presser" and "guiding members" perform the specific functions recited in the claim (e.g., being "resiliently biased" and "maintaining the driving wheel substantially in a said central plane") in the manner described in the patent's specification (Compl. ¶11; ’212 Patent, col. 7:27-49).

V. Key Claim Terms for Construction

• The Terms: "principal guiding members" and "auxiliary guiding members"

  • Context and Importance: The claim structure relies on the distinction between these two sets of members, which are differentiated by their quantity (at least two vs. at least three) and location (first vs. second end portion of the vehicle). Practitioners may focus on these terms because establishing the presence of both distinct types is essential to proving infringement of claim 10.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language itself provides the primary distinction: "principal guiding members provided on the first end portion" and "auxiliary guiding members provided on the second end portion" (’212 Patent, col. 10:20-29). A party could argue that any set of guides at the front and rear meeting the numerical and functional requirements would satisfy the limitation, regardless of their specific shape or design.
    • Evidence for a Narrower Interpretation: The specification describes the principal guiding members as being on the "front portion 301A" and the auxiliary guiding members on the "rear portion 301B" of the vehicle body (’212 Patent, col. 7:40-52). The detailed description and figures show them as wheels (’212 Patent, col. 7:41-43; Fig. 4A), which could be used to argue the terms imply a more specific structure or location than merely "front" and "rear."

• The Term: "resiliently biased"

  • Context and Importance: This term describes the function of the "presser" element, which is critical for maintaining the vehicle's frictional contact with the track. The scope of this term will determine what kinds of mechanisms in the accused product can meet this limitation.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language itself does not specify the mechanism of the bias, only that it is "resilient" and directed "opposite and away from the driving wheel" (’212 Patent, col. 10:15-19). This could support a construction that covers any elastic or spring-like component creating the required opposing force.
    • Evidence for a Narrower Interpretation: The preferred embodiment states, "This presser 303 is resiliently biased, preferably by action of a spring" (’212 Patent, col. 7:31-33). A party might argue this reference narrows the term's scope to mechanisms that function like a spring, potentially excluding materials that are merely inherently flexible without a distinct biasing component.

VI. Other Allegations

• Willful Infringement: The complaint alleges that Defendants' infringement has been and continues to be willful (Compl. ¶21). This allegation is based on claims that Defendants had "actual knowledge of the ‘212 Patent at all times relevant to this action" and that a predecessor-in-interest put Defendants on notice of their infringing conduct "on or about December 2018" (Compl. ¶16, 18).

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

1. A central issue will be one of structural correspondence: Does the accused "TURBO PIPES RACE" vehicle contain two distinct sets of guide components that map onto the claim's requirements for "at least two principal guiding members" at the front and "at least three auxiliary guiding members" at the rear, or does it use a different stabilization mechanism?
2. A key evidentiary question will be one of functional operation: Does the accused vehicle's "presser" equivalent operate in a "resiliently biased" manner as defined by the patent, and do its stabilizing components perform the claimed function of "maintaining the driving wheel substantially in a said central plane"?
3. The willfulness claim will depend on timing and knowledge: What evidence exists to support the allegation of "actual knowledge" prior to the December 2018 notice letter, and did Defendants' conduct after receiving notice constitute objective recklessness?