DCT
6:24-cv-06658
Night Cap It LLC v. JD E Commerce America Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Night Cap IT, LLC (Florida)
- Defendant: JD E-COMMERCE AMERICA LIMITED (Delaware); JINGDONG E-COMMERCE (TRADE) HONG KONG CORPORATION (Hong Kong); WAL-MART.COM USA, LLC (California); Walmart Inc. (Delaware)
- Plaintiff’s Counsel: Sriplaw PLLC
- Case Identification: 6:24-cv-06658, W.D.N.Y., 11/13/2024
- Venue Allegations: Venue is alleged to be proper because Defendants conduct business in the district, have engaged in infringing activities causing harm in the district, and have regular and established places of business in the district.
- Core Dispute: Plaintiff alleges that drink cover products, sold by Defendants on the Walmart.com marketplace, infringe two patents related to a drink spiking prevention device designed to be concealed within a hair scrunchie.
- Technical Context: The technology occupies the consumer goods space, combining a personal safety device with a common fashion accessory to promote discretion and convenience.
- Key Procedural History: The complaint notes that the Plaintiff's product, the "NightCap Scrunchie," gained popularity after being featured on the television show ABC's "Shark Tank." No prior litigation or administrative proceedings are mentioned.
Case Timeline
| Date | Event |
|---|---|
| 2019-04-23 | Priority Date for ’525 and ’884 Patents |
| 2021-12-14 | Issue Date for U.S. Patent No. 11,197,525 |
| 2023-11-07 | Issue Date for U.S. Patent No. 11,805,884 |
| 2024-11-13 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,197,525 - "DRINK SPIKING PREVENTION DEVICE," issued December 14, 2021
The Invention Explained
- Problem Addressed: The patent identifies that conventional devices for preventing drink spiking, such as special lids or containers, are often bulky, noticeable to carry, and inconvenient for use in social settings like bars or parties (’525 Patent, col. 1:35-52).
- The Patented Solution: The invention is a dual-function device that appears to be a standard hair accessory (e.g., a scrunchie) but secretly houses a deployable drink cover. A pouch integrated into the scrunchie stores the cover, which can be removed and stretched over the opening of a cup (’525 Patent, Abstract; col. 4:7-13). The cover is tethered to the scrunchie by a cord to prevent loss and includes an aperture to allow for the use of a straw while the cover is in place (’525 Patent, col. 4:48-58).
- Technical Importance: The invention's stated contribution is combining a safety function with a discreet, everyday accessory, thereby overcoming the social friction and inconvenience that might deter individuals from carrying a more conspicuous protective device (’525 Patent, col. 2:54-61).
Key Claims at a Glance
- The complaint asserts at least independent Claim 1 (Compl. ¶¶ 68, 82).
- The essential elements of Claim 1 are:
- A hair accessory comprising an elastic band, a fabric tube encapsulating the band, and a pouch coupled to the fabric.
- A cover that is stored in and removable from the pouch.
- The cover itself comprises a cover fabric, an aperture, and a cord that couples the cover to the hair accessory.
- The cover is capable of covering a cup opening by its perimeter stretching over and conforming to the opening's diameter.
- The aperture is for receiving an "elongate tube" (e.g., a straw) when the cover is on the cup.
- The complaint’s phrasing suggests it reserves the right to assert additional claims, including dependent claims (Compl. ¶82).
U.S. Patent No. 11,805,884 - "DRINK SPIKING PREVENTION DEVICE," issued November 7, 2023
The Invention Explained
- Problem Addressed: As a continuation of the application for the ’525 Patent, the ’884 Patent addresses the identical problem: the need for a discreet and easy-to-carry device to prevent drink spiking, as conventional solutions are inconvenient (’884 Patent, col. 1:38-53).
- The Patented Solution: The technology described is functionally identical to that in the ’525 Patent. It discloses a hair accessory containing a hidden, removable drink cover stored in a pouch, with the cover featuring a straw aperture and a connecting cord (’884 Patent, Abstract; col. 4:10-25).
- Technical Importance: The significance is the same as the parent patent: integrating a safety product into a common fashion item to increase the likelihood of its use (’884 Patent, col. 2:55-61).
Key Claims at a Glance
- The complaint asserts at least independent Claim 1 (Compl. ¶¶ 68, 82).
- The essential elements of Claim 1 are:
- A hair accessory including a band, a hair accessory fabric forming a tube that encapsulates the band, and a pouch.
- A cover stored in and removable from the pouch.
- The cover includes a cover fabric extending to a perimeter, an aperture, and a cord coupling it to the hair accessory.
- The cover is "configured for covering an opening of a cup" by its perimeter stretching and conforming to the opening.
- The aperture is "configured to receive an elongate tube."
- The complaint implies the right to assert further claims is reserved (Compl. ¶82).
III. The Accused Instrumentality
Product Identification
The complaint identifies the accused products as the "Infringing Goods," which are drink-covering scrunchies sold by the "JD Defendants" on Walmart.com under merchant names including "JOYBUY" (Compl. ¶¶ 10, 59, 67).
Functionality and Market Context
The complaint alleges the accused products have "substantially the same technical features as the NightCap Patents" (Compl. ¶67). A visual comparison provided in the complaint shows the accused product as a hair scrunchie from which a separate fabric drink cover can be deployed (Compl. ¶69). One of the images depicts the accused cover stretched over the top of a drinking glass, illustrating its function. The complaint alleges these products are sold on the Walmart.com e-commerce platform and compete directly with the Plaintiff’s products (Compl. ¶¶ 61-62).
IV. Analysis of Infringement Allegations
The complaint alleges that the Accused Instrumentalities practice all elements of at least Claim 1 of both the ’525 and ’884 Patents (Compl. ¶68). The infringement theory is supported by a side-by-side visual comparison of a patent figure and photographs of the accused products (Compl. ¶69).
’525 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a hair accessory comprising: a band forming a circle, the band being elastic, a hair accessory fabric forming a tube that encapsulates the band, and a pouch coupled to the hair accessory fabric | The accused product is a hair scrunchie, which the complaint alleges has the same technical features, structurally implying an elastic band within a fabric tube and a pouch. | ¶¶ 67, 69 | col. 4:7-9; col. 4:57-66 |
| a cover stored in and removable from the pouch, the cover having a cover fabric that extends to a perimeter... | The complaint's visual evidence shows a separate fabric cover that has been deployed from the scrunchie accessory, implying it is stored within and is removable. | ¶69 | col. 4:24-26 |
| ...an aperture formed in the cover fabric, and a cord extending from the perimeter and coupled to the hair accessory... | The complaint alleges all elements are met, though visual evidence in the complaint does not clearly show an aperture or a cord on the accused product. | ¶68 | col. 4:28-30; col. 4:53-58 |
| ...the cover covering an opening of a cup by the perimeter stretching over and conforming to a diameter of the opening... | An image in the complaint explicitly depicts an accused product with its cover stretched over the opening of a cup. | ¶69 | col. 5:15-19 |
| ...the aperture receiving an elongate tube when the cover covers the opening of the cup. | The complaint alleges this functionality is met, but does not provide specific evidence of an aperture in use on the accused product. | ¶68 | col. 4:48-52 |
’884 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a hair accessory, including: a band, a hair accessory fabric forming a tube that encapsulates the band, and a pouch | The accused product is a scrunchie, which the complaint alleges embodies the patented features, including the band, fabric tube, and pouch. | ¶¶ 67, 69 | col. 4:1-9; col. 4:60-65 |
| a cover stored in and removable from the pouch... | As described above, the complaint’s visual evidence shows a removable cover deployed from the scrunchie. | ¶69 | col. 4:26-28 |
| ...the cover including a cover fabric that extends to a perimeter, an aperture formed in the cover fabric, and a cord extending from the perimeter and coupled to the hair accessory | The complaint alleges these elements are present, though the provided images do not offer clear proof of a distinct aperture or a cord. | ¶68 | col. 4:29-34; col. 4:55-59 |
| ...the cover configured for covering an opening of a cup by the perimeter stretching over and conforming to a diameter of the opening... | The complaint includes a photograph showing this exact function being performed by an accused product. | ¶69 | col. 5:15-22 |
| ...and the aperture configured to receive an elongate tube. | While this capability is alleged, the complaint does not contain specific evidence demonstrating an aperture on the accused product. | ¶68 | col. 4:48-54 |
Identified Points of Contention
- Evidentiary Question: What evidence, beyond conclusory allegations, will Plaintiff present to prove the existence of an "aperture" and a "cord" in the accused products? The visual evidence provided in the complaint is not definitive on these specific structural elements, which are required by the independent claims.
- Technical Question: Do the accused products incorporate a "pouch coupled to the hair accessory fabric" as a distinct component, or is the cover simply stored within the undifferentiated hollow of the scrunchie tube? The resolution of this question may depend on the court's interpretation of the term "pouch".
V. Key Claim Terms for Construction
The Term: "pouch coupled to the hair accessory fabric" (’525 Patent, Claim 1)
Context and Importance: The structural nature of the "pouch" is central to the infringement analysis. If the accused product merely stuffs the cover inside the main scrunchie tube, its infringement may hinge on whether that configuration meets this limitation. Practitioners may focus on this term to distinguish the invention from a simpler, potentially obvious design.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that any designated area for storage, including a sewn-off section of the main tube, qualifies as a "pouch" that is "coupled" to the surrounding fabric.
- Evidence for a Narrower Interpretation: The patent specification and Figure 1 depict the pouch (108) as a seemingly distinct element attached to the main hair accessory fabric (106), with a discrete pouch opening (109) (’525 Patent, Fig. 1; col. 4:7-13). This could support an interpretation requiring a separate, defined pocket rather than just the general inner void of the scrunchie.
The Term: "aperture formed in the cover fabric" (’525 Patent, Claim 1)
Context and Importance: This is a required structural element of the claimed cover. If the accused product's cover is a solid sheet of fabric, it cannot literally infringe. The existence and nature of any opening will be a key factual dispute.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term "aperture" could be construed broadly to mean any hole or opening, including a simple, unreinforced slit in the fabric.
- Evidence for a Narrower Interpretation: The patent drawings show the aperture (118) as a defined, circular, and seemingly reinforced hole (’525 Patent, Fig. 1). The specification describes its function as allowing a user to drink "while maintaining protection of the opening of the cup" (’525 Patent, col. 4:50-52), which might imply a structure more robust than a simple tear or slit.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement, stating Defendants knowingly induced "investors, partners, builders, employees" to develop and use the infringing technology (Compl. ¶87). The factual basis for this claim appears to rely on general allegations of knowledge and on Defendants continuing to infringe after receiving cease and desist notices from Plaintiff (Compl. ¶89).
- Willful Infringement: Willfulness is alleged based on Defendants acting "knowingly and intentionally or with reckless disregard or willful blindness" to Plaintiff's patent rights (Compl. ¶75). The complaint asserts Defendants had "actual or constructive knowledge" of the patents and continued their infringing activities after being notified (Compl. ¶¶ 66, 89-90).
VII. Analyst’s Conclusion: Key Questions for the Case
- An Evidentiary Question of Structure: Can the Plaintiff produce sufficient evidence to demonstrate that the accused products possess every claimed structural element, particularly the "aperture" and "cord" features that are not clearly visible in the complaint's exhibits? The case will depend heavily on factual proof of the accused products' precise construction.
- A Definitional Question of Scope: Will the term "pouch coupled to the hair accessory fabric" be construed to require a distinct, attached pocket, or can it read on a configuration where the cover is simply stored inside the main, undifferentiated tube of the scrunchie? The outcome of this claim construction issue could be dispositive for infringement.
- A Question of Platform Liability: To what extent can the Walmart Defendants be held liable for the infringing sales made by the JD Defendants through the Walmart.com marketplace? The court will need to examine the facts supporting Walmart's alleged knowledge and contribution to the direct infringement.