DCT
3:22-cv-00549
Kellie Defries v. Nanjing Good Stone Sink Decoration Engineering Co doing Business As Aroic
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Kellie DeFries (California)
- Defendant: Amazon Warehouse, et. al. (various U.S. and foreign jurisdictions)
- Plaintiff’s Counsel: Leavitt Eldredge Law Firm
- Case Identification: 3:22-cv-00549, N.D. Tex., 03/03/2023
- Venue Allegations: Plaintiff alleges venue is proper for foreign defendants based on their business activities in the district and for domestic defendants based on their acts of infringement and having a regular and established place of business in the district.
- Core Dispute: Plaintiff alleges that a multitude of domestic and foreign entities infringe five patents covering a double-ended hand tool, and its method of manufacture, by making, using, and selling counterfeit products online and in retail stores.
- Technical Context: The technology relates to a specialized hand tool for the crafting hobby of "diamond art painting," designed to improve the handling and precise placement of small, sharp-faceted rhinestones on an adhesive canvas.
- Key Procedural History: This action was presented in a First Amended Complaint. The complaint does not mention any prior litigation, licensing history, or post-grant proceedings involving the patents-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2014-03-07 | Priority Date for "’005", "’852", and "’625" Patents |
| 2019-06-04 | U.S. Patent No. 10,308,005 Issue Date |
| 2019-11-26 | U.S. Patent No. D867,838 Issue Date |
| 2019-11-26 | U.S. Patent No. D867,839 Issue Date |
| 2020-06-09 | U.S. Patent No. 10,675,852 Issue Date |
| 2021-04-06 | U.S. Patent No. 10,967,625 Issue Date |
| 2023-03-03 | First Amended Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,308,005 - DOUBLE ENDED HAND TOOL
The Invention Explained
- Problem Addressed: The patent describes the difficulty of picking up and placing tiny crystals in artwork, a problem exacerbated by newer, sharper crystal designs that can shred or slip off of conventional tools with flat or pointed ends (’005 Patent, col. 1:15-24).
- The Patented Solution: The invention is a double-ended hand tool designed to solve this problem. One end features a conical wax tip that uses a specially formulated wax to gently adhere to a crystal for pickup (’005 Patent, col. 2:22-49). The opposite end features a hollow, conical precision applicator that allows a user to securely encase and position the crystal without slipping, unlike prior art tools (’005 Patent, Abstract; col. 4:51-61). The tool's components, including a central shaft, an internal connector, and a removable applicator cover, are detailed in the specification (’005 Patent, Fig. 1A).
- Technical Importance: The tool provides a single, integrated solution for both picking up and precisely manipulating small, delicate craft items, addressing the shortcomings of separate or less-specialized tools in the crafting field (’005 Patent, col. 1:21-24).
Key Claims at a Glance
- The complaint asserts independent claims 1, 9, 10, and 11 (Compl. ¶83).
- Independent Claim 1 recites a tool comprising:
- A wax tip with a conical shape connected to a tubular portion.
- A hollow connector coupling the wax tip's tubular portion at one end to an applicator at the other.
- The applicator comprises a hollow, conical extended portion.
- The hollow connector is located inside a hollow shaft.
- An applicator cover is coupled to the hollow connector, surrounds the applicator, and has a hole through which the conical extended portion extends.
- The tool has opposite distal ends, with the wax tip on one end and the conical applicator on the other.
- The applicator cover and conical portion are visible when assembled.
- The complaint does not explicitly reserve the right to assert dependent claims but makes broad allegations covering the patent.
U.S. Patent No. 10,675,852 - DOUBLE ENDED HAND TOOL
The Invention Explained
- Problem Addressed: The patent implicitly addresses the need for a specific, repeatable method to manufacture the unique wax tip component of the double-ended hand tool.
- The Patented Solution: The patent discloses a method for making the tool, focusing on the creation of the wax tip. The claimed method involves preparing and melting wax, injecting it into a mold to form a wax portion, inserting a tubular portion into the wax to form the functional wax tip, and finally inserting the completed wax tip into the tool's connector (’852 Patent, Claim 1; col. 5:1-36). The patent's figures and description illustrate the use of a syringe for injection and a silicone mold to create the conical shape (’852 Patent, col. 5:14-29; Fig. 4).
- Technical Importance: This method provides a defined process for creating a tool component with specific material properties (tackiness and stability) and a precise physical form crucial to its function (’852 Patent, col. 2:40-57).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶104).
- Independent Claim 1 recites a method for making a tool, comprising the steps of:
- a) preparing a wax;
- b) melting the wax;
- c) injecting the melted wax into a mold to form a wax portion;
- d) inserting a tubular portion into said wax portion to form a wax tip;
- e) inserting said wax tip into a connector located on the tool.
- The claim further recites structural limitations of the tool being made, which largely mirror those found in the "’005" Patent.
- The complaint does not explicitly reserve the right to assert dependent claims.
Multi-Patent Capsule: U.S. Patent No. D867,838
- Patent Identification: U.S. D867,838, "Double Ended Hand Tool," Issued November 26, 2019 (Compl. ¶30).
- Technology Synopsis: This is a design patent that protects the ornamental appearance of the double-ended hand tool. It claims the specific visual characteristics of the tool as shown in its figures.
- Asserted Claims: Claim 1 (Compl. ¶90).
- Accused Features: The overall visual appearance of the accused hand tools is alleged to infringe the patented design (Compl. ¶¶90, 47).
Multi-Patent Capsule: U.S. Patent No. D867,839
- Patent Identification: U.S. D867,839, "Double Ended Hand Tool," Issued November 26, 2019 (Compl. ¶31).
- Technology Synopsis: This is a design patent protecting a second, distinct ornamental appearance for the double-ended hand tool. It claims the unique visual design illustrated in its figures, which differs slightly from the "’838" patent design.
- Asserted Claims: Claim 1 (Compl. ¶97).
- Accused Features: The overall visual appearance of the accused hand tools is alleged to infringe this alternative patented design (Compl. ¶¶97, 47).
Multi-Patent Capsule: U.S. Patent No. 10,967,625
- Patent Identification: U.S. 10,967,625, "Double Ended Hand Tool," Issued April 6, 2021 (Compl. ¶34).
- Technology Synopsis: This utility patent, a continuation of the earlier applications, claims a tool for applying items. It focuses on the internal structure, specifically claiming a connector located within a shaft that couples the wax tip to an adapter for the hollow extended portion, which is described as being narrower than the first end.
- Asserted Claims: Claim 1 (Compl. ¶111).
- Accused Features: The complaint alleges that the accused double-ended hand tools contain the internal components and arrangement claimed by this patent (Compl. ¶¶111, 47).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are "double ended hand tools" and their components, sold under a vast number of Amazon Standard Identification Numbers (ASINs) on Amazon.com as well as through other retailers such as Jo-Ann Stores, Nail Supply Glamour, and others (Compl. ¶¶2, 4, 5, 82).
Functionality and Market Context
The complaint alleges the accused products are "counterfeit versions" of the Plaintiff's "Crystal Katana" tool (Compl. ¶¶27, 37). Based on the complaint's allegations and visual evidence, the accused tools are dual-ended implements for crafting. One end has a wax tip for picking up small items like rhinestones, and the other end is a metallic, pointed tip for adjusting their placement (Compl. ¶39). The complaint provides an image from an Amazon listing for ASIN B079GQR1SS that labels these functions as "wax tip catch rhinestones easily" and "used to adjust rhinestone location on nails" (Compl. ¶39). The complaint alleges significant commercial activity, citing estimated monthly sales of $125,820 for this single ASIN (Compl. ¶39).
IV. Analysis of Infringement Allegations
U.S. Patent No. 10,308,005 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A tool for applying items... | The accused products are hand tools for applying craft items like rhinestones. | ¶¶23, 38, 39 | col. 7:4-5 |
| a wax tip, and wherein said wax tip is connected to a tubular portion, and wherein said wax tip comprises a conical shape; | The accused tools feature a conical wax tip on one end for picking up rhinestones. | ¶¶25, 39 | col. 7:6-9 |
| wherein said tubular portion is coupled to a first end of a hollow connector... | The complaint alleges the accused products are counterfeit versions containing the patented structure. | ¶¶37, 82 | col. 7:10-12 |
| ...and wherein an applicator is adjacent to a second end of said hollow connector, wherein said applicator comprises a conical extended portion; wherein said conical extended portion is hollow; | The accused tools feature a hollow, metallic tip on the opposite end used for positioning items. | ¶¶25, 39 | col. 7:12-16 |
| wherein said hollow connector is located inside of a hollow shaft; | The complaint alleges the accused tools are counterfeit versions containing the internal patented structure, including a hollow shaft containing the connector. | ¶¶37, 82 | col. 7:17-19 |
| an applicator cover which is coupled to said second end of said hollow connector, wherein said applicator cover surrounds said applicator and comprises a hole... | The complaint's allegations of counterfeit structure imply the presence of the claimed applicator cover assembly. | ¶¶37, 82 | col. 7:20-24 |
| wherein said tool comprises a first distal end opposite a second distal end, and wherein said wax tip is on a first distal end, and wherein conical extended portion is on said second distal end; | The accused tools are dual-ended, with a wax tip on one end and a precision applicator on the other. This is depicted in a product image. | ¶39 | col. 7:27-31 |
U.S. Patent No. 10,675,852 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method for making a tool, said method comprising the steps of: | The manufacturing process used to create the accused products. | ¶¶40, 104 | col. 7:2-4 |
| a) preparing a wax; b) melting the wax; c) injecting the melted wax into a mold to form a wax portion; | Plaintiff presumes these steps are performed to create the wax tip of the accused tools, pending discovery. | ¶¶40, 41, 104 | col. 7:5-10 |
| d) inserting a tubular portion into said wax portion to form a wax tip; | Plaintiff presumes this step is performed to create the wax tip of the accused tools, pending discovery. | ¶¶40, 41, 104 | col. 7:10-12 |
| e) inserting said wax tip into a connector located on the tool | Plaintiff presumes this assembly step is performed, pending discovery. | ¶¶40, 41, 104 | col. 7:13-15 |
- Identified Points of Contention:
- Structural Verification ("’005" and "’625" Patents): A primary technical question is whether the accused products, described as "counterfeits," actually contain the specific internal components recited in the claims, such as the "hollow connector" and "applicator cover." The complaint's allegations regarding these non-visible features appear to be based on inference rather than direct inspection, raising the question of what evidence the Plaintiff will produce in discovery to prove these internal structures exist.
- Proof of Process ("’852" Patent): The infringement allegation for the method patent is based on an "Assumed, pending add'l discovery" equivalence theory (Compl. ¶40). A key legal and evidentiary challenge will be for the Plaintiff to obtain evidence of the defendants' actual, and likely foreign, manufacturing processes and demonstrate that they perform the claimed steps of preparing, melting, injecting, and assembling the wax tip, either literally or under the doctrine of equivalents.
V. Key Claim Terms for Construction
The Term: "hollow connector" ("’005" Patent, Claim 1)
Context and Importance: This term describes a critical internal component that links the tool's two functional ends via the shaft. Its construction is central to the infringement analysis because it is not externally visible, and its presence and structure must be proven through discovery or reverse engineering. Practitioners may focus on this term because defendants could argue their products use a simpler, one-piece construction or a different coupling mechanism that falls outside the scope of this term.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term itself is general. The specification describes it as a "hollow tubular device" that "couples the wax tip...to the applicator cover" (’005 Patent, col. 3:15-18). A party might argue that any internal component performing this coupling function within a hollow shaft meets the definition.
- Evidence for a Narrower Interpretation: The specification also discloses a specific embodiment where the connector "comprises an enlarged diameter on its first end" and "threading" on the other to lock the shaft in place (’005 Patent, col. 4:26-34). A party could argue the term should be limited to a connector possessing these specific structural features, as they are described as providing the securing function.
The Term: "injecting the melted wax into a mold" ("’852" Patent, Claim 1)
Context and Importance: This term defines a key step in the claimed manufacturing method. As infringement is alleged under equivalence, the precise scope of "injecting" will be critical. The viability of the claim may depend on whether this term is construed broadly enough to cover common wax-forming techniques.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue "injecting" should be given its plain and ordinary meaning, covering any method of introducing liquid wax into a mold, including simple pouring or pressing.
- Evidence for a Narrower Interpretation: The specification explicitly describes using a "syringe" to perform this step, stating "the wax is depicted as being withdrawn with a syringe" and "the wax in the syringe is injected into a mold" (’852 Patent, col. 5:14-20). A party could argue that this context limits the term "injecting" to a method involving pressure, as delivered by a syringe, and excludes passive methods like pouring.
VI. Other Allegations
- Indirect Infringement: The complaint's prayer for relief seeks judgment for inducement and contributory infringement (Compl. p. 79). However, the body of the complaint does not appear to plead specific facts to support the requisite elements of knowledge and intent, such as identifying specific instructions in user manuals or marketing materials that would encourage infringing acts.
- Willful Infringement: The complaint alleges that each defendant had "actual knowledge" of the patents-in-suit before the complaint was filed and seeks treble damages for willful infringement (Compl. ¶¶84, 91, 98, 105, 112). The complaint makes these allegations on "information and belief" without providing a specific factual basis for the alleged pre-suit knowledge, such as prior correspondence or licensing negotiations.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of evidentiary proof: Can the Plaintiff, through discovery and inspection of the hundreds of accused products from a wide array of defendants, prove that the internal, non-visible components (e.g., the "hollow connector" and "applicator cover") are present and arranged as specifically required by the utility patent claims?
- A second central question relates to the method of manufacture claim: Given that the infringement allegation for the "’852" patent is based on an assumption pending discovery, can the Plaintiff uncover sufficient evidence from the numerous, and often foreign, defendants to establish that their manufacturing processes meet the specific steps of the claimed method, either literally or under the doctrine of equivalents?
- Finally, the case presents a question of scope and scale: With a single individual plaintiff asserting five patents against hundreds of defendants, many of whom are foreign entities, a key practical issue will be how the court manages the procedural complexity, including discovery, service of process, and the potential for varied infringement defenses across different accused products.