DCT
1:23-cv-01450
ShockWatch v. Wan Yo Enterprises Co Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: ShockWatch, Inc. d/b/a SpotSee (Nevada)
- Defendant: Wan-Yo Enterprises Co., Ltd. (Taiwan)
- Plaintiff’s Counsel: The Langley Law Firm, P.C.
- Case Identification: 1:23-cv-01450, W.D. Tex., 11/29/2023
- Venue Allegations: Plaintiff alleges venue is proper because the defendant is a foreign company not resident in the U.S. and may therefore be sued in any judicial district. The complaint also alleges that Defendant conducts business in the district.
- Core Dispute: Plaintiff alleges that Defendant’s "Impact Indicator 2" product infringes a patent related to mechanical devices that provide a visual indication of an impact or acceleration event.
- Technical Context: The technology involves disposable impact sensors, which are widely used in the logistics and shipping industries to monitor whether sensitive goods have been mishandled during transit.
- Key Procedural History: The complaint does not mention any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patent-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2011-03-10 | ’312 Patent Priority Date |
| 2016-08-23 | ’312 Patent Issue Date |
| 2023-11-29 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,423,312 - “Impact Indicator”
The Invention Explained
- Problem Addressed: The patent addresses the need to monitor sensitive or fragile objects during manufacturing, storage, or transit to determine if they have been subjected to a potentially damaging drop or significant impact ('312 Patent, col. 1:5-12).
- The Patented Solution: The invention is a mechanical impact indicator that provides a persistent visual signal after an acceleration event. It consists of a housing with a window and a detection assembly, which includes a movable mass. In its initial, non-activated state, a "first indicia" is visible in the window. Upon experiencing an impact of a predetermined magnitude, the mass moves, causing the first indicia to be displaced from the window and a "second indicia" to become visible, signaling that an event has occurred and, in some embodiments, indicating the direction of the impact ('312 Patent, Abstract; col. 3:22-35).
- Technical Importance: This technology provides a simple, low-cost method for creating a non-resettable record of mishandling, which is valuable for quality control in shipping and logistics ('312 Patent, col. 1:8-12).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 14, along with dependent claims 6 and 18 (Compl. ¶40).
- Independent Claim 1 requires:
- A housing having a window.
- A detection assembly with first and second displayable indicias.
- The first indicia is displayed in the window in a non-activated state.
- Upon detecting an acceleration event, the first indicia moves out of the window and the second indicia is displayed.
- The second indicia includes an indication of the direction of the acceleration event.
- Independent Claim 14 requires:
- A housing with at least one window.
- A detection assembly that can alternately display a first, second, or third indicia, each indicating impact status.
- At least two of the indicia indicate two different impact directions.
- One of these indicia is displayed in response to an acceleration event of a predetermined magnitude.
III. The Accused Instrumentality
Product Identification
The accused product is identified as "Impact Indicator 2" (Compl. ¶35).
Functionality and Market Context
- The complaint alleges the "Impact Indicator 2" is an impact indicator product that includes a housing with a window and a detection assembly (Compl. ¶36). The assembly is alleged to contain a movable mass member and to display a first indicia in its non-activated state. Upon detecting an acceleration event, the first indicia allegedly moves out of the window and a second indicia, which indicates the direction of the event, is displayed (Compl. ¶¶36, 37).
- The complaint further alleges the accused product meets the requirements of a more complex, multi-directional system by having a detection assembly that can alternately display first, second, or third indicia, where at least two indicate different impact directions (Compl. ¶38). A photograph shows the accused "Impact Indicator 2" product, an octagonal device with a central window and markings including "25G" and "INSPECT IF RED" (Compl. p. 8).
IV. Analysis of Infringement Allegations
’312 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a housing having a window; and | The Infringing Product is an impact indicator including a housing having a window. | ¶36 | col. 3:23-24 |
| a detection assembly configured to detect receipt by the housing of an acceleration event, the detection assembly comprising first and second indicias displayable thereby, | The Infringing Product includes a detection assembly configured to detect an acceleration event, and the assembly includes first and second displayable indicias. | ¶36 | col. 3:25-27 |
| wherein the first indicia is displayed in the window in a non-activated state of the impact indicator, | The first indicia is displayed in the window when the product is in a non-activated state. | ¶36 | col. 3:27-29 |
| and wherein in response to detecting the acceleration event, the first indicia moves out of the window and the second indicia is displayed in the window, | Upon detecting an acceleration event, the first indicia moves out of the window and the second indicia becomes displayed in the window. | ¶36 | col. 3:29-32 |
| the second indicia further comprising an indication of a direction of the acceleration event. | The second indicia includes an indication of a direction of the acceleration event. | ¶36 | col. 3:32-35 |
Identified Points of Contention
- Technical Questions: The complaint's allegations track the claim language almost verbatim (Compl. ¶¶36, 38). A central question for the court will be an evidentiary one: what proof will Plaintiff provide that the accused "Impact Indicator 2" operates according to the specific sequence recited in the claims? The photograph of the product's internal mechanism (Compl. p. 8) shows a metal component that appears to be a movable mass, but the precise mechanism by which an "indicia" is displayed or moved is not detailed in the complaint.
- Scope Questions: The patent specification describes embodiments where "indicia" can be encoded, machine-readable information like a barcode ('312 Patent, col. 8:5-24). The accused product appears to be a simple color-change indicator ("INSPECT IF RED"). While Claim 1 is not limited to encoded indicia, the difference between the disclosed embodiments and the accused product raises the question of how the operation of the accused device maps to the claim limitation "the first indicia moves out of the window and the second indicia is displayed."
V. Key Claim Terms for Construction
The Term: "indicia"
- Context and Importance: This term is foundational to the claims. Its definition will determine what types of visual signals are covered. Practitioners may focus on this term because the patent discloses both simple color codes and complex, encoded barcodes as "indicia" ('312 Patent, col. 8:45-54, col. 8:5-14), while the accused product appears to use a simple color change.
- Intrinsic Evidence for a Broader Interpretation: The specification refers generally to "different colors, marking or other types of indicia," which could support construing the term to encompass any visual signifier of status ('312 Patent, col. 8:28-30).
- Intrinsic Evidence for a Narrower Interpretation: Many embodiments focus on "encoded indicia" that are part of a physically moving mass member, such as a barcode printed on a surface that slides into view ('312 Patent, Fig. 8; col. 8:5-24). A defendant may argue that "indicia" implies a pre-formed mark on a tangible object that is repositioned.
The Term: "the first indicia moves out of the window and the second indicia is displayed in the window"
- Context and Importance: This phrase describes the mechanism of action. Its construction will be critical for determining whether the specific way the accused product signals an impact constitutes infringement.
- Intrinsic Evidence for a Broader Interpretation: A plaintiff might argue this language covers any mechanism where one visual state is replaced by another within the window, regardless of the precise physical process.
- Intrinsic Evidence for a Narrower Interpretation: The patent’s figures and description consistently show a single mass member (30) physically sliding from a first position to a second, which causes a different portion of its surface to become visible through the window ('312 Patent, Figs. 1B, 2B; col. 4:51-56). A defendant may argue the claim requires this specific translocation of a physical object bearing the indicia.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both contributory and induced infringement but does so in a conclusory manner (Compl. ¶40). It does not plead specific facts, such as references to user manuals or marketing materials, that would be required to substantiate the element of intent for inducement.
- Willful Infringement: Willfulness is alleged based on the assertion that "Defendant has had knowledge of the ‘312 Patent" (Compl. ¶41). However, the complaint provides no factual basis for pre-suit knowledge and includes language that may be construed as providing first notice of the patent, stating "SpotSee hereby notifies Defendant of the SpotSee ‘312 Patent" (Compl. ¶14). This may primarily support a claim for post-filing willfulness.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of operational correspondence: what evidence will Plaintiff produce to demonstrate that the accused product's apparent color-change mechanism functions in the specific manner required by the claims—namely, that a distinct "first indicia" physically "moves out of the window" to be replaced by a "second indicia"?
- The case will also turn on a question of claim construction: can the term "indicia," as used in the patent, be interpreted broadly enough to read on the simple color-change system of the accused product, or will its meaning be narrowed by the patent's more detailed descriptions of physically translocated, pre-printed markings and encoded barcodes?