DCT
2:25-cv-00502
Godox Photo Equipment Co Ltd v. Profoto Aktiebolag
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Godox Photo Equipment Co., Ltd. (China)
- Defendant: Profoto Aktiebolag (Sweden)
- Plaintiff’s Counsel: Benesch, Friedlander, Coplan & Aronoff LLP
- Case Identification: 2:25-cv-00502, W.D. Wash., 03/20/2025
- Venue Allegations: Plaintiff alleges venue is proper because Defendant engaged in legal and commercial activities in Washington by initiating Amazon Patent Evaluation Express (APEX) proceedings, which are administered from Seattle, and contractually agreed to the jurisdiction and venue of courts in King County, Seattle for those proceedings.
- Core Dispute: Plaintiff seeks a declaratory judgment that its photographic lighting products do not infringe Defendant's patent related to a magnetic system for attaching accessories to a flash housing.
- Technical Context: The technology involves methods for mounting light-shaping tools, such as diffusers and filters, onto the head of a photographic flash unit using magnetic force.
- Key Procedural History: The complaint states this declaratory judgment action follows a series of cease-and-desist letters from Defendant and Defendant's initiation of Amazon APEX proceedings, which resulted in an adverse ruling against Plaintiff. Plaintiff asserts that Defendant is now interpreting its patent claims more broadly than what was allowed during patent prosecution, invoking the doctrine of prosecution history estoppel to argue for a narrower claim scope.
Case Timeline
| Date | Event |
|---|---|
| 2017-09-18 | '375 Patent Priority Date |
| 2022-08-05 | USPTO issues final office action rejecting patent application |
| 2023-04-18 | U.S. Patent No. 11,630,375 Issues |
| 2024-02-28 | Defendant sends first cease-and-desist letter |
| 2024-04-12 | Defendant sends second cease-and-desist letter |
| 2024-07-30 | Defendant sends third cease-and-desist letter |
| 2024-09-17 | Defendant sends fourth cease-and-desist letter |
| 2024-12-01 | Defendant initiates Amazon APEX proceeding (approx. date) |
| 2025-03-04 | Defendant sends fifth cease-and-desist letter |
| 2025-03-18 | Amazon removes Plaintiff's product based on APEX proceeding |
| 2025-03-20 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,630,375 - Flash Housing for Photographic Purposes, A Set Comprising A Flash Housing for Photographic Purposes and at Least One Flash Light Shaping Tool, and a Flash Light Shaping Tool, Issued April 18, 2023
The Invention Explained
- Problem Addressed: The patent background describes the common use of flash light shaping tools to enhance photographic quality, implying a need for a convenient method of attaching these tools to a flash device (Compl. ¶6; ’375 Patent, col. 1:36-41).
- The Patented Solution: The invention is a flash housing that incorporates a magnetic fastening element, such as a ferromagnetic ring, around the border of its lens. This allows for the quick and easy magnetic attachment of corresponding light-shaping accessories directly on top of the lens, facilitating a modular and user-friendly system for photographers (’375 Patent, Abstract; col. 1:57-60).
- Technical Importance: The specification notes that magnetic mounting provides a "user friendly and easy to use" system, allowing photographers to adapt the flash light's characteristics by easily mounting and demounting different shaping tools (’375 Patent, col. 1:57-62).
Key Claims at a Glance
- The complaint’s non-infringement arguments focus on independent Claim 1 (Compl. ¶14).
- The essential elements of Claim 1 are:
- A flash housing comprising a flash forming element and a lens element with a substantially circular cross-section.
- A flash housing fastening element for attaching a light shaping tool on top of the lens element.
- The fastening element is arranged along a border of the lens element and extending from the plane of an external lens element surface.
- The fastening element is configured for magnetic engagement.
- The fastening element is ring shaped and made of ferromagnetic material.
- The fastening element has a surface facing in the main direction of the light.
- The complaint seeks a declaratory judgment of non-infringement for all claims of the patent (Compl. ¶52).
III. The Accused Instrumentality
Product Identification
- The complaint identifies the "Products-at-Issue" as the Godox AD100Pro, AK-R1, H200R, V1, V1Pro, V1ProU, V1U, V100, V100U, R1, and AD200Pro (Compl. ¶26).
Functionality and Market Context
- These are photographic lighting products and accessories sold by Plaintiff Godox (Compl. ¶¶3-4). The complaint categorizes the products into six groups based on their physical characteristics relevant to the patent claims (Compl. ¶27). The core non-infringement arguments center on the specific construction of the products' accessory mounting systems. For example, the Group 1 products (e.g., AD100Pro) are alleged to use a multi-part assembly where a steel ring sits on a separate diffuser, which in turn sits on the lens, a configuration Plaintiff argues is distinct from the claimed invention (Compl. ¶¶28-30). The complaint alleges the products are popular on distribution channels like Amazon.com (Compl. ¶15). The complaint includes a photograph showing the disassembled components of an AD100Pro flash head. (Compl. p. 8).
IV. Analysis of Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement. The table below summarizes Plaintiff Godox's primary non-infringement arguments with respect to Claim 1 of the '375 Patent, using the Group 1 products as the principal example.
’375 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a lens element... having a substantially circular cross-section | The accused AD200Pro product has a rectangular-shaped flash outlet, not a circular one. A side-by-side visual comparison is provided in the complaint. (Compl. p. 6). | ¶¶21, 42 | col. 4:55-58 |
| the flash housing fastening element... extending from the plane of an external lens element surface of the lens element | The accused products' steel ring does not extend from the lens surface; instead, it sits on a separate diffuser component which is positioned between the lens and the ring. The complaint includes a cross-sectional diagram to illustrate this layered assembly. (Compl. p. 9). | ¶¶30, 33, 34 | col. 5:22-25 |
| a flash housing fastening element... made of ferromagnetic material, [for] magnetic engagement | The accused V1ProU product uses a plastic ring and therefore lacks both a ferromagnetic material and magnetic engagement. The accused AD200Pro product is alleged to lack any magnetic engagement mechanism. | ¶¶40, 42 | col. 1:53-56 |
- Identified Points of Contention:
- Prosecution History Estoppel: A central legal issue is whether Defendant narrowed the scope of its claims during prosecution by adding the "extending from the plane" and "substantially circular cross-section" limitations to overcome prior art. The complaint argues this history prevents Defendant from now asserting a broader interpretation that would cover the accused products (Compl. ¶¶12, 18-19).
- Scope Questions: What is the proper construction of "extending from the plane of an external lens element surface"? The case may turn on whether this language requires the fastening element to originate at the lens surface, or if it can be satisfied when an intermediate component like a diffuser is present.
- Technical Questions: Does the accused products' assembly, which allegedly layers a lens, a diffuser, and a steel ring, meet the structural requirements of Claim 1? A related question is whether the "diffuser" in the accused products should be considered part of the "lens element" or a separate "flash light shaping tool" under the patent's own terminology (Compl. ¶31).
V. Key Claim Terms for Construction
The Term: "extending from the plane of an external lens element surface of the lens element"
- Context and Importance: This term is central to Plaintiff's primary non-infringement theory. Its construction will determine whether the accused products' layered assembly (lens, then diffuser, then steel ring) falls outside the claim scope. Practitioners may focus on this term because Plaintiff alleges it was added during prosecution to achieve patentability, suggesting it should be interpreted as a significant limitation (Compl. ¶¶10-12).
- Intrinsic Evidence for a Broader Interpretation: The specification discusses various arrangements, and a party might argue that "extending from the plane" only requires the fastening element to be located proud of the lens surface, without mandating direct contact or abutment.
- Intrinsic Evidence for a Narrower Interpretation: The complaint argues the accused steel ring "sits on the diffuser" rather than extending from the lens surface, implying a requirement for a direct structural origin (Compl. ¶33). The language was added during prosecution, which Plaintiff argues was a "clear and unmistakable" surrender of subject matter where the fastening element is not directly extending from the lens surface (Compl. ¶¶11-13).
The Term: "lens element"
- Context and Importance: The distinction between a "lens element" and a "flash light shaping tool" is critical. If the accused product's diffuser is considered a "shaping tool" and not part of the "lens element," it strengthens Plaintiff's argument that the steel ring does not extend from the "lens element surface" but rather sits on an intervening component.
- Intrinsic Evidence for a Broader Interpretation: A party could argue that "lens element" should be given its plain meaning, encompassing any primary optical component that lets light out of the housing.
- Intrinsic Evidence for a Narrower Interpretation: The patent specification explicitly distinguishes between the "lens element" (item 3 in figures) and "flash light shaping tools" (item 27), which include a "dome shaped diffuser element" (item 29) ('375 Patent, col. 4:45-46, col. 7:4-7). This supports an interpretation where the two are mutually exclusive components (Compl. ¶31).
VI. Other Allegations
- Indirect Infringement: The complaint primarily argues for non-infringement on a direct basis. It briefly addresses indirect infringement regarding accessory kits, stating they cannot "compensate for the missing elements in the accused flash products" (Compl. ¶44).
- Willful Infringement: This is not alleged against Plaintiff. However, Plaintiff alleges that Defendant's assertion of the '375 Patent lacks an "objectively reasonable basis" due to the clear prosecution history. Plaintiff claims Defendant's conduct constitutes tortious interference and requests that the court declare the case "exceptional" under 35 U.S.C. § 285, which would permit an award of attorney fees (Compl. ¶¶66, Prayer for Relief iv).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be the impact of prosecution history estoppel: to what extent did Defendant, by adding specific structural limitations to Claim 1 to secure the patent, surrender the right to assert infringement against products that do not meet the literal text of those added limitations?
- The case will likely involve a key question of claim construction: can the term "extending from the plane of an external lens element surface" be interpreted to cover a product where a separate component, such as a diffuser, is physically located between the lens surface and the fastening ring?
- An important evidentiary question will be one of factual comparison: does the physical design of the accused products, particularly those with allegedly rectangular shapes or non-ferromagnetic rings, fall entirely outside the scope of a claim that explicitly recites a "substantially circular cross-section" and a "ferromagnetic material"?