DCT

2:25-cv-01169

Dongguan Naquan E Commerce Co Ltd v. Binovo Mfg Co Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: Dongguan Naquan E-Commerce Co., Ltd. v. Binovo Mfg Co., Ltd, 2:25-cv-01169, W.D. Wash., 06/23/2025
  • Venue Allegations: Plaintiffs allege venue is proper in the Western District of Washington because Defendant purposefully directed patent enforcement activities at Amazon.com, Inc.'s Seattle operations, giving rise to the dispute.
  • Core Dispute: In this Declaratory Judgment action, Plaintiffs seek a declaration that Defendant's patent is invalid and unenforceable, following Defendant's submission of infringement reports against Plaintiffs' products to Amazon.
  • Technical Context: The technology concerns portable, rechargeable LED light strips integrated into a compact, reel-based housing that mimics a tape measure, designed for use in camping and other outdoor activities.
  • Key Procedural History: The complaint alleges that Defendant submitted infringement reports to Amazon concerning the patent-in-suit. It further alleges the patent is unenforceable due to inequitable conduct, citing two grounds: first, that Defendant improperly claimed small entity status to the U.S. Patent and Trademark Office (PTO), and second, that Defendant failed to disclose to the PTO material prior art references that were used to invalidate Defendant's corresponding Chinese patent in a proceeding before the China National Intellectual Property Administration (CNIPA).

Case Timeline

Date Event
2019-11-19 Zhang '093U prior art patent issued (as alleged in Complaint)
2021-12-21 Li '408A prior art patent published (as alleged in Complaint)
2022-11-08 Xu '129U prior art patent issued (as alleged in Complaint)
2023-01-06 '644 Patent Priority Date
2024-09-02 Invalidity petition filed against Defendant's Chinese patent
2024-10-08 Defendant responded to Chinese invalidity petition
2024-11-19 U.S. Patent No. 12,146,644 Issued
2025-01-08 CNIPA issued order invalidating Defendant's Chinese patent
2025-05-19 Plaintiffs received infringement notice emails from Amazon
2025-06-23 Complaint for Declaratory Judgment filed

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

  • Patent Identification: U.S. Patent No. 12,146,644, "TAPE MEASURE ATMOSPHERE LAMP," issued November 19, 2024.
  • The Invention Explained:
    • Problem Addressed: The patent's background section notes that storing conventional light strips is "laborious and inconvenient" and that existing "tape measure type" lamps have a "relatively single function," as they cannot provide illumination while the light strip is in a wound state ( '644 Patent, col. 1:24-38).
    • The Patented Solution: The invention is a multi-functional lamp housed in a compact body. It features a "rocker assembly" (a handle) hinged to a base, which allows a user to rotate it to wind or unwind a flexible light strip from an internal roller. The patent describes that this rocker assembly can also be flipped to a perpendicular position to serve as a hanging hook. Furthermore, the housing assembly itself is light-transmitting, allowing the device to function as a self-contained "camping lamp" even when the light strip is fully retracted ('644 Patent, Abstract; col. 2:1-18).
    • Technical Importance: The disclosed invention aims to combine the functions of a retractable, decorative light strip with a portable, enclosed lamp and a built-in suspension mechanism, thereby improving convenience and versatility for users ('644 Patent, col. 2:39-54).
  • Key Claims at a Glance:
    • The complaint seeks a declaratory judgment of invalidity for claims 1-17 of the '644 Patent (Compl. ¶39). Independent claim 1 is the sole independent claim.
    • The essential elements of independent claim 1 include:
      • A tape measure atmosphere lamp comprising a housing assembly, a rocker assembly, a base, a roller, a light strip, and a circuit module.
      • The rocker assembly is hinged to the base, which is fixedly connected to the roller.
      • The rocker assembly can be rotated to drive the base and roller, causing the light strip to extend or retract.
      • The rocker assembly can be "turned over relative to the base" to either protrude from or be hidden in the housing.
      • The rocker assembly itself comprises a "rocker" and a "handle."
      • The rocker is hinged to the base via a rotational shaft and is seated in a "mounting recess" in the base.
      • The rocker has an "arc-shaped rod structure" and specific limiting portions that interact with corresponding portions in the mounting recess.
    • The complaint implicitly includes all dependent claims 2-17 in its invalidity challenge (Compl. ¶39).

III. The Accused Instrumentality

  • Product Identification: Plaintiffs' "Camping String Lights," sold on Amazon under the "OGERY-Camping" and "OGERY-Outdoors" brand names (Compl. ¶¶ 11, 21-22).
  • Functionality and Market Context:
    • The complaint describes the accused product as a "4 in 1 Quick Storage 32.8FT Rechargeable Tent Lights String with 8 Lighting Modes, Hanging Waterproof Portable LED Lamp" (Compl. p. 4). A screenshot provided in the complaint depicts a circular, puck-shaped device containing a spooled light strip, with a handle on its top surface apparently used for winding and carrying. This screenshot shows the OGERY Camping String Lights product listing on Amazon (Compl. p. 4).
    • The complaint alleges the product has achieved significant commercial success, having been designated an "Amazon's Choice" product and ranked as an Amazon "Best Seller" in the Outdoor String Lights category (Compl. ¶¶ 12-13).

IV. Analysis of Infringement Allegations

The complaint is a declaratory judgment action for non-infringement, invalidity, and unenforceability, and therefore does not contain a detailed breakdown of the Defendant's infringement contentions in the form of a claim chart. The infringement theory is broadly referenced as Defendant’s "infringement reports to Amazon" alleging that Plaintiffs' "Camping String Lights" infringe the '644 Patent (Compl. ¶¶ 8, 14). The substantive focus of the complaint is on arguments for patent invalidity and unenforceability, rather than a rebuttal of specific infringement allegations.

  • Identified Points of Contention: The complaint raises several key legal and technical questions that will be central to resolving the dispute.
    • Legal Question (Unenforceability): A primary issue for the court will be whether the '644 Patent is unenforceable due to inequitable conduct. The complaint alleges two independent bases for this claim: first, that Defendant knowingly and improperly claimed small entity status with the PTO despite allegedly having more than 500 employees (Compl. ¶¶ 23-26), and second, that Defendant intentionally withheld known, material prior art from the PTO—specifically, references that were successfully used to invalidate its corresponding Chinese patent (Compl. ¶¶ 27-35).
    • Technical Question (Invalidity): The complaint puts the validity of the '644 Patent directly at issue, arguing that claims 1-17 are anticipated or rendered obvious by at least three prior art references: Chinese Patents No. 209655093U ("Zhang"), No. 113819408A ("Li"), and No. 217763129U ("Xu") (Compl. ¶¶ 40-42). A key technical question will be whether these references, which allegedly disclose "reel lamps" and "tape measure lamps," teach every element of the asserted claims, including the specific mechanical configuration and multi-functional operation of the claimed "rocker assembly". The complaint notes that the CNIPA already found the Chinese counterpart patent invalid over these references (Compl. ¶43).

V. Key Claim Terms for Construction

  • The Term: "rocker assembly"

  • Context and Importance: This term appears central to the patent's claims of novelty. The complaint's invalidity arguments rely on prior art that discloses "handles" and "operating wheels" (Compl. ¶¶ 40-42). The dispute may turn on whether those prior art structures meet the definition of the claimed "rocker assembly". Practitioners may focus on this term because its construction will determine whether the prior art anticipates the claims and whether the accused product infringes.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification states that "the rocker assembly includes a rocker and a handle" ('644 Patent, col. 2:19-21), which could suggest the term encompasses a wide variety of crank or handle mechanisms.
    • Evidence for a Narrower Interpretation: The patent repeatedly describes a specific multi-functional capability: the assembly is "turned over relative to the base" to serve as a "hanging hook" in a "perpendicular state" or to be "hidden in the housing assembly" ('644 Patent, Abstract; col. 2:26-30). Claim 1 itself requires a specific "arc-shaped rod structure" and interaction with "limiting portions" in a "mounting recess," which may support a narrower construction limited to this specific mechanical arrangement ('644 Patent, col. 9:16-20).

  • The Term: "tape measure atmosphere lamp"

  • Context and Importance: This term, found in the preamble of Claim 1, gives the invention its name. Its construction could be relevant to the scope of the claims, especially in the context of prior art that includes "tape measure lamps" (Compl. ¶¶ 41-42). The parties may dispute whether this preamble term is limiting.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The term could be argued to describe any lamp with a light strip that retracts into a housing, without imparting a specific structural limitation related to a traditional tape measure.
    • Evidence for a Narrower Interpretation: The patent's background distinguishes the invention from prior "tape measure type lamp[s]" ('644 Patent, col. 1:26-38), suggesting the term has a recognized meaning in the art. The consistent use of "tape measure" throughout the patent may imply that the overall form factor and winding/unwinding operation are intended to be part of the claimed invention, not just context.

VI. Other Allegations

  • Inequitable Conduct: The complaint makes two distinct allegations of inequitable conduct.
    • First, it alleges that Defendant willfully misrepresented its size to the PTO, claiming small entity status to pay reduced fees when it allegedly had more than 500 employees in 2022 and 2023, rendering it a large entity (Compl. ¶¶ 22-26).
    • Second, it alleges that Defendant intentionally concealed material prior art from the PTO. Specifically, it claims Defendant was aware of three Chinese prior art references by at least October 8, 2024, during a Chinese invalidity proceeding, but failed to disclose them during the prosecution of the '644 Patent, which issued over a month later (Compl. ¶¶ 28-35). The complaint asserts that these references were material, as evidenced by the fact that they were used to invalidate Defendant's corresponding Chinese patent (Compl. ¶31).
  • Tortious Interference with Existing Business Relationships: The complaint includes a state law claim (Count III) alleging that Defendant's "baseless infringement claim" to Amazon constitutes tortious interference (Compl. ¶47). It alleges that Defendant intended to harm Plaintiffs' reputation and business relationship with Amazon and that its actions were "wanton, willful and malicious" (Compl. ¶¶ 48, 52).

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

  • A threshold issue will be one of enforceability: can Plaintiffs prove by clear and convincing evidence that Defendant acted with an intent to deceive the PTO, either by improperly claiming small entity status or by intentionally withholding the prior art references that were used to invalidate the corresponding Chinese patent?
  • A central validity question will be one of obviousness: do the "reel lamp" and "tape measure lamp" prior art references cited by Plaintiffs, particularly those that formed the basis of the Chinese invalidation decision, disclose all elements of Claim 1 of the '644 Patent, including the specific structure and dual-function operation of the claimed "rocker assembly"?
  • The case also presents a question of improper enforcement: did Defendant's filing of infringement reports with Amazon, in light of the strong allegations of invalidity and unenforceability, cross the line from permissible patent enforcement into tortious interference with Plaintiffs' business relationships?