DCT
3:23-cv-05672
Waters Industries Inc v. Ez Home Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Waters Industries, Inc. (Illinois)
- Defendant: EZ HOME Inc (Washington)
- Plaintiff’s Counsel: Mann Law Group PLLC; Fitch, Even, Tabin & Flannery LLP
- Case Identification: 3:23-cv-05672, W.D. Wash., 07/26/2023
- Venue Allegations: Plaintiff alleges venue is proper because Defendant is incorporated, resides, has its principal place of business, and has committed acts of infringement within the Western District of Washington.
- Core Dispute: Plaintiff alleges that Defendant’s lighted hats infringe patents related to hands-free lighting devices integrated into headgear.
- Technical Context: The technology concerns the design and integration of LED light sources into the brim of a hat to provide hands-free illumination for close-up and distant tasks.
- Key Procedural History: The complaint notes that U.S. Patent No. 9,585,431 is a continuation of the application that resulted in U.S. Patent No. 8,550,651. Plaintiff also alleges that it provided Defendant with actual notice of infringement via a letter dated May 10, 2023, which forms the basis for its willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 2007-12-18 | Priority Date for ’651 Patent and ’431 Patent |
| 2013-10-08 | U.S. Patent No. 8,550,651 Issues |
| 2017-03-07 | U.S. Patent No. 9,585,431 Issues |
| 2023-05-10 | Plaintiff Allegedly Sends Notice Letter to Defendant |
| 2023-07-26 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,550,651 - “LIGHTED HAT”
- Issued: October 8, 2013
The Invention Explained
- Problem Addressed: The patent’s background section describes prior art lighted headgear as often being bulky, aesthetically unpleasing, and limited to illuminating a single area at a time, requiring the user to tilt their head for different tasks. It notes that lights enclosed within the brim could be imprecise or necessitate an unnaturally thick brim design. (’651 Patent, col. 1:21-2:67).
- The Patented Solution: The invention provides a light holder for headgear, featuring a thin mounting base and at least one "light holding bezel" that extends downward from the base at a fixed, oblique angle. This configuration allows for one or more light sources, such as LEDs, to be mounted on the underside of a hat's brim to provide downward-angled illumination for close-range activities like reading, while maintaining the hat's conventional, streamlined appearance. (’651 Patent, Abstract; col. 3:14-34; Fig. 8).
- Technical Importance: This design enables the integration of multiple light sources onto headgear to illuminate different distances simultaneously without requiring complex pivoting mechanisms or compromising the traditional aesthetic of the hat. (’651 Patent, Abstract).
Key Claims at a Glance
- The complaint asserts independent claim 17 and dependent claims 22-23, 25, and 28-30 (Compl. ¶18).
- Independent Claim 17 requires:
- A mounting base having a fore-and-aft axis extending thereacross; and
- An integral light holding bezel that extends from the mounting base at a fixed, oblique angle of inclination downwardly from the mounting base, sized to receive at least one light source for directing light downwardly away from the base.
U.S. Patent No. 9,585,431 - “LIGHTED HAT”
- Issued: March 7, 2017
The Invention Explained
- Problem Addressed: As a continuation of the application for the ’651 patent, the ’431 Patent addresses the same technical problems of prior art lighted headgear being cumbersome, single-function, and unaesthetic. (’431 Patent, col. 1:25-2:65).
- The Patented Solution: The invention is a light mount for headgear, described as a "single-piece light holder body." This body contains a cavity that extends at an inclination relative to the holder's fore-and-aft axis, thereby holding a light source in a "predetermined fixed orientation" to project light downward from a hat's brim. The body also includes an opening on its upper surface for electrical connections. (’431 Patent, Abstract; claim 1).
- Technical Importance: The single-piece construction provides a simple and robust solution for integrating fixed-angle, downward-projecting lights into headgear for hands-free, close-range illumination while preserving the headgear's normal appearance. (’431 Patent, col. 3:4-15).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 19, and dependent claims 2-3, 6-14, and 22-25 (Compl. ¶24).
- Independent Claim 1 requires:
- A single-piece light holder body for holding a light source in a predetermined fixed orientation, having a laterally extending upper surface with a fore-and-aft axis;
- A cavity in the body sized to receive the light source, where the cavity extends at an inclination to the fore-and-aft axis; and
- An opening to the cavity in the upper surface to allow electrical connections of the light source to pass therethrough.
III. The Accused Instrumentality
Product Identification
The accused products are a line of lighted hats sold under names including "The Contractor Hat," "The Contractor Hat 2.0," "Flat Bill Contractor Hat 2.0," and "4.0 Navy Blue Baseball Cap" (collectively, the "Accused Products") (Compl. ¶13-¶14).
Functionality and Market Context
The Accused Products are described as baseball-style hats featuring a pair of LED lights affixed to a light holder, which is in turn affixed to the underside of the hat's brim (Compl. ¶13, ¶15). The complaint alleges this configuration orients the LEDs at a "downward inclination" to project light at a "downwardly inclined angle away from the mounting base portion" (Compl. ¶13). An image in the complaint depicts the "EZ Home 'The Home Hat'" with two lights visible on the underside of its brim. (Compl. p. 6). Defendant is alleged to market and sell these products through various online channels, including Amazon, TikTok, Instagram, Facebook, and its own website (Compl. ¶13).
IV. Analysis of Infringement Allegations
The complaint references claim chart exhibits that are not provided. The following tables summarize the infringement theory based on the narrative allegations in the complaint.
U.S. Patent No. 8,550,651 Infringement Allegations
| Claim Element (from Independent Claim 17) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a mounting base having a fore-and-aft axis extending thereacross | The Accused Products include a light holder with a mounting base portion. | ¶13 | col. 11:12-14 |
| an integral light holding bezel that extends from the mounting base at a fixed, oblique angle of inclination downwardly from the mounting base...for directing light...downwardly away from the base | The light holder has a pair of LED lights affixed at a downward inclination to the mounting base, causing the lights to project at a downwardly inclined angle away from that base. | ¶13 | col. 11:47-52 |
U.S. Patent No. 9,585,431 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a single-piece light holder body for holding a light source in a predetermined fixed orientation... | The Accused Products utilize a "light holder" to affix LED lights to the underside of the hat brim. | ¶13 | col. 28:1-2 |
| a cavity in the light holder body sized to receive the light source therein, the cavity extending at an inclination to the fore-and-aft axis... | The light holder positions the LED lights at a "downward inclination" to project light at a "downwardly inclined angle." This implies a cavity or receptacle to hold the LEDs at this angle. | ¶13 | col. 28:5-10 |
| an opening to the cavity in the upper surface to allow electrical connections of the light source to pass therethrough | The complaint does not provide sufficient detail for analysis of this element. | N/A | col. 28:11-14 |
- Identified Points of Contention:
- Scope Questions: A primary dispute may concern whether the Defendant’s "light holder" meets the specific structural definitions of an "integral light holding bezel" as recited in the ’651 Patent and a "single-piece light holder body" as recited in the ’431 Patent. The complaint describes the accused functionality but offers limited detail on the specific construction of the holder itself.
- Technical Questions: For the ’431 Patent, a key factual question will be whether the accused light holder has the claimed "opening in the upper surface" for electrical connections. The complaint’s infringement theory focuses on the orientation of the lights and does not explicitly map this structural element.
V. Key Claim Terms for Construction
The Term: "integral light holding bezel" (’651 Patent, claim 17)
Context and Importance: The construction of this term will be central to determining infringement of the ’651 Patent. The dispute may turn on whether the accused "light holder" is a unitary, single-piece structure as the term "integral" suggests, or an assembly of multiple components.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification at times uses the terms "light holder," "housing portions," and "modules" to describe the structure, which might support an argument that "bezel" is not limited to a specific, narrow form factor (e.g., ’651 Patent, col. 11:13-16).
- Evidence for a Narrower Interpretation: The word "integral" itself strongly implies a one-piece construction. The patent's description of the bezel as being "integrally formed with the base portion" and extending "obliquely from the base" could support a narrower definition requiring a specific unitary structure (’651 Patent, col. 31:45-48).
The Term: "single-piece light holder body" (’431 Patent, claim 1)
Context and Importance: This term is critical for infringement of the ’431 Patent. Similar to "integral," its construction will determine whether a multi-component accused light holder can infringe a claim that explicitly recites a "single-piece" body.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue that "single-piece" should be interpreted functionally, referring to a holder that acts as a single unit once installed, even if manufactured from multiple sub-components.
- Evidence for a Narrower Interpretation: The plain language "single-piece" strongly suggests a unitary construction, molded or formed as one part. The patent's abstract describes the holder as being "integrally attached or molded to the brim portion," reinforcing the concept of a unitary structure (’431 Patent, col. 20:30-32).
VI. Other Allegations
- Willful Infringement: The complaint alleges willful infringement based on Defendant's alleged actual notice of both patents-in-suit. This notice was allegedly provided via a letter from Plaintiff to Defendant dated May 10, 2023. Plaintiff alleges that any infringement occurring after this date constitutes reckless disregard of its patent rights (Compl. ¶20, ¶26).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of structural correspondence: Does the physical construction of the Defendant's "light holder" meet the specific limitations of an "integral light holding bezel" as required by the ’651 patent and a "single-piece light holder body" as required by the ’431 patent, or is it an assembly of components that may fall outside the literal scope of these terms?
- A key evidentiary question for the ’431 patent will be one of elemental presence: Can discovery establish that the accused product contains the claimed "opening in the upper surface to allow electrical connections," a specific structural element not addressed in the complaint’s functional allegations of infringement?
- The willfulness claim will likely turn on a question of conduct: What actions, if any, did Defendant take in response to the alleged notice letter of May 10, 2023, and does its continued commercial activity rise to the level of objective recklessness required to support enhanced damages?