DONGGUAN MEISHIDA E-COMMERCE CO., LTD. d/b/a JEEVONY v. KEVIN PATRICK KELLEY and MAGVENT, LLC

UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF TENNESSEE

GREENEVILLE DIVISION

DONGGUAN MEISHIDA E-COMMERCE )

CO., LTD. d/b/a JEEVONY, )

) 2:25-CV-00106-DCLC-CRW

Plaintiff/Counterclaim Defendant, )

)

v. )

)

KEVIN PATRICK KELLEY and )

MAGVENT, LLC, )

Defendant/Counterclaim Plaintiffs.

MEMORANDUM OPINION AND ORDER

This matter is before the Court on Jeevony’s Motion to Dismiss Defendant’s Counterclaim

and Strike Defendant’s Affirmative Defenses [Doc. 34]. This matter is fully briefed and is ripe for

consideration. For the following reasons, the motion is GRANTED IN PART as to the third

affirmative defense and DENIED IN PART as to Kelley’s counterclaim and first and second

affirmative defenses.

I. BACKGROUND

A. The ‘855 Patent

Defendant Kelley is the owner of U.S. Patent No. 11,634,855 (“the ‘855 Patent”), issued

by the United States Patent and Trademark Office on April 25, 2023.1 [Doc. 28, ¶ 10]. His

invention is the “Magnetically Positioned and Engaged Dryer Vent Attachment and Method,”

which contains two magnets, one in a mounted substrate at the end of a dryer exhaust duct, and

one in a second mounted substrate that attaches to a wall. This product allows for the easy

installation of a clothes dryer where the exhaust duct connects to a wall vent as the two magnets

1 MagVent, LLC is the exclusive licensee of the ‘855 Patent.

readily align themselves when placed together.

The ‘855 Patent contains two independent claims, 1 and 10. [Id. ¶ 29]. With emphasis

added to highlight the claim limitation at issue in the motion to dismiss, claim 1 recites:

1. A magnetically positioned dryer vent coupling adapted for use in combination

with a clothes dryer, comprising:

a flexible exhaust duct having a first end adapted for communicating with an

exhaust port of the clothes dryer and a second end adapted for communicating with

a wall port adjacent the clothes dryer;

a first mounting substrate located at one end of said flexible exhaust duct and

comprising a first magnet, said first mounting substrate defining a center opening

having an annular inner peripheral edge forming an annular inner perimeter of said

first mounting substrate and an annular outer peripheral edge forming an annular

outer perimeter of said first mounting substrate, and wherein said first magnet

resides between said inner and outer peripheral edges and produces a magnetic field

having one of a north or south outward-facing polarity pointed away from said

exhaust duct;

a second mounting substrate adapted for locating proximate one of the dryer

exhaust port and wall port and comprising a second magnet, said second mounting

substrate defining a center opening having an annular inner peripheral edge forming

an annular inner perimeter of said second mounting substrate and an annular outer

peripheral edge forming an annular outer perimeter of said second mounting

substrate, and wherein said second magnet resides between said inner and outer

peripheral edges and produces a magnetic field having an outwardfacing polarity

opposite the outward-facing polarity of said first magnet; and

said first and second mounting substrates comprising respective

complementary surfaces configured to nest together between said inner and

outer perimeters, said complementary surfaces configured to nest together at

any orientation upon magnetic attraction of said first and second magnets with

said annular inner peripheral edges of said first and second mounting substrates

substantially aligned, such that said annular inner perimeters of said first and second

mounting substrates cooperate to form an unobstructed sealed annular opening

through which dryer exhaust passes;

whereby when moved into close proximity, said first and second magnets

magnetically attract to one another to self-align and self-assemble said first and

second mounting substrates of said dryer vent coupling, such that said first and

second magnets create an audible snapping sound when engaged thereby indicating

a close magnetic seal at said dryer vent coupling.

[Id. ¶ 15]. Independent claim 10 is substantially the same as claim 1, with the addition of the

preamble “A clothes dryer, comprising.” [Id. ¶ 28].

B. The Patent Prosecution History

The ’855 Patent was not Kelley’s first patent application for magnetic dryer vent

attachments. His first application, 12/804,691, included a claim limitation for “smooth magnetic

surface areas between inner and outer perimeters of said first and second mounting substrates

engage and form a flush magnetic seal,” but did not include the complimentary, nesting limitation

present in the ‘855 Patent. [Doc. 39, pgs. 8-9]. That application was rejected by the USPTO in

light of the application’s similarity to the prior art publications to Pichotta and Irey. [Doc. 34, Ex.

2, A-0036].2

Kelley followed this rejection with application 15/825,998 that added a new claim for

“respective complementary outwardly protruding and inwardly recessed surfaces extending

between said inner and outer perimeters, said complementary protruding and recessed surfaces

adapted to nest together upon magnetic attraction.” [Doc. 34, Ex. 3, A-0347-48]. The USPTO

again rejected Kelley’s application in consideration of Pichotta and other art. [Id., A-0334].

To traverse this rejection, Kelley amended the claim with an additional limitation stating,

“said complementary protruding and recessed surfaces adapted to nest together at any orientation

upon magnetic attraction … such that said annular inner perimeters of said first and second

mounting substrates cooperate to form an unobstructed sealed annular opening through which

dryer exhaust passes.” [Id., A-0252]. This application was approved.

In the subsequent continuation patent application which resulted in the ‘855 Patent, the

2 Pichotta discloses a magnetically positioned dryer vent coupling equivalent to a magnet

and a metal plate, and Irey discloses a dryer vent coupling with smooth magnetic surface areas to

form a flush magnetic seal. [Id., A-0054-55].

limitation requiring “outwardly protruding and inwardly recessed surfaces” was removed. [Doc.

34, Ex. 5, A-0567]. However, the “complementary surfaces configured to nest together” limitation

remained, which is now central to the issue at hand.

C. Jeevony’s Product and the Instant Case

Plaintiff Jeevony sells a magnetic dryer vent attachment, pictured below, that contains a

flexible exhaust dust and two mounting substrates with flat surfaces. [Doc. 1, § 20, 21]. Jeevony

primarily sells this product on Amazon and received notice through Amazon’s Patent Evaluation

program that Kelley filed a proceeding alleging patent infringement. [/d. § 25]. In response,

Jeevony filed this lawsuit seeking declaratory judgments that its product does not infringe the ‘855

Patent and that the ‘855 Patent is invalid due to indefiniteness.

hh Magnetic Dryer Vent Coupling DV180 Airtight Seal

Dryer Vent Connector Kit Easy to Clean Quick

Connector Including a 2.6ft 4" Duct and two Clamps

Jie 4 ie vas ty ja i 900+ bought in past month

| [ { ee rae

i Peat sain

& □□ nm Color: Silver

* [Quick Connect & Disconnect] With its innovative strong magnets self-align

mechaniam, ideal for quick connecting, disconnecting of dryer vent hese. Provides easy

access for routine dryer vent cleaning, eliminating kinked, lint-filled dryer flex pipe

instantly redwcing the risk of dryer fires in your homet

+ [Safety & Reliability] We prioritise product quality and user safety. JEEVONY

aa magnetic dryer vent coupling features aluminium alloy shell, zero flame spread

aluminium foll hose, and stainless steel hose clamps to ensure durability and reliability

; a = _« [Airtight Connection] This connector had a built-in seal ring and a sunken design act

th □□□ = se the wall assembly, ensure it fits perfectly when mounted to the wall vent for superior

a a □□ am = na air tightness.

on” = aS _— ea . Larger Area] The dryer vent adapter comes with 2.6ft of 4 inch aluminum foil

hose bo meet your needs for extensive coverage.

In their counterclaim, Kelley and MagVent allege that Jeevony makes, markets, and sells

products that infringe on one or more claims of the ‘855 Patent.

Pursuant to Federal Rule of Civil Procedure 12(b)(6), Jeevony has filed a motion to dismiss

for failure to state a claim. In the motion, Jeevony argues that Kelley is asserting infringement

over subject matter beyond the scope of his patent, as his patent only covers “nested” surfaces, and

Jeevony’s product contains flat, non-nested surfaces. Jeevony also asks the Court to strike

Kelley’s affirmative defenses.

II. MOTION TO DISMISS DEFENDANT’S COUNTERCLAIM

A. Legal Standard

Under Federal Rule of Civil Procedure 12(b)(6), a district court must dismiss a complaint

if it fails to state a claim upon which relief can be granted. To survive a Rule 12(b)(6) motion, the

plaintiff must allege “enough facts to state a claim to relief that is plausible on its face.” Bell Atl.

Corp. v. Twombly, 550 U.S. 544, 570 (2007). A claim is facially plausible when the plaintiff pleads

facts that allow the court to “draw the reasonable inference that the defendant is liable for the

misconduct alleged.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (citation omitted). There must

be “more than a sheer possibility that a defendant has acted unlawfully.” Id. While courts do not

require “heightened fact pleading of specifics,” a plaintiff must allege facts sufficient to “raise a

right to relief above the speculative level.” See Twombly, 550 U.S. at 555, 570. When considering

a motion to dismiss, courts must presume all factual allegations in the complaint to be true and

make all reasonable inferences in favor of the non-moving party. Total Benefits Plan. Agency, Inc.

v. Anthem Blue Cross and Blue Shield, 552 F.3d 430, 434 (6th Cir. 2008) (citation omitted). The

same pleading standard applies to claims of patent infringement. See Lyda v. CBS Corp., 838 F.3d

1331, 1334 (Fed. Cir. 2016).

B. Analysis

Jeevony argues that Kelley is barred from claiming infringement due to prosecution history

estoppel as he excluded flat substrate surfaces from the scope of his patent during its prosecution.

Kelley contends that Jeevony is asking the Court to engage in claim construction which is

inappropriate at this stage of litigation, and which is factually unsupported as it requires the Court

to read limitations into the claim which were removed during prosecution.

The patent infringement analysis involves a two-step process: “[t]he court must first

interpret the claim and determine the scope and the meaning of the asserted patent claims, and then

compare the properly construed claims to the allegedly infringing device.” Liquid Dynamics Corp.

v. Vaughan Co., Inc., 355 F.3d 1361, 1367 (Fed. Cir. 2004) (citation omitted). If a court is required

to use extrinsic evidence to construe the meaning of claim terms and perform an infringement

analysis to resolve a motion to dismiss, the motion should be denied, because this type of analysis

is inappropriate at the pleading stage. See, e.g., Nalco Co. v. Chem-Mod, LLC, 883 F.3d 1337,

1350 (Fed. Cir. 2018); cf. UTTO Inc. v. Metrotech Corp., 119 F.4th 984 (Fed. Cir. 2024) (holding

that a court may undergo claim construction when adjudicating a motion to dismiss when it is

decided on intrinsic evidence alone).

But Jeevony argues that claim construction is not needed here, as it claims the prosecution

history confirms Kelley has stated that “nesting” surfaces are not flat surfaces. If that is indeed

the case, the Court may grant the motion to dismiss. Amgen Inc. v. Coherus BioSciences, Inc., 931

F.3d 1154, 1160–61 (Fed. Cir. 2019) (affirming the district court’s dismissal under 12(b)(6) based

on prosecution history estoppel). Thus, though Kelley argues that it is improper for the Court to

consider Jeevony’s motion to dismiss before the claim construction hearing, the Court may at this

stage properly consider whether the scope of the prosecution history applies to estop Kelley from

asserting infringement. See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 344 F.3d

1359, 1368 (Fed. Cir. 2003) (“Questions relating to the application and scope of prosecution

history estoppel thus fall within the exclusive province of the court,” and “determinations

concerning whether the presumption of surrender has arisen and whether it has been rebutted are

questions of law for the court, not a jury, to decide.”).

“Prosecution history estoppel applies as part of an infringement analysis to prevent a

patentee from using the doctrine of equivalents to recapture subject matter surrendered from the

literal scope of a claim during prosecution.” Trading Techs. Int'l, Inc. v. Open E Cry, LLC, 728

F.3d 1309, 1322 (Fed. Cir. 2013). Specifically, it bars a patent owner from asserting equivalents

for a claim element when that assertion contradicts statements made to the patent examiner in the

course of obtaining the patent. See Pharma Tech Sols., Inc. v. LifeScan, Inc., 942 F.3d 1372, 1380

(Fed. Cir. 2019).

To invoke prosecution history estoppel, the prosecution history must show “a clear and

unmistakable surrender of subject matter.” Deering Precision Instruments, L.L.C. v. Vector

Distribution Sys., Inc., 347 F.3d 1314, 1326 (Fed. Cir. 2003); Sandisk Corp. v. Memorex Prods.,

415 F.3d 1278, 1287 (Fed. Cir. 2005) (holding that an ambiguous disclaimer will not suffice to

limit a claim). To determine whether there has been a clear and unmistakable surrender, “[t]he

relevant inquiry is whether a competitor would reasonably believe that the applicant had

surrendered the relevant subject matter.” PODS, Inc. v. Porta Stor, Inc., 484 F.3d 1359, 1368 (Fed.

Cir. 2007) (citations omitted).

Here, there was not a “clear and unmistakable surrender” of flat-surfaced substrates in the

patent prosecution history. Upon review of the claim language on the ‘855 Patent in comparison

to its predecessors, it appears that flat surfaces may be allowed under the ‘855 Patent. The ‘855

Patent removed the limitation requiring outwardly protruding and inwardly recessed surfaces while

keeping the requirement that the “complementary surfaces configured to nest together.” So, while

complimentary nesting surfaces are still required, outward protrusions and inward recessions are

not, unless the term “nest” demands such physical structures. As the phrase “complementary

surfaces configured to nest together” is subject to multiple reasonable interpretations as evinced

through the parties’ briefings, it does not support a finding that there was a clear surrender of flat

surfaces, and it demonstrates that claim construction is necessary on this term.3

Jeevony argues that the figures in the ‘855 Patent make clear that flat surfaces cannot be

nested. Figure 6 depicts two curved substrates, one curved inward and one curved outward. The

patent describes this as “an alternate coupling geometry where the two halves of the coupling are

nested cones.” Figures 1 and 2 depict flat surfaced substrates, and the written description does not

describe either figure as “nested.” But simply because Figure 6 is described as “nested cones”

does not mean that Figures 1 and 2 are not nested. The patent does not describe Figures 1 and 2

as either nested or non-nested, and it would not make sense for Kelley to include non-nested

substrates when the patent demands nesting.

Jeevony also highlights Kelley’s initial patent application, 12/804,691, which included a

claim limitation for “smooth magnetic surface areas” and was rejected by the USPTO, as

confirmation that flat surface connections are beyond the scope of patentable subject matter. But

this initial application did not include the “complimentary surfaces that nest” limitation. Claim

construction for the term “complimentary surfaces that nest” will determine whether smooth

magnetic surfaces can be complimentary and nest, and consequently whether smooth magnetic

surface areas are beyond the scope of Kelley’s patent.

Finally, Jeevony contends that during prosecution, Kelley differentiated between his patent

and prior art by stating that the prior art, consisting of flat surfaces, contained no nesting. The

specific segment of the prosecution history is repeated here:

3 Further, as Kelley relies on extrinsic evidence (a dictionary definition) to define this term,

claim construction at the motion to dismiss stage is not appropriate.

(f) “said complementary protruding and recessed surfaces adapted to nest together upon

magnetic attraction of said first and second mounting substrates with said annular inner

peripheral edges of said first and second magnets substantially aligned”;

Pichotta: No nesting, and inner perimeters of openings (15a, 16a) do not align. Openings

(15a, 16a) are of different diameters to account for “misalignment”. See Pichotta at ¶[0059].

Irey: No nesting.

[Doc. 34, Ex. 5, A-0285]. This discussion relates to an earlier version of the patent, when it

included the limitation requiring outwardly protruding and inwardly recessed surfaces; this

limitation does not appear in the ‘855 Patent. While prosecution history estoppel can extend from

a parent application to subsequent related patents, “arguments made in a related application do not

automatically apply to different claims in a separate application.” Trading Techs. Int'l, Inc. v. Open

E Cry, LLC, 728 F.3d 1309, 1323 (Fed. Cir. 2013) (quoting Biogen, Inc. v. Berlex Labs., Inc., 318

F.3d 1132, 1139 (Fed. Cir. 2003)). Generally, “the prosecution history regarding a particular

limitation in one patent is presumed to inform the later use of that same limitation in related

patents, unless otherwise compelled.” Id. (emphasis added) (citations omitted). Kelley’s attempt

to differentiate between his patent and the prior art on a claim limitation that is not part of the

patent at issue is not applicable here. And though Kelley’s response states that there is no nesting

in Pichotta and Irey’s patents which both contain flat surfaces, because the disclaimer is

specifically related to protruding and recessed surfaces, it is possible to interpret this discussion as

arguing that Pichotta and Irey’s prior art does not show nesting of protruding and recessed surfaces.

Jeevony’s motion asks the Court to rely solely on the prosecution history to confirm that

the ‘855 Patent does not cover flat surfaces. But the prosecution history is not unmistakably clear

that that is the case, and the Court must undergo a claim construction analysis to determine whether

Kelley foreclosed all rights to flat nesting surfaces. Therefore, the Court must deny the motion to

dismiss Kelley’s counterclaim.

III. MOTION TO STRIKE AFFIRMATIVE DEFENSES

A. Legal Standard

Federal Rule of Civil Procedure 12(f) permits a court to strike from a pleading “an

insufficient defense or any redundant, immaterial, impertinent, or scandalous matter.”

Fed.R.Civ.P. 12(f). However, “[b]ecause striking a portion of a pleading is a drastic remedy, such

motions are generally viewed with disfavor and are rarely granted.” AT&T Global Info. Solutions

Co. v. Union Tank Car Co., No. C2–94–876, 1997 WL 382101, at *1 (S.D. Ohio Mar.31, 1997)

(citing Brown & Williamson Tobacco Corp. v. United States, 201 F.2d 819, 822 (6th Cir. 1953).

A motion to strike should be granted “only when required for the purposes of justice” and when

“the pleading to be stricken has no possible relation to the controversy.” Brown & Williamson

Tobacco Corp., 201 F.2d at 822.

B. Analysis

Jeevony argues that Kelley’s three affirmative defenses must be stricken because they fail

to meet the pleading requirements as described in Bell Atl. Corp. v. Twombly, 550 U.S. 555 (2007).

Twombly requires that a Complaint provide factual allegations sufficient “to raise a right to relief

above the speculative level,” and to “state a claim to relief that is plausible on its face.” Id. at 570.

But the Supreme Court does not apply this pleading standard to affirmative defenses, and neither

does the Sixth Circuit. Instead, the Sixth Circuit allows an affirmative defense to be pled “in

general terms” which will be held as sufficient “as long as it gives plaintiff fair notice of the nature

of the defense.” Lawrence v. Chabot, 182 F. App’x. 442, 456 (6th Cir. 2006) (quoting 5 Wright &

Miller, Federal Practice and Procedure § 1274).

Kelley’s first affirmative defense asserts that the Complaint fails to state a cause of action

upon which relief can be granted. Federal Rule 12(h)(2)(A) allows a party to raise “failure to state

a claim” in “any pleading allowed or ordered under Rule 7(a),” which includes the Answer.

Sony/ATV Music Pub., LLC v. D.J. Miller Music Distributors, Inc., No. 3:09–CV–01098, 2011

WL 4729807, at *5 (M.D. Tenn. Oct. 7, 2011). Courts in this Circuit routinely accept “failure to

state a claim” as an affirmative defense. Id. (collecting cases). Because motions to strike defenses

are disfavored and this defense provides Jeevony fair notice, the Court declines to strike the first

affirmative defense.

Kelley’s second affirmative defense asserts that the Complaint fails to plead facts sufficient

to show non-infringement or invalidity. This is essentially the same defense as the first affirmative

defense, and the Court will also decline to strike it as it provides fair notice of the nature of the

defense.

Kelley’s third affirmative defense asserts that unclean hands bars Jeevony’s complaint.

Jeevony argues that the defense must be plead with particularity under Federal Rule 9(b) because

it sounds in fraud. This overstates the doctrine. Although unclean hands may, in some cases,

overlap with inequitable conduct, it is not limited to fraud-based theories and may rest on litigation

or business misconduct. See, e.g., Gilead Sciences, Inc. v. Merck & Co., 888 F.3d 1231, 1239

(Fed. Cir. 2018) (unclean hands premised on business and litigation misconduct). There are no

indications here that this defense is based on fraud or misrepresentations, and therefore it need not

be pled with particularly pursuant to Rule 9(b). See Sony/ATV, 2011 WL 4729807, at *5 (holding

affirmative defenses that stated claims are barred by the doctrine of unclean hands provided

plaintiff with fair notice of the nature of the defense). The defense need only satisfy Rule 8’s fair-

notice standard.

Even so, the defense fails as a matter of law. The doctrine of unclean hands applies only

where the plaintiff’s misconduct bears an “immediate and necessary relation” relation to the

equitable relief sought. Gilead Scis. Inc. v. Merck & Co., Inc., 888 F.3d 1231, 1239 (Fed. Cir.

2018) (quoting Keystone Driller Co. v. Gen. Excavator Co., 290 U.S. 240, 245 (1933)). It does

not operate to invalidate a patent or to defeat a claim of non-infringement. W. E. Plechaty Co. v.

Heckett Eng'g, Inc., 145 F. Supp. 805, 806–07 (N.D. Ohio 1956).

Kelley’s pleading does not allege any misconduct connected to the procurement, scope, or

enforcement of the patent rights at issue. Instead, it asserts unclean hands as a complete bar to the

case. That defense is not legally cognizable as pled. Accordingly, Kelley’s third affirmative

defense is STRICKEN.

IV. CONCLUSION

For the reasons stated above, Jeevony’s motion [Doc. 34] is GRANTED IN PART as to

the third affirmative defense and DENIED IN PART as to the counterclaim and first and second

affirmative defenses.

SO ORDERED:

s/ Clifton L. Corker

United States District Judge