Mingxuan Licensing LLC v. CSL Holdings LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Mingxuan Licensing LLC (Arizona)
  • Defendant: CSL Holdings, LLC (Utah)
  • Plaintiff’s Counsel: Brown Patent Law
• Case Identification: 2:19-cv-05097, D. Ariz., 09/05/2019
• Venue Allegations: The complaint does not contain a separate section on venue, but bases jurisdiction on federal patent law and the Declaratory Judgment Act, arising from an alleged controversy created by Defendant's enforcement actions targeting Plaintiff's products sold on Amazon.
• Core Dispute: Plaintiff seeks a declaratory judgment that its pickleball paddles do not infringe Defendant's two design patents, and that those patents are invalid and unenforceable.
• Technical Context: The dispute centers on the ornamental design of grips for pickleball paddles, a rapidly growing sport and consumer product category.
• Key Procedural History: The action was precipitated by Defendant CSL Holdings allegedly demanding that Amazon remove Plaintiff's "Niupipo" brand pickleball paddles from its online store, claiming they infringed the patents-in-suit. Plaintiff alleges these actions created a substantial and immediate controversy, necessitating this declaratory judgment action.

Case Timeline

Date	Event
2016-07-01	Alleged date patents-in-suit were first in public use and for sale
2017-08-22	Filing date for both U.S. Design Patent Nos. D847,283 and D846,674
2019-04-23	U.S. Design Patent No. D846674 issues
2019-04-30	U.S. Design Patent No. D847283 issues
2019-08-01	Alleged date Amazon began removing Plaintiff's products at Defendant's demand
2019-09-05	Complaint for Declaratory Judgment filed

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

U.S. Design Patent No. D847,283 - RIPPLED STRAP FOR A PICKLEBALL PADDLE

Issued April 30, 2019

The Patented Design

• The Patented Solution: The patent claims the ornamental design of a "rippled strap" for a pickleball paddle (’283 Patent, Title). The design consists of a series of raised, evenly-spaced, helical ridges wrapped around a cylindrical form (’283 Patent, Figs. 1-7). The drawings show the strap applied to the upper portion of a paddle handle, with the paddle face and the remainder of the handle shown in broken lines to indicate they are unclaimed environment and not part of the patented design (’283 Patent, Description).
• Design Context: The design provides a specific visual appearance for the grip area of a pickleball paddle handle (Compl. ¶14).

Key Claims at a Glance

• The patent contains a single claim for "The ornamental design for a rippled strap for a pickleball paddle, as shown." (’283 Patent, Claim).
• The scope of the claim is defined by the solid lines in the patent's seven figures.

U.S. Design Patent No. D846,674 - GRIP WITH RIPPLED STRAP FOR A PICKLEBALL PADDLE

Issued April 23, 2019

The Patented Design

• The Patented Solution: This patent claims the ornamental design of a "grip with rippled strap" for a pickleball paddle (’674 Patent, Title). The drawings appear to depict the same visual design as the ’283 Patent: a handle featuring a raised, helical wrap (’674 Patent, Figs. 1-7). The description states that the broken-line showing of the paddle is for illustrating unclaimed subject matter (’674 Patent, Description).
• Design Context: The design provides a specific visual appearance for the grip of a pickleball paddle (Compl. ¶15).

Key Claims at a Glance

• The patent contains a single claim for "The ornamental design for a grip with rippled strap for a pickleball paddle, as shown." (’674 Patent, Claim).
• The scope of the claim is defined by the solid lines in the patent's seven figures.

III. The Accused Instrumentality

Product Identification

Plaintiff’s "Niupipo" brand pickleball paddles (Compl. ¶4).

Functionality and Market Context

The complaint focuses on the ornamental design of the accused paddles, which were allegedly removed from the Amazon online store at the demand of Defendant CSL Holdings (Compl. ¶¶ 36, 37, 51). The complaint asserts that the design of the Niupipo paddles is similar to "countless other pickleball paddles being sold in the United States" (Compl. ¶35). The relevant feature is the ornamental appearance of the paddle's grip area (Compl. ¶¶ 72-73). The patent's figures, attached as an exhibit to the complaint, depict the claimed ornamental design applied to a pickleball paddle. Figure 1 of the ’674 Patent shows a perspective view of the claimed grip design on a paddle (Compl. ¶2, Ex. A; ’674 Patent, Fig. 1).

IV. Analysis of Non-Infringement Allegations

The complaint seeks a declaratory judgment of non-infringement but provides limited detail for a side-by-side comparison against the patented designs. Instead of a claim chart, it presents its non-infringement theory in narrative form.

D847,283 & D846,674 Non-Infringement Allegations

The complaint makes identical, conclusory allegations of non-infringement for both patents, stating that "The MingXuan technology does not infringe on the claim" (Compl. ¶¶ 70, 71). The only specific factual basis provided is that while the patented designs "claim appears to have an amount of ripples or strings," the accused "Niupipo pickleball paddles do not share the specific amount" (Compl. ¶72). The complaint further alleges, without elaboration, that "there are multiple differences between the Niupipo pickleball paddles and Defendant's ’283 and ’674 patents" (Compl. ¶73).

Identified Points of Contention

• Technical Questions: The central infringement question is whether an "ordinary observer" would find the design of the Niupipo paddles to be substantially the same as the designs shown in the ’283 and ’674 patents. A specific factual dispute may arise from Plaintiff's allegation regarding a differing "amount of ripples or strings" (Compl. ¶72), which would require a visual comparison to resolve.
• Scope Questions: The complaint raises the question of whether the patented design is limited to a specific number of "ripples" or if it covers the general concept of a helical wrap (Compl. ¶100, 101). The resolution of this question would directly impact the infringement analysis.

V. Key Claim Terms for Construction

While design patent claims are not typically construed in the same manner as utility patent claims, the title of a design patent can inform the scope of the claim. The complaint's arguments suggest certain terms may become focal points.

• The Term: "Rippled Strap" and "Grip"
• Context and Importance: Plaintiff's invalidity argument hinges on the assertion that the patented designs are primarily functional, not ornamental (Compl. ¶81). Plaintiff specifically alleges that the purpose of such a design is "to get a better grip on the handle" and that a "grip is a functional portion of a pickleball paddle" (Compl. ¶¶ 81, 98). Therefore, practitioners may focus on these terms from the patent titles as they frame the article of manufacture and could be used to argue that the design is dictated by its functional purpose, which would render it ineligible for design patent protection.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader (Ornamental) Interpretation: A party could argue that terms like "strap" and "grip" merely identify the article to which the ornamental design is applied, and the visual appearance shown in the figures is distinct from any functional aspect. The claim itself is for the "ornamental design," not the functional characteristics of a grip (’283 Patent, Claim).
  • Evidence for a Narrower (Functional) Interpretation: Plaintiff alleges that the design is nothing more than "wrapping tape around a handle" or "wrapping string around a handle," both of which it characterizes as lacking ornamentality (Compl. ¶¶ 83, 84). A party could argue that the term "rippled strap" itself implies the functional advantage of a textured surface for improved handling, suggesting the design's features are dictated by function.

VI. Other Allegations

The complaint contains two additional counts seeking declaratory judgment on grounds of invalidity and improper inventorship.

• Invalidity Allegations (Count II): Plaintiff asserts that the ’283 and ’674 patents are invalid on multiple grounds:
  • Improper Subject Matter: The patents allegedly claim a functional design intended to improve grip, rather than a purely ornamental one, and therefore should have been filed as utility patents (Compl. ¶¶ 81, 98). Plaintiff argues that creating ripples by wrapping tape or string is not ornamental (Compl. ¶¶ 83, 84).
  • Lack of Novelty (35 U.S.C. § 102): The complaint alleges the patented designs were in public use and on sale in the U.S. since "at least July of 2016," more than one year before the August 22, 2017 filing date (Compl. ¶¶ 85-87). It also cites several prior art patents and applications as anticipating the design (Compl. ¶¶ 109-114).
  • Obviousness (35 U.S.C. § 103): The complaint alleges the designs would have been obvious to a person of ordinary skill by combining the features of prior art pickleball paddles and racquetball rackets (Compl. ¶¶ 102-108).
  • Indefiniteness (35 U.S.C. § 112): The complaint alleges the patents are not "clear, concise, and exact" because it is unclear if the design is a "rippled strap" or the number of ripples or strings depicted (Compl. ¶¶ 95-97, 100-101).
• Improper Inventorship (Count III): The complaint makes the serious allegation that the named inventor, Yang Xiao Yan, is not the true inventor of the designs (Compl. ¶117). It alleges that upon correspondence, she admitted she was not capable of inventing the designs and did not know what she was signing (Compl. ¶¶ 118, 119). The complaint further alleges that the named inventor stated she was bribed with 500,000 Chinese money (approx. $70,000 USD) to claim inventorship (Compl. ¶¶ 120-121).

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

1. Functionality vs. Ornamentality: A central issue will be whether the patented design of a "rippled strap" is primarily ornamental, as required for design patent protection, or whether its features are dictated by the function of improving a player's grip, as Plaintiff alleges. The outcome of this question could invalidate both patents.
2. Inventorship and Enforceability: The case presents a significant factual dispute regarding inventorship, with direct allegations of incorrect naming and bribery. The resolution of these claims is critical, as proof of incorrect inventorship with deceptive intent could render the patents unenforceable, regardless of the outcomes of the infringement and validity analyses.
3. Public Use and On-Sale Bar: A key evidentiary question will be whether Plaintiff can substantiate its claim that the patented design was in public use or on sale more than one year before the patents' filing date. If proven, this would serve as an independent basis for invalidating the patents under 35 U.S.C. § 102.