DCT

5:25-cv-00781

Shenzhenshi Santian Shiye Youxiangongsi v. Qiu

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:25-cv-00781, N.D. Cal., 01/23/2025
  • Venue Allegations: Plaintiff alleges venue is proper because a substantial part of the events giving rise to the claim occurred in the district, including sales of the accused product and the effects of Defendant's enforcement activity. Venue is also alleged on the basis that Defendant is a foreign resident.
  • Core Dispute: Plaintiff seeks a declaratory judgment that its phone holder product does not infringe Defendant's design patent for a selfie stick tripod, a suit prompted by Defendant's patent infringement complaint on Amazon.com which led to the removal of Plaintiff's product listing.
  • Technical Context: The dispute concerns consumer electronics accessories, specifically combination selfie sticks and tripods, a market where ornamental design is a significant competitive differentiator.
  • Key Procedural History: The complaint states this action was precipitated by an infringement complaint Defendant filed with Amazon.com around January 18, 2025. Plaintiff foreshadows a potential invalidity challenge to the patent-in-suit, identifying one U.S. design patent and two Chinese design patents as alleged prior art.

Case Timeline

Date Event
2022-07-26 Application Date of alleged prior art Chinese Patents 1 & 2
2022-08-09 Priority Date of U.S. Design Patent D981,468
2023-03-21 Issue Date of U.S. Design Patent D981,468
2023-07-13 Filing Date of U.S. Design Patent D1,035,754 (licensed by Plaintiff)
2024-07-16 Issue Date of U.S. Design Patent D1,035,754 (licensed by Plaintiff)
2025-01-18 Defendant allegedly submits infringement complaint to Amazon.com
2025-01-23 Complaint for Declaratory Judgment filed

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

U.S. Patent No. D981,468 - "Selfie Stick Tripod"

The Invention Explained

  • Problem Addressed: Design patents protect the ornamental appearance of an article of manufacture rather than solving a functional problem. The '468 Patent seeks to protect a new, original, and ornamental design for a combination selfie stick and tripod.
  • The Patented Solution: The patent claims the specific visual appearance of a selfie stick tripod as depicted in its figures ('468 Patent, FIGS. 1-11). The claimed design, shown in solid lines, consists of a phone clamp at the top, a telescoping central pole, and a handle section that splits to form three legs for a tripod base ('468 Patent, FIG. 1). Key ornamental features include the specific contours of the phone clamp, the visible segments of the telescoping pole, and the shape of the handle when collapsed and when deployed as a tripod. Portions of the article shown in broken lines are explicitly disclaimed and do not form part of the patented design ('468 Patent, Description).
  • Technical Importance: In the market for consumer accessories like selfie sticks, a distinctive ornamental design can be a key factor in differentiating a product from its competitors and attracting consumers.

Key Claims at a Glance

  • The patent contains a single claim for "The ornamental design for a selfie stick tripod, as shown and described" ('468 Patent, claim).
  • The scope of this claim is defined by the overall visual impression of the design depicted in solid lines in the patent's eleven figures.

III. The Accused Instrumentality

Product Identification

The accused instrumentality is a "phone holder" sold by Plaintiff on Amazon.com under the trade name "TODI INC." and identified by Amazon Standard Identification Number (ASIN) B0CJTL7Q3J (Compl. ¶¶2, 8).

Functionality and Market Context

The complaint does not describe the specific features of the Accused Product. Instead, it alleges that the product "aligns with and embodies the design claimed by the '754 Patent," a different design patent for which Plaintiff is a licensee (Compl. ¶¶4, 11). The complaint alleges that the Accused Product was sold on Amazon.com before being removed as a result of Defendant's infringement complaint (Compl. ¶3).

IV. Analysis of Infringement Allegations

As this is a complaint for declaratory judgment of non-infringement, the analysis focuses on the Plaintiff's asserted grounds for why its product does not infringe. The complaint does not contain a claim chart or side-by-side visual comparison. No probative visual evidence provided in complaint.

The Plaintiff's non-infringement theory is twofold:

  1. Non-Infringement by Practicing a Separate Patented Design (Count One): Plaintiff alleges that its Accused Product embodies the design of U.S. Design Patent No. D1,035,754, for which it is a licensee (Compl. ¶¶4, 11). The complaint asserts that because the '754 Patent is valid and enforceable, and its design is "so vastly different" from the design claimed by the '468 Patent, the Accused Product "cannot infringe" the '468 Patent (Compl. ¶¶14, 16).
  2. Non-Infringement by "Ordinary Observer" Test (Count Two): Plaintiff alleges that, to an ordinary observer, the Accused Product and the design claimed by the '468 Patent are "so vastly different that the observer would not be deceived into purchasing the Accused Product under the impression that the Accused Product is the design claimed by the '468 Patent" (Compl. ¶36). This count also alleges that the '468 Patent is "nearly identical" to several prior art designs, which would narrow its scope (Compl. ¶35).

Identified Points of Contention

  • Legal Question: A threshold issue is the legal viability of Plaintiff's argument in Count One. The court will need to consider whether a party's embodiment of its own licensed patent can serve as a non-infringement defense against a different patent.
  • Factual Question: The central factual dispute will be the application of the "ordinary observer" test. This will require a visual comparison between the Accused Product and the design claimed in the '468 patent, viewed in the context of the prior art. The complaint's assertion that the designs are "vastly different" will be the focus of discovery and expert testimony (Compl. ¶36).
  • Scope Question: The complaint's identification of alleged prior art (U.S. Patent D1,024,172 and two Chinese patents) that is "nearly identical" to the '468 Patent raises the question of the patent's validity and, consequently, the scope of its protection (Compl. ¶¶34-35). If the '468 patent is found to be a minor variation of existing designs, its scope of protection against infringement would be correspondingly narrow.

V. Key Claim Terms for Construction

In design patent cases, claim construction focuses on the overall visual impression of the claimed design as a whole, rather than on discrete textual terms. The primary issue for construction will be the scope of the design claimed in the '468 Patent in light of the cited prior art.

The "Term"

The scope of "the ornamental design for a selfie stick tripod, as shown and described."

Context and Importance

The determination of the design's scope is critical. Plaintiff's allegations that the '468 Patent is "nearly identical" to prior art designs directly challenge the breadth of this scope (Compl. ¶35). If the court finds the patented design is only a slight modification over the prior art, it will be entitled to a narrow scope of protection, making a finding of infringement less likely unless the accused product is also nearly identical.

Intrinsic Evidence for Interpretation

  • Evidence for a Broader Interpretation: A party seeking a broader scope would emphasize the overall visual impression created by the unique combination of elements shown in solid lines in the patent figures, arguing this combination creates a distinct aesthetic not present in the prior art ('468 Patent, FIGS. 1-11).
  • Evidence for a Narrower Interpretation: A party seeking a narrower scope would point to the alleged prior art to argue that the patent's contribution is limited to minor, specific details (Compl. ¶¶19, 21-22, 35). That party would also emphasize that the broken lines in the patent figures explicitly disclaim subject matter, thereby limiting the claim's scope to only the specific ornamental features shown in solid lines ('468 Patent, Description).

VI. Other Allegations

Indirect Infringement

The complaint includes a blanket denial of both direct and indirect infringement (Compl. ¶28). As a declaratory judgment action filed by the accused infringer, it does not allege facts supporting indirect infringement.

Willful Infringement

Willfulness is not alleged in the complaint.

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

  1. A central issue will be one of validity and scope: To what extent is the '468 design patent a novel and non-obvious design in light of the U.S. and Chinese patents that Plaintiff alleges are "nearly identical" prior art? The answer will determine whether the patent is valid and how narrowly its protective scope must be drawn.
  2. The case will also turn on a question of visual comparison: Assuming the '468 patent is valid, would an ordinary observer, acquainted with the prior art, be deceived into believing Plaintiff's accused product is the same as the patented design? This requires resolving the factual dispute over whether the designs are "vastly different," as Plaintiff alleges.
  3. Finally, the case presents a question of commercial conduct and remedies: Is Plaintiff's argument that it cannot infringe because it practices its own licensed patent legally sustainable? Further, the request for an order compelling retraction of the Amazon.com complaint and an injunction against future such filings raises the question of how courts should address the use of e-commerce platform enforcement procedures in patent disputes.