Dongguan Tesmai Electronic Technology Co Ltd v. T Schedule A

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Dongguan Tesmai Electronic Technology Co., Ltd. (China)
  • Defendant: The Individuals, Partnerships and Unincorporated Associations Identified on Schedule "A" (alleged to reside in various foreign jurisdictions)
  • Plaintiff’s Counsel: Jared W. Gasman Attorney, P.A.
• Case Identification: 0:22-cv-62029, S.D. Fla., 11/01/2022
• Venue Allegations: Venue is asserted on the basis that Defendants operate interactive e-commerce websites that directly target and conduct business with consumers in the United States, including selling and shipping products to residents of Florida.
• Core Dispute: Plaintiff alleges that Defendants’ "Toy Aircraft" products, sold via various online storefronts, infringe a U.S. design patent covering the ornamental appearance of a toy aircraft.
• Technical Context: This case concerns the ornamental design in the consumer toy drone market, where distinctive product appearance can be a significant market differentiator.
• Key Procedural History: The complaint targets a group of unnamed e-commerce operators, identified only in a sealed "Schedule A," alleging they use tactics to conceal their identities and operate from foreign jurisdictions. This procedural posture suggests the initial phase of litigation may focus on identifying and serving the proper defendants.

Case Timeline

Date	Event
2020-04-03	’522 Patent Foreign Priority Date
2020-07-28	U.S. Patent No. D891,522 Issued
2022-11-01	Complaint Filed

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

U.S. Design Patent No. D891,522 - TOY AIRCRAFT

• Patent Identification: U.S. Design Patent No. D891522, titled "TOY AIRCRAFT," issued on July 28, 2020.

The Invention Explained

• Problem Addressed: Design patents protect the novel aesthetic appearance of an article of manufacture rather than its utilitarian function. The patent secures rights to a specific, unique visual presentation for a toy aircraft, which the complaint describes as a "distinctive patented Toy Aircraft" (Compl. ¶7).
• The Patented Solution: The patent claims the ornamental design for a toy aircraft as depicted in its eight figures (’522 Patent, Claim). The design consists of a generally spherical body formed by a protective, lattice-like cage with irregular, somewhat hexagonal cell shapes (’522 Patent, Figs. 1, 3). A solid-appearing band encircles the equator of the sphere, and internal propeller elements are visible through the cage structure (’522 Patent, Fig. 1). The overall impression is that of a flying orb enclosed in a protective, web-like exoskeleton.
• Technical Importance: The complaint alleges that Plaintiff uses this specific design in connection with its products, suggesting its commercial importance lies in establishing a recognizable and unique product identity in the marketplace (Compl. ¶7).

Key Claims at a Glance

• The single claim asserted is for: "The ornamental design for a toy aircraft, as shown and described." (’522 Patent, Claim).
• In a design patent, the claim's scope is defined by the drawings, and there are no separate elements or dependent claims to analyze.

III. The Accused Instrumentality

Product Identification

• The accused instrumentalities are "Toy Aircraft" products sold by the Defendants through numerous e-commerce storefronts (Compl. ¶¶ Intro, 10). The complaint characterizes these products as "Infringing Products" and "counterfeit versions of the ornamental design" (Compl. ¶ Intro).

Functionality and Market Context

• The complaint alleges that the Defendants operate multiple "fictitious Storefronts" that are designed to appear as authorized retailers to "unknowing consumers" (Compl. ¶¶ 12, 15). These online stores allegedly share common features, such as similar templates, payment methods, and marketing tactics, and use images that make it difficult for consumers to distinguish them from authorized sellers (Compl. ¶¶ 12, 15). The complaint further alleges on information and belief that the infringing products come from a "common source" (Compl. ¶15).

IV. Analysis of Infringement Allegations

The complaint does not provide a claim chart or any visual evidence of the accused products for comparison. The infringement theory is based on narrative allegations that the Defendants sell products that are "counterfeit versions" of the patented design.

No probative visual evidence provided in complaint.

Identified Points of Contention

• Factual Question: The central issue for infringement will be a factual one: does the design of the accused products appear "substantially the same" as the design shown in the ’522 Patent to an ordinary observer? The complaint's use of the term "counterfeit" suggests an allegation of near-identical copying, but this must be proven with evidence comparing the actual accused products to the patent figures (Compl. ¶ Intro).
• Scope Question: The test for design patent infringement is whether an ordinary observer, familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented design. The analysis will depend entirely on a visual comparison between the accused products and the figures of the ’522 Patent.

V. Key Claim Terms for Construction

In design patent litigation, the claim is defined by the drawings rather than by textual limitations. Consequently, claim construction of specific terms is typically not a central issue. The scope of the patent right is determined by the overall ornamental design shown in the patent's figures, as viewed by an ordinary observer. The primary legal analysis revolves around comparing the accused design to the patented design, not interpreting the meaning of words. The complaint does not suggest any dispute over the meaning of "toy aircraft," the article of manufacture to which the design is applied (Compl. ¶21).

VI. Other Allegations

Indirect Infringement

• The complaint makes conclusory allegations of "contributory infringement and/or inducement to infringe" (Compl. ¶23). It alleges that the defendants are an "interrelated group of infringers working in active concert" to manufacture, import, and sell the accused products (Compl. ¶17). However, the complaint does not plead specific facts detailing the elements of inducement (e.g., specific acts intended to encourage infringement by others) or contributory infringement (e.g., the sale of a component with no substantial non-infringing use).

Willful Infringement

• The complaint alleges that Defendants' infringement was and is willful (Compl. ¶18). The stated basis for willfulness is that "Defendants have notice of or knew of Plaintiff's patent" and engaged in "deliberateness" and "unethical and injurious commercial conduct" (Compl. ¶¶ 22, 24). This suggests a theory based on objective recklessness and the alleged bad-faith nature of the defendants' business operations.

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

1. A core issue will be one of visual comparison: Does the ornamental design of the Defendants' accused products create substantially the same visual impression as the design claimed in the '522 Patent in the eyes of an ordinary observer? Resolution of this question is entirely dependent on the presentation of the accused products for comparison with the patent's figures.
2. The case presents a significant procedural and enforcement challenge: Can the Plaintiff successfully pierce the anonymity of the e-commerce operators, establish personal jurisdiction, and enforce a potential judgment against entities alleged to be operating in foreign jurisdictions and utilizing off-shore accounts?
3. A key question for remedies will be proof of willfulness and profits: Can the Plaintiff demonstrate that the Defendants' alleged infringement was willful, which could lead to enhanced damages? Further, under 35 U.S.C. § 289, specific to design patents, a central issue will be whether Plaintiff can prove and elect to recover the Defendants' total profits from the sale of the infringing articles.