Chen v. The Individuals, Partnerships and Unincorporated Associations

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Xiaoyun Chen (China)
  • Defendant: The Individuals, Partnerships And Unincorporated Associations Identified On Schedule A
  • Plaintiff’s Counsel: Jared W. Gasman Attorney, P.A.
• Case Identification: 0:23-cv-61597, S.D. Fla., 08/18/2023
• Venue Allegations: Venue is alleged to be proper because Defendants operate interactive e-commerce stores that target consumers in the United States, including Florida, and have allegedly sold infringing products to residents of Florida.
• Core Dispute: Plaintiff alleges that Defendants’ e-commerce stores sell "Ankle Skip Ball" toys that infringe a U.S. design patent covering the ornamental appearance of such a toy.
• Technical Context: The dispute concerns the ornamental design of a children's physical activity toy, a product category often sold through high-volume online marketplaces.
• Key Procedural History: The complaint is filed against a schedule of unidentified e-commerce operators, a common strategy in anti-counterfeiting litigation. The Plaintiff asserts that the Defendants are transactionally related, operating in a similar manner from common or related sources, to justify their joinder in a single action.

Case Timeline

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

U.S. Patent No. D949,243S - “Toy”

• Patent Identification: U.S. Patent No. D949,243S, “Toy,” issued April 19, 2022.

The Invention Explained

• Problem Addressed: Design patents do not solve technical problems but protect aesthetics. The patent protects a "new, original, and ornamental design" for an article of manufacture, in this case, a toy. (’243 Patent, Claim).
• The Patented Solution: The patent claims the specific ornamental design for an "Ankle Skip Ball" toy. The claimed design, illustrated in the patent's figures, consists of a ring for a user's ankle, a connecting rod, and a ball- or wheel-like object at the opposite end (’243 Patent, FIG. 1-7). The drawings show these components with specific contours and proportions, which constitute the protected design.
• Technical Importance: The complaint alleges the Plaintiff uses this "distinctive patented Ankle Skip Ball" in connection with its products, suggesting the design's value lies in its unique appearance and brand association in the marketplace (Compl. ¶9).

Key Claims at a Glance

• Design patents contain a single claim. The asserted claim is: "The ornamental design for a toy, as shown and described." (’243 Patent, Claim).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are "Ankle Skip Ball" toys, which the complaint refers to as "Infringing Products" and "counterfeit versions of the ornamental design of Plaintiff's Patent" (Compl. ¶1).

Functionality and Market Context

• The complaint alleges that the Defendants are numerous e-commerce store operators who sell the accused products through online storefronts (Compl. ¶10, ¶40). These storefronts are alleged to target consumers in the United States, including Florida (Compl. ¶5, ¶41).
• The complaint alleges the Defendants operate in a coordinated or similar fashion, using tactics to conceal their identities while sourcing products from the same or related upstream suppliers (Compl. ¶23, ¶26). It further alleges these actions are intended to trade on the goodwill associated with the Plaintiff's intellectual property (Compl. ¶2). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint does not provide a claim chart or side-by-side visual comparison of the patented design and any accused product. The infringement theory is articulated in prose, alleging that the Defendants' products embody a "colorable imitation" of the patented design. Infringement of a design patent is determined by the "ordinary observer" test, which asks whether an ordinary observer, familiar with the prior art, would be deceived into believing the accused design is the same as the patented design.

The core of the infringement allegation is that the Defendants are "making, using, offering for sale, selling, and/or importing into the United States...Infringing Products that infringe directly and/or indirectly the ornamental design for the Ankle Skip Ball, claimed in the Plaintiff's Patent" (Compl. ¶51).

• Identified Points of Contention:
  • Evidentiary Questions: A primary question will be whether the Plaintiff can produce evidence showing that the specific products sold by each of the anonymous Defendants are "substantially the same" in overall visual appearance as the design claimed in the ’243 patent. The complaint's lack of specific product images makes this a central issue for discovery.
  • Scope Questions: The infringement analysis will depend on the scope of the patented design. The use of broken lines in the patent figures to depict the middle portion of the toy's connecting rod indicates that this element is not part of the claimed design (’243 Patent, Description; FIG. 1). A key question is how this disclaimer affects the overall comparison, as it suggests that variations in the rod's length or middle features may not preclude a finding of infringement if the claimed end portions are substantially similar.

V. Key Claim Terms for Construction

In design patent cases, claim construction involves describing the claimed ornamental features in words rather than construing specific text-based terms. The "claim" is understood to be the design as shown in the drawings.

• The Term: "The ornamental design for a toy, as shown and described"
• Context and Importance: The construction of the claim will define the scope of the patent's protection for the "ordinary observer" test. Practitioners may focus on the visual elements shown in solid lines versus those shown in broken lines, as this distinction is dispositive for the scope of the claimed design.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party might argue that the overall visual impression of a ring connected by a rod to a wheel-like end is the core of the design. The disclaiming of the central rod section could be argued to broaden the patent's scope to cover products of varying lengths, so long as the ornamental appearance of the solid-line ankle ring and the distal wheel element are copied.
  • Evidence for a Narrower Interpretation: A party could argue that the design is limited to the specific, detailed contours and proportions of the ankle ring and the wheel-like end as depicted in the patent's figures (’243 Patent, FIG. 1-7). Protection would not extend to toys with differently shaped rings or end pieces, even if the general configuration is similar.

VI. Other Allegations

• Indirect Infringement: The complaint makes conclusory allegations of contributory infringement and inducement (Compl. ¶53, ¶54). It also references "aiding, abetting, contributing to, or otherwise assisting anyone in infringing" in the prayer for relief (Prayer for Relief ¶1(b)). However, the complaint does not plead specific facts to support these allegations, such as identifying instructions or affirmative acts of inducement.
• Willful Infringement: Willfulness is alleged based on Defendants having "actual or constructive knowledge of Plaintiff’s intellectual property rights" (Compl. ¶39) and having "notice of or knew of Plaintiff's patent" (Compl. ¶54). The complaint characterizes the Defendants' conduct as a "deliberate[]" disregard for Plaintiff's rights (Compl. ¶52).

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

1. Evidentiary Proof: A central issue will be whether the Plaintiff can successfully link each anonymous Defendant on Schedule A to the sale of specific products and then demonstrate, with visual evidence, that those products are "substantially the same" as the design claimed in the ’243 patent in the eyes of an ordinary observer.
2. Scope of Design: The case may turn on the legal interpretation of the patent's visual scope. A key question for the court will be how to weigh the ornamental features shown in solid lines (the ankle ring and distal wheel) against the disclaimed portion shown in broken lines (the central rod) when applying the "ordinary observer" test to an accused product.
3. Procedural Joinder: A significant procedural question is whether the court will accept the Plaintiff's theory that the numerous, independent e-commerce sellers are "transactionally related" (Compl. ¶20), thereby permitting them to be joined as defendants in a single lawsuit, or if it will require severance into individual actions.