DCT
1:24-cv-24190
Yunshang Electronics Shenzhen Co Ltd v. R & Y Group Ltd Liability Co
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Yunshang Electronics (Shenzhen) Co., Ltd. (People's Republic of China)
- Defendant: R & Y Group, Limited Liability Company (Florida)
- Plaintiff’s Counsel: Dinsmore & Shohl LLP; Glacier Law LLP
- Case Identification: 1:24-cv-24190, S.D. Fla., 10/28/2024
- Venue Allegations: Venue is asserted in the Southern District of Florida on the basis that the Defendant is a Florida company with its principal place of business in Miami.
- Core Dispute: Plaintiff seeks a declaratory judgment that its "Migraine Headache Relief Cap" does not infringe Defendant's design patent and/or that the patent is invalid and unenforceable.
- Technical Context: The technology involves wearable therapeutic headwear, specifically gel-filled caps designed for hot or cold therapy to alleviate ailments like migraines.
- Key Procedural History: The lawsuit was precipitated by an infringement report submitted by the Defendant to Amazon, which resulted in the de-listing of Plaintiff's product. The complaint alleges the patent drawings were significantly and inconsistently amended during prosecution, which forms the basis for an invalidity challenge under 35 U.S.C. § 112.
Case Timeline
| Date | Event |
|---|---|
| 1972-07-24 | "Olga" prior art reference publication date (alleged) |
| 2004-08-26 | "Acevedo" prior art reference publication date (alleged) |
| 2016-07-12 | "Migraine" prior art reference publication date (alleged) |
| 2016-10-12 | "Yanming" prior art reference publication date (alleged) |
| 2018-08-21 | "FOMI" prior art reference publication date (alleged) |
| 2018-11-22 | "Aroma" prior art product first available on Amazon (alleged) |
| 2020-08-20 | U.S. Patent No. D965,959 application filed |
| 2022-03-01 | Drawings for the '959 Patent application amended (alleged) |
| 2022-10-11 | U.S. Patent No. D965,959 issued |
| 2024-10-03 | Plaintiff receives notice from Amazon of Defendant's infringement report |
| 2024-10-28 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D965,959 - "Gel Hat"
The Invention Explained
- Problem Addressed: The complaint asserts that the design is not ornamental but is instead dictated by function. It alleges the frustoconical shape is for ergonomic fit on a human head, and the tapered design prevents slipping (Compl. ¶12). It further alleges the V-shaped opening is functional to accommodate the user's nose and allow for breathing (Compl. ¶13).
- The Patented Solution: The patent itself does not contain a written description of a problem or solution. It protects the ornamental design for a "gel hat" as depicted in its 15 figures (D'959 Patent, FIG. 1-15). The claimed design features a soft, cap-like structure with a generally frustoconical shape, an opening at the top and bottom, and a V-shaped cutout on the lower edge of the front face (D'959 Patent, FIG. 3).
- Technical Importance: The complaint alleges that the design features are dictated by practical requirements to enhance comfort and usability for a therapeutic head covering (Compl. ¶¶13-14).
Key Claims at a Glance
- The patent contains a single claim: "The ornamental design for a gel hat, as shown and described." (D'959 Patent, col. 2:2-3).
- The essential visual elements of the claimed design include:
- A cap-like body having a generally straight or radial side profile.
- A V-shaped triangular opening on the front lower edge.
- Openings at the top and bottom of the cap.
III. The Accused Instrumentality
Product Identification
Plaintiff's "Migraine Headache Relief Cap," sold on Amazon under the store name "QnoonDirect" (Compl. ¶¶8, 60).
Functionality and Market Context
The product is a wearable cap intended for migraine and headache relief (Compl. ¶8). The complaint highlights several design features of the "Qnoon" product as being visually distinct from the patented design. These include a curved side profile to enhance fit, two rounded arch-shaped openings on the bottom edge, and a flush, "flat" appearance of these openings when viewed from the bottom (Compl. ¶60). The product was delisted from Amazon following an infringement complaint filed by the Defendant, indicating it was an active product in the online marketplace (Compl. ¶10). This side-by-side image compares the patented design (left) with the accused Qnoon product (right), highlighting alleged differences in the bottom opening. (Compl. p. 14).
IV. Analysis of Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement. The analysis below summarizes the Plaintiff's arguments for why its product is not substantially the same as the patented design, as required by the "ordinary observer" test for design patent infringement.
- D965959 Non-Infringement Allegations
| Claimed Feature (from D'959 Patent) | Alleged Non-Infringing Functionality of "Qnoon" Product | Complaint Citation | Patent Citation |
|---|---|---|---|
| Straight and radial side profile | The product features a curved side profile, which allegedly enhances fit and stability. | ¶60(a) | D'959 Patent, col. 2:24-25 (describing FIG. 5) |
| A single, sharp triangular opening at the bottom center | The product includes two round arch-shaped openings on the front and back portions. | ¶60(b) | D'959 Patent, col. 2:20-21 (describing FIG. 3) |
| A "ridgy" and prominently noticeable bottom opening | The product's two openings are flat and align flush with the hat's surface. | ¶60(c) | D'959 Patent, col. 2:28-29 (describing FIG. 7) |
- Identified Points of Contention:
- Scope Questions: The core dispute will involve applying the ordinary observer test. A central question is whether the differences articulated by the Plaintiff—such as the curved vs. straight profile and the number and shape of the bottom openings—are significant enough that an ordinary observer would not find the two designs substantially the same. The complaint's comparison image seeks to emphasize these differences. (Compl. p. 15).
- Technical Questions: A key factual issue will be the visual impact of these differences. The complaint characterizes the patented design's opening as "ridgy and prominently noticeable" versus its own "flat" openings (Compl. ¶60(c)). The litigation may turn on how these features are perceived in the actual products and whether the differences are minor or create a distinct overall visual impression. The Plaintiff also raises the issue of prior art, arguing that when viewed through the lens of established designs, the differences become more apparent and legally significant (Compl. ¶¶63-64).
V. Key Claim Terms for Construction
In design patent cases, the "claim" is the visual disclosure in the drawings. The central construction issue raised in the complaint is not the meaning of a word, but the clarity and consistency of the drawings themselves, which implicates indefiniteness under 35 U.S.C. § 112.
- The Term: The overall visual appearance of the "gel hat" as depicted across all figures.
- Context and Importance: The Plaintiff argues that the patent is invalid for indefiniteness because the drawings contain "severe inconsistencies between the various views," making it impossible for an ordinary observer to determine the precise scope of the claimed design (Compl. ¶44). Practitioners may focus on this issue because a successful indefiniteness argument would invalidate the patent entirely, mooting the infringement question.
- Intrinsic Evidence for Interpretation (i.e., Evidence Supporting Indefiniteness):
- The complaint alleges a direct contradiction between the bottom view (FIG. 7) and the top view (FIG. 8), stating that the V-shaped openings shown in the top view are depicted on the inside contour rather than the outer contour, which would be logically inconsistent (Compl. ¶46). The complaint provides an illustrative diagram to highlight this alleged discrepancy. (Compl. p. 11).
- Further allegations of inconsistency are made between the bottom view (FIG. 12), which shows a "raised V-shaped opening," and the corresponding top view (FIG. 13) and side views (FIGS. 14-15), which allegedly fail to depict this raised portion (Compl. ¶¶48, 50).
- The complaint also points to contradictory amendments made during prosecution, where features were allegedly added and removed from different figures in conflicting ways, contributing to confusion about the final claimed design (Compl. ¶45).
VI. Other Allegations
The complaint does not contain allegations of indirect or willful infringement. Instead, as a declaratory judgment plaintiff, Yunshang makes the following allegations against the patent holder:
- State Law Allegations: The complaint includes counts for Tortious Interference with Contractual Relations (Count V) and Tortious Interference with Prospective Economic Advantage (Count VI) (Compl. ¶¶69-86). The basis for these claims is the allegation that the Defendant intentionally and knowingly made "materially false allegations of patent infringement" to Amazon, which caused Amazon to remove the Plaintiff's product listing, thereby interfering with Plaintiff's contract and business relationship with Amazon (Compl. ¶¶73, 83).
VII. Analyst’s Conclusion: Key Questions for the Case
- A primary issue will be one of patent validity: Is the claimed design dictated by its utilitarian function, as Plaintiff alleges, rendering it improper subject matter for a design patent? Separately, are the patent's drawings so internally inconsistent, as argued in the complaint, that the claim is invalid for indefiniteness under § 112?
- A central question for non-infringement will be one of visual comparison: Will an ordinary observer, taking into account the prior art, find the overall visual impression of Plaintiff's "Qnoon" cap to be substantially the same as the D'959 patented design, or are the alleged differences in side profile and opening configuration significant enough to create a distinct design?