DCT

1:17-cv-05152

West Water Inc v. Ye Li Food Box Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:17-cv-05152, N.D. Ill., 07/13/2017
  • Venue Allegations: Venue is based on the allegation that all Defendants are Illinois corporations that have conducted business and committed the alleged acts of infringement within the Northern District of Illinois.
  • Core Dispute: Plaintiffs allege that plastic containers sold by Defendants infringe a U.S. design patent for an ornamental plastic container design.
  • Technical Context: The dispute concerns the ornamental design of commodity plastic food containers, a market where visual appearance can be a key product differentiator.
  • Key Procedural History: The complaint notes that Plaintiffs sent certified letters to each Defendant in May and June 2017, notifying them of the alleged infringement prior to filing the lawsuit. This action establishes a date of alleged knowledge for the purpose of willfulness claims.

Case Timeline

Date Event
2011-05-05 U.S. Patent No. D664,427 Priority Date (Filing Date)
2012-07-31 U.S. Patent No. D664,427 Issue Date
2017-05-22 Notification letter sent to Defendant MJ Trading Corporation
2017-05-22 Notification letter sent to Defendant Ye Li Food Box Inc.
2017-06-20 Notification letter sent to Defendant Wan Xing Lin, Inc.
2017-07-13 Complaint Filing Date

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

U.S. Design Patent No. D664,427 S - “Plastic Container”

  • Patent Identification: U.S. Design Patent No. D664,427 S (“Plastic Container”), issued July 31, 2012.

The Invention Explained

  • Problem Addressed: Design patents protect the ornamental appearance of an article of manufacture rather than its utilitarian features. The patent does not describe a functional problem; instead, it provides a new, original, and ornamental design for a plastic container, which is the statutory requirement for design patentability (D’427 Patent).
  • The Patented Solution: The patent claims the specific ornamental design for a plastic container as depicted in its seven figures ('427 Patent, Claim). The design consists of a two-part container (base and lid) with a generally rectangular shape and rounded corners. Key visual features include the container body’s flared upper lip and the lid’s recessed central panel surrounded by a raised peripheral edge ('427 Patent, FIG. 1-2). The patent's description clarifies that the various figures show the design from perspective, front, side, top, and bottom views ('427 Patent, Description).
  • Technical Importance: The claimed design provides a distinct aesthetic for a common consumer product, which may serve to distinguish its source in the marketplace.

Key Claims at a Glance

  • The complaint asserts the patent’s single claim, which covers the entire ornamental design as a whole (Compl. ¶16).
  • The claim is for "the ornamental design for a plastic container, as shown and described" ('427 Patent, Claim). The scope is defined by the visual appearance depicted in the patent's drawings.

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are "plastic containers" that are manufactured, sold, or offered for sale by the Defendants (Compl. ¶16).

Functionality and Market Context

  • The complaint alleges that the Defendants' products are "plastic containers" that embody the patented design (Compl. ¶16). It further alleges that Defendants derive "substantial revenue" from the sale of these infringing products within the district (Compl. ¶7). The complaint does not provide specific model numbers, marketing materials, or detailed descriptions of the accused containers beyond these general allegations. Exhibit A to the complaint contains Figure 1, which provides a perspective view of the claimed container design with its lid closed (Compl. ¶9, Ex. A). However, no images of the accused products are provided for comparison.

IV. Analysis of Infringement Allegations

For design patents, infringement is determined by the "ordinary observer" test, which asks whether an ordinary observer, familiar with the prior art, would be deceived into purchasing the accused product believing it is the patented design. As the complaint provides no images of the accused product, the following table summarizes the allegations at a high level.

D'427 Patent Infringement Allegations

Claim Element (Visual Feature from Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
The overall ornamental design for a plastic container, as shown and described, including its specific configuration and appearance. Defendants have "misappropriated Plaintiffs' patented plastic container designs in the accused products." ¶12 Description
The visual impression created by the combination of the container base and lid. The accused plastic containers "embodies the design covered by U. S. Design Patent D664, 427." ¶16 FIG. 1
  • Identified Points of Contention:
    • Visual Scope: The central dispute will be a direct visual comparison. The key question is whether the overall aesthetic of the accused containers is substantially the same as the design claimed in the '427 Patent. The complaint's assertion that "side-by-side comparisons" show misappropriation raises the question of what visual evidence Plaintiffs will produce to support this claim (Compl. ¶12).
    • Evidentiary Questions: The complaint's infringement theory is stated in conclusory terms. A primary issue for discovery will be for Plaintiffs to produce the accused products or detailed images thereof, which are necessary to perform the visual comparison required by the ordinary observer test.

V. Other Allegations

  • Indirect Infringement: The complaint does not allege indirect infringement (inducement or contributory infringement). The claims are limited to direct infringement through manufacturing, selling, and offering for sale (Compl. ¶16).
  • Willful Infringement: The complaint alleges willful infringement based on two grounds. First, it alleges upon information and belief that Defendants were aware of the patent "at the time they engaged in their directly infringing activities" (Compl. ¶17). Second, it alleges continued infringement after Defendants received certified letters from Plaintiff West Water Inc. notifying them of the '427 Patent, which may support a claim of post-notice willfulness (Compl. ¶¶13-15, 18).

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

  • A primary issue will be one of visual identity: does the overall ornamental appearance of the Defendants' accused plastic containers create a visual impression that is substantially the same as the D'427 Patent design in the eyes of an ordinary observer? The resolution of the case will depend almost entirely on the direct visual evidence of the accused products, which is not included in the complaint.
  • A secondary question will concern culpability and damages: can Plaintiffs demonstrate that Defendants' alleged infringement was willful? The court's analysis of the pre-suit notification letters and any other evidence of knowledge will be critical to determining whether enhanced damages are warranted.