DCT

1:21-cv-04055

Gao v. Partnerships Unincorp Associations

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
    • Plaintiff: Feng Gao (People's Republic of China)
    • Defendant: The Partnerships and Unincorp Associations Identified on Schedule "A" (People's Republic of China or other foreign jurisdictions)
    • Plaintiff’s Counsel: Bayramoglu Law Offices, LLC
  • Case Identification: 1:21-cv-04055, N.D. Ill., 07/29/2021
  • Venue Allegations: Venue is predicated on allegations that the defendants operate interactive e-commerce stores that directly target and sell products to consumers in the United States, including within the state of Illinois.
  • Core Dispute: Plaintiff alleges that Defendants’ e-commerce sales of earbuds infringe three U.S. design patents covering the ornamental appearance of over-the-ear earphones.
  • Technical Context: The dispute concerns the ornamental design of over-the-ear style earbuds, a product category within the highly competitive consumer electronics market.
  • Key Procedural History: The complaint is structured as an action against a network of unidentified e-commerce operators alleged to be using multiple aliases to sell infringing goods and evade enforcement. This action appears to be part of a strategy to combat diffuse online infringement originating from foreign jurisdictions.

Case Timeline

Date Event
2019-11-01 Priority Date for '023, '356, and '357 Patents
2020-06-23 U.S. Design Patent D888,023 Issues
2021-04-06 U.S. Design Patent D915,356 Issues
2021-04-06 U.S. Design Patent D915,357 Issues
2021-07-29 Complaint Filed

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

U.S. Design Patent No. D888,023

  • Patent Identification: U.S. Design Patent No. D888023 S, titled “Earphone,” issued June 23, 2020.
  • The Invention Explained:
    • Problem Addressed: Design patents do not articulate a technical problem and solution; instead, they protect the novel, ornamental, and non-obvious appearance of an article of manufacture (Compl. ¶¶ 7, 19).
    • The Patented Solution: The patent claims the specific ornamental design for an earphone as depicted in its figures (D'023 Patent, Claim). Key visual features shown in solid lines include a C-shaped over-the-ear hook that transitions into a main rectangular housing, from which an in-ear speaker element protrudes (D'023 Patent, Figs. 1, 4). The main housing features a distinct, elongated, rounded-rectangular surface feature (D'023 Patent, Fig. 3).
    • Technical Importance: The complaint alleges that the patented "Gao Designs" are distinctive and broadly recognized by consumers, associating them with a certain level of quality and innovation (Compl. ¶¶ 7, 15).
  • Key Claims at a Glance:
    • Design patents contain a single claim. The asserted claim is for "The ornamental design for an earphone, as shown and described" (D'023 Patent, Claim).
    • The scope of this claim is defined by the visual appearance of the earphone depicted in solid lines in the patent’s eight figures.

U.S. Design Patent No. D915,356

  • Patent Identification: U.S. Design Patent No. D915356 S, titled “Earphone,” issued April 6, 2021.
  • The Invention Explained:
    • Problem Addressed: The patent protects the specific visual appearance of an earphone, distinct from prior designs (Compl. ¶¶ 7, 19).
    • The Patented Solution: The patent claims an ornamental design for an earphone that is visually similar in its overall form to the '023 Patent, comprising an ear hook, main body, and in-ear element (D'356 Patent, Figs. 1-2). A distinguishing feature of this design is a circular element on the front face of the main housing, in contrast to the rounded-rectangular feature shown in the '023 Patent (D'356 Patent, Fig. 3).
    • Technical Importance: The complaint groups this patent with the other "Gao Designs," which are alleged to be well-recognized by the public (Compl. ¶¶ 7, 19).
  • Key Claims at a Glance:
    • The single asserted claim is for "The ornamental design for an earphone, as shown and described" (D'356 Patent, Claim).
    • The claim's scope is defined by the earphone's visual appearance as shown in the patent's figures.

Multi-Patent Capsule: U.S. Design Patent No. D915,357

  • Patent Identification: U.S. Design Patent No. D915357 S, titled “Earphone,” issued April 6, 2021.
  • Technology Synopsis: This patent protects the specific ornamental design of an over-the-ear earphone. The claimed design is substantially similar in overall shape to the other asserted patents but is distinguished by an elongated, pill-shaped ornamental feature on the main body of the earphone (D'357 Patent, Fig. 3).
  • Asserted Claims: The complaint asserts the single claim for the ornamental design as shown and described in the patent (Compl. ¶¶ 31-34).
  • Accused Features: The complaint alleges that the overall ornamental appearance of the Defendants' "Infringing Products" is a colorable imitation of, and substantially similar to, the design claimed in the '357 Patent (Compl. ¶32; Prayer for Relief ¶ 1(a)).

III. The Accused Instrumentality

  • Product Identification: The accused instrumentalities are "unauthorized and unlicensed" earbuds ("Infringing Products") that are allegedly manufactured, imported, offered for sale, and sold by the Defendants (Compl. ¶3, ¶18).
  • Functionality and Market Context: The complaint alleges that Defendants sell the accused earbuds through a network of "fully interactive, e-commerce stores" operating under various "Seller Aliases" (Compl. ¶¶ 2, 11). These stores are alleged to target consumers in the United States, accept payment in U.S. dollars, and are designed to appear as though they are authorized retailers (Compl. ¶¶ 5, 14). A set of diagrams in the complaint shows the patented earbud designs from multiple angles—front, rear, left, right, top, and bottom—with callouts identifying the "ear hook," "body," and "tail end" components (Compl. p. 4). The complaint alleges that the infringing products sold by Defendants embody these designs (Compl. ¶3, ¶14).

IV. Analysis of Infringement Allegations

The complaint does not contain a formal claim chart. The infringement theory is presented through narrative allegations. For design patents, the legal test for infringement is whether an "ordinary observer," familiar with the prior art, would be deceived into purchasing the accused product believing it is the patented design.

The complaint alleges that Defendants are making, using, offering for sale, and importing products that "infringe directly and/or indirectly the ornamental design" claimed in each of the patents-in-suit (Compl. ¶¶ 24, 28, 32). The core of the allegation is that the accused earbuds are "substantially similar" in appearance to the patented "Gao Designs," such that they represent a "reproduction, copy or colorable imitation" of the claimed designs (Compl. ¶3; Prayer for Relief ¶ 1(a)). The complaint does not include images of the accused products themselves for a side-by-side comparison, which will be a necessary step in subsequent stages of the litigation.

  • Identified Points of Contention:
    • Scope Questions: A potential issue is the scope of the patent protection in a crowded field. The court may need to consider prior art designs to determine the degree of novelty and non-obviousness of the claimed designs, which in turn defines how similar an accused product must be to infringe.
    • Technical Questions: The central factual question will be whether the accused products' designs are "substantially the same" as the patented designs from the perspective of an ordinary observer. This analysis will require a visual comparison of the accused products against the claims as illustrated in the figures of the '023, '356, and '357 patents, paying attention to the overall impression as well as the specific distinguishing features of each design, such as the shape of the element on the main housing.

V. Key Claim Terms for Construction

The complaint does not provide sufficient detail for an analysis of claim construction issues. In design patent cases, claim construction is typically limited to determining the scope of the claimed design as depicted in the patent's figures, a process that was not addressed in the complaint's allegations. The primary "construction" exercise will involve interpreting the visual scope of the solid-line drawings in each patent.

VI. Other Allegations

  • Indirect Infringement: The complaint includes boilerplate allegations of indirect infringement and a prayer for relief seeking to enjoin "aiding, abetting, [or] contributing to" infringement (Compl. ¶¶ 24, 28, 32; Prayer for Relief ¶ 1(b)). However, the pleading does not set forth specific facts to support the elements of either induced or contributory infringement, such as specific acts of encouragement or the absence of substantial non-infringing uses.
  • Willful Infringement: The complaint alleges that Defendants' infringement was and is willful (Compl. ¶21). This allegation is based on the assertion that Defendants are an "interrelated group of infringers working in active concert to knowingly and willfully" sell infringing products, and that they employ tactics like using multiple aliases and providing false information to conceal their identities and evade enforcement actions (Compl. ¶¶ 17, 20).

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

  • A key procedural question will be one of enforcement viability: The case targets a diffuse network of allegedly anonymous foreign e-commerce sellers. A central challenge for the plaintiff will be successfully identifying the responsible parties, effecting service, and obtaining meaningful and enforceable relief against entities designed to be transient.
  • The primary substantive issue will be one of visual identity: Assuming the defendants and accused products are identified, the case will turn on the factual question of whether the accused earbuds are "substantially the same" as the patented designs in the eyes of an ordinary observer. The outcome will depend on a direct visual comparison and a determination of the scope of the claimed designs in light of any relevant prior art.
  • A related question concerns design differentiation: The three asserted patents claim visually similar designs with subtle differences in surface ornamentation. A point of contention may arise regarding whether the accused products infringe one, all, or none of these closely related designs, and how damages or profits would be apportioned if infringement of multiple designs is found.