Shanxi Jinze Yinhai Technology Co Ltd v. Partnerships Unincorp Associations

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Shanxi Jinze Yinhai Technology Co., Ltd. (China)
  • Defendant: The Partnerships and Unincorporated Associations Identified on Schedule "A" (China or other foreign jurisdictions)
  • Plaintiff’s Counsel: Zlatkin Wong LLP
• Case Identification: 1:22-cv-00154, N.D. Ill., 01/10/2022
• Venue Allegations: Venue is based on allegations that Defendants operate interactive e-commerce stores that target and make sales to consumers in the United States, including Illinois.
• Core Dispute: Plaintiff alleges that numerous unidentified e-commerce operators are infringing its design patent for a roller shoe by selling unauthorized and colorably similar products.
• Technical Context: The case concerns the ornamental design of consumer footwear, specifically a shoe with integrated, retractable roller skate wheels.
• Key Procedural History: The action is brought against a group of unidentified "Schedule A" defendants, alleging they operate under multiple aliases to conceal a coordinated infringement operation. The complaint does not mention any prior litigation or licensing history concerning the asserted patent.

Case Timeline

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

U.S. Design Patent No. D903,800 - "Roller Shoe"

• Patent Identification: U.S. Design Patent No. D903,800, titled "Roller Shoe," issued on December 1, 2020 (the "D'800 Patent"). (Compl. ¶9).

The Invention Explained

• Problem Addressed: As a design patent, the D'800 Patent does not articulate a technical problem. Instead, it protects a specific aesthetic and ornamental appearance for an article of manufacture. (D'800 Patent, CLAIM).
• The Patented Solution: The patent claims the ornamental design for a roller shoe, as depicted in ten figures showing the article from various perspectives. (D'800 Patent, DESCRIPTION). The design consists of a high-top, sneaker-style shoe with a thick, contoured sole from which four wheels can be deployed. The figures illustrate the overall shape, the specific paneling on the shoe's upper, the configuration of the wheels, and the appearance of the shoe with the wheels in both extended (FIG. 1) and retracted (FIG. 9) positions.
• Technical Importance: The complaint asserts that products embodying the patented design are "distinctive" and "broadly recognized by consumers." (Compl. ¶8).

Key Claims at a Glance

• Design patents contain a single claim. The D'800 Patent claims: "The ornamental design for a roller shoe, as shown and described." (D'800 Patent, col. 2:15-16).
• The scope of this claim is defined by the visual characteristics of the shoe shown in solid lines in the patent's drawings. Key ornamental features include:
  • The overall profile of a high-top sneaker.
  • The specific contours and layers of the thick sole.
  • The arrangement of panels and decorative lines on the shoe's upper portion.
  • The visual appearance of the four-wheel undercarriage, both when deployed for use and when retracted.
• The complaint asserts infringement of the single claim of the D'800 Patent. (Compl. ¶34).

III. The Accused Instrumentality

Product Identification

• The accused instrumentalities are "Infringing Products," specifically roller shoes sold by the Defendants through numerous e-commerce stores operating under various aliases. (Compl. ¶1, 10).

Functionality and Market Context

• The complaint alleges that the accused products are unauthorized roller shoes that copy Plaintiff's patented design. (Compl. ¶1). It further alleges that the Defendants are part of a coordinated operation that utilizes "substantially similar advertising and marketing strategies," including the use of identical stock photos across different storefronts, to sell the infringing goods. (Compl. ¶21, 25). The complaint includes a photograph of a white and grey roller shoe, which it claims is used on 75% of the 107 identified defendant storefronts. (Compl. p. 10).

IV. Analysis of Infringement Allegations

Design patent infringement is determined by the "ordinary observer" test, which asks whether an ordinary observer, in light of the prior art, would be deceived into purchasing the accused product believing it to be the patented one. The complaint's allegations are summarized below.

D'800 Patent Infringement Allegations

• Identified Points of Contention:
  • Visual Similarity: The central issue will be a visual comparison between the accused products and the design claimed in the D'800 patent. A court will assess whether the two designs are "substantially the same" from the perspective of an ordinary observer.
  • Effect of Minor Alterations: The complaint alleges that Defendants "occasionally use photo-editing tools to remove the stone background or flip the mirror image of the shoes" or to "add different backgrounds." (Compl. ¶25.a.i, 25.b.i). This raises the question of what legal effect, if any, such minor alterations to marketing images have on the infringement analysis of the actual products sold.
  • Use of Inaccurate Diagrams: The complaint presents a "Components Diagram Image" allegedly used on Defendants' storefronts that "points to features that do not exist on the shoes." (Compl. p. 13; ¶25.d.i). This raises a question as to how the use of potentially inaccurate marketing diagrams will factor into the infringement analysis, which typically focuses on the appearance of the physical product itself.

V. Scope of the Claimed Design

In design patent cases, the scope of the claim is defined by the drawings. A critical aspect of this analysis for the D'800 patent will be the distinction between elements shown in solid and broken lines.

• The Role of Broken Lines
• Context and Importance: The D'800 patent states, "The broken lines shown in the drawings depict portions of the roller shoe in which the design is embodied that form no part of the claimed design." (D'800 Patent, col. 2:23-26). Practitioners may focus on this distinction because it formally disclaims those features from the scope of patent protection. The infringement analysis must therefore focus only on the elements depicted in solid lines.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The design is claimed for a "roller shoe" generally, and the disclaiming of certain elements (e.g., the specific lacing pattern, certain textures on the sole) via broken lines may support an argument that the design is not limited to an exact replica of the shoe shown but rather covers the core ornamental features depicted in solid lines on any roller shoe.
  • Evidence for a Narrower Interpretation: The overall configuration, including the high-top style, the specific contours of the sole panels, and the arrangement of the wheels, is shown in solid lines and is highly detailed. A defendant may argue that these numerous, specific solid-line features create a narrow overall visual impression and that any accused product must replicate this specific impression to infringe.

VI. Other Allegations

• Indirect Infringement: The complaint makes a general allegation of indirect infringement and requests an injunction against "aiding, abetting, [or] contributing to" infringement. (Compl. ¶34; Prayer A.b.). However, the factual allegations focus on the Defendants' own conduct of making, offering for sale, and selling the accused products, which primarily supports a theory of direct infringement.
• Willful Infringement: The complaint alleges that Defendants' infringement was willful. (Compl. ¶31). This allegation is supported by claims that Defendants act in concert to avoid detection by using multiple aliases, sharing common marketing images obtained from a single source, and using photo-editing tools on product images in a "conscious effort to try to avoid detection." (Compl. ¶25.a.i, 26). The complaint also alleges Defendants communicate through specific websites and chat rooms regarding tactics for evading detection. (Compl. ¶28).

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

1. Visual Comparison: A core issue will be one of visual identity: from the perspective of an ordinary observer, is the overall ornamental design of the accused products substantially the same as the specific combination of solid-line features claimed in the D'800 patent?
2. Defendant Identification and Liability: A key procedural question will be one of common enterprise: can the Plaintiff present sufficient evidence to prove its allegation that the numerous anonymous "Seller Aliases" are an "interrelated group of infringers" acting in concert, thereby allowing for collective liability and enforcement against the group?
3. Willfulness: A central question for damages will be one of intent: do the alleged tactics—such as using multiple aliases, sharing stock photos, and altering images—demonstrate a deliberate and conscious effort to infringe and evade detection, sufficient to support a finding of willful infringement and potential enhancement of damages?