DCT

1:22-cv-02933

Schon v. T Schedule A

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:22-cv-02933, N.D. Ill., 06/03/2022
  • Venue Allegations: Venue is alleged based on Defendants targeting business activities toward U.S. consumers, including those in Illinois, through interactive e-commerce stores that offer shipping to the district and accept payment in U.S. dollars.
  • Core Dispute: Plaintiff alleges that numerous e-commerce store operators are selling door stopper products that infringe his U.S. design patent.
  • Technical Context: The technology at issue is an ornamental design for adhesive, bumper-style door stoppers used to prevent doorknobs from damaging walls.
  • Key Procedural History: The complaint is structured as a "Schedule A" action, targeting a large group of allegedly interrelated online sellers whose identities are concealed behind various aliases. This procedural approach is common in anti-counterfeiting litigation against diffuse foreign sellers. The complaint alleges these sellers operate on platforms like Amazon and eBay and employ tactics to evade enforcement.

Case Timeline

Date Event
2020-03-13 Earliest Priority Date for U.S. Patent D943,408
2022-02-15 U.S. Patent D943,408 Issues
2022-06-03 Complaint Filed

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

U.S. Design Patent No. D943,408 - “Door Stopper,” issued February 15, 2022

The Invention Explained

  • Problem Addressed: Design patents protect ornamental appearance rather than functional utility. The ’408 Patent does not describe a technical problem, but instead claims the specific visual characteristics of a door stopper (U.S. Patent No. D943,408, Claim).
  • The Patented Solution: The patent claims "the ornamental design for door stopper, as shown and described" (’408 Patent, Claim). The design consists of a circular, convex, low-profile body. The key ornamental features are the overall shape, proportions, and surface contours as illustrated in the patent’s figures, particularly the perspective view (FIG. 1) and side view (FIG. 5). The description notes that the broken lines in the drawings, which depict a small logo, "illustrate portions of the door stopper that form no part of the claimed design" (’408 Patent, Description).
  • Technical Importance: The complaint alleges that the Plaintiff's product embodying this design is "highly successful" and sold on major online marketplaces (Compl. ¶9).

Key Claims at a Glance

  • The patent contains a single claim for "The ornamental design for door stopper, as shown and described" (’408 Patent, Claim).
  • The scope of the claim is defined by the visual appearance of the article as depicted in solid lines in Figures 1-5.

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are "door stopper products" offered for sale and sold by the Defendants through e-commerce stores operating under various "Seller Aliases" (Compl. ¶1, ¶13). The complaint refers to these as "Infringing Products" and "counterfeit products" (Compl. ¶1, ¶11).

Functionality and Market Context

  • The accused products are alleged to be sold on platforms including Amazon and eBay (Compl. ¶13). The complaint alleges that Defendants are part of a network of infringers who use false identities and other tactics to conceal their operations (Compl. ¶19-¶22). It further alleges that the infringing products are sold at prices "substantially below Plaintiff's pricing," which unfairly entices consumers and erodes the market for the genuine product (Compl. ¶25, ¶26). The complaint reproduces the patent's figures to establish the scope of the claimed design (Compl. p. 4, FIG. 1-5). A photograph of the Plaintiff’s own "Ducki" brand product and packaging is provided to illustrate a commercial embodiment of the patented design (Compl. p. 5).

IV. Analysis of Infringement Allegations

The complaint does not provide images of the accused products, which are referenced in a "Schedule A" that is not part of the public document. Therefore, a direct visual comparison between the claimed design and the accused products is not possible from the provided complaint. The infringement analysis is based on the complaint's narrative allegations that the Defendants' products are colorable imitations of the patented design.

  • Identified Points of Contention:
    • Factual Question: The central issue for the court will be a factual comparison based on the "ordinary observer" test. Once the accused products are produced in discovery, the key question will be whether an ordinary observer, familiar with the prior art, would be deceived into believing the accused product is the same as the patented design.
    • Scope Questions: The complaint's allegation that the infringing products are "counterfeit" suggests an assertion of near-identical copying (Compl. ¶11, ¶12). A key question will be whether the evidence supports this characterization or if there are discernible differences between the accused products and the claimed design that might allow Defendants to argue non-infringement.

V. Key Claim Terms for Construction

In design patent litigation, the claim is typically defined by the drawings as a whole, and construction of individual terms is less common than in utility patent cases.

  • The Term: "door stopper"
  • Context and Importance: This term identifies the "article of manufacture" to which the design is applied. Its construction is unlikely to be a central point of dispute, as the accused products are also identified as door stoppers. The dispute will focus on the similarity of the ornamental design, not the functional identity of the article.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim is not limited to any particular material or method of attachment, applying to the overall shape of a "door stopper" generally.
    • Evidence for a Narrower Interpretation: The description explicitly disclaims the subject matter shown in broken lines (the logo), meaning the claimed design cannot be construed to require the presence of that logo ('408 Patent, Description). This narrows the scope of the protected design to the shape and contours of the article itself.

VI. Other Allegations

  • Indirect Infringement: The complaint makes a passing reference to products that "indirectly" infringe and asks for an injunction against aiding and abetting (Compl. ¶27; Prayer for Relief ¶A.b). However, the substantive allegations in Count I focus on direct infringement under 35 U.S.C. § 271, asserting that Defendants are "making, using, selling, and/or offering for sale" the infringing products (Compl. ¶32). The facts alleged do not detail a separate theory of inducement or contributory infringement.
  • Willful Infringement: The complaint alleges that Defendants' infringement is willful, stating that their acts are done "with knowledge of or reason to know that they constitute infringement" (Compl. ¶33). The basis for this allegation appears to be the alleged concerted and counterfeit nature of the Defendants' enterprise, which involves using fictitious identities and other tactics to conceal their conduct (Compl. ¶20, ¶27).

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

  • A core issue will be one of visual identity: Once the accused products are identified from the sealed Schedule A, does their ornamental design appear "substantially the same" as the design claimed in the '408 Patent to an ordinary observer? The outcome of the infringement claim hinges almost entirely on this factual, visual comparison.
  • A key procedural question will be one of enforceability: Can the Plaintiff successfully use the "Schedule A" litigation model to obtain and, more importantly, enforce an injunction and damages award against a diffuse and allegedly evasive group of foreign-based online sellers? The complaint's request for orders directed at third-party online marketplaces will be critical to this effort.