Guangzhou Jinli Electronic Technology Co Ltd v. Shenzhen Damuzhi Health Information Consulting Co Ltd

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Guangzhou Jinli Electronic Technology Co., Ltd. (People's Republic of China)
  • Defendant: Shenzhen Damuzhi Health Information Consulting Co., Ltd. (People's Republic of China)
  • Plaintiff’s Counsel: Ni, Wang & Massand, PLLC
• Case Identification: 1:22-cv-03392, N.D. Ill., 06/28/2022
• Venue Allegations: Venue is based on Defendant's alleged sales of products into the district via Amazon.com and on its status as a foreign patent owner without a designated domestic agent for service of process.
• Core Dispute: Plaintiff seeks a declaratory judgment that Defendant’s design patent for an ergonomic pillow is invalid due to prior art that was allegedly on sale and publicly available before the patent's filing date.
• Technical Context: The patent concerns the ornamental design of ergonomic cervical support pillows, a competitive consumer product category where distinctive appearance can be a key market differentiator.
• Key Procedural History: This action appears to be a response to infringement complaints filed by the Defendant against the Plaintiff’s products on Amazon.com. The complaint notes that during prosecution, the examiner issued a rejection for indefiniteness but did not raise patentability issues over the prior art of record, which Plaintiff alleges did not include the invalidating references it has now identified.

Case Timeline

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

• Patent Identification: U.S. Design Patent No. D931,012, "PILLOW," issued September 21, 2021.

The Invention Explained

• Problem Addressed: As a design patent, the '012 Patent does not describe a technical problem or function; it protects only the novel, non-functional, ornamental appearance of the article shown (Compl. ¶8; ’012 Patent, Claim).
• The Patented Solution: The patent claims the ornamental design for a pillow. The design, illustrated in seven figures, features a generally rectangular form with contoured surfaces. Key visual elements include a central depression, raised sections on either side of the depression, and a convexly curved front edge intended to conform to a user's neck (’012 Patent, Figs. 1-7). The perspective view in Figure 1 provides an overall impression of the three-dimensional shape, while the top view in Figure 2 clarifies the layout of the surface contours (’012 Patent, Figs. 1, 2).
• Technical Importance: The complaint does not specify the technical importance, but the visual configuration is characteristic of ergonomic or cervical pillows designed to provide orthopedic support for the head and neck during sleep (Compl. ¶¶26-27).

Key Claims at a Glance

• The patent contains a single claim: "The ornamental design for a pillow, as shown and described." (’012 Patent, col. 1:50-51).

III. The Accused Instrumentality

This is a declaratory judgment action for patent invalidity. The central analysis compares the patented design to prior art products, not the Plaintiff's products.

Product Identification

• The complaint identifies two prior art products that allegedly invalidate the ’012 Patent: the "Polar Sleep Pillow" and the "Eden Pillow" (Compl. ¶¶26-27).

Functionality and Market Context

• The complaint alleges these are ergonomic memory foam pillows that were publicly available and on sale before the ’012 Patent's October 1, 2020 priority date (Compl. ¶24). Their public availability is supported by references to YouTube product reviews and online store listings (Compl. ¶¶26-27, 29). The complaint presents a screenshot of a YouTube review for the Polar Sleep Pillow, which includes a May 26, 2020 view date and links to purchase the product on Amazon and eBay (Compl. p. 6). Similarly, a screenshot for the Eden Pillow review shows an August 15, 2019 view date (Compl. p. 7).

IV. Analysis of Invalidity Allegations

The complaint alleges the ’012 Patent is invalid under 35 U.S.C. §§ 102 (anticipation) and 103 (obviousness) (Compl. ¶23).

The complaint presents a side-by-side visual comparison of a photograph of the Polar Sleep Pillow and Figure 3 of the ’012 Patent, alleging the designs are "identical" (Compl. p. 5). A second visual comparison pairs a diagram of the Eden Pillow with the same Figure 3 from the patent, again asserting the designs are identical and highlighting shared features like a lower lined area, two high points with a ridge, and a front protrusion (Compl. p. 6).

Anticipation (§ 102) Allegations

• The core of the complaint is that the Polar Sleep Pillow and the Eden Pillow each independently anticipate the ’012 Patent. The Plaintiff alleges that both were "on sale, or otherwise available to the public before the effective filing date" (Compl. ¶24). The complaint asserts that the Polar Sleep Pillow was on sale by May 20, 2020, and the Eden Pillow by August 15, 2019, both preceding the patent's October 1, 2020 priority date (Compl. ¶¶26-27). It is alleged that neither of these references was cited or considered by the examiner during prosecution (Compl. ¶24).

Obviousness (§ 103) Allegations

• In the alternative, the complaint alleges that the ’012 Patent design would have been obvious under § 103. This argument posits that a person of ordinary skill, presented with the designs of both the Eden Pillow and the Polar Sleep Pillow, would have found it obvious "to combine" them to create the claimed design (Compl. ¶30).

Identified Points of Contention

• Evidentiary Question: A primary issue will be whether the evidence cited by the Plaintiff (YouTube videos, e-commerce URLs) is sufficient to prove by clear and convincing evidence that the Polar Sleep and Eden pillows were publicly available or on sale in the United States before the October 1, 2020 critical date, thereby qualifying as prior art.
• Visual Comparison (Anticipation): The central question for anticipation is whether, in the eye of an ordinary observer, the overall ornamental design of either the Polar Sleep Pillow or the Eden Pillow is substantially the same as the design claimed in the ’012 Patent. The complaint's assertion of "identical" designs sets a high bar for comparison (Compl. ¶¶26, 27).
• Motivation to Combine (Obviousness): For the obviousness claim, a key question will be whether the complaint provides a basis for a motivation to combine the two prior art references, beyond the conclusory allegation that it would have been obvious to do so (Compl. ¶30).

V. Key Claim Terms for Construction

The primary dispute in this design patent case appears to center on the visual comparison of the claimed design to the alleged prior art, rather than the construction of specific claim terms. The single claim is for "The ornamental design for a pillow, as shown and described" (’012 Patent, col. 1:50-51). The meaning of the word "pillow" is unlikely to be a point of contention. The analysis will therefore likely depend on the application of the "ordinary observer" test to the designs as a whole, not on claim construction.

VI. Other Allegations

Exceptional Case

• Plaintiff requests a declaration that the case is "exceptional" and an award of attorney fees pursuant to 35 U.S.C. § 285 (Compl. p. 8, Prayer for Relief ¶ b). The complaint does not explicitly state the grounds for this request. However, it may be inferred from the allegations that Defendant procured its patent without disclosing allegedly "identical" prior art to the USPTO, and then asserted that patent against competitors in Amazon infringement complaints (Compl. ¶¶13, 20, 24).

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

The resolution of this declaratory judgment action will likely depend on the answers to two central questions:

1. Prior Art Authentication: A threshold evidentiary question will be one of timing and public accessibility: can the Plaintiff prove with clear and convincing evidence that the "Polar Sleep Pillow" and "Eden Pillow" were publicly known or on sale prior to the patent's October 1, 2020 critical date, thereby qualifying them as invalidating prior art?

2. Anticipation by Visual Identity: The substantive core of the case will be a question of visual comparison: from the perspective of an ordinary observer, is the overall ornamental appearance of either prior art pillow "substantially the same" as the design claimed in the ’012 Patent? The side-by-side comparisons in the complaint frame this as the central dispute for the court.