Tonglu Shengtuo Trade Co Ltd v. Zhuo Junyi

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Tonglu Shengtuo Trade Co., Ltd. (People's Republic of China)
  • Defendant: Zhou Junyi (People's Republic of China)
  • Plaintiff’s Counsel: Direction IP Law; Ni, Wang & Massand, PLLC
• Case Identification: 1:22-cv-04279, N.D. Ill., 08/12/2022
• Venue Allegations: Venue is alleged to be proper because the Defendant is a foreign individual with no residence or established place of business in the United States.
• Core Dispute: Plaintiff seeks a declaratory judgment that Defendant’s design patent for a watering can is invalid and not infringed, following Defendant’s use of the patent to remove Plaintiff’s product listings from the Amazon marketplace.
• Technical Context: The dispute centers on the ornamental design of a consumer watering can, a product category where visual appearance is a key market differentiator.
• Key Procedural History: The complaint alleges that this declaratory judgment action was precipitated by at least five Amazon Infringement Complaints filed by the Defendant on or before July 19, 2022, which caused the removal of Plaintiff's product listings. Plaintiff's core invalidity argument is that the Defendant's patent is anticipated by a prior Chinese Design Patent, which Plaintiff claims to have licensed.

Case Timeline

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

U.S. Design Patent No. D954,899 - "Watering Can"

• Patent Identification: U.S. Design Patent No. D954,899, "Watering Can," issued June 14, 2022 (the "D’899 Patent").

The Invention Explained

• Problem Addressed: Design patents do not solve technical problems; instead, they protect a new, original, and ornamental design for an article of manufacture (D’899 Patent, Claim).
• The Patented Solution: The D’899 Patent claims the specific visual appearance of a watering can. The design features an ovular or cylindrical body with circumferential ridges, a curved handle that connects the top and rear of the body, and a long, upwardly-angled spout that terminates in a separate, rectangular nozzle or "rose" (D’899 Patent, FIG. 1, 4, 5). The overall impression is that of a modern, stylized version of a traditional watering can.
• Technical Importance: The complaint alleges that the design is identical to a pre-existing Chinese Design Patent, raising questions about the novelty and originality of the patented design in the U.S. (Compl. ¶19).

Key Claims at a Glance

• The patent contains a single claim for "The ornamental design for a watering can, as shown and described" (D’899 Patent, col. 2:57-59).
• The scope of a design patent claim is defined by its drawings. The key ornamental features of the claimed design include:
  • The overall shape and proportion of the can body, handle, and spout.
  • The specific curvature of the handle.
  • The presence and placement of ridges on the can body.
  • The angle and length of the spout relative to the body.
  • The shape of the nozzle at the end of the spout.

III. The Accused Instrumentality

Product Identification

• The products at issue are watering cans sold by Plaintiff Tonglu Shengtuo Trade Co. on the Amazon marketplace under the storefront "Nerub" and identified by ASINs B095H5SWFX, B095H2ZJSB, and B095HD8ZZ4 (Compl. ¶15, ¶21, ¶41).

Functionality and Market Context

• The complaint alleges that these products embody the design of Chinese Design Patent No. 306024393, for which the Plaintiff is a licensee (Compl. ¶16).
• The central allegation of the complaint is that the design of Plaintiff's products is identical to the design claimed in the D’899 Patent because both are based on the same underlying design, with the Chinese patent preceding the D'899 Patent's filing date by over a year (Compl. ¶19, ¶31). The complaint provides a side-by-side visual comparison in "TABLE 1" to support the assertion of identity between the prior art Chinese patent and the D'899 Patent (Compl. p. 6).

IV. Analysis of Infringement Allegations

The complaint seeks a declaratory judgment of non-infringement. The following table summarizes the infringement theory that Plaintiff attributes to Defendant, based on Plaintiff’s breakdown of the design's key features and its assertion that its products are identical to the prior art Chinese patent.

• D’899 Patent Infringement Allegations

• Identified Points of Contention:
  • Validity Question: The primary point of contention is not infringement but validity. The complaint’s argument for non-infringement is premised entirely on its argument for invalidity, stating it is "axiomatic that one cannot infringe an invalid patent" (Compl. ¶37). The core legal and factual question is whether Chinese Design Patent No. 306024393, granted on September 1, 2020, anticipates the D'899 Patent, which was filed on July 20, 2021 (Compl. ¶31).
  • Design Identity Question: A threshold factual question for the anticipation analysis is whether the design shown in the Chinese patent is "identical in all material respects" to the design claimed in the D'899 Patent. The complaint alleges they are identical, providing a side-by-side comparison figure to support this (Compl. ¶19, p. 6).

V. Key Claim Terms for Construction

In design patent litigation, claim construction is typically not focused on interpreting textual terms. The "claim" is the visual design itself, "as shown and described" in the patent's figures (D’899 Patent, col. 2:57-59). The construction analysis involves determining the scope of the design in the eyes of an "ordinary observer." The complaint does not raise any specific claim construction disputes, as its central argument is anticipation by an allegedly identical prior art design, which obviates the need for nuanced construction.

VI. Other Allegations

• Indirect Infringement: The complaint does not contain allegations related to indirect infringement.
• Willful Infringement: The complaint does not seek a finding of willful infringement. However, it makes allegations that are relevant to a finding that the case is "exceptional" under 35 U.S.C. § 285. Plaintiff alleges that Defendant acted in "bad faith" by filing Amazon Infringement Complaints with knowledge, or constructive knowledge, that the D’899 Patent was invalid in view of the prior Chinese Design Patent (Compl. ¶22, ¶24, ¶48).

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

This declaratory judgment action appears to center on the validity of a design patent in the face of foreign priority art, rather than a nuanced infringement analysis. The key questions for the court will likely be:

1. A dispositive question of anticipation: Does the asserted prior art, Chinese Design Patent No. 306024393, which was granted more than one year before the D'899 Patent's filing date, qualify as invalidating prior art under 35 U.S.C. § 102? This will depend on a factual comparison of the two designs from the perspective of an ordinary observer.
2. An issue of enforcement conduct: Did the Defendant file infringement complaints on the Amazon platform in "bad faith" with knowledge that the D'899 patent was likely invalid, as Plaintiff alleges? The answer to this question will determine the viability of Plaintiff's state law tortious interference claims and its request for attorneys' fees under 35 U.S.C. § 285.