DCT

1:22-cv-05835

Danxiao Information Technology Ltd v. Shenzhen Aigan Technology Co Ltd

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:22-cv-05835, N.D. Ill., 11/18/2022
  • Venue Allegations: Venue is based on Defendant allegedly transacting business and infringing Plaintiff’s intellectual property rights within the Northern District of Illinois.
  • Core Dispute: Plaintiff alleges that Defendant’s line of personal massagers infringes two U.S. design patents covering the ornamental appearance of Plaintiff's "Lush" product.
  • Technical Context: The dispute centers on the ornamental design of app-controlled personal massagers, a product category within the consumer electronics and adult wellness markets.
  • Key Procedural History: This action was initiated via an Amended Verified Complaint. The complaint alleges that Plaintiff sent Defendant a notice of infringement on August 11, 2022, prior to filing suit, but Defendant continued its allegedly infringing activities. The complaint also references a parallel trademark dispute.

Case Timeline

Date Event
2017-01-04 ’980 Patent Priority Date
2017-07-25 ’980 Patent Issue Date
2021-04-26 ’069 Patent Priority Date
2022-04-05 ’069 Patent Issue Date
2022-08-11 Plaintiff sends notice of infringement to Defendant
2022-11-18 Amended Complaint Filing Date

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

U.S. Design Patent No. D792,980 S - Sexual Stimulation Device

The Invention Explained

  • Problem Addressed: Design patents protect ornamental appearance, not functional utility. Therefore, the patent does not describe a technical problem.
  • The Patented Solution: The patent claims the ornamental design for a "sexual stimulation device" as depicted in its figures ('980 Patent, Claim). The design features an elongated body with a distinct, gentle curve, transitioning from a larger, bulbous end to a slender, tapering tail that terminates in a smaller bulbous tip ('980 Patent, FIGS. 1, 2, 8). The overall impression is one of a smooth, continuous, and organic shape.
  • Technical Importance: The complaint alleges that the distinctive design of the "Lush" product is a key element of a brand that has been developed and promoted over ten years (Compl. ¶12, ¶15).

Key Claims at a Glance

  • The patent asserts a single claim: "The ornamental design for a sexual stimulation device, as shown and described." ('980 Patent, Claim).

U.S. Design Patent No. D948,069 S - Massager

The Invention Explained

  • Problem Addressed: As a design patent, the '069 Patent does not describe a technical problem.
  • The Patented Solution: The patent claims the ornamental design for a "massager" ('069 Patent, Claim). This design features a more pronounced C-shaped curvature compared to the '980 Patent. It consists of a large, teardrop-shaped primary body connected to a smaller, slightly upturned tail ('069 Patent, FIG. 7). The tail portion incorporates small, circular indentations, suggesting the location of control buttons ('069 Patent, FIGS. 1, 6).
  • Technical Importance: This design appears to represent an evolution of the product line's aesthetic, maintaining the core visual identity while introducing updated contours and features, which the complaint alleges is part of its "cutting edge products" (Compl. ¶14).

Key Claims at a Glance

  • The patent asserts a single claim: "The ornamental design for a massager, as shown and described." ('069 Patent, Claim).

III. The Accused Instrumentality

Product Identification

The accused products are referred to as "Counterfeit Products" and are sold under various brand names, including “Dolp”, “FOLOVE”, “LOVEAI”, and “MYLUSH” (Compl. ¶20).

Functionality and Market Context

The complaint alleges the accused products are "unauthorized and inferior copies of the Lush" that are advertised and sold through numerous online marketplaces, including Amazon.com, and independent websites (Compl. ¶6, ¶20). The complaint alleges that Defendant markets these products using the "Lush" name and Plaintiff's brand recognition to mislead consumers (Compl. ¶24, ¶46). A screenshot comparing the Plaintiff's and Defendant's Amazon.com product pages is provided to illustrate the similarity in presentation to consumers (Compl. p. 6).

IV. Analysis of Infringement Allegations

The complaint alleges that the Defendant infringes the '980 and '069 patents by making, importing, using, offering to sell, and selling its "Counterfeit Products" within the United States (Compl. ¶45). The central allegation is that the ornamental design of the accused products is "identical, or at the very list very similar, to the design covered in the Lovense Patent" (Compl. ¶45).

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 to be the product embodying the patented design. The complaint supports its infringement theory with direct visual comparisons. A series of photographs presents the patented designs alongside images of the accused products sold under the brand names "Dolp," "FOLOVE," and "MYLUSH" (Compl. p. 11). This visual evidence directly invites a comparison of the overall appearance, shape, and configuration of the products. The complaint further alleges that the images used by the Defendant on its Amazon store are identical to both the image of the authentic "Lush" product and the ornamental design of the accused product itself (Compl. ¶47).

Identified Points of Contention

  • Scope Questions: The primary dispute will likely center on the "ordinary observer" test. A key question for the court will be whether the overall visual impression of the accused products is substantially the same as that of the patented designs. This raises the question of whether any minor differences in curvature, proportion, or surface detail between the accused products and the patent figures are sufficient to distinguish them in the eyes of an ordinary consumer.
  • Technical Questions: A potential point of contention may involve the role of prior art in the infringement analysis. The question will be what prior art designs for similar devices exist and whether that art narrows the scope of the patented designs, thereby amplifying the significance of any differences between the patented and accused designs.

V. Key Claim Terms for Construction

This section is not applicable. In design patent litigation, the claim is defined by the drawings, and formal claim construction of written terms is generally not performed.

VI. Other Allegations

Indirect Infringement

The complaint does not contain specific allegations of indirect infringement (inducement or contributory infringement).

Willful Infringement

The complaint alleges willful infringement based on Defendant’s alleged knowledge of the patents-in-suit (Compl. ¶44, ¶52). This allegation is supported by the claim that Defendant continued to sell the accused products after receiving a notice letter from Plaintiff on August 11, 2022 (Compl. ¶30, ¶52). The complaint also alleges Defendant had knowledge because it purportedly used images from Plaintiff's website in its own trademark application for "MYLUSH," which suggests awareness of Plaintiff's products and associated intellectual property (Compl. ¶23).

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

  • A central issue will be one of visual comparison under the ordinary observer test: would a typical purchaser, giving the attention a consumer usually gives, be deceived by the visual similarity between the accused "MYLUSH" and "FOLOVE" products (Compl. p. 11) and the designs claimed in the '980 and '069 patents, causing them to mistake one for the other?
  • A second core question will concern the impact of prior art on design scope: how will the landscape of pre-existing designs for personal massagers affect the infringement analysis, and will it serve to narrow the scope of protection for the patents-in-suit, thereby making any differences between the products more legally significant?
  • A final question will relate to willfulness and remedies: assuming infringement is found, does the Defendant's alleged continuation of sales after receiving express notice (Compl. ¶30, ¶52) rise to the level of willful conduct, potentially justifying enhanced damages or an award of the Defendant’s total profits as provided for design patent infringement under 35 U.S.C. § 289?