DCT
1:22-cv-05835
Danxiao Information Technology Ltd v. Shenzhen Aigan Technology Co Ltd
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Danxiao Information Technology Ltd., et al., d/b/a "Lovense" (China)
- Defendant: Shenzhen Xiaoteng Technology Limited (China)
- Plaintiff’s Counsel: PMJ PLLC; Rimon PC
- Case Identification: 1:22-cv-05835, N.D. Ill., 01/06/2023
- Venue Allegations: Plaintiff alleges venue is proper in the Northern District of Illinois because the cause of action arises from wrongful acts that occurred in the district.
- Core Dispute: Plaintiff alleges that Defendant’s personal massager products infringe two of Plaintiff's design patents, in addition to claims of copyright and trademark infringement.
- Technical Context: The dispute is in the market for app-controlled adult consumer products, where distinctive ornamental designs are a significant aspect of product branding and commercial success.
- Key Procedural History: This Second Amended Complaint follows a hearing on a temporary restraining order and a court order granting a preliminary injunction against the Defendant related to trademark usage. Plaintiff also alleges it provided Defendant with notice of its intellectual property rights prior to the lawsuit.
Case Timeline
| Date | Event |
|---|---|
| 2013-08-12 | Plaintiff's first commercial use in the U.S. |
| 2015-08-17 | Plaintiff's first use date for LUSH mark |
| 2015-10-01 | Plaintiff's "Lovense Remote" app first launched |
| 2017-01-04 | D'980 Patent Priority Date |
| 2017-07-25 | U.S. Design Patent D792,980 Issued |
| 2020-02-06 | Plaintiff's LUSH trademark application filed (constructive use date) |
| 2020-02-21 | Defendant's MYLUSH trademark application filed |
| 2020-03-29 | Defendant's claimed first use date for MYLUSH mark |
| 2021-04-26 | D'069 Patent Priority Date |
| 2022-04-05 | U.S. Design Patent D948,069 Issued |
| 2022-08-11 | Plaintiff provided notice of infringement to Defendant |
| 2022-09-14 | Defendant allegedly created new infringing product listings |
| 2022-11-22 | Plaintiff's LUSH mark registered |
| 2023-01-06 | Second Amended Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D948,069 - “Massager,” Issued April 5, 2022
The Invention Explained
- Problem Addressed: Design patents protect the ornamental, non-functional appearance of an article of manufacture (D'069 Patent, Claim). The complaint suggests that in the competitive market for consumer products, a unique and recognizable product design is a significant commercial asset (Compl. ¶13, ¶15).
- The Patented Solution: The patent claims the ornamental design for a massager, as depicted in its figures (D'069 Patent, DESCRIPTION). The design features a continuous, C-shaped body with a larger, bulbous main section smoothly transitioning into a thinner, curved tail that terminates in a smaller, slightly flared end (D'069 Patent, Figs. 1-7).
- Technical Importance: The complaint alleges that the design philosophy behind Plaintiff's "Lush" product line, which this patent purports to cover, has made the product series "very successful" (Compl. ¶15).
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a massager, as shown and described" (D'069 Patent, Claim).
- The essential visual elements comprising the claimed design as a whole include:
- A unitary, C-shaped body.
- A larger, rounded, bulbous portion forming the primary body of the "C".
- A smaller, elongated, curved "tail" portion.
- A smooth, continuous transition between the body and tail.
U.S. Design Patent No. D792,980 - “Sexual Stimulation Device,” Issued July 25, 2017
The Invention Explained
- Problem Addressed: As a design patent, the '980 Patent protects the ornamental appearance of the article (D'980 Patent, Claim). The complaint situates this design within Plaintiff's effort to create innovative and advanced products in its field (Compl. ¶13).
- The Patented Solution: The patent claims the ornamental design for a sexual stimulation device, illustrated in its figures (D'980 Patent, DESCRIPTION). The design is characterized by a J-shaped or spoon-like profile, with a larger, spade-shaped head connected to a long, slender, and slightly curved handle that terminates in a bulbous tip (D'980 Patent, Figs. 1-8).
- Technical Importance: This patent covers an earlier design in the "Lush" product family, which Plaintiff alleges is part of a "cutting edge" product line developed over several years (Compl. ¶15).
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a sexual stimulation device, as shown and described" ('980 Patent, Claim).
- The essential visual elements comprising the claimed design as a whole include:
- A J-shaped or spoon-like overall profile.
- A larger, flattened, spade-like head.
- A long, thin handle portion.
- A smaller, bulbous tip at the end of the handle.
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are the "Counterfeit Products" sold by Defendant under various brand names, including "DOLP," "FOLOVE," "LOVEAI," and "MYLUSH" (Compl. ¶22).
Functionality and Market Context
The complaint describes the accused products as "unauthorized and inferior copies of the Lush" that are sold through numerous online stores, including Amazon.com (Compl. ¶22, ¶23). A side-by-side comparison of Amazon product listings shows the Defendant's product marketed as a "Pelvic Floor Trainer with APP Control" next to Plaintiff's "LOVENSE Lush 2 Bullet Vibrator" (Compl. p. 7). Plaintiff alleges that these products are of "much lower quality" than its own and are sold at a significantly lower price point (Compl. ¶31).
IV. Analysis of Infringement Allegations
The standard for design patent infringement is whether an "ordinary observer," familiar with the prior art, would be deceived into purchasing the accused product, believing it to be the patented design.
D948,069 Infringement Allegations
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a massager, as shown and described. | The complaint alleges the ornamental design of the accused products, such as those sold by the MYLUSH store, is "substantially similar" to the patented design. A provided image shows an accused product with a C-shaped body, a bulbous main section, and a curved tail. | ¶48, ¶50 | D'069 Patent, DESCRIPTION; Figs. 1-7 |
- Identified Points of Contention:
- Scope Questions: The primary legal and factual question is whether the overall visual impression of the accused products is "substantially similar" to the '069 Patent's design in the eyes of an ordinary observer.
- Technical Questions: The complaint provides a visual comparison table showing the patented design next to images of the accused products (Compl. p. 12). A key question for the court will be whether any minor differences between the accused product's curves, proportions, or surface details are sufficient to distinguish it from the patented design in the mind of an ordinary observer.
D792,980 Infringement Allegations
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a sexual stimulation device, as shown and described. | The complaint alleges the accused products' ornamental design is "indeed identical, or at the very list substantially similar" to the design in the '980 Patent. Visuals of the accused product are presented to support this claim. | ¶60, ¶62 | D'980 Patent, DESCRIPTION; Figs. 1-8 |
- Identified Points of Contention:
- Scope Questions: The analysis will focus on whether the accused products, which the complaint also accuses of infringing the '069 Patent, appropriate the overall ornamental design of the distinct, J-shaped '980 Patent. A visual comparison table in the complaint juxtaposes the patented design with the accused product (Compl. p. 14).
- Technical Questions: A question for the court may be whether a single accused product can be found to infringe two different design patents. This will depend on a detailed comparison of the accused product's appearance to the specific ornamental features shown in the drawings of both the '980 Patent and the '069 Patent.
V. Key Claim Terms for Construction
In design patent litigation, formal claim construction of words is rare, as the claim is defined by the drawings. The analysis focuses on the overall visual appearance of the claimed design rather than the definition of any particular term.
- The Term: The scope of the claimed design as a whole.
- Context and Importance: The entire infringement analysis hinges on comparing the overall ornamental impression of the accused products with the overall ornamental impression of the designs claimed in the '069 and '980 patents. Practitioners will focus on this holistic comparison, as the court's determination of whether the designs are "substantially similar" will be dispositive.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim in each patent is for the design "as shown and described," which encompasses all the visual features depicted in the figures, viewed as a whole ('069 Patent, Claim; '980 Patent, Claim). This suggests the focus should be on the overall impression, not on any single minute detail.
- Evidence for a Narrower Interpretation: The specific contours, proportions, and visual features shown in the solid lines of the patent figures (e.g., D'069 Patent, Figs. 1-7; D'980 Patent, Figs. 1-8) define the precise scope of the protected design. Any significant deviation from these depicted features in an accused product could support a finding of non-infringement.
VI. Other Allegations
Willful Infringement
The complaint alleges willful infringement for both patents. It asserts that Defendant knew or should have known of the valid patents (Compl. ¶55, ¶67). The basis for this allegation includes Defendant's alleged continued sales after receiving actual notice of infringement from Plaintiff on August 11, 2022 (Compl. ¶32, ¶46, ¶58), and after consumer comments on its store pages allegedly noted the products were "counterfeit" (Compl. ¶27, ¶55). The complaint further alleges Defendant created new infringing listings even after being contacted by Plaintiff (Compl. ¶32, ¶55).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of visual comparison: Under the "ordinary observer" test, is the overall ornamental appearance of Defendant's accused products substantially the same as the specific designs claimed in the '069 and '980 patents? The court's decision will likely depend on a side-by-side analysis of the products and the patent drawings.
- A key evidentiary question will be one of willfulness and intent: Can Plaintiff prove that Defendant had knowledge of Plaintiff’s specific design rights—either before the suit through its alleged monitoring of Plaintiff's products, or after receiving actual notice—and continued to infringe in a deliberate or reckless manner? The answer will be critical for potential enhanced damages.
- The case may also raise a question of design scope overlap: Given that the same accused products are alleged to infringe two different design patents ('069 and '980), a factual question for the court will be whether the accused design is, in fact, substantially similar to both distinct patented designs or only one, or neither.