1:22-cv-06864
Tolife Tech Pty Ltd v. T Schedule A
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Tolife Technologies Pty Ltd (Australia) and Moshe Maor
- Defendant: The Individuals, Corporations, Limited Liability Companies, Partnerships, and Unincorporated Associations identified on Schedule A to the Complaint (primarily alleged to be in China or other foreign jurisdictions)
- Plaintiff’s Counsel: Thoits Law
- Case Identification: 1:22-cv-06864, N.D. Ill., 12/07/2022
- Venue Allegations: Venue is based on allegations that Defendants committed acts of patent infringement in the district by accepting orders from and offering shipping to Illinois addresses, thereby doing substantial business in the district.
- Core Dispute: Plaintiffs allege that numerous e-commerce store operators are making, using, selling, and importing counterfeit lice combs that infringe a U.S. design patent.
- Technical Context: The case concerns the ornamental design of an electrical device that combines combing and vacuuming for chemical-free head lice treatment.
- Key Procedural History: The complaint notes that Plaintiffs' product embodying the design has received multiple design awards, which Plaintiffs may use to argue the design is distinctive and well-known. No prior litigation or post-grant proceedings are mentioned in the complaint.
Case Timeline
| Date | Event |
|---|---|
| 2014-11-XX | Plaintiff ToLife launched its V-COMB Products |
| 2019-04-22 | U.S. Patent No. D858,877 application filed |
| 2019-09-03 | U.S. Patent No. D858,877 issued |
| 2022-12-07 | Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. D858,877 S - "LICE COMB"
- Patent Identification: U.S. Patent No. D858,877 S, "LICE COMB," issued September 3, 2019.
The Invention Explained
- Problem Addressed: Design patents do not articulate a technical problem in their specification. The implicit challenge addressed is the creation of a new, original, and ornamental design for a lice comb that is aesthetically distinct from prior designs.
- The Patented Solution: The patent protects the specific visual appearance of a lice comb, not its function (D’877 Patent, Claim). The claimed design, depicted across seven figures, features a handheld, tapered body, a transparent section near the comb head, a specific arrangement of buttons and indicators, and a textured rear cap (’877 Patent, FIG. 1-7). The overall visual impression is that of a modern, streamlined handheld appliance.
- Technical Importance: The complaint alleges that the "innovative design" is a key aspect of the commercial product's identity and popularity, which has been recognized by multiple design awards (Compl. ¶¶ 19, 22).
Key Claims at a Glance
- The patent contains a single claim: "The ornamental design for a lice comb, as shown" (’877 Patent, Claim).
- The scope of this claim is defined by the solid lines in the seven drawing sheets included in the patent.
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are "Counterfeit Products" sold by Defendants, which are described as unauthorized lice combs that infringe the ’877 Patent (Compl. ¶¶ 1, 3).
Functionality and Market Context
The accused products are sold through numerous "Defendant Internet Stores," which are alleged to be e-commerce stores operating on platforms such as Amazon and eBay (Compl. ¶3). The complaint alleges these stores are designed to appear as authorized retailers and that the products themselves bear similarities to Plaintiffs' genuine V-COMB products, suggesting an intent to trade on Plaintiffs' goodwill (Compl. ¶¶ 27, 36). The complaint includes an image of an "Exemplary Counterfeit Product" offered for sale on one such store (Compl. p. 13). This image depicts a lice combing device that is also advertised for use on pets (Compl. p. 13).
IV. Analysis of Infringement Allegations
Design patent infringement is determined by the "ordinary observer" test, which asks whether an ordinary observer, giving such attention as a purchaser usually gives, would be deceived into purchasing the accused product believing it to be the patented design. The complaint alleges infringement by providing a visual comparison between the patent figures and the accused products.
The complaint provides an image of an "Exemplary Counterfeit Product Sold on Defendant Internet Store," which is central to its infringement allegation (Compl. p. 13).
D858,877 S Infringement Allegations
| Claim Element (Visual Feature from Patented Design) | Alleged Infringing Functionality (Visual Feature of Accused Product) | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design for a lice comb, as shown. | Defendants' "Counterfeit Products" are alleged to be "colorable imitation[s] of the designs claimed in the V-COMB Patent." | ¶17a | ’877 Patent, FIGS. 1-7 |
| A handheld body with a tapered shape, a wider rear section, and a narrower front section leading to the comb head. | The exemplary accused product displays a substantially similar tapered body shape and overall proportions. | ¶50; p. 13 | ’877 Patent, FIG. 1 |
| A transparent capture filter housing located between the main body and the comb head. | The exemplary accused product features a transparent housing in the same location, through which internal components are visible. | ¶50; p. 13 | ’877 Patent, FIG. 1 |
| A specific arrangement of comb teeth at the front end of the device. | The exemplary accused product incorporates a comb head with a similar arrangement and appearance of teeth. | ¶50; p. 13 | ’877 Patent, FIG. 6 |
Identified Points of Contention
- Scope Questions: The primary legal and factual question in a design patent case is whether an ordinary observer would find the accused design to be substantially the same as the patented design, such that the observer would be confused. The dispute will center on a direct visual comparison.
- Technical Questions: A potential point of contention could be whether any visual differences between the accused products and the patent drawings are significant enough to alter the overall ornamental appearance and thus avoid infringement in the eyes of an ordinary observer. Defendants, if they appear, may point to differences in button shapes, surface textures, or slight proportional variations to argue non-infringement.
V. Key Claim Terms for Construction
This section is not applicable. The claim in a design patent consists of the drawings, and its construction does not involve interpreting disputed terms in the manner of a utility patent.
VI. Other Allegations
Indirect Infringement
The complaint makes a passing allegation of Defendants "directly and/or indirectly" infringing, and the prayer for relief requests an injunction against "aiding, abetting, contributing to, or otherwise assisting anyone in infringing" (Compl. ¶3; ¶17e). However, the factual allegations primarily focus on the Defendants as direct infringers (i.e., the entities making, using, selling, or importing the products) and do not plead specific facts to support a distinct claim for induced or contributory infringement.
Willful Infringement
The complaint alleges that Defendants' infringement was willful (Compl. ¶51). This allegation is based on the assertion that Defendants had "knowledge of Plaintiffs' ownership of the V-COMB Patent" and acted in "bad faith" or with "reckless disregard or willful blindness to Plaintiffs' rights" (Compl. ¶¶ 46, 47).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual comparison: Applying the "ordinary observer" test, is the overall ornamental design of the accused products substantially the same as the design claimed in the ’877 patent, such that a purchaser would be deceived? The outcome will depend almost entirely on a side-by-side analysis of the products and the patent drawings.
- A key evidentiary question will be the significance of any differences between the accused products and the patented design. The court will need to determine whether any such differences are minor and trivial, or if they are substantial enough to create a different overall visual impression.
- The case also presents a significant procedural and enforcement challenge: whether Plaintiffs can successfully identify, serve, and obtain jurisdiction over the numerous, allegedly foreign-based, and pseudonymous e-commerce operators listed in the sealed Schedule A.