Shenzhen Lixuan Digital Technology Co Ltd v. Tongxiang Youze Trading Co Ltd

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Shenzhen Lixuan Digital Technology Co., Ltd. (People's Republic of China)
  • Defendant: Tongxiang Youze Trading Co., Ltd. (People's Republic of China)
  • Plaintiff’s Counsel: Ni, Wang & Massand, PLLC
• Case Identification: 1:22-cv-06930, N.D. Ill., 12/09/2022
• Venue Allegations: Venue is asserted based on the defendant being a foreign company with no established place of business in the United States.
• Core Dispute: Plaintiff seeks a declaratory judgment that Defendant's design patent for a trash can is invalid as anticipated by a prior Chinese design patent and, consequently, is not infringed by Plaintiff's products.
• Technical Context: The dispute centers on the ornamental design of a common consumer product, a trash can, sold through online marketplaces like Amazon.
• Key Procedural History: The lawsuit was precipitated by Defendant filing several "Amazon Infringement Complaints" against Plaintiff's product listings, alleging they infringe the patent-in-suit. Plaintiff alleges these complaints were filed in bad faith and led to its products being removed from the Amazon platform.

Case Timeline

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

U.S. Design Patent No. D969,436 - "TRASH CAN"

• Patent Identification: U.S. Design Patent No. D969,436, "TRASH CAN", issued November 8, 2022.

The Invention Explained

• Problem Addressed: Design patents do not solve technical problems but protect the ornamental appearance of an article of manufacture. The D’436 Patent does not articulate a problem but instead presents a specific aesthetic design for a trash can (D’436 Patent, Figs. 1-9).
• The Patented Solution: The patent claims the ornamental design for a trash can characterized by a substantially cylindrical body with a continuous series of ridges running diagonally around its outer surface (D’436 Patent, Fig. 1). The complaint describes this as a "screw shaped pattern," noting that the ridges are spaced farther apart at the top and closer together at the bottom (Compl. ¶31). The drawings show a smooth, unadorned interior and depict the overall shape from multiple perspectives, including top, bottom, front, and side views (D’436 Patent, Figs. 1-8).

Key Claims at a Glance

• The patent contains a single claim: "The ornamental design for a trash can, as shown and described" (D’436 Patent, Claim). This claim protects the specific visual appearance depicted in the patent’s nine figures.

III. The Accused Instrumentality

Product Identification

• The products at issue are Plaintiff's trash cans, sold on Amazon under various ASINs, including B09QS5XX1R and B09QS61SSS (Compl. ¶19).

Functionality and Market Context

• The complaint alleges that Plaintiff's trash can products "embody and practice Plaintiff's Chinese Design Patent No. 305341049" (Compl. ¶16).
• Plaintiff alleges it sells these products on its Amazon storefront, "uujoly-official," and that these sales were removed as a direct result of Defendant's infringement complaints filed with Amazon (Compl. ¶¶12, 23). The complaint presents a side-by-side comparison showing an image of the Chinese Design Patent, which Plaintiff claims is identical to both its product and the D'436 Patent's design (Compl. ¶30). This visual, a comparison of Figure 1 from the D'436 Patent and a perspective view from the Chinese patent, illustrates the core of the Plaintiff's invalidity argument (Compl. p. 5).

IV. Analysis of Infringement Allegations

The complaint seeks a declaratory judgment of non-infringement. Its primary argument is that the D’436 Patent is invalid under 35 U.S.C § 102 as anticipated by Chinese Design Patent No. 305341049, and "it is axiomatic that one cannot infringe an invalid patent" (Compl. ¶34). The core of the case is therefore the invalidity allegation, which is presented below in a table format adapted to show the comparison between the patented design and the alleged prior art.

D'436 Patent Invalidity Allegations

Identified Points of Contention

• Factual Question: The central question is factual: are the designs claimed in the D'436 Patent and the prior art Chinese Design Patent "substantially the same" from the perspective of an ordinary observer? The complaint alleges the designs are "identical" (Compl. ¶¶17, 31).
• Legal Question: A secondary question is whether the Chinese Design Patent qualifies as prior art under 35 U.S.C. § 102. The complaint alleges it was "made publicly available September 10, 2019 at the latest," which is more than two years before the D'436 Patent's filing date of December 29, 2021 (Compl. ¶17). The court will need to determine if evidence supports this public availability date.

V. Key Claim Terms for Construction

In a design patent case, the single claim is for the design "as shown and described," so there are no traditional claim terms for construction. The analysis focuses on the scope of the claimed design as a whole, interpreted in light of the drawings.

• The "Claim": The overall ornamental design of the trash can.
• Context and Importance: The entire dispute hinges on comparing the overall visual appearance of the design claimed in the D'436 Patent with the design disclosed in the prior art Chinese patent. The key question is not one of verbal interpretation but of visual comparison.
• Intrinsic Evidence for Interpretation:
  • Evidence for Scope: The scope is defined by the solid lines in Figures 1-9 of the D'436 Patent. The description clarifies that broken lines depict portions of the trash can that form no part of the claimed design (D’436 Patent, Description). The visual comparison provided by the Plaintiff suggests that the scope of the D'436 Patent is identical to the prior art design (Compl. ¶30). The court's interpretation will be guided by the "ordinary observer" test, which asks whether an ordinary observer would believe the accused design is the same as the patented design. Here, that test will be applied to the prior art.

VI. Other Allegations

• Tortious Interference: Plaintiff brings counts for tortious interference with its contractual relationship with Amazon and with its prospective business expectancy (Compl. ¶¶36-46). The factual basis for these claims is the allegation that Defendant "intentionally and unjustifiably" filed "bad faith Amazon Infringement Complaints with knowledge that the D'436 Patent is invalid" (Compl. ¶39).
• Exceptional Case: Plaintiff requests a declaration that the case is exceptional under 35 U.S.C. § 285, which would entitle it to attorneys' fees (Compl. Prayer for Relief ¶e). This is based on the allegation that Defendant knew or should have known its patent was invalid due to the "identical nature of the two designs" and that it was "copying the Chinese Design Patent" (Compl. ¶20).

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

The resolution of this declaratory judgment action appears to depend on two primary questions:

1. A core question of validity: Is the design claimed in U.S. Patent No. D969,436 anticipated by the prior Chinese Design Patent? The outcome will rely on a direct visual comparison to determine if the designs are substantially the same to an ordinary observer and on verifying that the Chinese patent was publicly available before the U.S. patent's filing date.
2. A question of bad faith: Assuming the patent is found invalid, did the Defendant know or should it have known of the invalidating prior art when it filed infringement complaints on Amazon? The answer to this will determine the viability of Plaintiff's claims for tortious interference and its request for exceptional case status.