DCT

1:23-cv-00895

Casio Computer Co Ltd v. T Schedule A

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
    • Plaintiff: Casio Computer Co., Ltd. (Japan)
    • Defendant: The Individuals, Corporations, Limited Liability Companies, Partnerships and Unincorporated Associations Identified on Schedule “A” (Primarily People's Republic of China or other foreign jurisdictions)
    • Plaintiff’s Counsel: Hughes Socol Piers Resnick & Dym, Ltd.
  • Case Identification: 1:23-cv-00895, N.D. Ill., 02/14/2023
  • Venue Allegations: Venue is alleged based on Defendants operating interactive commercial internet stores that directly target and sell products to consumers in the United States, including Illinois.
  • Core Dispute: Plaintiff alleges that Defendants’ online stores sell electronic calculators that infringe its U.S. design patent.
  • Technical Context: The dispute involves the ornamental design of electronic calculators, a mature and high-volume consumer electronics product category.
  • Key Procedural History: The complaint is structured as a broad enforcement action against numerous, largely anonymous online sellers who allegedly operate as an interrelated network of infringers. This type of "John Doe" complaint against online marketplace sellers is a common strategy used to obtain broad injunctive relief and discovery to unmask counterfeiters.

Case Timeline

Date Event
2008-01-15 U.S. Design Patent No. D580,478 Application Filed
2008-11-11 U.S. Design Patent No. D580,478 Issued
2023-02-14 Complaint Filed

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

U.S. Design Patent No. D580,478 - "Electronic Calculator"

The asserted patent is U.S. Design Patent No. D580,478, issued November 11, 2008 (the “’478 Patent”).

The Invention Explained

  • Problem Addressed: Unlike utility patents, design patents do not solve a technical problem. They protect the novel, non-obvious, and ornamental appearance of an article of manufacture. The complaint asserts that the patented design is "distinctive" and has become "instantly recognizable" to consumers, symbolizing the quality and goodwill of the CASIO brand (Compl. ¶9, ¶13).
  • The Patented Solution: The ’478 Patent protects the specific visual and ornamental characteristics of an electronic calculator. The design is defined by the patent's drawings, which show a calculator with a rectangular body with rounded corners, a large rectangular display area at the top, a specific grid-like layout of rounded rectangular and circular keys, and a circular four-way directional pad located centrally below the display (’478 Patent, FIG. 1, FIG. 2). The patent claims the overall visual impression created by these features combined.
  • Technical Importance: The complaint alleges that this particular design is "broadly recognized by consumers" and is associated with the "quality and innovation that the public has come to expect from CASIO Products" (Compl. ¶10).

Key Claims at a Glance

  • Design patents contain a single claim, which is for the design "as shown" in the drawings. The asserted claim is: "The ornamental design for an electronic calculator, as shown" (’478 Patent, p. 1, CLAIM). The scope of this claim is defined by the visual appearance depicted in Figures 1 through 7 of the patent.

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are "unauthorized and unlicensed" electronic calculators ("Infringing Products") sold by Defendants through numerous "Defendant Internet Stores" on platforms including eBay, Amazon, Alibaba, and DHgate (Compl. ¶3, ¶16).

Functionality and Market Context

The complaint alleges that the Infringing Products are "inferior imitations" of genuine CASIO products, designed to appear authentic to "unknowing consumers" (Compl. ¶4, ¶17). These products are allegedly marketed and sold through online stores that use CASIO's branding and design elements to create an "illusion of legitimacy" (Compl. ¶17). The complaint includes a screenshot from Casio's official website showing its authentic "Electronic Calculators" that embody the patented design (Compl. p. 4).

IV. Analysis of Infringement Allegations

The standard for design patent infringement is whether an "ordinary observer," giving such attention as a purchaser usually gives, would be deceived into purchasing the accused article thinking it was the patented one. As the complaint does not provide images of the accused products for a side-by-side comparison, a traditional claim chart is not applicable.

The complaint alleges that Defendants are "making, using, offering for sale, selling, and/or importing" products that "infringe directly and/or indirectly the ornamental design claimed in the CASIO Design Patent" (Compl. ¶27). The prayer for relief further characterizes the accused products as "reproductions, infringing copies, or colorable imitations" of the patented design (Compl. Prayer ¶1(a)). The central factual allegation is that the overall visual appearance of the Defendants' calculators is substantially the same as the design shown in the ’478 Patent's figures.

Identified Points of Contention

  • Evidentiary Question: A primary challenge for the Plaintiff may be producing sufficient evidence to prove that the specific products sold by the numerous, anonymous Defendants are in fact substantially similar to the patented design. The complaint's structure suggests it may be used as a vehicle to obtain discovery and third-party subpoenas to acquire such evidence.
  • Scope Questions: The infringement analysis will turn on the application of the "ordinary observer" test. The key question for the court will be whether the visual appearance of the accused calculators, once identified, is close enough to the design shown in the ’478 Patent figures to cause observer confusion.

V. Key Claim Terms for Construction

In design patent litigation, formal claim construction is rare because the claim's scope is defined by the drawings rather than words. The analysis focuses on a visual comparison.

  • The Term: "The ornamental design for an electronic calculator, as shown"
  • Context and Importance: This is the entire claim of the ’478 Patent. Its interpretation is coterminous with the infringement analysis itself. The dispute will not center on the definition of a word but on the overall visual similarity between the accused products and the patented design depicted in the drawings.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A party might argue that the "overall visual impression" should be considered, focusing on the general layout, proportions, and shape, and that minor differences in surface detail should not defeat a finding of infringement. The solid lines in the figures define the claimed design (’478 Patent, FIGS. 1-7).
    • Evidence for a Narrower Interpretation: A party could argue that the specific combination of all depicted features—including the precise shape and arrangement of every key, the contours of the casing, and the proportions of the display—constitutes the claimed design, and that any significant deviation in any of these elements would place an accused product outside the claim's scope.

VI. Other Allegations

  • Indirect Infringement: While the complaint mentions indirect infringement (Compl. ¶27), the core allegations focus on direct infringement by the Defendants for making, using, and selling the accused products. The prayer for relief also requests an injunction against "inducing, or enabling others to sell or pass off" infringing products (Compl. Prayer ¶1(b)).
  • Willful Infringement: The complaint alleges that Defendants have "knowingly and willfully" used the patented design (Compl. ¶24). This allegation is supported by claims that Defendants intentionally create stores that "appear to be selling genuine Plaintiff's products" (Compl. ¶4), use "illegitimate SEO tactics" to attract customers (Compl. ¶19), and take measures to "conceal their identities" (Compl. ¶20). Plaintiff seeks treble damages for infringement pursuant to 35 U.S.C. § 284 (Compl. Prayer ¶5).

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

  1. A central issue will be evidentiary and procedural: Given the complaint's framing against a large network of anonymous foreign entities, a key test will be the Plaintiff's ability to use discovery to successfully identify the specific accused products, link them to the named Defendants, and prove that their designs are substantially similar to the patented design.
  2. The core legal question will be one of visual similarity: Assuming the accused products are presented to the court, the case will turn on the application of the "ordinary observer" test—does the overall ornamental design of the accused calculators create a visual impression so similar to the ’478 Patent's drawings that a typical purchaser would be deceived?
  3. A determinative factor will be the effectiveness of the remedy: The case appears designed to combat widespread online counterfeiting. A key measure of success will be the scope and practical effect of the requested injunctive relief, particularly the court's willingness to order takedowns of online marketplace listings and domain names associated with the Defendants (Compl. Prayer ¶3-4).