Jiang v. Tiaoxingma Fuxzhou Trading Co Ltd

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Yonda Jiang (People's Republic of China)
  • Defendant: Tiaoxingma (Fuzhou) Trading Co., Ltd. (People's Republic of China)
  • Plaintiff’s Counsel: Ni, Wang & Massand, PLLC
• Case Identification: 1:23-cv-00945, N.D. Ill., 02/15/2023
• Venue Allegations: Venue is asserted based on the Defendant being a foreign company with no established place of business in the United States, and on alleged sales of products embodying the patent into the district via an Amazon storefront.
• Core Dispute: Plaintiff seeks a declaratory judgment that Defendant’s design patent for a hanging plant stand is invalid and not infringed, and alleges tortious interference with its business relationships.
• Technical Context: The dispute centers on the ornamental design of a multi-tiered hanging plant holder, a product category common in the online home décor and gardening markets.
• Key Procedural History: The complaint alleges that prior to the lawsuit, the Defendant contacted the Plaintiff's supplier, demanding that stores stop selling the product at issue based on the D'020 Patent. This alleged threat appears to be the basis for the declaratory judgment action.

Case Timeline

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

U.S. Design Patent No. D969,020 – “HANGING PLANT STAND”

• Patent Identification: U.S. Design Patent No. D969,020 (“D’020 Patent”), “HANGING PLANT STAND,” issued November 8, 2022.

The Invention Explained

• Problem Addressed: Design patents protect the ornamental appearance of an article of manufacture, not its function. The patent does not describe a technical problem but instead presents a new, original, and ornamental design for a hanging plant stand (D’020 Patent, Claim).
• The Patented Solution: The D’020 Patent claims the specific visual appearance of a hanging plant stand. The design consists of three vertically-stacked horizontal wooden bars, each holding five glass test-tube-like vials (D’020 Patent, FIG. 1). The entire assembly is suspended by a rope threaded through the ends of the bars, forming a triangular hanger at the top (D’020 Patent, FIG. 2). The claim covers only the ornamental aspects depicted in the patent's figures (D’020 Patent, Claim).
• Technical Importance: The complaint alleges that products with this or a similar appearance have enjoyed "considerable commercial success" (Compl. ¶12).

Key Claims at a Glance

• Design patents have a single claim. The asserted claim is: "The ornamental design for a hanging plant stand, as shown and described." (D’020 Patent, Claim).

III. The Accused Instrumentality

Product Identification

• Plaintiff Yonda Jiang’s "Hanging Plant Terrarium," sold via its Amazon storefront, "Mkono" (Compl. ¶12-13).

Functionality and Market Context

• The Plaintiff's product is a hanging plant terrarium that it has allegedly been selling since at least April 2021 (Compl. ¶13). The complaint includes a photograph of the Plaintiff's product, showing a three-tiered hanging structure with holders for plant cuttings (Compl. p. 6).
• The complaint asserts that the Plaintiff has enjoyed "considerable commercial success" with its product and had a registered Federal Trademark since 2017 (Compl. ¶12).

IV. Analysis of Invalidity Allegations

As this is a declaratory judgment action, the complaint does not allege infringement. Instead, it argues that the D’020 Patent is invalid under 35 U.S.C. § 102 (anticipation) because the claimed design was publicly disclosed and sold by others before the patent's priority date (Compl. ¶23-25). The complaint presents a side-by-side visual comparison to support its invalidity contention.

The complaint provides a visual comparison of the patented design with products allegedly sold on Etsy and Amazon before the patent's filing date (Compl. p. 5). This side-by-side chart juxtaposes the patent's Figure 1 with a photograph of a nearly identical product from "ThePlantCommitte" on Etsy, dated April 1, 2020.

• Identified Points of Contention:
  • Evidentiary Question: A central issue will be whether the Plaintiff can produce sufficient evidence to prove that the alleged prior art products (from Etsy, Amazon, and its own store) were publicly available and sold in the United States before the D’020 Patent’s priority date of March 4, 2022. The complaint relies on screenshots with dates, but their authenticity and the scope of the public disclosure they represent may be challenged (Compl. p. 5-6).
  • Scope Question: The complaint alleges the prior art and the D’020 Patent are "identical" (Compl. ¶27). The court will have to apply the "ordinary observer" test, determining if an ordinary observer, familiar with the prior art, would be deceived into purchasing the patented design thinking it was the prior art design. Minor differences may not defeat a finding of anticipation.

V. Key Claim Terms for Construction

• The Term: "hanging plant stand"
• Context and Importance: The identity of the article of manufacture is fundamental to a design patent's scope. The complaint repeatedly refers to the design as being for a "trash can" (Compl. ¶8, ¶26, ¶31), while the patent is explicitly titled and claims a "hanging plant stand" (D’020 Patent, (54), Claim). This discrepancy raises a question about the proper scope of the patent's claim. Practitioners may focus on this term because if the patent is construed to cover only "hanging plant stands," its applicability to products marketed differently could be disputed, though the primary test remains the visual comparison.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The parties could argue that the title is merely descriptive and the claim's scope is defined entirely by the visual appearance shown in the figures, regardless of the article's name or intended use.
  • Evidence for a Narrower Interpretation: The Defendant (patentee) will likely argue that the claim is explicitly limited to the article named: a "hanging plant stand." The patent's title, claim language, and classification (e.g., U.S. Class D11/143 for "Flower pots, planters, and flower holders") all consistently identify the article as a plant stand, not a trash can or other item (D'020 Patent, (52), (54), Claim).

VI. Other Allegations

The complaint does not contain allegations of patent infringement. Instead, it includes two state law claims:

• Tortious Interference with a Contractual Relationship: The Plaintiff alleges that the Defendant's communication with the Plaintiff's supplier constituted tortious interference (Compl. p. 8).
• Tortious Interference with a Prospective Business Expectancy: The Plaintiff alleges the same conduct interfered with its future business prospects (Compl. p. 8).

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

• A core issue will be one of anticipation: Can the plaintiff, Yonda Jiang, prove with clear and convincing evidence that the designs shown in the complaint's exhibits were publicly sold or disclosed before the patent's March 4, 2022 priority date, and that they are visually identical to the design claimed in the D'020 Patent?
• A second key question will be one of claim scope: What is the proper article of manufacture for the D'020 Patent? The dispute over whether the design is for a "hanging plant stand" (as the patent states) or a "trash can" (as the complaint confusingly alleges) may influence the comparison to prior art and the accused product.
• A final question relates to the declaratory judgment standing: The case's viability rests on whether the Defendant's alleged contact with the Plaintiff's supplier created a sufficient "actual and justiciable controversy" between the patentee and the Plaintiff to give the court jurisdiction (Compl. ¶20).