DCT

1:23-cv-02650

Putianshi Lichengqu Zengchangpai E Commerce Co Ltd v. Shuangfeng County Shuangwei Electronic Technology Co Ltd

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-02650, N.D. Ill., 04/27/2023
  • Venue Allegations: Venue is based on the Defendant being a foreign company with no established place of business in the United States. Personal jurisdiction is asserted based on the Defendant allegedly operating an Amazon storefront and selling products embodying the patent-in-suit within the judicial district.
  • Core Dispute: Plaintiff, an online seller, seeks a declaratory judgment that its tumbler lid products do not infringe Defendant's design patent and that the patent is invalid due to anticipation by prior art products sold publicly for years.
  • Technical Context: The dispute centers on the ornamental design of a two-part lid for drink tumblers, composed of a bamboo top and a silicone sleeve, a common accessory in the consumer drinkware market.
  • Key Procedural History: The action was precipitated by infringement complaints Defendant allegedly filed with Amazon.com against Plaintiff's products around April 10, 2023. Subsequent to the filing of this lawsuit, a request for ex parte reexamination of the patent-in-suit was filed, and the U.S. Patent and Trademark Office issued a certificate confirming the patentability of the single claim.

Case Timeline

Date Event
2017-02-01 Alleged first on-sale date of anticipating "Ello" prior art product
2017-04-11 Alleged on-sale date of other similar prior art products
2017-10-01 Alleged first on-sale date of anticipating "Tronco" prior art product
2022-03-08 D'896 Patent Filing Date
2022-08-09 D'896 Patent Issue Date
2023-03-01 Plaintiff's alleged first sale of accused products
2023-04-10 Defendant allegedly files infringement complaints with Amazon.com
2023-04-27 Complaint for Declaratory Judgment Filed
2024-05-16 Ex Parte Reexamination of D'896 Patent Requested
2025-03-14 Reexamination Certificate for D'896 Patent Issued, Confirming Patentability

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

U.S. Design Patent No. D959,896 - "SILICONE SLEEVE BAMBOO LID"

The patent-in-suit is U.S. Design Patent No. D959,896, issued August 9, 2022 (the "D’896 Patent").

The Invention Explained

  • Problem Addressed: As a design patent, the D'896 Patent does not articulate a technical problem. Its purpose is to protect the novel, non-obvious, and ornamental appearance of an article of manufacture (D’896 Patent, Claim).
  • The Patented Solution: The patent claims the specific ornamental design for a two-part lid. The design consists of a flat, circular bamboo top piece with a central aperture, combined with a form-fitting silicone sleeve. The sleeve wraps around the outer edge of the bamboo and also fits underneath it, creating a seal (D’896 Patent, FIG. 3). The broken lines in the figures indicate that the tumbler to which the lid attaches is not part of the claimed design (D’896 Patent, Description, FIG. 4).
  • Technical Importance: The complaint suggests the design is commercially significant, alleging that numerous sellers have offered identical or similar products on Amazon for years prior to the patent's filing date (Compl. ¶16, ¶23).

Key Claims at a Glance

  • Design patents contain a single claim. The asserted claim is: "The ornamental design for a silicone sleeve bamboo lid, substantially as shown and described." (D’896 Patent, Claim).
  • The essential visual elements of the design are defined by the solid lines in the patent's figures and include:
    • A circular, flat-topped main body made of bamboo.
    • A central, circular opening for a straw.
    • A distinct, removable silicone sleeve that conforms to the perimeter of the bamboo top.
    • An underside portion of the sleeve designed to create a seal within a container opening.

III. The Accused Instrumentality

Product Identification

The complaint identifies Plaintiff's "tumblers" sold via its "Hydraful" Amazon storefront, specifically referencing products listed under ASINs B0BWXYYDY6, B0BWXZFYLL, B0BWY1MX4P, B0BWYR2RGK, and B0C1FZHTGL (Compl. ¶12, ¶15). The products are generally described as having "silicon sleeve bamboo lid[s]" (Compl. ¶28).

Functionality and Market Context

The complaint does not provide a detailed technical description of the Plaintiff's products. Instead, its central argument is that the design embodied by these products was already in the public domain due to prior sales by third parties (Compl. ¶16, ¶22-23). The dispute arises from competition between sellers on the Amazon.com e-commerce platform (Compl. ¶14-15). The complaint includes a side-by-side visual comparison of patent figures and a prior art "Ello Devon Glass Tumble[r]" to illustrate the alleged identity of the designs (Compl. p. 5).

IV. Analysis of Infringement Allegations

The complaint seeks a declaratory judgment of non-infringement. Its argument is not based on a factual comparison of its products to the patent's claimed design. Instead, it advances a purely legal theory: "Since the D'896 Patent is invalid... it is axiomatic that Plaintiff's silicon sleeve bamboo lid products do not infringe the D’896 Patent" (Compl. ¶28).

Because the complaint's primary focus is on invalidity, the core allegations are best understood as a reverse claim chart for anticipation under 35 U.S.C. § 102.

Claim Element (from the D'896 patent design) Alleged Anticipating Prior Art Feature Complaint Citation Patent Citation
The overall ornamental design of a two-part silicone and bamboo lid as shown in the patent figures. The complaint alleges that tumbler lids sold by third parties on Amazon and Etsy since at least 2017 are identical to the patented design. ¶24 N/A
Visual representation of the complete lid assembly. A photograph of the "Ello Devon Glass Tumble" lid, which visually appears to be a two-part bamboo and silicone lid. p. 5 FIG. 1
Visual representation of the two-part construction. The complaint asserts that prior art products, such as the "Tronco 20oz Glass Tumbler" sold since 2017, possess the same two-part structure. p. 6 FIG. 3
  • Identified Points of Contention:
    • Invalidity Question: The central issue is whether Plaintiff can prove by clear and convincing evidence that the specific ornamental design claimed in the D'896 Patent is anticipated by the prior art products it has identified. The visual evidence presented in the complaint, showing side-by-side comparisons of the patent drawings and photographs of prior art products like the "Tronco 20oz Glass Tumbler," suggests a high degree of visual similarity (Compl. p. 6).
    • Procedural Question: A significant question for the court will be what weight to give the ex parte reexamination certificate, which confirmed the patentability of the claim after the lawsuit was filed. While the court conducts its own independent analysis, the PTO's conclusion that the claim is patentable presents a substantial hurdle for the Plaintiff's invalidity argument.
    • Pleading Accuracy: The complaint contains a notable inconsistency in its description of the prior art, stating that the products "disclose a hanging plant terrarium having 3 rows and identical tubes and tube holders" (Compl. ¶25). This language appears to be an error from a different legal document and raises questions about the diligence of the pleading, though it may not affect the substantive patent arguments.

V. Key Claim Terms for Construction

In design patent cases, claim construction involves describing the claimed ornamental features as shown in the patent's figures rather than defining textual terms.

  • The Term: "The ornamental design for a silicone sleeve bamboo lid, substantially as shown and described."
  • Context and Importance: The scope of the patent is defined by the visual impression of the solid-lined features in the drawings. The key legal question for infringement and validity is whether an ordinary observer would find the design of the accused or prior art product to be "substantially the same" as the design claimed in the D'896 Patent.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A party could argue that the phrase "substantially as shown" means the claim is not limited to the exact proportions and contours in the drawings, but covers any design with the same overall visual impression of a two-part bamboo and silicone lid.
    • Evidence for a Narrower Interpretation: A party could argue that the claim is limited to the specific visual features depicted, such as the precise curvature of the edges, the ratio of the bamboo surface to the silicone sleeve, and the particular two-part construction shown in the exploded view (D’896 Patent, FIG. 3, FIG. 13). The disclaimer of the tumbler body itself via broken lines further narrows the claim's focus strictly to the lid's appearance (D’896 Patent, FIG. 4, Description).

VI. Other Allegations

  • Tortious Interference: Plaintiff alleges that Defendant’s infringement complaints to Amazon.com constitute tortious interference with Plaintiff's contractual relationship with Amazon and with its prospective business expectancy with customers (Compl. ¶2).
  • Bad Faith and Exceptional Case: The complaint alleges that Defendant made "bad faith allegations that are knowingly and objectively false" by asserting a patent it knew or should have known was invalid in view of existing prior art (Compl. ¶16-17). Based on this, Plaintiff seeks a declaration that the case is "exceptional" and an award of attorneys' fees pursuant to 35 U.S.C. § 285 (Compl. p. 8, ¶e).

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

  1. A core issue will be one of evidentiary weight: Can Plaintiff's evidence of prior art sales, which on its face appears compelling, overcome the deference that may be afforded to the USPTO's subsequent decision to confirm the patent's validity in an ex parte reexamination?
  2. The case will also turn on a question of alleged bad faith: If the patent is found invalid, did the Defendant's act of filing infringement complaints with Amazon, despite the alleged existence of widespread and identical prior art, rise to the level of tortious interference or conduct that renders the case "exceptional" under patent law? The outcome of the invalidity claim will be dispositive for this issue.