1:23-cv-03001
Shenzhen Lanxi Technology Co Ltd v. Pingjiang Fangao E Commerce Co Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Shenzhen Lanxi Technology Co. Ltd. (People's Republic of China)
- Defendant: Pingjiang Fangao E-commerce Co., Ltd (People's Republic of China)
- Plaintiff’s Counsel: Glacier Law LLP
- Case Identification: 1:23-cv-03001, N.D. Ill., 05/12/2023
- Venue Allegations: Venue is based on Defendant's alleged targeting of consumers in the United States, including Illinois, through an interactive e-commerce store on Walmart.com, resulting in sales to Illinois residents and substantial injury to the Plaintiff in the state.
- Core Dispute: Plaintiff seeks a declaratory judgment of non-infringement and invalidity concerning a design patent for a rotating shelf, following Defendant's infringement complaint to Walmart that led to the delisting of Plaintiff's product.
- Technical Context: The dispute centers on the ornamental design of rotating cosmetic organizers, a consumer product in the personal care and home goods market.
- Key Procedural History: This action was precipitated by an infringement complaint the Defendant (patent holder) filed with Walmart against the Plaintiff. This action resulted in the removal of Plaintiff's product listing and created the "actual controversy" required to bring this declaratory judgment action. The complaint's primary focus is on invalidating the patent-in-suit based on alleged prior art, including foreign patents and prior public sales and uses.
Case Timeline
| Date | Event |
|---|---|
| 2015-12-23 | Chinese Patent CN 303516094 ('094 Patent) Issue Date |
| 2018-05-04 | Chinese Patent CN 304610684 ('684 Patent) Issue Date |
| 2019-01-05 | Alleged Public Availability via YouTube Video |
| 2019-10-24 | Alleged On-Sale Date via Amazon.com Customer Review |
| 2021-04-14 | '246 Patent Filing Date |
| 2021-11-09 | '246 Patent Issue Date |
| 2023-04-26 | Plaintiff Received Notice from Walmart of Product Takedown |
| 2023-05-12 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D935,246 - "Shelf", issued November 9, 2021
The Invention Explained
- Problem Addressed: As a design patent, the '246 Patent does not articulate a technical problem. Instead, it protects a new, original, and ornamental design for an article of manufacture, which is a shelf ('246 Patent, CLAIM; Title).
- The Patented Solution: The patent claims the specific visual appearance of a shelf as depicted in its nine figures ('246 Patent, CLAIM). The design consists of a cylindrical, multi-level rotating organizer. Key ornamental features include a circular top tray with fixed compartments, a rotating circular base, vertical support panels with rows of horizontal slots for shelf placement, and adjustable, removable shelves that fit into these slots ('246 Patent, FIGS. 1, 7, 9). The exploded view in Figure 9 illustrates the distinct components that form the overall ornamental design ('246 Patent, FIG. 9).
- Technical Importance: The design provides a particular aesthetic for a rotating cosmetic organizer, a product category for which visual appeal may influence consumer purchasing decisions (Compl. ¶11).
Key Claims at a Glance
- The patent asserts a single claim: "The ornamental design for a shelf, as shown and described."
- In design patent litigation, the claim covers the overall visual impression of the article shown in the drawings. The "elements" are the collective visual features, including:
- A cylindrical overall form factor.
- A top tray with fixed, sectioned compartments.
- A rotating base.
- Multiple vertical support panels with rows of horizontal slots.
- Adjustable, removable horizontal shelves.
III. The Accused Instrumentality
Product Identification
- Plaintiff's "Makeup Organizer," sold in its Walmart store under the name LANXI LLC (Compl. ¶¶10, 12).
Functionality and Market Context
The complaint describes the product as a makeup organizer popular for its "distinguish design of the diamond-shaped contour" (Compl. ¶12). The complaint provides a photograph of Plaintiff's Makeup Organizer, depicting a clear, multi-tiered rotating cylindrical organizer (Compl. p. 3). The action was initiated after Defendant's infringement complaint to Walmart caused this product to be "taken down," suggesting it was a commercially active product (Compl. ¶13).
IV. Analysis of Infringement Allegations
This declaratory judgment action was filed by the accused infringer (Plaintiff) to establish non-infringement. The complaint therefore does not contain a detailed infringement claim chart but instead asserts that Plaintiff's product does not infringe. The core of the infringement dispute, from the perspective of the patent holder, would be a comparison of the accused product's design to the patented design under the "ordinary observer" test.
| Claim Element (from the single claim) | Alleged Non-Infringing Feature | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a shelf, as shown and described. | Plaintiff alleges its Makeup Organizer does not infringe because it "incorporates its own distinguish design of diamond-shaped contour." | ¶30 | CLAIM; FIGS. 1-9 |
- Identified Points of Contention:
- Scope Questions: The central infringement question is whether an ordinary observer, giving the attention a purchaser usually gives, would be deceived into purchasing Plaintiff's product believing it is the patented design. The complaint's main defense against this is an alleged "diamond-shaped contour," a feature not clearly depicted or explained in the pleading (Compl. ¶30).
- Technical Questions: A factual question will be whether the alleged "diamond-shaped contour" is a significant enough feature to create a different overall visual impression from the patented design. The photograph of the Plaintiff's product in the complaint shows a cylindrical organizer, making the nature and prominence of this alleged distinguishing feature unclear (Compl. p. 3). The complaint's primary focus is on invalidity, with the non-infringement allegations being less developed.
V. Key Claim Terms for Construction
As this is a design patent, the claim consists of the visual depiction of the design itself, and there are typically no claim terms requiring judicial construction. The legal analysis focuses on a visual comparison of the accused design with the claimed design from the perspective of an "ordinary observer," rather than a dispute over the meaning of words. The court's analysis will be guided by the patent's drawings rather than textual definitions.
VI. Other Allegations
The complaint does not contain allegations of indirect or willful infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this declaratory judgment action will likely depend on the court's findings on two central issues, with the first being the most heavily supported in the complaint.
A dispositive issue will be one of validity: Will the court find that the '246 patent is anticipated or rendered obvious by the prior art identified by the Plaintiff? This will involve a factual comparison of the patented design to prior art designs allegedly disclosed in Chinese patents and made publicly available through online sales and videos well before the patent's April 2021 filing date (Compl. ¶¶ 16-20).
A secondary question is one of design similarity: Assuming the patent survives the validity challenge, does the Plaintiff’s product create an overall visual impression that is "substantially the same" as the patented design in the eye of an ordinary observer? The answer may turn on the significance of the Plaintiff's alleged "diamond-shaped contour" and whether it is sufficient to differentiate the two designs.