DCT
1:23-cv-03226
Wuhu Fashang Trading Co v. Tim Mei Trade & Investment Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Wuhu Fashang Trading Co. (China)
- Defendant: Tim Mei Trade & Investment Ltd. (Hong Kong)
- Plaintiff’s Counsel: AU LLC
- Case Identification: 1:23-cv-03226, N.D. Ill., 05/22/2023
- Venue Allegations: Venue is based on Defendant’s enforcement of its patent on the Amazon.com platform, which allegedly caused Plaintiff’s sales of the accused product into Illinois to cease, constituting a tortious act in the district.
- Core Dispute: Plaintiff seeks a declaratory judgment that its "hot pot" food grill product does not infringe Defendant’s design patent, and further that the patent is invalid and unenforceable.
- Technical Context: The dispute concerns the ornamental design of a combination electric hot pot and grill, a popular category of consumer kitchenware appliances.
- Key Procedural History: The litigation was precipitated by Defendant’s submission of a patent infringement complaint to Amazon.com concerning Plaintiff's product. This action resulted in the removal of Plaintiff's product from the Amazon platform, creating the "actual substantial controversy" that forms the basis for this declaratory judgment action.
Case Timeline
| Date | Event |
|---|---|
| 2020-01-08 | Accused Product first available for public sale on Amazon.com |
| 2021-01-30 | ’337 Patent Priority Date (Application Filing) |
| 2022-02-15 | ’337 Patent Issue Date |
| 2023-03-31 | Plaintiff received infringement notification from Amazon |
| 2023-05-22 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. D943,337, "GRILL AND HOT POT," issued February 15, 2022.
- The Invention Explained:
- Problem Addressed: Design patents do not solve technical problems; they protect the ornamental appearance of an article of manufacture. The goal is to create a new, original, and non-obvious visual design that is not dictated by the article's function (Compl. ¶ 17).
- The Patented Solution: The ’337 Patent claims a specific ornamental design for a combination grill and hot pot. The design, shown in solid lines in the patent's figures, features a circular body with a central, lidded pot depression surrounded by an annular grilling surface. Key visual elements include two control knobs on a recessed front panel, small handles on the sides, and a particular curvature of the main body (’337 Patent, Figs. 1, 3, 7). The patent claims the overall visual impression created by these elements in combination (’337 Patent, col. 1:53-55).
- Technical Importance: The complaint alleges that the design is primarily functional rather than ornamental, suggesting its features are common to such products (Compl. ¶ 25).
- Key Claims at a Glance:
- The patent contains a single claim for "The ornamental design for a grill and hot pot, as shown and described" (’337 Patent, col. 1:53-55; Compl. ¶ 17).
- The essential elements are the visual characteristics of the article depicted in the solid lines of Figures 1-8 of the patent.
III. The Accused Instrumentality
- Product Identification: The accused product is a "hot pot" food grill sold on Amazon.com under ASIN B083L9Z4S5 (the “Product”) (Compl. ¶ 8).
- Functionality and Market Context:
- The Product is a consumer kitchen appliance that combines a central basin for hot pot cooking with a surrounding electric grill surface (Compl. p. 3, image). The complaint includes a photograph of the Product, showing its overall circular shape, two front-mounted control dials, and a central pot area.
- The complaint alleges that prior to Defendant's enforcement action, Plaintiff had sold more than 2,400 units of the Product, which was first made publicly available for sale on January 8, 2020 (Compl. ¶ 9). The enforcement action by Defendant caused Plaintiff's sales on Amazon.com to cease (Compl. ¶ 6). A promotional image included in the complaint shows the product's dimensions and included accessories, such as an oil brush and clip (Compl. p. 3, image).
IV. Analysis of Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement. The analysis therefore centers on the comparison between the patented design and the accused product, which forms the basis of the legal controversy.
- Claim Chart Summary:
| Claim Element (Visual Feature from D'337 Patent) | Corresponding Accused Product Feature | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design for a grill and hot pot, as shown and described. | The overall visual appearance of the Product identified by ASIN B083L9Z4S5. | ¶8 | col. 1:53-55 |
| A generally circular body with a central, circular depression for a pot. | The Product has a circular body with a central, circular depression for a pot. | p. 3, image | Fig. 1, 7 |
| A pair of control knobs located on a recessed panel on the front of the body. | The Product has a pair of control knobs on the front of its body. | p. 3, image | Fig. 3 |
| An annular grilling surface surrounding the central pot. | The Product features a surrounding grilling surface. | p. 3, image | Fig. 1, 7 |
| A lid with a central handle for the pot depression. | The Product is shown in promotional materials with a lid, though the main product photo does not include it. | p. 3, image | Fig. 1, 3 |
- Identified Points of Contention:
- Scope Questions: The complaint alleges that the drawings of the ’337 Patent are indefinite because they include lines that "at some points appear to be solid lines, but at other points appear to be dashed (or broken) lines" (Compl. ¶ 22). This raises the question of whether the drawings adequately define the scope of the claimed design as required by 35 U.S.C. § 112, as only solid lines are part of the claimed design (Compl. ¶¶ 20-21, 23).
- Technical Questions: A central question for the court will be the application of the "ordinary observer" test. The inquiry will be whether an ordinary observer, familiar with the prior art, would be deceived into purchasing Plaintiff's product believing it to be the patented design. This will involve comparing the overall visual impression of the two designs, not just a side-by-side analysis of individual features.
- Functionality Questions: The complaint raises the defense that the design is "primarily functional, rather than ornamental" (Compl. ¶ 25). This suggests a key dispute will be whether the visual features of the patented design are dictated by their utilitarian purpose, which would render the design unpatentable under 35 U.S.C. § 171.
V. Key Claim Terms for Construction
In design patent cases, there are typically no terms to construe. The "claim" is the visual design shown in the drawings. The central issue analogous to claim construction is determining the precise scope of the claimed design based on those drawings.
- The Term: "The ornamental design ... as shown and described."
- Context and Importance: The scope of protection is defined entirely by the solid lines in the patent's drawings. Plaintiff directly challenges the clarity of this scope by alleging the drawings are indefinite due to ambiguous line types (Compl. ¶¶ 22-23). The court's determination of whether the drawings are sufficiently clear to define a design will be dispositive for both infringement and validity. Practitioners may focus on this issue because indefiniteness under § 112 is a potent invalidity defense if the boundaries of the claimed design cannot be discerned.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A court could view the drawings holistically and determine that, despite any minor imperfections in line consistency, an ordinary designer would understand the overall shape and configuration being claimed.
- Evidence for a Narrower Interpretation: The complaint's allegation that "it is not possible to discern the proper scope of the ornamental design" (Compl. ¶ 23) points to an argument that the ambiguous lines render the patent invalid for indefiniteness under 35 U.S.C. § 112. If the court finds the lines are indeed ambiguous, it may invalidate the claim for failing to "distinctly set forth the subject matter of the invention" (Compl. ¶ 24).
VI. Other Allegations
- Wrongful Enforcement: The complaint does not allege infringement, but rather brings state law claims against the Defendant for its enforcement actions. It alleges a violation of the Illinois Uniform Deceptive Trade Practices Act and Tortious Interference with Prospective Economic Advantage (Compl. Counts II, III). The basis for these claims is the allegation that Defendant made "false and/or misleading statement[s] of fact to Amazon.com when it represented to Amazon.com that the Product infringed the ’337 Patent" (Compl. ¶ 28), and that this action was intended to induce Amazon to terminate Plaintiff's ability to sell the product (Compl. ¶ 42).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of validity and scope: Are the drawings of the ’337 Patent sufficiently clear and definite under 35 U.S.C. § 112 for the scope of the claimed ornamental design to be determined, or are they indefinite due to the alleged ambiguity in the line types?
- A second key validity question will be one of functionality: Is the patented design primarily ornamental, or is it dictated by the utilitarian function of a combination hot pot and grill, which could render it unpatentable under 35 U.S.C. § 171?
- Assuming the patent is found valid, a central question of infringement will remain: Is the overall visual impression of the Plaintiff’s product "substantially the same" as the patented design in the eye of an ordinary observer, or are there sufficient visual differences to distinguish the two designs?