Steel City Enterprises Inc v. T Schedule A

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Steel City Enterprises Inc. (Pennsylvania)
  • Defendant: The Individuals, Corporations, Limited Liability Companies, Partnerships, and Unincorporated Associations Identified on the Attached Schedule A (Primarily People's Republic of China)
  • Plaintiff’s Counsel: Bishop Diehl & Lee, LTD.
• Case Identification: 1:23-cv-03252, N.D. Ill., 05/23/23
• Venue Allegations: Venue is based on allegations that Defendants operate interactive e-commerce stores that target and sell products to consumers throughout the United States, including making sales to residents of Illinois.
• Core Dispute: Plaintiff alleges that numerous unnamed online retailers are infringing a design patent for a plug or cap for large beverage containers.
• Technical Context: The technology concerns the ornamental design of replacement caps for large-format water cooler jugs.
• Key Procedural History: The complaint is structured as a consolidated action against a network of alleged infringers operating anonymously through various online marketplaces, a common procedural posture for combating online counterfeiting and infringement by foreign entities.

Case Timeline

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

U.S. Design Patent No. D977,973 - Container Plug

• Patent Identification: U.S. Design Patent No. D977,973, titled Container Plug, issued on February 14, 2023. (Compl. ¶3, ¶4; '973 Patent).

The Invention Explained

• Problem Addressed: The patent addresses the aesthetic and ornamental appearance of an article of manufacture, rather than a functional problem. The complaint identifies the article as a "plug or cap for large beverage containers" intended for use with items like upright water dispensers (Compl. ¶6).
• The Patented Solution: The '973 Patent protects the specific visual appearance of a container plug. The claimed design, depicted in solid lines in the patent's figures, consists of a circular, relatively flat top flange with a rounded edge, surmounting a cylindrical body of a smaller diameter. ('973 Patent, Figs. 2, 5). The patent's description explicitly disclaims subject matter shown in broken lines, including the exemplary water bottle, certain internal plug features, and a logo, which are not part of the protected design ('973 Patent, Description).
• Technical Importance: Plaintiff sells a commercial product, the "Jug Plug," that it states embodies the patented design, suggesting the design's importance to Plaintiff's branding and market presence (Compl. ¶7).

Key Claims at a Glance

• As a design patent, the '973 Patent has a single claim for "The ornamental design for a container plug, as shown and described." ('973 Patent, Claim).
• The scope of this claim is defined by the visual elements depicted in solid lines in the patent's drawings, including:
  • The overall proportions of the flange to the cylindrical body.
  • The smooth, continuous, and rounded profile of the top flange.
  • The specific geometry of the cylindrical portion that extends below the flange.

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are various "plug or caps for large water containers" sold by the defendant entities (Compl. ¶6).

Functionality and Market Context

The complaint alleges that Defendants sell the accused products through "fully interactive, commercial online marketplaces" such as amazon.com, ebay.com, and walmart.com (Compl. ¶9, ¶10). It further alleges that the Defendants sell the "same infringing products with minor variations" and utilize "similar if not identical product images and descriptions," including content copied from Plaintiff's own product listings (Compl. ¶12, ¶18).

IV. Analysis of Infringement Allegations

The complaint alleges that the accused products infringe the '973 Patent because their ornamental design is substantially the same as the claimed design, such that an ordinary observer would be deceived. While the complaint asserts that an attached claim chart (Exhibit 2) demonstrates that the accused product "incorporates each of the design elements claimed in the '973 Patent," this exhibit was not included in the publicly filed complaint document (Compl. ¶27). No probative visual evidence provided in complaint. A narrative summary of the allegations is therefore provided in lieu of a claim chart.

The core of the infringement allegation is that the products sold by Defendants are, from a visual standpoint, copies of the design protected by the '973 Patent. The infringement test for a design patent is whether, in the eye of an ordinary observer familiar with the prior art, the accused design is substantially the same as the claimed design, such that the observer would be deceived into purchasing one supposing it to be the other. The complaint's allegations that Defendants sell the "exact same infringing products" and use "the same or similar product images" form the factual basis for this claim (Compl. ¶18).

Identified Points of Contention

• Evidentiary Question: A central issue will be the presentation of evidence. What proof will Plaintiff offer to establish that the various products sold by the numerous anonymous defendants are, in fact, "substantially the same" as the design claimed in the '973 Patent?
• Scope Question: The complaint notes the accused products may have "minor variations" (Compl. ¶12). A potential point of contention may be whether these variations are significant enough to distinguish the accused products from the patented design in the mind of an ordinary observer, or if they are trivial and do not alter the overall visual impression.

V. Key Claim Terms for Construction

In a design patent case, the "claim" consists of the drawings, and formal claim construction of specific terms is uncommon. The analysis focuses on the overall visual appearance of the design as a whole. The scope of the claim is therefore defined by the patent's figures.

• The Term: "The ornamental design for a container plug, as shown and described."
• Context and Importance: The critical determination is not the definition of a word, but the visual scope of the design protected by the patent's drawings. The outcome of the case hinges on a visual comparison between the claimed design and the accused products.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim protects the overall visual impression of the design shown in the solid lines of Figures 1-6, not merely a collection of discrete features. An argument for a broader scope would focus on the general configuration, proportions, and aesthetic effect.
  • Evidence for a Narrower Interpretation: The patent's explicit disclaimer of all matter shown in broken lines—including the environmental container, the "Jug Plug" logo, and certain internal features—narrows the scope of the protected design ('973 Patent, Description). The precise curvatures and proportions shown in the solid lines could be argued as limitations on the claim's scope.

VI. Other Allegations

Indirect Infringement

The complaint alleges that the Defendants constitute an "interrelated group of infringers working in active concert" (Compl. ¶12). The prayer for relief also seeks to enjoin Defendants from "aiding, abetting, contributing to, or otherwise assisting anyone in infringing" upon the '973 Patent (Compl. p. 8, ¶A.b.). These allegations lay the groundwork for a claim of indirect infringement.

Willful Infringement

Willfulness is alleged based on the assertion that Defendants acted "knowingly and willfully" (Compl. ¶¶ 12, 22). The complaint suggests this knowledge can be inferred from the Defendants allegedly selling the "exact same infringing products" and copying Plaintiff's product images and descriptions, which may constitute evidence of intentional copying (Compl. ¶18). The infringement "has been and continues to be willful" (Compl. ¶32).

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

1. A central issue will be one of evidence and attribution: Given the complaint's structure against a network of anonymous online sellers, what evidence will Plaintiff present to prove that the specific products sold by each named defendant are visually "substantially the same" as the design claimed in the '973 Patent?
2. A second key question will relate to the scope of the ordinary observer test: How will the court apply the infringement test to the "minor variations" that the complaint acknowledges may exist among the accused products (Compl. ¶12), and what role will the explicitly disclaimed features of the '973 Patent play in the visual comparison?