DCT
1:23-cv-03371
Xavork Wooliand Inc v. Defendant S
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Xavork Wooliand Inc. (Oregon)
- Defendant: The Defendant(s) Identified in Schedule A to the Complaint (Foreign Jurisdiction)
- Plaintiff’s Counsel: Arch & Lake LLP
- Case Identification: 1:23-cv-03371, N.D. Ill., 07/28/2023
- Venue Allegations: Venue is alleged based on Defendants’ operation of interactive commercial websites that target and complete sales to consumers in Illinois, including offering shipping to the district and accepting payment in U.S. dollars from Illinois residents.
- Core Dispute: Plaintiff alleges that Defendants’ online sale of power cage fitness equipment infringes a design patent covering the ornamental appearance of Plaintiff’s own fitness equipment.
- Technical Context: The dispute is in the competitive consumer and commercial fitness equipment market, where product differentiation often relies on distinct visual and ornamental designs.
- Key Procedural History: This Amended Complaint follows an original complaint filed on May 27, 2023. Concurrently with the original filing, Plaintiff sought to seal the identity of the defendants and moved for a Temporary Restraining Order, a common procedure in cases against numerous, potentially anonymous online sellers to mitigate the risk of asset transfers.
Case Timeline
| Date | Event |
|---|---|
| 2021-11-29 | ’504 Patent Priority Date (Application Filing) |
| 2023-01-03 | ’504 Patent Issue Date |
| 2023-05-27 | Original Complaint Filing Date |
| 2023-07-28 | Amended Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D974,504 - "Fitness Equipment"
- Issued: January 3, 2023.
The Invention Explained
- Problem Addressed: Design patents protect the ornamental appearance of an article of manufacture rather than its utility. The implicit challenge addressed is creating a new, original, and non-obvious ornamental design for fitness equipment to distinguish it aesthetically in the marketplace (Compl. ¶17).
- The Patented Solution: The patent claims the specific ornamental design of a multi-function power cage, as depicted in its fourteen drawing sheets (’504 Patent, CLAIM; FIG. 1-14). The design’s overall visual impression is characterized by a rectangular frame with integrated dual-pulley systems, specific configurations of pull-up and dip bars, and particular shapes for the support feet, pulley housings, and sliding mechanisms (’504 Patent, FIG. 1-2).
- Technical Importance: The complaint asserts that the design is "unique, and original," which suggests its value lies in providing a distinct visual identity for Plaintiff's products in the fitness equipment market (Compl. ¶17).
Key Claims at a Glance
- The single claim asserted is for: "The ornamental design for a fitness equipment, as shown and described" (’504 Patent, CLAIM; Compl. ¶29).
- The scope of a design patent claim is defined by the solid lines in the patent’s drawings. The asserted claim covers the overall visual appearance of the fitness equipment, including the interplay of its various components as illustrated in Figures 1 through 14.
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are "several power cages" and a "so-called 'Smith machine'" offered for sale by the Defendants (Compl. ¶¶ 22, 24).
Functionality and Market Context
- The accused products are sold to U.S. consumers through online marketplaces, including Amazon.com and Walmart.com, as well as Defendants' own websites (Compl. ¶¶ 9, 22, 24, 26). The complaint alleges that these products incorporate a design that is "substantially the same" as the unique design claimed in the ’504 Patent (Compl. ¶22). The complaint further suggests that different seller names listed for various accused products may in fact represent the same entity (Compl. ¶¶ 23, 27).
IV. Analysis of Infringement Allegations
The standard for design patent infringement is the "ordinary observer" test, which asks whether an ordinary observer, familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented design. The complaint alleges the accused products meet this standard. The complaint references a visual comparison chart that was filed as an exhibit. The complaint describes a table in Exhibit 3 comparing images of the patented design to the accused products sold on various online platforms (Compl. ¶23).
’504 Patent Infringement Allegations
| Claim Element (from the Single Design Claim) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a fitness equipment, as shown and described. | The accused power cages sold on Amazon, Walmart, and Defendants' own websites incorporate a design that is "substantially the same" as the overall visual impression of the design claimed in the patent. | ¶¶22, 24, 26 | ’504 Patent, FIG. 1-14 |
| The complaint concedes "only minor differences in the dip handles and the wide and narrow pull-up bars" but alleges that these differences are such that "an ordinary observer would disregard" them. | ¶¶22, 24 | ’504 Patent, FIG. 1-2 | |
| The similarities between the patented design and the accused products are alleged to be substantial enough that an ordinary observer "would likely be deceived into purchasing one supposing it to be the other." | ¶¶23, 25, 27 | ’504 Patent, FIG. 1-2 |
- Identified Points of Contention:
- Scope Questions: A central question will be whether the admitted differences in the "dip handles and the wide and narrow pull-up bars" are significant enough to alter the overall ornamental appearance in the view of an ordinary observer (Compl. ¶22). The defense may argue these are not "minor differences" but material alterations that create a distinct design.
- Factual Questions: The case will depend on a factual comparison of the accused products' appearance with the design claimed in the ’504 Patent. The critical inquiry is whether the accused designs are similar enough to the patented design that they would deceive an ordinary purchaser. The complaint’s assertion that different brands are sold by the same entity will also be a factual question for the court (Compl. ¶¶ 23, 27).
V. Key Claim Terms for Construction
In design patent litigation, the claim is typically not construed by defining textual terms but rather by describing the claimed ornamental design as shown in the patent's figures. The analysis focuses on the overall visual impression.
- The "Term": The scope of "the ornamental design for a fitness equipment."
- Context and Importance: The entire infringement analysis rests on the scope of the claimed design and how it compares to the accused products. Practitioners may focus on the overall configuration and interplay of the prominent vertical and horizontal frame elements, the specific design of the pulley carriages, and the shape of the various handles and bars as depicted in the patent's figures to argue for either a broad or narrow scope of protection.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim covers the entire "fitness equipment, as shown and described," suggesting the patent protects the overall gestalt or visual impression of the machine, which could allow for minor variations in individual components without avoiding infringement (’504 Patent, CLAIM).
- Evidence for a Narrower Interpretation: The patent provides detailed, specific views of all aspects of the equipment, including enlarged views of particular mechanisms in Figures 9-14 (’504 Patent, FIG. 9-14). A defendant could argue that these details are integral to the claimed design, and any deviation from them, such as the different handles alleged in the complaint, creates a new, non-infringing design.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendants are "contributing to and/or actively inducing others to infringe" by "selling counterfeit and infringing products to consumers in the United States" (Compl. ¶11). The prayer for relief also seeks to enjoin Defendants from aiding or abetting infringement (Compl. p. 8, ¶1(c)).
- Willful Infringement: The complaint does not explicitly allege "willful infringement." However, it does request that the Court declare the case "exceptional" and award attorneys' fees pursuant to 35 U.S.C. § 285, which is a remedy available for willful infringement or other inequitable conduct (Compl. p. 9, ¶4). The basis for this claim appears to be the alleged sale of "counterfeit" products (Compl. ¶11).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual comparison: From the perspective of an ordinary observer, are the accused power cages "substantially the same" as the ornamental design claimed in the ’504 Patent? The resolution will depend on whether the court finds the noted differences in components like handles and bars to be minor variations or material alterations to the overall design.
- A second key issue will be the impact of prior art: Although not raised in the complaint, the scope of protection afforded to the ’504 Patent design will be viewed in the context of prior art designs for fitness equipment. The degree of similarity required for a finding of infringement may be influenced by how novel and distinct the patented design is when compared to what came before it.
- A significant procedural and remedial question will be the Plaintiff’s ability to effectively pursue numerous, unidentified foreign defendants. The outcome may depend on the court's willingness to grant broad injunctive relief against the online marketplace platforms themselves, as requested in the prayer for relief, to halt the sale of the accused products (Compl. p. 8, ¶2).