DCT

1:23-cv-04587

Zhaoshi v. Partnerships Unincorp Associations

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I. Executive Summary and Procedural Information

  • Case Name: Zhaoshi Tang v. The Partnerships and Unincorporated Associations Identified on Schedule A
  • Plaintiff’s Counsel: DeWitty and Associates
  • Case Identification: 1:23-cv-04587, N.D. Ill., 07/14/2023
  • Venue Allegations: Venue is alleged to be proper in the Northern District of Illinois because Defendants target and conduct business with consumers in Illinois through interactive commercial websites.
  • Core Dispute: Plaintiff alleges that Defendants' "iron frame" products, sold through various online storefronts, infringe a U.S. design patent covering the ornamental appearance of such a frame.
  • Technical Context: The dispute is in the consumer goods sector, specifically concerning the ornamental design of a hanging storage basket or shelf sold via e-commerce platforms.
  • Key Procedural History: The complaint alleges that the various unnamed defendants are an "interrelated group of infringers" who use fictitious names and other tactics to conceal their identities and evade enforcement. Plaintiff notes its intent to amend the complaint if Defendants' true identities are revealed.

Case Timeline

Date Event
2021-03-24 ’221 Patent Priority Date (Filing Date)
2021-08-10 ’221 Patent Issue Date
2023-07-14 Complaint Filing Date

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

U.S. Patent No. D927,221 - "IRON FRAME," issued August 10, 2021

The Invention Explained

  • Problem Addressed: Design patents do not solve technical problems but protect the novel ornamental appearance of an article of manufacture. The patent secures rights to a specific aesthetic design for an "iron frame" (U.S. Patent No. D927,221, Title).
  • The Patented Solution: The patent protects the ornamental design for a hanging storage basket. The claimed design, depicted in solid lines in the patent's figures, consists of a rectangular, open-topped frame with vertical corner posts and three horizontal bars forming the front, back, and side railings ('221 Patent, FIGs. 1-8). Critically, the patent’s description explicitly states that features shown in broken lines—including the large hanging hooks, the floor of the basket, and the stylized word "home" on the front—"form no part of the claimed design" ('221 Patent, Description).
  • Technical Importance: The complaint alleges that Plaintiff's product embodying the design was the "first to market" and has established a reputation for quality (Compl. ¶5).

Key Claims at a Glance

  • Design patents have a single claim. The asserted claim is for "The ornamental design for an iron frame, as shown and described" ('221 Patent, Claim).
  • The essential visual elements of the claimed design, as depicted in solid lines, are:
    • A rectilinear, cage-like frame structure.
    • Front, back, and side walls each composed of three parallel, horizontal bars.
    • Vertical support members at the corners and along the back.

III. The Accused Instrumentality

  • Product Identification: The accused instrumentalities are "Infringing Products" described as infringing the patented "IRON FRAME" design (Compl. ¶3, ¶20). These products are allegedly sold by Defendants through numerous "Defendant Internet Stores" operating on online marketplaces (Compl. ¶2, ¶8). The specific storefronts are identified in a sealed "Schedule A" and the specific products are referenced in an "Exhibit B," neither of which were publicly filed with the complaint (Compl. ¶1, ¶8).
  • Functionality and Market Context: The complaint describes the accused products as "hooks designed in accordance with the '221 Patent" (Compl. ¶5). It alleges that Defendants use the same product images and text as Plaintiff's own listings, suggesting the accused products are intended to be direct copies of Plaintiff's commercial product (Compl. ¶12). A perspective view of the patented 'iron frame' design is presented in the complaint as Image 1 (Compl. p. 4, Image 1).

IV. Analysis of Infringement Allegations

The complaint does not contain a claim chart, which is typical for design patent cases. The infringement allegation rests on 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 that Defendants sell products that are a "reproduction, copy or colorable imitation of the design claimed in the Patented Design" (Compl., Prayer for Relief ¶1(a); Compl. ¶20).

The core of the infringement inquiry will be a visual comparison between the accused products and the design claimed in the '221 Patent. The complaint alleges that Defendants' products infringe the design (Compl. ¶20), suggesting their overall appearance is substantially the same as that shown in the patent's figures.

  • Identified Points of Contention:
    • Scope Questions: The most significant legal and factual question will be the proper application of the ordinary observer test in light of the patent's disclaimers. The court will have to determine whether an ordinary observer would find the accused products substantially similar to only the claimed solid-line frame, while ignoring the prominent, but disclaimed, hooks and "home" lettering.
    • Technical Questions: An evidentiary question is whether the accused products are, in fact, visually identical or substantially similar to the claimed design. The complaint alleges this but does not provide public-facing visual evidence of the accused products themselves for comparison (Compl. ¶8).

V. Key Claim Terms for Construction

In design patent litigation, the "claim" is the visual design itself, so claim construction focuses on the scope of the design as depicted in the drawings rather than on textual terms.

  • The "Term": The scope of the "ornamental design for an iron frame," particularly the distinction between the claimed elements (solid lines) and unclaimed environment (broken lines).
  • Context and Importance: This distinction is dispositive for the infringement analysis. The patent holder will argue for infringement based on the claimed frame, while the defendant will likely argue that any perceived similarity comes from the unclaimed, and therefore unprotected, features like the hooks or lettering. Practitioners may focus on this term because the Federal Circuit has held that while disclaimed matter is not part of the protected design, it can be used to provide context for the claimed design.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A party might argue that the claimed solid-line frame constitutes the dominant visual impression of the design, and therefore any product incorporating that frame infringes, regardless of what other unclaimed features are attached. The overall configuration of the railings and supports could be argued as the design's core identity.
    • Evidence for a Narrower Interpretation: The patent provides exceptionally clear evidence for a narrow interpretation of the claim's scope. The description explicitly states, "The broken lines shown in the drawings depict portions of the iron frame in which the design is embodied that form no part of the claimed design" ('221 Patent, Description). This language serves as a direct and unambiguous disclaimer of the hooks, floor, and lettering, limiting the protected design strictly to the elements shown in solid lines.

VI. Other Allegations

  • Indirect Infringement: The complaint makes passing references to indirect infringement and "aiding, abetting, [or] contributing to" infringement (Compl. ¶9, ¶20; Prayer for Relief ¶1(b)). However, the factual allegations focus on Defendants as direct sellers who "offer for sale, sell, and/or import" the accused products, which is a theory of direct infringement (Compl. ¶20). The complaint does not provide specific facts to support a separate claim for either induced or contributory infringement.
  • Willful Infringement: The complaint alleges that Defendants' infringement was "knowingly and willfully" and "willful" (Compl. ¶9, ¶16, ¶17). The factual basis for this allegation appears to be the assertion that Defendants operate as an "interrelated group," use tactics to conceal their identities, and use "the same product images" and "content copied from Plaintiff’s original product listings," which suggests deliberate copying of the design (Compl. ¶9, ¶12).

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

  1. Scope and the Ordinary Observer: A core issue will be one of design scope: can Plaintiff prove that an ordinary observer, properly instructed to disregard the disclaimed hooks and lettering, would still find the accused products' designs to be substantially the same as the claimed solid-line frame of the '221 Patent? The outcome may depend on whether the claimed frame alone creates a distinct visual impression that the accused products have appropriated.

  2. Attribution and Evidence: A key threshold question will be one of evidentiary proof: can Plaintiff successfully demonstrate that the various anonymous online storefronts are a single "interrelated group" (Compl. ¶9) and that the products they sell are, in fact, the infringing articles as alleged? Without this link, liability and enforcement may be difficult to establish across the board.