Wang v. Partnerships Unincorp Associations

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Yuxi Wang (China, PRC)
  • Defendant: The Partnerships and Unincorporated Associations identified on Schedule A (Various Jurisdictions, including China, PRC)
  • Plaintiff’s Counsel: DeWitty and Associates
• Case Identification: 1:23-cv-06420, N.D. Ill., 08/29/2023
• Venue Allegations: Venue is based on allegations that Defendants operate interactive commercial websites targeting consumers in the United States, including Illinois, and have made sales of accused products to residents of Illinois.
• Core Dispute: Plaintiff alleges that numerous online retailers are selling male chastity devices that infringe the ornamental designs claimed in two of Plaintiff's U.S. design patents.
• Technical Context: The case involves the ornamental design of male chastity devices, a consumer product sold in the adult novelty and medical device markets.
• Key Procedural History: The complaint frames this action as a measure against a network of online infringers who allegedly operate under fictitious names and use various tactics to conceal their identities and evade enforcement. No prior litigation, licensing, or administrative proceedings are mentioned.

Case Timeline

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

U.S. Design Patent No. D921,182 - "Male Chastity Device"

• Patent Identification: U.S. Design Patent No. D921182, "Male Chastity Device," issued June 1, 2021. (Compl. ¶3; ’182 Patent, cover).

The Invention Explained

• Problem Addressed: Design patents do not articulate a technical problem and solution. Their purpose is to protect a new, original, and ornamental design for an article of manufacture. (Compl. ¶3).
• The Patented Solution: The patent claims the specific ornamental appearance of a male chastity device as depicted in its figures. (’182 Patent, CLAIM). The design features a two-piece construction, comprising a cage-like "tube" and a separate "adjusting ring," which are shown assembled and disassembled. (’182 Patent, Fig. 8). Key visual elements include the smooth, flowing curves of the cage, the specific shape and placement of ventilation openings, and the contoured, downward-sweeping form of the ring.
• Technical Importance: The complaint alleges that the Plaintiff's product, designed in accordance with the patent, was "first to market" and has an "established reputation," suggesting the design's perceived value is in its market distinctiveness. (Compl. ¶5).

Key Claims at a Glance

• The patent contains a single claim for "The ornamental design for a male chastity device, as shown and described." (’182 Patent, CLAIM).
• The claim's scope is defined by the solid lines in the eight figures of the patent.

U.S. Design Patent No. D969,303 - "Male Chastity Device"

• Patent Identification: U.S. Design Patent No. D969303, "Male Chastity Device," issued November 8, 2022. (Compl. ¶3; ’303 Patent, cover).

The Invention Explained

• Problem Addressed: As with the ’182 Patent, the goal is the protection of a new and ornamental design for an article of manufacture. (Compl. ¶3).
• The Patented Solution: The patent claims the ornamental design for a male chastity device shown in its figures. (’303 Patent, CLAIM). This design also consists of a tube and a ring, but presents a different overall aesthetic compared to the ’182 Patent. Distinguishing features include a more bulbous cage, a prominent, integrated locking mechanism at the top, differently shaped side openings, and a more circular and uniformly thick ring. (’303 Patent, Figs. 1, 8).
• Technical Importance: The complaint groups this patent with the ’182 Patent in its allegations regarding market position and reputation. (Compl. ¶5).

Key Claims at a Glance

• The patent contains a single claim for "The ornamental design for a male chastity device, as shown and described." (’303 Patent, CLAIM).
• The scope of the claim is defined by the visual appearance depicted in the patent's eight figures.

III. The Accused Instrumentality

Product Identification

• The accused instrumentalities are "Male Chastity Device" products sold by the Defendants through numerous "Defendant Internet Stores." (Compl. ¶3, ¶8).

Functionality and Market Context

• The complaint alleges that Defendants operate a network of online stores on platforms such as Amazon, eBay, and Walmart, which sell products that copy Plaintiff's patented designs. (Compl. ¶3, ¶5, ¶15). These stores are alleged to be part of an interrelated group that uses common tactics, such as copying product images and text from Plaintiff's own listings, to market and sell the accused products. (Compl. ¶9, ¶12). The complaint includes cover images from the patents-in-suit, suggesting the accused products are visually identical to the patented designs. (Compl. p. 4). This image from the complaint shows the perspective view of the '182 patented design. (Compl. p. 4).

IV. Analysis of Infringement Allegations

The core of a design patent infringement claim rests on the "ordinary observer" test, which asks whether an ordinary observer, giving such attention as a purchaser usually gives, would be deceived into purchasing the accused product believing it to be the patented design. The complaint alleges that Defendants' products are a "reproduction, copy or colorable imitation" of the patented designs. (Prayer for Relief ¶1.a).

D921,182 Infringement Allegations

D969,303 Infringement Allegations

Identified Points of Contention

• Visual Similarity: The central dispute will be a visual one: are the accused products, when viewed as a whole, substantially the same as the designs claimed in the ’182 and ’303 patents? The complaint's allegation that Defendants use Plaintiff's own product imagery suggests a high degree of similarity, but this will be an evidentiary question for the court. (Compl. ¶12).
• Scope Questions: It is a question for the court whether the accused products infringe one or both of the asserted designs. The analysis will require a side-by-side comparison of the accused products against the figures of each patent to determine if the specific ornamental features of each design are present in the accused products.

V. Key Claim Terms for Construction

Formal claim construction is less frequent in design patent litigation because the claim is understood to be defined by the drawings. However, the title of the patent can be relevant for defining the scope of the article of manufacture.

• The Term: "male chastity device"
• Context and Importance: This phrase, from the title of both patents, defines the article of manufacture to which the ornamental designs are applied. (’182 Patent, Title; ’303 Patent, Title). Its interpretation defines the field of the invention and the scope of prior art that would be considered by the ordinary observer. In this case, there appears to be no dispute that the accused products are also "male chastity devices," so the construction of this term is unlikely to be a point of major contention.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The complaint does not provide evidence for a broader interpretation.
  • Evidence for a Narrower Interpretation: The figures in both patents provide a clear, specific visual definition of what constitutes a "male chastity device" within the context of the claimed designs. (’182 Patent, Figs. 1-8; ’303 Patent, Figs. 1-8).

VI. Other Allegations

• Indirect Infringement: The complaint alleges both direct and indirect infringement. (Compl. ¶9, ¶16, ¶20). The prayer for relief also seeks to enjoin aiding and abetting. (Prayer for Relief ¶1.b). The factual allegations, however, focus primarily on the Defendants’ direct acts of making, using, selling, offering to sell, and importing the accused products.
• Willful Infringement: Willfulness is explicitly alleged. (Compl. ¶17). The complaint asserts this is based on Defendants "knowingly and willfully" infringing as part of an "interrelated group of infringers working in active concert." (Compl. ¶9, ¶16). The allegations of using tactics to conceal identities and copying Plaintiff's own marketing materials may be used to support the claim of willfulness. (Compl. ¶11, ¶12).

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

1. Evidentiary Proof of Infringement: The central issue will be a visual comparison. The primary question is whether the actual products sold by the Defendants are, from the perspective of an ordinary observer, substantially the same as the ornamental designs depicted in the ’182 and ’303 patents. The case may turn on the evidence presented in the sealed Exhibit C and the degree of similarity it reveals.

2. Enforcement and Remedies: Given the allegations that Defendants are a large, diffuse network of foreign-based online sellers using tactics to evade identification, a key practical question is one of remedy. Assuming infringement is established, can the Plaintiff effectively enforce an injunction and recover damages—including Defendants' total profits as allowed for design patents under 35 U.S.C. § 289—against such a group?

3. Scope of Individual Designs: A legal question for the court will be the application of the two distinct patented designs. The analysis will need to determine if the accused products are similar enough to infringe one, or both, of the asserted designs, and how the specific visual differences between the ’182 and ’303 patents affect the infringement analysis for each.