1:23-cv-14915
Hexin Holdings Ltd v. Parties
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Hexin Holding Limited (Hong Kong)
- Defendant: The Individuals, Business Entities, Partnerships and Unincorporated Associations Identified on Schedule “A” (Peoples Republic of China or other foreign jurisdictions)
- Plaintiff’s Counsel: YK Law LLP
- Case Identification: 1:23-cv-14915, N.D. Ill., 05/08/2024
- Venue Allegations: Venue is asserted based on Defendants being aliens and directing business activities, including sales and shipments of accused products, to consumers within the United States and the district.
- Core Dispute: Plaintiff alleges that numerous unidentified e-commerce operators are infringing its U.S. design patent and registered copyrights related to women's shapewear.
- Technical Context: The dispute centers on the ornamental design of a corset-style waist belt, a product within the competitive direct-to-consumer shapewear market.
- Key Procedural History: The action is an Amended Complaint filed against a schedule of unidentified "John Doe" defendants, a common procedural posture in cases targeting alleged counterfeiters operating through anonymous online storefronts. The complaint alleges these operators use tactics to conceal their identities and evade enforcement.
Case Timeline
| Date | Event |
|---|---|
| 2021-08-30 | '078 Patent Application Filing Date (Priority Date) |
| 2023-03-21 | U.S. Design Patent No. D981,078 S Issued |
| 2024-05-08 | Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D981,078 S - "Corset Belt," issued March 21, 2023
The Invention Explained
- Problem Addressed: Design patents protect aesthetics rather than function. The patent does not describe a technical problem, but instead provides a novel ornamental design for an article of manufacture, in this case, a corset belt. (D'078 Patent, Title, FIGS. 1-8).
- The Patented Solution: The patent claims the specific visual appearance of a corset belt as depicted in its figures. The design features the overall shape and surface contours of the belt, which is shown as a wide, wraparound garment. (’078 Patent, FIGS. 1, 8). Crucially, the patent’s description explicitly states that certain broken lines representing sewing thread are part of the claimed ornamental design, distinguishing them from other broken lines (depicting a mannequin) which are for environmental context only. (’078 Patent, Description).
- Technical Importance: The significance of the design is its creation of a distinct aesthetic appearance for a consumer product in the fashion and apparel sector. (Compl. ¶6).
Key Claims at a Glance
- Design patents have a single claim. The asserted claim is: "The ornamental design for a corset belt, as shown and described." (’078 Patent, Claim).
- The scope of this claim is defined by the visual representations in Figures 1-8 of the patent, which holistically constitute the claimed design.
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are shapewear products sold by the unidentified Defendants through various e-commerce stores. (Compl. ¶¶1, 18).
Functionality and Market Context
The complaint describes the accused products as "a stretchable corset belt having a loop on one end and sticky tapes on the other end, featuring an hourglass style." (Compl. ¶41). It alleges these products are sold through sophisticated-appearing online storefronts that are difficult for consumers to distinguish from authorized retailers. (Compl. ¶20). Plaintiff alleges that Defendants operate under fictitious aliases to conceal their identities and sell infringing goods. (Compl. ¶¶17, 24).
IV. Analysis of Infringement Allegations
The standard for design patent infringement is 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 this standard is met. (Compl. ¶41). The complaint provides screenshot evidence of the alleged patent infringement in an attached exhibit, which it claims identifies the infringing products for each defendant. (Compl. ¶42, Exhibit 6).
D'078 Patent Infringement Allegations
| Claim Element (from the Single Claim) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a corset belt, as shown and described. | Defendants' shapewear products are alleged to present an appearance that is "substantial similar, if not the same, to Hexin Patented Design to the eye of an ordinary observer." The complaint alleges the products are stretchable corset belts that create an "hourglass style." | ¶41 | Claim; FIGS. 1-8 |
- Identified Points of Contention:
- Scope Questions: A central question will be whether the overall visual impression of the accused products is substantially the same as that of the '078 Patent's drawings. This will involve comparing the products shown in the complaint's exhibits with the holistic design claimed in the patent.
- Technical Questions: The infringement analysis will turn on a visual comparison. The court will need to determine if any differences between the accused products and the patented design are minor enough that they do not alter the overall ornamental appearance perceived by an ordinary observer.
V. Key Claim Terms for Construction
In design patent litigation, formal claim construction is less common than in utility patent cases, as the drawings themselves typically define the claim scope. However, disputes may arise over what features shown in the drawings are part of the claimed design.
- The Term: "The ornamental design for a corset belt"
- Context and Importance: The scope of the design is defined by what is shown in solid lines in the drawings, as well as specific elements shown in broken lines that are expressly included in the design. Practitioners may focus on the patent’s explicit statement regarding the sewing thread, as this could be a key point of distinction or similarity.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that the claim covers any corset belt with the same overall visual impression, and that minor variations in stitching or texture do not defeat infringement if the holistic appearance is captured.
- Evidence for a Narrower Interpretation: The patent specification states, "The broken lines shown in FIG. 1, FIG. 2, FIG. 3 and FIG. 8 on the corset belt represent sewing thread which forms part of the claimed design." (’078 Patent, Description). A party could argue that this specific sewing thread pattern is a required limitation of the claimed design, and a product lacking this exact pattern would not infringe.
VI. Other Allegations
- Indirect Infringement: The complaint makes a conclusory allegation of direct and/or indirect infringement. (Compl. ¶41). However, it does not plead specific facts to support theories of induced or contributory infringement, such as knowledge of the patent and specific intent to encourage infringement by others. The allegations focus on the Defendants' own acts of selling.
- Willful Infringement: The complaint does not use the term "willful" in its patent infringement count (Count II). It alleges Defendants are "aware of Hexin Products" (Compl. ¶15) and that their conduct is "wrongful" (Compl. ¶43), but does not specifically allege pre-suit knowledge of the '078 patent itself. The prayer for relief seeks enhanced damages and attorneys' fees, which may require a showing of egregious or willful conduct. (Compl. ¶¶(3), (5)).
VII. Analyst’s Conclusion: Key Questions for the Case
A primary procedural challenge will be one of identification and enforcement: can the plaintiff successfully use the discovery process to unmask the anonymous "Schedule A" defendants, establish personal jurisdiction, and enforce a potential judgment against entities allegedly operating from foreign jurisdictions?
The core substantive issue will be one of ornamental similarity: does the overall visual appearance of the accused products create the same impression as the claimed design in the mind of an ordinary observer? This analysis may hinge on the level of detail considered, particularly whether the specific sewing thread pattern, explicitly claimed as part of the design, is present in the accused products.
Should infringement be found, a key question for remedies will involve the application of 35 U.S.C. § 289, which allows a patentee to recover the infringer's total profit from the sale of articles bearing the patented design. The case may therefore involve disputes over calculating and potentially apportioning the defendants' profits.