1:23-cv-15209
Shenzhen Zhierle Technology Co Ltd v. Yingxiang Fu
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Shenzhen Zhierle Technology Co., Ltd. (People's Republic of China)
- Defendant: Yingxiang Fu (People's Republic of China)
- Plaintiff’s Counsel: Ge (Linda) Lei
- Case Identification: 1:23-cv-15209, N.D. Ill., 10/22/2023
- Venue Allegations: Venue is alleged to be proper in any judicial district because the Defendant is a foreign entity.
- Core Dispute: Plaintiff seeks a declaratory judgment that its multifunction tools do not infringe Defendant’s design patent, and that the patent is invalid as anticipated by prior art and unenforceable due to inequitable conduct.
- Technical Context: The dispute concerns the ornamental design of handheld multifunction tools, a highly competitive product category in the consumer e-commerce market.
- Key Procedural History: The complaint alleges that this declaratory judgment action was precipitated by Defendant filing numerous patent infringement complaints against Plaintiff with Amazon.com between December 2022 and February 2023, resulting in the removal of Plaintiff's products from the Amazon Marketplace. The complaint also alleges the patent is unenforceable because the inventor failed to disclose his own, earlier-filed and substantially similar Chinese patent application to the U.S. Patent and Trademark Office during prosecution.
Case Timeline
| Date | Event |
|---|---|
| 2018-03-15 | Filing date of Defendant's alleged Chinese patent application |
| 2018-05-19 | Alleged sale date of "Haoxiang" branded prior art tool |
| 2019-09-30 | Alleged first availability date of "VEITORLD" prior art tool |
| 2020-07-13 | U.S. Design Patent No. D962,740S application filing date |
| 2022-09-06 | U.S. Design Patent No. D962,740S issue date |
| 2022-12-07 | Alleged start of Defendant's infringement complaints to Amazon |
| 2023-10-22 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D962,740S - “Multifunctional Tool”
The patent at issue is U.S. Design Patent No. D962,740S, issued September 6, 2022.
The Invention Explained
- Problem Addressed: As a design patent, the D'740 Patent does not describe a technical problem in its specification. Its purpose is to protect a novel, original, and ornamental design for an article of manufacture, in this case, a multifunction tool (D’740 Patent, Claim).
- The Patented Solution: The patent claims the specific visual appearance of a multifunction tool. The design's overall aesthetic is defined by the combination of its features as depicted in nine figures, including a hammer head with a claw, plier jaws integrated into the handle, and a series of tools that fold out from the opposing handle (D’740 Patent, Figs. 1, 9). Key ornamental features include the shape of the handles, the placement of fasteners, and the configuration of the various tools in both stowed and deployed positions (D’740 Patent, Figs. 1-9).
- Technical Importance: The claimed design provides a distinct ornamental appearance for a multifunction tool, intended to distinguish it visually from other tools in the marketplace (D’740 Patent, Claim).
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a multifunctional tool, as shown and described" (D’740 Patent, Claim; Compl. ¶12).
- The "elements" of a design claim are the visual characteristics of the design as a whole, depicted in the patent’s drawings.
III. The Accused Instrumentality
Product Identification
The complaint identifies "Zhierle's Products" as a line of multifunction tools sold on Amazon.com under at least twelve different Amazon Standard Identification Numbers (ASINs) (Compl. ¶19). A representative example of Zhierle's product is shown in the complaint (Compl. ¶13).
Functionality and Market Context
The products are multifunction hand tools manufactured by Plaintiff and distributed in the United States through online channels, primarily the Amazon Marketplace (Compl. ¶¶4, 13). The complaint alleges that selling on Amazon is essential for any retailer to effectively compete in the U.S. market (Compl. ¶15). An image of one of Zhierle's accused multifunction tools is included in the complaint, displaying a hammer, pliers, and various fold-out implements (Compl. ¶13).
IV. Analysis of Infringement Allegations
The complaint, a declaratory judgment action, does not contain a detailed, element-by-element infringement analysis or claim chart. Instead, it seeks a declaration of non-infringement. The primary basis for this request is intertwined with the complaint’s invalidity arguments. Plaintiff's central theory of non-infringement is that its products cannot infringe because the patented design is predated by nearly identical prior art, and that "Zhierle's accused products cannot infringe when the design is more similar to prior art than to patented design" (Compl. ¶28).
To support its invalidity and non-infringement positions, the complaint provides visual comparisons between the patented design and alleged prior art. For example, the complaint displays an image of a prior art tool sold under the VEITORLD brand, first available in 2019, which it claims is "virtually identical" to the patented design (Compl. ¶¶ 22, 24). The complaint presents a side-by-side comparison of Figure 9 of the ’740 Patent with an image of this alleged prior art tool to illustrate the purported similarities (Compl. ¶23). It makes a similar argument regarding a "Haoxiang" branded tool, allegedly sold as early as May 2018 (Compl. ¶¶ 25-26).
- Identified Points of Contention:
- Scope Questions: The primary legal question for infringement in a design patent case 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 frames this by arguing that the existence of nearly identical prior art makes such deception impossible and renders the patented design invalid.
- Technical Questions: A dispositive factual question will be the degree of visual similarity between Zhierle's products, the D’740 Patent's figures, and the alleged prior art tools. The complaint provides an image of the VEITORLD prior art product with its various tools deployed (Compl. ¶22), which it asserts is "equivalent to Fig. 9 of the '740 Patent" (Compl. ¶23). The court will need to compare the overall visual impressions of these three designs (Plaintiff's product, Defendant's patent, and the prior art).
V. Key Claim Terms for Construction
This section is not applicable. The D’740 Patent is a design patent with a single claim to the ornamental design as shown in the drawings. The complaint does not raise any disputes over the meaning of specific words or terms that would require claim construction.
VI. Other Allegations
Indirect Infringement
Plaintiff seeks a declaratory judgment that it does not infringe either directly or indirectly under 35 U.S.C. §§ 271(b) and (c), but the complaint does not detail any specific allegations of indirect infringement made by the Defendant (Compl. ¶40).
Inequitable Conduct
The complaint alleges that the D’740 Patent is unenforceable due to inequitable conduct during prosecution (Compl. ¶¶ 29-33, 45-47). The basis for this allegation is the Defendant's purported failure to disclose his own, earlier-filed Chinese patent application (201820351008.6) to the USPTO (Compl. ¶31). The complaint alleges this application was filed on March 15, 2018, is "substantially similar to the claimed design," and would have been material to the U.S. examiner's patentability determination (Compl. ¶¶ 31-32). It further alleges that the Defendant, as the inventor on both applications, knew of the Chinese application and "intentionally and deliberately decided to withhold the information" (Compl. ¶33, 46).
VII. Analyst’s Conclusion: Key Questions for the Case
This declaratory judgment action appears to center on three fundamental questions for the court:
- A threshold question will be one of validity: Do the prior art multifunction tools identified by Plaintiff—specifically the VEITORLD and Haoxiang products allegedly on sale more than one year prior to the patent's 2020 filing date—render the D'740 patent's design anticipated under 35 U.S.C. § 102 or obvious under § 103?
- Should the patent be found valid, the infringement analysis will turn on a question of visual similarity: Applying the "ordinary observer" test, and considering the prior art, is the design of Zhierle's accused products substantially the same as the design claimed in the D'740 patent?
- A third dispositive issue will be one of unenforceability: Did the patentee commit inequitable conduct by intentionally withholding his allegedly material, earlier-filed Chinese patent application from the U.S. patent examiner with an intent to deceive?