1:23-cv-15369
HYTTO Pte. Ltd. v. The Partnerships and Unincorporated Associations
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: HYTTO PTE. LTD. (d/b/a "Lovense") (Singapore)
- Defendant: The Partnerships and Unincorporated Associations Identified on Schedule "A" (Jurisdiction(s) unknown, alleged to be People's Republic of China or other foreign jurisdictions)
- Plaintiff’s Counsel: McDonald Hopkins LLC; Bayes PLLC
- Case Identification: 1:23-cv-15369, N.D. Ill., 10/26/2023
- Venue Allegations: Venue is asserted on the basis that Defendants target business activities and direct e-commerce sales to consumers in the United States, including Illinois, and are therefore subject to personal jurisdiction within the district.
- Core Dispute: Plaintiff alleges that numerous unnamed e-commerce operators are selling products that infringe two of its U.S. design patents covering the ornamental appearance of its "Lush" line of remote-controlled vibrators.
- Technical Context: The case centers on the intellectual property protecting the ornamental design of consumer electronics in the adult product market, a sector where brand recognition and product aesthetics are significant commercial drivers.
- Key Procedural History: The complaint is a "Schedule A" action filed against a sealed list of numerous, unidentified defendants. This procedural posture is common in cases targeting widespread online counterfeiting networks, aiming to prevent defendants from concealing assets or dissolving their online presence upon notice of the lawsuit.
Case Timeline
| Date | Event |
|---|---|
| 2017-01-04 | D'980 Patent Priority Date |
| 2017 | Plaintiff began selling Lush Products in Illinois |
| 2017-07-25 | D'980 Patent Issue Date |
| 2021-04-26 | D'069 Patent Priority Date |
| 2022-04-05 | D'069 Patent Issue Date |
| 2023-10-26 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D792,980 - "Sexual Stimulation Device", issued July 25, 2017
The Invention Explained
- Problem Addressed: Design patents do not articulate a technical problem and solution in the manner of utility patents. They protect the novel, non-obvious ornamental appearance of an article of manufacture.
- The Patented Solution: The D'980 Patent claims the specific ornamental design for a "sexual stimulation device" (D'980 Patent, Title). The design features a smooth, elongated body with a larger, spoon-shaped head that tapers into a slender, curved handle terminating in a smaller, bulbous end (D'980 Patent, FIGs. 1-2, 7). A key visual feature is the device's ability to be held in a curved configuration, as depicted in the patent's figures (D'980 Patent, FIG. 8). The complaint reproduces these figures to illustrate the claimed design (Compl. ¶19, pp. 8-10).
- Technical Importance: The design represents a specific aesthetic choice for a personal massager, contributing to the product's overall look and feel, which is a significant factor in consumer product markets (Compl. ¶18).
Key Claims at a Glance
- The patent contains a single claim: "The ornamental design for a sexual stimulation device, as shown and described" (D'980 Patent, Claim).
- Unlike a utility patent, a design patent claim is not composed of separable elements but protects the overall visual impression of the design as a whole.
U.S. Design Patent No. D948,069 - "Massager", issued April 5, 2022
The Invention Explained
- Problem Addressed: This design patent protects the ornamental appearance of a "massager."
- The Patented Solution: The D'069 Patent claims a distinct ornamental design featuring a C-shaped, continuous loop with one larger, bulbous end and one smaller, tapered end (D'069 Patent, FIGs. 1-2, 7). The surfaces are smooth and flowing, creating a unitary, organic shape. The complaint includes images from the patent that illustrate this design, which corresponds to Plaintiff's "Lush 3" product (Compl. ¶19, pp. 11-13; p. 4).
- Technical Importance: This design provides a specific visual identity for a wearable, remote-controlled massager, differentiating it from other products in the market (Compl. ¶13).
Key Claims at a Glance
- The patent contains a single claim: "The ornamental design for a massager, as shown and described" (D'069 Patent, Claim).
- This claim protects the holistic visual appearance of the article depicted in the patent's drawings.
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are "Infringing Products" sold by the unnamed Defendants through various e-commerce stores operating under the "Seller Aliases" identified in the sealed Schedule A (Compl. ¶¶4, 26).
Functionality and Market Context
The complaint alleges that the Infringing Products are unauthorized copies of Plaintiff’s "Lush Products," which are remote-controllable vibrators that can be controlled via a smartphone application (Compl. ¶¶8, 18). The Defendants are alleged to be a network of online counterfeiters who use tactics such as operating under false identities, using multiple virtual storefronts, and originating from foreign jurisdictions to sell these products to consumers in the U.S. and Illinois (Compl. ¶¶24, 27, 32). The complaint alleges these actions trade on the goodwill and market recognition of the Plaintiff's brand and patented designs (Compl. ¶¶4, 18).
IV. Analysis of Infringement Allegations
The complaint does not contain claim charts or side-by-side visual comparisons of the patented designs and the accused products. The infringement allegations are based on general assertions that the Defendants' products embody the claimed designs. The legal test for design patent infringement is whether an "ordinary observer," familiar with the prior art, would be deceived into believing the accused design is the same as the patented design.
D'792 Patent Infringement Allegations
The complaint alleges that Defendants are making, using, offering for sale, and/or importing products that directly and/or indirectly infringe the ornamental design claimed in the '980 Patent (Compl. ¶40). To illustrate the patented design, the complaint provides figures from the patent itself, including a side view of the elongated, spoon-like device (Compl. ¶19, p. 8). The infringement allegation rests on the claim that the Defendants' products are copies that create a visual impression substantially the same as this patented design in the eyes of an ordinary observer. The complaint does not contain photographic evidence of the accused products to allow for a direct comparison.
D'069 Patent Infringement Allegations
Similarly, the complaint alleges that Defendants' acts infringe the ornamental design claimed in the '069 Patent (Compl. ¶44). The complaint presents figures from the patent showing the claimed C-shaped, looped design (Compl. ¶19, p. 11). Another visual in the complaint advertises Plaintiff's "Lush 3" product, which embodies this design (Compl. p. 4). The core of the allegation is that the Defendants' products are unauthorized copies that an ordinary observer would find to be substantially the same as the design claimed in the '069 patent. As with the other patent, the complaint does not provide images of the specific products sold by Defendants.
Identified Points of Contention
- Factual Question: The central issue for infringement is a factual one: do the products actually sold by each of the anonymous Defendants embody a design that is substantially the same as the designs claimed in the '980 and '069 patents?
- Evidentiary Question: A key challenge for the Plaintiff will be to obtain and present evidence (e.g., through test purchases) linking each specific Defendant to the sale of a product and demonstrating that its design infringes. The distributed and anonymous nature of the alleged infringing network complicates this evidentiary burden.
V. Other Allegations
Indirect Infringement
The complaint makes passing reference to "indirectly" infringing the patents and seeks to enjoin "aiding, abetting, contributing to, or otherwise assisting anyone in infringing upon the Lush Designs" (Compl. ¶¶40, 44; Prayer for Relief ¶A.b). However, the factual allegations in the body of the complaint focus on the Defendants' own alleged acts of making, selling, and importing, which constitute direct infringement.
Willful Infringement
The complaint explicitly alleges that the Defendants' infringement was willful (Compl. ¶35). The stated basis for this claim is the allegation that Defendants are "working in active concert to knowingly and willfully manufacture, import, distribute, offer for sale, and sell Infringing Products" that are copies of Plaintiff's well-known designs (Compl. ¶34).
VI. Analyst’s Conclusion: Key Questions for the Case
- A primary procedural question will be one of jurisdiction and enforcement: can the Plaintiff effectively identify, serve, and secure an enforceable judgment against the numerous, anonymous, and allegedly foreign-based e-commerce operators listed in the sealed Schedule A? The success of the case hinges on the court's ability to exercise jurisdiction over these entities and the third-party service providers they use.
- A central evidentiary question will be one of visual identity and attribution: for each Defendant, can the Plaintiff produce evidence demonstrating that the specific product sold is, in the view of an ordinary observer, substantially the same as the ornamental designs claimed in the '980 and '069 patents? The case's outcome will depend on the Plaintiff's ability to link infringing articles to each of the many named Defendants in the network.