1:23-cv-15745
Yahee Tech Corp v. Maison Arts Special Co Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Yahee Technologies Corp. (California)
- Defendant: Maison Arts Special Co., Ltd. (People's Republic of China)
- Plaintiff’s Counsel: ShinyRise PLLC
- Case Identification: 1:23-cv-15745, N.D. Ill., 11/07/2023
- Venue Allegations: Venue is alleged to be proper based on the defendant being a foreign company that solicits business in the district through e-commerce platforms like Amazon and Wayfair.
- Core Dispute: Plaintiff seeks a declaratory judgment that its barstool products do not infringe Defendant's design patent and that the patent is invalid, and further alleges tortious interference based on Defendant's use of Amazon's infringement reporting system to remove Plaintiff's products.
- Technical Context: The dispute concerns the ornamental design of barstools, a product category within the competitive online furniture market.
- Key Procedural History: The complaint alleges that immediately after its design patent was issued, Defendant reported Plaintiff to Amazon, causing Plaintiff's product listings to be deactivated. Plaintiff alleges these reports were made in bad faith, as Defendant knew or should have known of invalidating prior art.
Case Timeline
| Date | Event |
|---|---|
| 2018-12-13 | Alleged first date of availability for invalidating prior art ("Nathan James" barstool) |
| 2019-05-02 | Alleged delivery date of prior art to consumers, based on customer review |
| 2021-01-22 | D'356 Patent Priority Date (based on Chinese application) |
| 2021-02-01 | D'356 Patent U.S. Filing Date |
| 2022-01-03 | Alleged first date of sale for Plaintiff's accused barstools |
| 2023-08-08 | D'356 Patent Issue Date |
| 2023-08-XX | Defendant allegedly reports Plaintiff's products to Amazon for infringement |
| 2023-11-07 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D994,356 - Bar Stool
- Patent Identification: U.S. Design Patent No. D994,356, "Bar Stool," issued August 8, 2023 (the “’356 Patent”).
The Invention Explained
- Problem Addressed: As a design patent, the ’356 Patent does not describe a technical problem or solution; its purpose is to protect the novel, ornamental appearance of an article of manufacture (D’356 Patent, Title).
- The Patented Solution: The patent claims the specific ornamental design for a barstool as depicted in its seven figures (D’356 Patent, Figs. 1-7). The claimed design features a square, backless, cushioned seat atop a four-legged metal frame. The legs appear to be square tubing and are connected by horizontal supports on all four sides, with an additional set of crossed supports connecting the lower portion of the legs (D’356 Patent, Fig. 1).
- Technical Importance: The design reflects an industrial or modern aesthetic, which is a significant commercial style in the furniture market (Compl. ¶21).
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is: "The ornamental design for a bar stool, as shown and described" (D’356 Patent, Claim).
- The scope of this claim is defined by the visual appearance of the barstool as shown in the solid lines of the patent's drawings (D’356 Patent, Figs. 1-7).
- The complaint seeks a declaration of non-infringement and invalidity of the patent as a whole (Compl. ¶¶ 39-46).
III. The Accused Instrumentality
Product Identification
The "Accused Products" are certain barstools sold by Plaintiff Yahee Technologies Corp. on its "YaheeTach" Amazon storefront (Compl. ¶21). The complaint identifies specific products by their Amazon Standard Identification Numbers (ASINs) (Compl. ¶29).
Functionality and Market Context
The complaint describes the accused products as "barstools" and provides a photo of a four-pack of the items (Compl. ¶22). This image depicts a backless barstool with a cushioned seat and a dark metal frame, consistent with the product category at issue. The complaint alleges that the majority of U.S. sales for these products occur on the Amazon marketplace and that their removal has caused significant financial loss (Compl. ¶33).
IV. Analysis of Infringement Allegations
The complaint’s request for a declaratory judgment of non-infringement is not based on a comparative analysis between the Plaintiff’s product design and the patented design. Instead, the complaint's sole argument for non-infringement is that the ’356 Patent is invalid. The pleading asserts that "it is axiomatic that one cannot infringe an invalid patent because there is nothing to infringe upon" (Compl. ¶45).
The primary focus of the complaint is therefore its separate count for a declaratory judgment of patent invalidity under 35 U.S.C. § 102 (Compl. ¶¶ 39-43). The complaint alleges that the claimed design is anticipated by prior art that was on sale more than one year before the patent's February 1, 2021 filing date (Compl. ¶41). To support this, the complaint provides a side-by-side visual comparison of the patented design and an allegedly prior art "Nathan James" brand barstool, which it claims has been on the market since December 13, 2018 (Compl. ¶41).
To substantiate the prior art date, the complaint includes a screenshot of a customer review for the "Nathan James" barstool, dated May 2, 2019, which includes a photo of the product in a consumer's home (Compl. ¶24).
- Identified Points of Contention:
- Anticipation: A central question will be whether the evidence presented, such as Amazon product listings and customer reviews, is sufficient to establish by clear and convincing evidence that the "Nathan James" barstool was "on sale" or otherwise publicly available before the critical date (one year prior to the patent's effective filing date) (Compl. ¶¶ 23, 41).
- Identity of Designs: The invalidity claim depends on whether the design of the prior art barstool is identical in all material respects to the design claimed in the ’356 Patent. The complaint alleges the designs are "identical" (Compl. ¶42). A court would analyze this question from the perspective of an ordinary observer. The complaint's side-by-side comparison directly invites this analysis (Compl. ¶41).
V. Key Claim Terms for Construction
In a design patent case, the "claim" is the visual design itself as depicted in the drawings, rather than a set of text-based limitations. Therefore, traditional claim construction focused on defining specific words is not the central exercise.
The key legal analysis, for both infringement and anticipation, is the "ordinary observer" test. This test asks whether an ordinary observer, familiar with the prior art, would be deceived into believing the accused design (or prior art design) is the same as the patented design. The dispute will not turn on the definition of a single term, but on the overall visual similarity between the design in the ’356 Patent’s figures and the alleged prior art "Nathan James" barstool (Compl. ¶41). Practitioners may focus on whether minor or subtle differences, if any, between the prior art and the patented drawings are sufficient to create a different overall visual impression. The complaint's position is that there are no such differences (Compl. ¶42).
VI. Other Allegations
- Indirect Infringement: The complaint makes no specific factual allegations regarding indirect infringement. It only requests a declaration of non-infringement "either directly or indirectly" in its prayer for relief (Compl. ¶53(b)).
- Willful Infringement: This allegation is not applicable, as it is asserted by a patentee. However, the complaint makes related allegations of "bad faith" against the Defendant (the patentee). It alleges that Defendant's infringement claims to Amazon were "knowingly and objectively false" and "frivolous" because Defendant "knew or should have known" that prior sales of an identical design rendered its patent invalid (Compl. ¶¶ 31-32, 48). These allegations form the basis for the separate count of tortious interference with contractual and business relations (Compl. ¶¶ 47-51).
VII. Analyst’s Conclusion: Key Questions for the Case
This case appears to center on the validity of a recently issued design patent in the face of readily available, and allegedly identical, prior art. The key questions for the court will likely be:
A dispositive question of validity: Can the plaintiff prove, by the clear and convincing evidence standard, that the "Nathan James" barstool is an invalidating prior art reference under 35 U.S.C. § 102? This will involve establishing that the prior art design is identical to the patented design and that it was on sale or in public use more than one year before the patent's effective filing date.
A related question of bad faith enforcement: If the patent is found invalid, did the defendant's act of reporting the plaintiff's products to Amazon for infringement constitute tortious interference? The analysis will likely focus on whether the defendant knew or should have known of the invalidating prior art, making its enforcement efforts objectively baseless.