DCT
1:23-cv-16137
Ap LLC v. Partnerships Unincorp Associations
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Enduring Brands LLC (Delaware)
- Defendant: Huaian Sunland International Trading Co., Ltd. (People's Republic of China)
- Plaintiff’s Counsel: Flener IP Law, LLC
- Case Identification: 1:23-cv-16137, N.D. Ill., 04/30/2024
- Venue Allegations: Venue is based on allegations that Defendant operates a fully interactive e-commerce store that targets U.S. consumers, including those in Illinois, ships products to Illinois, and accepts payment in U.S. dollars.
- Core Dispute: Plaintiff alleges that Defendant’s online sales of non-slip socks infringe a U.S. design patent covering the ornamental grip pattern on the sole of a sock.
- Technical Context: The case concerns the market for functional apparel, specifically non-slip or "grip" socks, where ornamental designs contribute to brand identity and consumer appeal.
- Key Procedural History: This filing is an Amended Complaint. The complaint notes that Defendant's identity is based on an online "Seller Alias" and that its tactics make it "virtually impossible for Plaintiff to learn the precise scope and the exact interworking of their counterfeit network."
Case Timeline
| Date | Event |
|---|---|
| 2012-01-01 | Plaintiff launched PEMBROOK products |
| 2019-07-15 | '170 Patent Priority Date (Filing Date) |
| 2021-08-10 | '170 Patent Issue Date |
| 2024-04-30 | Amended Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D927,170 - Foot Covering
The Invention Explained
- Problem Addressed: The complaint states that the inventor perceived a "need for socks with an aesthetically pleasing grip design" (Compl. ¶5).
- The Patented Solution: The patent protects the specific ornamental design for the sole of a foot covering. The design, as shown in the patent's figures, consists of a pattern of raised, rectangular grip elements arranged in columns along the length of the sole, with a distinct gap running down the center (D’170 Patent, Fig. 3). The patent's "DESCRIPTION" section clarifies that the dash-dash broken lines showing the shape of the sock itself are for illustrative purposes only and form no part of the claimed design (D’170 Patent, col. 1:62-65).
- Technical Importance: The complaint alleges that the distinctive design has become associated with the Plaintiff's PEMBROOK brand, allowing consumers to recognize its products (Compl. ¶¶5, 8).
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a foot covering, as shown and described" (D’170 Patent, col. 1:50-52).
- The essential elements of the claim are the visual characteristics of the design as a whole, as depicted in the patent’s figures, including:
- The arrangement of grip elements in distinct columns.
- The generally rectangular shape of the individual grip elements.
- The longitudinal gap separating the columns of grip elements down the center of the sole.
- The overall visual impression created by this specific pattern on the bottom of a sock.
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are "grip socks" allegedly sold by Defendant on e-commerce platforms such as Alibaba.com under item numbers including 1600922127679 and 1600922725268 (Compl. ¶24).
Functionality and Market Context
The products are socks featuring a non-slip pattern on the sole. The complaint alleges these are "Counterfeit PEMBROOK Products" that are not manufactured or approved by the Plaintiff (Compl. ¶¶15, 20). The core of the infringement allegation centers on the ornamental appearance of the grip pattern on the accused socks, which Plaintiff alleges is "substantially the same, if not identical" to its patented design (Compl. ¶27). The complaint provides a side-by-side visual comparison of two accused products and a figure from the '170 Patent to illustrate the alleged similarity (Compl. p. 9).
IV. Analysis of Infringement Allegations
Design patent infringement is determined from the perspective of an "ordinary observer." The test is whether this observer would believe the accused design is the same as the patented design. The complaint alleges that the overall ornamental designs are substantially the same (Compl. ¶27).
D'927,170 Infringement Allegations
| Ornamental Feature (from D'170 Patent Figures) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a foot covering, as shown and described, comprising a specific visual pattern on the sole. | The accused "grip socks" feature an ornamental design on their soles that is alleged to be "substantially the same, if not identical" to the patented design. | ¶27 | col. 1:50-52 |
| A pattern of grip elements arranged in parallel columns running along the length of the sole. | The accused socks display a pattern of grip elements arranged in parallel columns along the sole, as shown in the complaint's visual comparison. | p. 9 | Fig. 3 |
| A distinct longitudinal gap separating the columns of grip elements. | The accused socks feature a similar longitudinal gap separating the columns of grip elements. | p. 9 | Fig. 3 |
| Individual grip elements having a generally rectangular shape. | The individual grip elements on the accused socks appear to have a generally rectangular shape. | p. 9 | Fig. 3 |
Identified Points of Contention
- Factual Question: The central issue is a factual comparison: Would an ordinary observer, giving such attention as a purchaser usually gives, be deceived into purchasing the accused product, believing it to be the patented design? The complaint provides a direct visual comparison to support its allegation of substantial similarity (Compl. p. 9).
- Scope Question: A key question for the court will be defining the scope of the patented design. The analysis will focus on the overall visual impression of the solid-lined elements in the patent figures, considered in light of the prior art, rather than on any single feature in isolation.
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. The analysis focuses on the scope of the design as a whole.
- The Term: "The ornamental design... as shown and described"
- Context and Importance: The entire dispute hinges on the visual scope of the design claimed in the '170 Patent. The court's interpretation of what is protected by the patent drawings will be dispositive. Practitioners may focus on how the claimed features (solid lines) are distinguished from the unclaimed environment (dashed lines).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that the claim covers the overall visual impression of a sock with a grip pattern of rectangular elements arranged in columns with a central gap, and that minor variations in size, spacing, or number of elements do not alter this impression.
- Evidence for a Narrower Interpretation: The patent explicitly disclaims the overall shape of the sock itself by rendering it in dashed lines, stating it is "for illustrative purposes only and form[s] no part of the claimed design" (D’170 Patent, col. 1:62-65). A party could argue this limits the claim strictly to the specific pattern shown on the sole, and that protection does not extend to the sock as an article of manufacture.
VI. Other Allegations
- Indirect Infringement: The complaint's prayer for relief seeks to enjoin "aiding, abetting, contributing to, or otherwise assisting anyone in infringing" (Compl. ¶A.ii). However, the single infringement count is for direct infringement under 35 U.S.C. § 271(a) and does not contain specific factual allegations to support a claim for either induced or contributory infringement (Compl. ¶¶22-28).
- Willful Infringement: The complaint alleges that Defendant's infringement was "willful" and that Defendant "has had full knowledge of Plaintiff's ownership of the design patent" (Compl. ¶¶16, 17). These allegations are made "upon information and belief."
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual similarity: When viewed by an ordinary observer, is the ornamental grip pattern on the accused socks substantially the same as the claimed design in the '170 Patent, creating an overall visual impression that is likely to cause confusion?
- A key evidentiary question will be establishing the facts of infringement: Given that the Defendant is alleged to be a foreign entity operating under an alias (Compl. ¶9), a threshold challenge for the Plaintiff may be formally identifying the infringing parties and quantifying the scope of infringing sales into the United States.
- The case will also turn on the scope of the design patent: The court will need to determine the breadth of protection afforded by the '170 patent's drawings, particularly how the claimed pattern (solid lines) is distinguished from both the unclaimed sock environment (dashed lines) and the relevant prior art.