DCT
1:23-cv-16575
TRT LLC v. Partnerships Unincorp Associations
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: TR Tools, LLC (Iowa)
- Defendant: The Partnerships and Unincorporated Associations Identified in Schedule “A” (allegedly residing in the People's Republic of China or other foreign jurisdictions)
- Plaintiff’s Counsel: Flener IP Law, LLC
- Case Identification: 1:23-cv-16575, N.D. Ill., 12/07/2023
- Venue Allegations: Venue is based on allegations that each Defendant targets business activities toward consumers in Illinois through the operation of interactive e-commerce stores that sell the accused products directly to Illinois consumers.
- Core Dispute: Plaintiff alleges that Defendants’ online stores sell counterfeit extension wrenches that infringe a design patent covering the ornamental appearance of Plaintiff's TITE-REACH brand wrench.
- Technical Context: The technology field is hand tools, specifically extension wrenches designed to provide access to fasteners in confined spaces.
- Key Procedural History: The complaint does not mention any prior litigation, licensing history, or administrative proceedings involving the patent-in-suit. The case is filed against a large group of unnamed online sellers, a common strategy in anti-counterfeiting litigation.
Case Timeline
| Date | Event |
|---|---|
| 2009-07-02 | '289 Patent Priority Date (Filing Date) |
| 2009 | Plaintiff launched TITE-REACH branded products |
| 2010-01-05 | '289 Patent Issue Date |
| 2023-12-07 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. D607,289 - "SLIM PROFILE WRENCH," issued January 5, 2010
The Invention Explained
- Problem Addressed: The complaint notes that the product was developed after "observing a need for wrenches that can be used to reach otherwise inaccessible nuts and bolts" (Compl. ¶6).
- The Patented Solution: As a design patent, the '289 Patent does not claim a functional solution but rather protects the specific ornamental appearance of a wrench designed for this purpose. The claimed design consists of the visual characteristics shown in the patent's figures, which depict a wrench with an elongated, slender body, enlarged circular ends housing drive mechanisms, and a distinct recessed channel on its top surface (D’289 Patent, Figs. 1-5). Plaintiff alleges this design is "unique" and "distinctive" (Compl. ¶5, ¶8).
- Technical Importance: The complaint alleges that the distinctive patented design has become "enormously popular and even iconic," making genuine products "instantly recognizable" to the public and a symbol of quality and innovation in the field (Compl. ¶5).
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a slim profile wrench, as shown and described" (D’289 Patent, Claim).
- The scope of this claim is defined by the visual appearance of the wrench as depicted in Figures 1-5 of the patent. The key ornamental features include:
- An elongated, generally flat body.
- Two enlarged, rounded ends containing what appear to be drive mechanisms.
- A recessed central channel along the top surface of the body.
- Two visible fasteners located within the recessed channel.
- A smooth, unadorned bottom surface.
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are "Infringing Products," described as "unauthorized and unlicensed," "counterfeit," and "inferior imitations" of Plaintiff’s TITE-REACH extension wrenches (Compl. ¶3, ¶18, ¶35).
Functionality and Market Context
- The accused products are extension wrenches sold by Defendants through numerous e-commerce storefronts on platforms such as Alibaba, AliExpress, Amazon, Temu, and Wish (Compl. ¶19). The complaint alleges these online stores are "designed... to appear to be selling genuine copies of Plaintiff’s TITE-REACH branded products" to "unknowing consumers" (Compl. ¶4). The complaint includes a table displaying figures from the '289 patent to represent the design of Plaintiff's authentic product. (Compl. ¶8). This table, showing various views of the patented design, serves as the visual benchmark for the infringement claim.
IV. Analysis of Infringement Allegations
Design patent infringement is determined from the perspective of an "ordinary observer." The test is whether this observer, familiar with the prior art, would be deceived into believing the accused design is the same as the patented design. As the complaint does not contain pictures of the accused products, the following analysis is based on the complaint's direct allegation that the accused products are "substantially the same, if not identical" to the patented design (Compl. ¶38).
'289 Patent Infringement Allegations
| Claimed Ornamental Feature (from D'289 Patent) | Alleged Infringing Feature | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design for a slim profile wrench | The "overall design features of Defendants' products are substantially the same, if not identical, with resemblance such as to deceive an ordinary observer" | ¶38 | Figs. 1-5 |
| An elongated body with enlarged, rounded ends | The accused products are alleged to be counterfeit versions that mimic the patented design, thereby possessing the same overall shape and configuration. | ¶4, ¶18 | Fig. 1 |
| A recessed central channel on the top surface with two visible fasteners | The infringing products are alleged to be "inferior imitations" that replicate the distinctive features of the patented design. | ¶18 | Fig. 2 |
| A smooth bottom surface and slender side profile | The accused products are alleged to be copies intended to be mistaken for Plaintiff's product, which possesses these features. | ¶38 | Figs. 3-4 |
- Identified Points of Contention:
- Evidentiary Question: A central issue will be the factual comparison between the accused products and the patented design. The complaint does not include side-by-side photographic evidence, relying instead on the characterization of the accused products as "counterfeit" and "substantially the same" (Compl. ¶38). The outcome of the infringement analysis will depend on visual evidence of Defendants' products as produced in discovery.
- Scope Question: The analysis for a design patent must account for the prior art. A question for the court may be whether the similarities between the accused products and the patented design are based on protected ornamental features or on purely functional elements or designs common in the prior art. Defendants could argue that any resemblance is dictated by the basic function of an extension wrench and that the '289 patent's scope is narrow.
V. Key Claim Terms for Construction
In design patent litigation, the "claim" is the visual design itself as depicted in the patent drawings, rather than a set of verbal limitations. Formal claim construction of text is therefore rare. The dispositive legal test is not the meaning of a word but the "ordinary observer" test, which involves a holistic comparison of the patented design's overall ornamental appearance with that of the accused product. The inquiry will focus on the visual impression created by the design, filtering out any purely functional elements, to determine if the two designs are substantially the same.
VI. Other Allegations
- Indirect Infringement: The complaint makes a passing reference to products that "indirectly infringe" and includes a request for an injunction against "aiding, abetting, [or] contributing to" infringement (Compl. ¶25; Prayer for Relief ¶I(ii)). However, the body of the complaint does not plead specific facts to support the requisite elements of knowledge and intent for induced infringement or the sale of a non-staple article for contributory infringement.
- Willful Infringement: Willfulness is explicitly alleged (Compl. ¶26). The complaint asserts this is based on Defendants' alleged "full knowledge of Plaintiff’s ownership of the TITE-REACH design patent" and their purported actions of knowingly manufacturing and selling "inferior imitations" designed to trade on Plaintiff's goodwill (Compl. ¶18, ¶22).
VII. Analyst’s Conclusion: Key Questions for the Case
- A primary issue in this case is evidentiary and factual: are the accused counterfeit wrenches "substantially the same" in appearance as the design claimed in the '289 patent from the perspective of an ordinary observer? The resolution will depend on a direct visual comparison of the products, evidence which is not contained within the complaint itself.
- A secondary issue concerns the scope of design protection: to what extent are the visual elements of the '289 patent ornamental and protectable, versus being dictated by function or anticipated by prior art designs for similar tools? The court will need to determine the scope of protected ornamentation before assessing whether the accused products are deceptively similar.