Guangzhou Kaishifu E Commerce Co Ltd v. Shenzhen Paweier Electronic Commerce Co Ltd

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Guangzhou Kaishifu E-Commerce Co., Ltd. (People's Republic of China)
  • Defendant: Shenzhen Paweier Electronic Commerce Co., Ltd. (People's Republic of China)
  • Plaintiff’s Counsel: Glacier Law LLP
• Case Identification: 1:23-cv-16637, N.D. Ill., 12/10/2023
• Venue Allegations: Plaintiff alleges venue is proper in the Northern District of Illinois because Defendant targets and conducts e-commerce sales to consumers in the district through Amazon's interactive platform.
• Core Dispute: Plaintiff seeks a declaratory judgment that its "Sunset Lamp Projector" product does not infringe Defendant's U.S. design patent and that the patent is invalid due to numerous prior art designs being publicly available before the patent's filing date.
• Technical Context: The dispute centers on the ornamental design of "sunset lamps," a category of decorative LED projectors that have become popular consumer items on e-commerce websites.
• Key Procedural History: This action was precipitated by Defendant's filing of a patent infringement complaint with Amazon against Plaintiff, which resulted in the de-listing of Plaintiff's product from the Amazon marketplace.

Case Timeline

II. Technology and Patent(s)-in-Suit Analysis

• Patent Identification: U.S. Design Patent No. D989,378, "Projection Lamp," issued June 13, 2023 (the "’378 Patent").

The Invention Explained

• Problem Addressed: Design patents protect the ornamental appearance of an article of manufacture rather than its utility. The implicit problem addressed is the creation of a new, original, and non-obvious ornamental design for a projection lamp that is visually distinct from prior designs.
• The Patented Solution: The '378 Patent claims the specific ornamental design for a projection lamp as depicted in its seven figures (D'378 Patent, Figs. 1-7). The claimed design consists of the lamp's overall visual appearance, characterized by the combination of a circular lamp head, a slender cylindrical stem, and a flat, circular base (D'378 Patent, Fig. 1). The single claim covers the visual impression created by the lamp's specific shape and proportions as a whole ('378 Patent, Claim).
• Technical Importance: The design's importance lies in its aesthetic appeal and its potential to serve as a distinct visual identifier for the product in the consumer market.

Key Claims at a Glance

• The patent contains a single claim: "The ornamental design for a projection lamp, as shown and described." ('378 Patent, Claim).
• The essential visual elements of this design claim, shown in solid lines in the patent's figures, are:
  • A circular lamp head assembly.
  • A thin, elongated cylindrical stem.
  • A flat, circular base supporting the stem.

III. The Accused Instrumentality

Product Identification

The complaint identifies the "Molemyn Sunset Lamp Projector" sold by Plaintiff on its Amazon store, "Kai Shi Fu Business," as the product subject to Defendant's infringement assertions (Compl. ¶¶ 10, 11).

Functionality and Market Context

The product is a decorative lamp projector sold to consumers via e-commerce. The complaint alleges that this product was a "top selling product" for Plaintiff and was designated as "Amazon's choice" due to being "highly rated and well-priced" prior to its removal from the platform (Compl. ¶¶ 4, 11). The complaint provides a screenshot of the Amazon product listing for the "Molemyn" lamp (Compl. ¶ 11, p. 3).

IV. Analysis of Infringement Allegations

The complaint does not provide a detailed comparison of the accused product's design to the patented design for a non-infringement analysis. Instead, it bases its request for a declaration of non-infringement on its allegations of invalidity, stating, "Based on the forgoing prior arts, Plaintiff Sunset Lamp Projector can not infringe the '378 Patent" (Compl. ¶ 25, 34).

Identified Points of Contention

• Visual Similarity: A primary question for the court will be whether an "ordinary observer," applying the test from Egyptian Goddess, Inc. v. Swisa, Inc., would find the design of Plaintiff's "Molemyn" lamp to be substantially the same as the design claimed in the '378 Patent. The complaint includes images of both the accused product (Compl. ¶ 11, p. 3) and the patented design (Compl. ¶ 16, p. 4).
• Impact of Prior Art on Infringement: The complaint's central strategy is to use prior art to defeat the patent's validity. If the patent survives, this same prior art will be used to narrow the scope of the claimed design. A key question will be whether the alleged similarities between Plaintiff's product and the patented design are limited to features already present in the cited prior art, such as the "Mydethun Sunset Projection Lamp" (Compl. ¶ 20, p. 6). This could support a finding of non-infringement by arguing that any resemblance is due to unpatentable, public domain features.

V. Key Claim Terms for Construction

In a design patent case, claim construction focuses on the visual scope of the claimed design as a whole, rather than on textual terms. The central construction issue will be defining the scope of the '378 Patent's claimed design in light of the cited prior art.

• The Term: "The ornamental design for a projection lamp, as shown and described."
• Context and Importance: The determination of the patent's validity and any subsequent infringement analysis depends entirely on the scope of this visual claim. Practitioners may focus on how the crowded field of prior art presented in the complaint limits the protectable scope of the '378 Patent's design to only its specific, minor deviations from what was already known.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party could argue that the claim covers the overall aesthetic impression created by the combination of the lamp head, stem, and base in their depicted proportions, not just isolated details (D'378 Patent, Fig. 1).
  • Evidence for a Narrower Interpretation: The complaint provides extensive evidence that could support a narrower interpretation. The numerous similar prior art designs cited, such as European patents and other products sold on Amazon, feature the same general configuration of a circular head, a stem, and a base (Compl. ¶¶ 18-23). This suggests the possibility that the scope of the '378 Patent, if valid, is confined to the very specific and precise visual details and proportions shown in the drawings, as distinguished from the overall concept which may have already been in the public domain.

VI. Other Allegations

• Indirect Infringement: The complaint, being an action for declaratory judgment, does not contain allegations of indirect infringement.
• Willful Infringement: The complaint does not contain allegations related to willful infringement of the '378 patent.

VII. Analyst’s Conclusion: Key Questions for the Case

This declaratory judgment action appears to center on two fundamental questions for the court:

• Validity in Light of Prior Art: The core of the complaint is its challenge to the '378 Patent's validity. A critical question will be whether the claimed ornamental design is anticipated or rendered obvious by the extensive prior art cited by the Plaintiff, particularly products like the "Mydethun" lamp, which was allegedly available for sale nearly two years before the '378 Patent's filing date.
• Scope and Non-Infringement: Should the '378 Patent be found valid, the dispositive issue will shift to the scope of its protection. Given the crowded field of similar designs, can the patent protect the general "sunset lamp" configuration, or is its scope limited to its precise, minor ornamental variations from the prior art? Answering this will determine whether Plaintiff's product is "substantially the same" in the eyes of an ordinary observer.