DCT

1:23-cv-16841

Shenzhen Taihe Technology Co., Ltd. d/b/a Rottay v. Zhang

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-16841, N.D. Ill., 12/15/2023
  • Venue Allegations: Venue is alleged to be proper because the Defendant is a foreign individual with no established place of business in the U.S. and because Defendant allegedly targets and conducts business with consumers in the district through an e-commerce storefront on Amazon.
  • Core Dispute: This is a declaratory judgment action in which the Plaintiff seeks a declaration that the Defendant's design patent is invalid and unenforceable, filed in response to the Defendant using Amazon's intellectual property complaint process to have the Plaintiff's products delisted.
  • Technical Context: The dispute centers on the ornamental design of a baking tray, a widely sold consumer kitchenware product.
  • Key Procedural History: The action was precipitated by an "Infringement Report" filed by the Defendant with Amazon on or before November 26, 2023, which resulted in the delisting of Plaintiff's products. The complaint alleges the patent-in-suit is invalid in view of a prior Chinese design patent and unenforceable due to the patentee's alleged failure to disclose that patent and its own prior product sales to the USPTO during prosecution.

Case Timeline

Date Event
2020-11-10 Chinese Design Patent No. CN306418465S ('465 patent) filed
2021-01-13 Plaintiff's "Baking Sheet with Rack Set" (ASIN B08SVYWVMX) allegedly first available on Amazon
2021-03-30 '465 patent issued
2021-06-03 Plaintiff's "Quarter Baking Sheet Pan" (ASIN B096KW2XNY) allegedly first available on Amazon
2021-07-09 Plaintiff's "Half Sheet Pan with Cooling Rack Set" (ASIN B0992HQPL8) allegedly first available on Amazon
2021-09-27 U.S. Patent D957,868 application filed (priority date)
2022-07-19 U.S. Patent D957,868 issued
2023-11-26 Alleged date on or before which Defendant filed "Infringement Report" with Amazon
2023-12-11 Plaintiff's counsel sent correspondence to the "Rights Owner" identified by Amazon
2023-12-13 Plaintiff's counsel sent letter to Amazon threatening declaratory judgment action
2023-12-15 Complaint for Declaratory Judgment filed

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

U.S. Design Patent No. D957,868 - "TRAY"

  • Patent Identification: U.S. Design Patent No. D957,868, "TRAY," issued July 19, 2022. (’868 Patent)

The Invention Explained

  • Problem Addressed: Design patents protect the ornamental appearance of an article of manufacture rather than its utilitarian function. This patent secures rights to a specific aesthetic design for a baking tray. (Compl. ¶16).
  • The Patented Solution: The patent claims the ornamental design for a tray as depicted in its figures. (’868 Patent, Claim). The design consists of a rectangular tray with rounded corners, a raised peripheral rim, and a bottom surface featuring a series of parallel, raised, rounded ridges that run the length of the tray, as illustrated in the top perspective view and top plan view. (’868 Patent, FIG. 1, FIG. 7).
  • Technical Importance: In the consumer goods market, a product's unique aesthetic design can be a significant driver of commercial success and brand recognition. (Compl. ¶11, ¶13).

Key Claims at a Glance

  • Design patents contain a single claim. The asserted claim is for "The ornamental design for a tray, as shown and described." (’868 Patent, Claim).
  • The essential ornamental elements comprising the claimed design are:
    • A generally rectangular tray with rounded corners.
    • A continuous, raised peripheral rim.
    • A bottom surface featuring multiple parallel, raised, rounded ridges.

III. The Accused Instrumentality

Product Identification

  • The products at issue are Plaintiff Rottay's "Accused Baking Sheet Pans," identified by Amazon Standard Identification Numbers (ASINs) B09VKWDLJP, B096KW2XNY, B0992HQPL8, and B08SVYWVMX. (Compl. ¶2, ¶21).

Functionality and Market Context

  • The products are baking sheet pans sold by Plaintiff on the Amazon e-commerce platform. (Compl. ¶11).
  • Plaintiff alleges that its Amazon store is "highly successful" and that a "substantial portion" of its business is derived from sales on the platform. (Compl. ¶13, ¶14). The complaint states that Defendant's infringement report to Amazon resulted in these products being "delisted and removed," causing significant financial harm. (Compl. ¶2, ¶28).
  • Notably, the complaint alleges that three of the four accused products are also "Prior Art Baking Sheet Pans," which were on sale and available to the public more than one year before the '868 patent's effective filing date. (Compl. ¶38, ¶43).

IV. Analysis of Invalidity Allegations

The complaint seeks a declaratory judgment that the ’868 patent is invalid and does not present a traditional infringement claim chart. Instead, it advances two primary theories of invalidity, supported by visual evidence.

The first theory is that the ’868 patent is anticipated or rendered obvious by Chinese Design Patent No. CN306418465S (“the ’465 patent”), which was filed and issued before the ’868 patent’s filing date (Compl. ¶34, ¶37). A table at paragraph 36 provides a side-by-side comparison of figures from the prior art '465 patent and the asserted '868 patent to illustrate alleged similarities in the claimed designs. (Compl. ¶36). The complaint asserts that the prior art patent "discloses all the claimed design of the ’868 patent." (Compl. ¶34).

The second theory is that the ’868 patent is invalid under 35 U.S.C. § 102(a)(1) due to prior public use or sale of Plaintiff's own products, which it terms the "Prior Art Baking Sheet Pans" (Compl. ¶38, ¶42). To support this, the complaint includes screenshots of what it identifies as internal Amazon data. An internal Amazon system screenshot at paragraph 39 purports to show that Plaintiff's baking sheet set was first available on January 13, 2021, over eight months before the '868 patent's filing date. (Compl. ¶39). A similar screenshot at paragraph 40 indicates Plaintiff's quarter baking sheet pan was first available on June 3, 2021, nearly four months before the filing date. (Compl. ¶40). The complaint alleges that because these products were available to the public before the patent's filing date, the patent is invalid. (Compl. ¶43).

V. Key Claim Terms for Construction

For design patents, claim construction focuses on the overall visual appearance of the design as shown in the drawings, rather than on textual definitions.

  • The Term: "The ornamental design for a tray, as shown and described."
  • Context and Importance: The scope of this claim is central to the invalidity analysis. The key question is whether the overall visual impression of the ’868 patent's design is substantially the same as the designs disclosed in the alleged prior art. Practitioners may focus on whether the combination of features—the rounded corners, the specific rim profile, and the parallel ridges—creates a distinct ornamental impression when compared to the prior art.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A party might argue that the claim covers the overall aesthetic combination of a ridged, rectangular tray with a defined rim, and that minor variations in proportion or curvature do not escape the design's scope. The claim's simple reference to the design "as shown and described" could support focusing on the general visual impression. (’868 Patent, Claim).
    • Evidence for a Narrower Interpretation: A party could argue that protection is limited to the exact visual representation in the figures, including the specific number, spacing, and profile of the ridges and the particular curvature of the corners. The fact that all features are shown in solid lines, with no portions disclaimed via dotted lines, suggests that all depicted elements are part of the claimed design. (’868 Patent, Figs. 1-8).

VI. Other Allegations

  • Unenforceability and Willfulness Allegations: The complaint alleges that the ’868 patent is unenforceable due to inequitable conduct. (Compl. ¶56). The basis for this allegation is Defendant’s purported failure to disclose material prior art—specifically, the ’465 patent and the prior public sale of the "Prior Art Baking Sheet Pans"—to the USPTO during prosecution. (Compl. ¶45, ¶55). The complaint further alleges, upon information and belief, that Defendant knew of this prior art. (Compl. ¶46). Based on this and the alleged misuse of the Amazon complaint process, Plaintiff requests that the case be found "exceptional" under 35 U.S.C. § 285 and seeks an award of enhanced damages due to the "willful and exceptional nature of this case." (Compl., Prayer for Relief ¶4, ¶11).

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

  • A central question for the court will be one of validity: Does the prior art, specifically the '465 Chinese patent or the Plaintiff's own previously sold baking pans, disclose a design that is substantially the same as the one claimed in the '868 patent, thereby rendering the U.S. patent invalid under the ordinary observer test?
  • A second key issue will be one of enforceability: Can the Plaintiff prove by clear and convincing evidence that the Defendant knew of the '465 patent or prior sales and, with an intent to deceive, withheld that material information from the USPTO during prosecution, which would render the '868 patent unenforceable for inequitable conduct?
  • Finally, a key procedural question will be the propriety of the Defendant's conduct: Did the Defendant's use of Amazon's IP reporting mechanism, allegedly with knowledge of invalidating prior art, constitute baseless and frivolous litigation conduct that would make this an "exceptional case" warranting an award of attorney's fees or enhanced damages?