DCT

1:23-cv-17065

Shenzhen Shining Bright Technology Co Ltd v. Individuals Corps Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-17065, N.D. Ill., 12/22/2023
  • Venue Allegations: Venue is based on allegations that Defendants operate interactive e-commerce stores that target and make sales to consumers in the United States, including within the state of Illinois.
  • Core Dispute: Plaintiff alleges that numerous unidentified e-commerce operators are selling LED face masks that infringe its U.S. design patent.
  • Technical Context: The dispute is in the field of wearable electronic novelty items, specifically programmable LED face masks used for costumes, parties, and entertainment.
  • Key Procedural History: The complaint describes this action as part of a broader "anti-infringement program" targeting online sellers. The case is brought against a schedule of unidentified "Seller Aliases," a procedural approach common in actions against alleged counterfeiters operating on large e-commerce platforms. No prior litigation or post-grant proceedings are mentioned.

Case Timeline

Date Event
2020-09-02 D971,348 S Patent Priority Date
2022-11-29 D971,348 S Patent Issue Date
2023-12-22 Complaint Filing Date

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

  • Patent Identification: U.S. Patent No. D971,348 S (“the ’348 Patent”), "Mask," issued November 29, 2022.

The Invention Explained

  • Problem Addressed: As a design patent, the ’348 Patent does not describe a technical problem but instead claims rights to a new, original, and ornamental design for an article of manufacture (Compl. ¶8).
  • The Patented Solution: The patent protects the specific visual appearance of a mask. The claimed design, shown in solid lines in the patent’s figures, consists of the mask's overall ovoid shape, a smooth, continuous front surface, a distinct curvature in its side profile, and specific contours around the top, sides, and bottom (’348 Patent, Figs. 1, 3, 5-8). The patent explicitly disclaims certain functional or non-ornamental elements shown in broken lines, such as the internal eye-goggle structure, which are not part of the protected design (’348 Patent, Description; Fig. 4).
  • Technical Importance: The complaint alleges that the "success of the Plaintiff's Products" embodying the patented design has led to significant infringement, suggesting the design has achieved commercial recognition in the market for electronic masks (Compl. ¶13).

Key Claims at a Glance

  • The single claim asserted is for: "The ornamental design for a mask, as shown and described." (’348 Patent, Claim).
  • The essential visual elements of the claim are defined by the patent's drawings and include:
    • The overall shape and proportions of the mask body.
    • The smooth, uninterrupted surface contour of the mask's front face.
    • The specific side profile and curvature of the mask.
    • The shape of the regions at the sides of the mask.

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are "Unauthorized Products," identified as LED face masks sold by the Defendants through various e-commerce stores operating under the "Seller Aliases" listed in the complaint's Schedule A (Compl. ¶¶3, 13).

Functionality and Market Context

  • The complaint alleges Defendants sell these products on online marketplace platforms such as Amazon and Walmart (Compl. ¶13). While the complaint does not show images of the specific accused products, it provides images of what it identifies as "Plaintiff's Products" to illustrate the technology (Compl. p. 4).
  • Figure 3 in the complaint depicts an LED mask displaying a stylized face, accompanied by a smartphone interface suggesting control via a Bluetooth application (Compl. p. 4, Fig. 3).
  • Another image highlights that the product is powered by a rechargeable battery (Compl. p. 4, Fig. 4). The complaint alleges that the Defendants' "Unauthorized Products" are infringing copies sold without license or authorization (Compl. ¶18).

IV. Analysis of Infringement Allegations

The complaint references a claim chart attached as Exhibit 6 to detail the infringement allegations; however, this exhibit was not included in the provided court filing (Compl. ¶28). The following analysis is based on the complaint's narrative allegations.

In a design patent case, the central test for infringement is whether an "ordinary observer," familiar with the prior art designs, would be deceived into purchasing the accused product, believing it to be the patented design. The analysis turns on a comparison of the overall visual appearance.

  • Identified Points of Contention:
    • Scope Questions: The core legal question will be the scope of the patented design. Infringement will depend on whether the overall visual impression of the Defendants' products is substantially the same as that shown in the ’348 Patent's figures. A key issue may be how much variation is permissible before a design is considered non-infringing, particularly in the context of other existing mask designs that constitute the "prior art."
    • Technical Questions: A primary evidentiary question will be establishing the precise appearance of the "Unauthorized Products." The complaint does not contain clear images of the accused products themselves. The court's analysis will require a side-by-side comparison of the actual products sold by Defendants against the drawings in the ’348 Patent.

V. Key Claim Terms for Construction

In design patent litigation, there are no "terms" to construe in the manner of a utility patent. Instead, the analysis focuses on the scope of the claimed design as a whole, interpreted in light of the patent's drawings.

  • The Term: The "ornamental design for a mask" as depicted in Figures 1-8 of the ’348 Patent.
  • Context and Importance: The entire infringement analysis hinges on the scope of this claimed design. The determination of whether the accused products are "substantially the same" will depend on which visual features are deemed to be the dominant, protected elements of the design.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A party could argue that the claim is broad and covers the overall configuration and impression of the mask, focusing on the general ovoid shape and smooth front face (’348 Patent, Fig. 3). The explicit disclaimer of internal components (shown in broken lines) could be used to argue that the patent broadly protects the external shell shape, irrespective of internal structure or minor surface details (’348 Patent, Fig. 4).
    • Evidence for a Narrower Interpretation: A party could argue the claim is limited to the precise contours and proportions shown in the drawings. For example, the specific curvature of the side profile and the particular shape of the upper and lower edges might be presented as critical, limiting features of the design that must be present for infringement to be found (’348 Patent, Figs. 5-8).

VI. Other Allegations

  • Indirect Infringement: The complaint includes a request for relief against those "aiding, abetting, contributing to, or otherwise assisting anyone in infringing" the patent (Compl. p. 11, Prayer for Relief ¶1(b)). The factual allegations to support this are not separately detailed beyond the general claim that Defendants are working in concert to sell the accused products (Compl. ¶24).
  • Willful Infringement: The complaint alleges that Defendants' infringement "has been and continues to be willful" (Compl. ¶31). This allegation is supported by claims that Defendants act "knowingly and willfully" and are part of a network of infringers who allegedly use services like "sellerdefense.cn" to evade detection and enforcement by intellectual property owners (Compl. ¶¶22, 24). Plaintiff also alleges it provides notice of its patent rights on its own online product listings, which could be argued to establish knowledge in the marketplace (Compl. ¶11).

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

  • A central issue will be one of procedural effectiveness: can the Plaintiff, through this action against a large group of anonymous "Schedule A" defendants, successfully identify the operators, establish personal jurisdiction, and obtain meaningful and enforceable relief beyond the temporary removal of online product listings?
  • The core substantive question will be one of visual scope and similarity: applying the "ordinary observer" test, are the accused LED masks sold by Defendants substantially the same in their overall visual appearance as the specific ornamental design claimed in the ’348 Patent, particularly when viewed in the context of the relevant prior art? The resolution will depend heavily on the visual evidence of the accused products themselves.