Rockbros USA LLC v. Blackstrap Industries Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Rockbros USA LLC (New Jersey); Yiwu City Jingfeng E-commerce Co. Ltd. (China); and Jun Huang (China)
  • Defendant: Abe Shehadeh (Oregon); Blackstrap Industries, Inc. (Oregon)
  • Plaintiff’s Counsel: Ni, Wang & Massand, PLLC
• Case Identification: 1:23-cv-17193, N.D. Ill., 12/31/2023
• Venue Allegations: Plaintiffs allege venue is proper because Defendants sell products through an Amazon storefront into the district and because Defendants’ infringement complaints to Amazon constitute an agreement to jurisdiction wherever Amazon is subject to jurisdiction.
• Core Dispute: Plaintiffs seek a declaratory judgment that U.S. Design Patent No. D758,703 is invalid and not infringed by their balaclava products, and further allege tortious interference by Defendants.
• Technical Context: The technology at issue is the ornamental design of hooded facemasks, commonly known as balaclavas, which are sold as "mountain lifestyle gear."
• Key Procedural History: This declaratory judgment action was filed in response to patent infringement complaints Defendants allegedly submitted to Amazon.com regarding Plaintiffs' products. Plaintiffs’ core invalidity theory relies heavily on an alleged admission by Defendants that their own product, embodying the patented design, was on sale more than one year prior to the patent's filing date. Subsequent to the filing of this complaint, a request for ex parte reexamination of the patent-in-suit was filed, and a reexamination certificate was issued confirming the patentability of the single claim.

Case Timeline

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

U.S. Design Patent No. D758,703 - “HOODED FACEMASK WITH A PIVOTING MOUTH PIECE”

The Invention Explained

• Problem Addressed: Design patents do not articulate a technical problem in the manner of utility patents; rather, they protect the novel, non-obvious, and ornamental appearance of an article of manufacture (Compl. ¶ 11).
• The Patented Solution: The D’703 Patent claims the specific ornamental design for a hooded facemask. The design consists of a form-fitting hood covering the head and neck, combined with a distinct, separate mouth piece that is attached to the hood and can be pivoted up to cover the nose and mouth or down to expose the face (D’703 Patent, Figs. 1, 9). The visual appearance is defined by the particular shapes, contours, and seam lines illustrated in the patent's figures (D’703 Patent, Figs. 1-9).
• Technical Importance: The design provides a specific aesthetic for a functional item used in outdoor sports and activities, distinguishing it visually in the "mountain lifestyle gear" market (Compl. ¶ 9).

Key Claims at a Glance

• The patent contains a single claim for "The ornamental design for a hooded facemask with a pivoting mouth piece, as shown and described" (D’703 Patent, Claim). The scope of this claim is defined by the visual representations in the patent's nine figures.

III. The Accused Instrumentality

Product Identification

As this is a declaratory judgment action, the "accused" products are the Plaintiffs' own balaclavas sold on Amazon storefronts under the names ROCKBROS USA, Achiou US, and HikeValley (Compl. ¶ 15). The complaint identifies numerous specific products by their Amazon Standard Identification Numbers (ASINs) (Compl. ¶ 17).

Functionality and Market Context

The complaint does not provide a detailed technical description of the Plaintiffs' products. It states they are "balaclavas" that were the subject of infringement complaints filed by the Defendants with Amazon.com, leading to their removal from the marketplace (Compl. ¶¶ 15, 17, 39). The central issue is the alleged visual similarity of these products to the design claimed in the D’703 Patent.

IV. Analysis of Infringement Allegations

The complaint does not provide sufficient detail for a comparative analysis of infringement. Its argument for non-infringement rests entirely on its assertion of invalidity. The complaint states, "it is axiomatic that Plaintiffs balaclava products do not infringe the D’703 Patent... [because] one cannot infringe an invalid patent" (Compl. ¶ 33). No specific visual or structural differences between the Plaintiffs' products and the patented design are argued in the complaint.

The core of the dispute, as framed by the Plaintiffs, is not non-infringement by distinction, but invalidity. The complaint alleges that the D’703 Patent is anticipated under 35 U.S.C. § 102 by multiple prior art products that were on sale more than a year before the patent’s April 25, 2013 priority date (Compl. ¶¶ 24, 29).

These invalidity allegations are primarily supported by screenshots from Amazon product listings and, critically, an alleged admission from the Defendants themselves. A screenshot of an Amazon rights holder communication shows Defendants allegedly stating their own product, identified as "Parent ASIN B00AASPZ84," has been "for sale since 2008" (Compl. p. 4, ¶ 18). Plaintiffs also point to prior art from other companies, including a Carhartt product allegedly available since August 20, 2009, and a Nike product available since June 16, 2012 (Compl. ¶¶ 27-28). The complaint includes an image of a Carhartt balaclava from an Amazon product listing, which Plaintiffs offer as prior art first available on August 20, 2009 (Compl. p. 6, ¶ 27). Similarly, it provides an image of a Nike balaclava from an Amazon product listing, alleged to be prior art as of June 16, 2012 (Compl. p. 7, ¶ 28).

• Identified Points of Contention:
  • Validity Question: The central dispute is whether the D’703 Patent is invalid as anticipated by prior art sales. This will require determining if the designs of the prior art products, including Defendants' own product sold since 2008, are "substantially the same" as the claimed design from the perspective of an ordinary observer.
  • Effect of Reexamination: A significant point of contention will be the legal effect of the ex parte reexamination certificate, which confirmed the patentability of the claim (D’703 C1 Certificate). The court will have to consider the prior art that was before the USPTO during that proceeding in relation to the prior art asserted by the Plaintiffs in this litigation.
  • Admission Question: A key factual question is whether Defendants' alleged statement in an Amazon complaint that their product has been "for sale since 2008" is an evidentiary admission and, if so, whether that product is legally identical to the patented design (Compl. ¶ 18).

V. Key Claim Terms for Construction

In design patent litigation, claim construction does not focus on textual terms but on the overall visual appearance of the design as shown in the drawings. The process involves identifying the ornamental aspects of the design to be compared against the accused product.

• The Term: The overall ornamental design as shown in Figures 1-9.
• Context and Importance: The central issue will be to determine the scope of the claimed design as a whole. Practitioners may focus on whether certain features are primarily functional versus ornamental. The "pivoting mouth piece" mentioned in the title suggests a functional aspect (D’703 Patent, Title). A court may need to filter out purely functional elements to properly define the scope of the ornamental design protected by the patent.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim covers the design "as shown and described" (D’703 Patent, Claim). This language suggests the scope is defined by the overall visual impression created by all depicted features working in concert.
  • Evidence for a Narrower Interpretation: The broken lines in the figures, which depict stitching, are part of the claimed design, whereas the broken lines showing a human figure and a logo are explicitly disclaimed as environment (D’703 Patent, Description). A party could argue that the design is limited to the very specific arrangement and appearance of these claimed stitching lines and panels, potentially narrowing its scope.

VI. Other Allegations

• Willful Infringement: This is a declaratory judgment action and does not contain an allegation of willful infringement against the Defendants. However, Plaintiffs allege that Defendants acted in "bad faith" by filing Amazon complaints with "actual knowledge or should have known that the asserted patent is invalid" (Compl. ¶ 42). This allegation supports Plaintiffs' state law claims for tortious interference and a request for a finding of an exceptional case under 35 U.S.C. § 285 (Compl. ¶¶ 38, 42, Prayer for Relief ¶ e).
• Inequitable Conduct: The complaint alleges that Defendants committed inequitable conduct by "intentionally failing to disclose prior art sales to the USPTO" during prosecution (Compl. ¶¶ 19, 30).

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

1. Invalidity vs. Reexamination: The case presents a direct conflict between Plaintiffs' invalidity theory, based heavily on an alleged on-sale bar from Defendants' own product (Compl. ¶ 18), and the USPTO's confirmation of the patent's validity following a recent ex parte reexamination (D’703 C1 Certificate). A determinative issue will be whether the specific prior art and arguments advanced by Plaintiffs were considered and overcome during the reexamination proceeding.

2. The 'Admission' and Prior Art: A critical factual question will be whether Defendants' alleged 2008 on-sale statement in an Amazon complaint is proven and constitutes a binding admission. The court would then need to decide if that prior product is "substantially the same" as the patented design, a visual test that lies at the heart of design patent anticipation.

3. The Basis for Non-Infringement: A key strategic question is whether Plaintiffs' case will succeed or fail based solely on their invalidity argument. Having staked their non-infringement claim entirely on the patent being invalid (Compl. ¶ 33), it remains to be seen if they can or will develop an alternative theory based on visual distinctions between their products and the patented design, particularly in light of the reexamination certificate strengthening the patent's presumption of validity.