Tang v. Yummy Makeup

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Zhaoshi Tang (Huazhou, China)
  • Defendant: Yummy Makeup and Wings of ESA (China)
  • Plaintiff’s Counsel: Robert M. DeWitty
• Case Identification: 1:24-cv-00342, N.D. Ill., 01/12/2024
• Venue Allegations: Venue is alleged to be proper because Defendants target and conduct business with consumers in Illinois through interactive e-commerce stores, ship products to the state, and have allegedly caused tortious injury within the district.
• Core Dispute: Plaintiff alleges that Defendants' wall-mounted ironing board holders infringe a U.S. design patent for an "Iron Frame."
• Technical Context: The dispute falls within the consumer market for home organization and laundry room accessories, where ornamental design can be a significant product differentiator.
• Key Procedural History: The complaint states that this action follows a prior case (1:23-cv-04587) where the same Defendants were dismissed without prejudice on grounds of misjoinder. Notably, the complaint asserts that a motion to dismiss for failure to state a claim, based on the same evidence, was denied in the prior action, suggesting a court has already found the infringement allegations facially plausible.

Case Timeline

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

U.S. Design Patent No. D927,221 - "IRON FRAME"

• Patent Identification: U.S. Design Patent No. D927,221 (the ’221 Patent), "IRON FRAME", issued August 10, 2021. (Compl. ¶7).

The Invention Explained

• Problem Addressed: As is common with design patents, the ’221 Patent does not articulate a specific technical problem in a background section. The product's form implies a solution to the general need for an ornamental and functional apparatus to store a clothing iron and an ironing board. (D927,221 Patent, Figs. 1-8).
• The Patented Solution: The patent claims the ornamental design for an "iron frame." The design, as illustrated in the patent's figures, consists of a wall-mountable assembly featuring a rectangular wire-frame basket with a solid base, from which two large, J-shaped hooks descend. ('221 Patent, Figs. 1, 3, 5). The drawings explicitly disclaim, through the use of broken lines, the textual element "home" depicted on the front of the basket, indicating it forms no part of the claimed design. ('221 Patent, DESCRIPTION).
• Technical Importance: The design provides a specific, integrated aesthetic for a common household storage item, combining a shelf-like basket for the iron with large hooks for the board into a single visual unit. (Compl. ¶11).

Key Claims at a Glance

• The ’221 Patent contains a single claim for "The ornamental design for an iron frame, as shown and described." ('221 Patent, Claim). The scope of this claim is defined by the visual appearance of the article as depicted in the solid lines of the patent's drawings.

III. The Accused Instrumentality

Product Identification

• The accused products are the "Ironing Board Hanger Wall Mount" sold via the "Yummy Makeup" online store (ASIN B0BWJ4YHK9) and the "Wings of Esa" online store (ASIN B09DFTRQ6Y). (Compl. ¶4).

Functionality and Market Context

• The accused products are wall-mounted storage units designed to hold a clothing iron in a top basket and an ironing board on lower hooks. (Compl. IMG. 1, IMG. 4). A screenshot in the complaint describes the product as having a "Metal Iron Holder with Large Storage Wooden Base Basket & Removable Hooks." (Compl. IMG. 1).
• The complaint alleges that although sold under different online storefronts and brand names ("DB DORVEY BEAUTY" and "OC OCTAVIA"), the products originate from the same manufacturer, Qingdao Dinghai Hengtong Import & Export Co. Ltd. (Compl. ¶4, IMGs 2, 3, 5).

IV. Analysis of Infringement Allegations

The complaint does not contain a formal claim chart. Instead, it presents its infringement theory by juxtaposing images of the patented design and the accused products, alleging they are "not dissimilar." (Compl. ¶14). The legal test for design patent infringement is whether an "ordinary observer," familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented design.

The complaint provides images of the accused products in use. For example, a provided screenshot shows the "Yummy Makeup" product, a black metal frame with a wood-like base holding an iron, with two hooks below. (Compl. ¶14, IMG 7). Another image shows the "Wings of Esa" product with a nearly identical configuration. (Compl. ¶14, IMG 8). Plaintiff's infringement theory appears to rest on the assertion that the overall visual impression created by the accused products—specifically the combination of a rectangular wire basket with a solid base and two large hooks below—is substantially the same as the claimed design in the ’221 Patent.

Identified Points of Contention

• Scope Questions: A central question for the court will be how to weigh minor differences in the context of the overall design. The complaint's own evidence describes the accused products as having "Removable Hooks," whereas the hooks in the ’221 Patent drawings are depicted as solid, continuous extensions of the main frame. (Compl. IMG. 1; ’221 Patent, Fig. 5). The litigation may turn on whether this difference in construction is significant enough to be noticed by an ordinary observer and alter the overall visual impression.
• Technical Questions: The resolution of the infringement question will depend on a close visual comparison of the products. This may raise questions regarding the precise construction of the wire basket (e.g., the number and placement of the horizontal bars) in the accused products compared to the specific rendering in the ’221 Patent drawings.

V. Key Claim Terms for Construction

In a design patent case, claim construction does not focus on interpreting textual terms but rather on defining the scope of the claimed design as a whole, as depicted in the drawings.

• The Term: The overall ornamental "design for an iron frame."
• Context and Importance: The entire infringement analysis is a visual comparison. Therefore, the effective "construction" of the claim will involve determining which aspects of the drawings are ornamental and contribute to the overall appearance, and how much variation is permissible before a design is no longer "substantially the same." Practitioners may focus on this holistic scope because the outcome depends entirely on a comparison of visual appearances rather than the meaning of any specific word.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party may argue that the core protected design is the general configuration and impression of a combined wire basket and large hook structure. Under this view, minor variations in how the hooks are attached or the exact number of wires in the basket would not change the overall visual identity in the eyes of an ordinary observer.
  • Evidence for a Narrower Interpretation: A party may argue that the design is limited to its precise visual details as shown in the solid lines of the drawings, including the non-removable nature of the hooks and the specific three-bar pattern on the basket's sides. The patent's explicit disclaimer of the word "home" also serves to narrow the claim by defining what is not part of the protected design. ('221 Patent, DESCRIPTION).

VI. Other Allegations

• Indirect Infringement: The complaint includes a general allegation of direct and indirect infringement. (Compl. ¶¶ 18, 21). However, it does not plead specific facts to support claims for induced infringement (e.g., by providing instructions to end-users) or contributory infringement.
• Willful Infringement: Willfulness is alleged based on Defendants' purported knowledge of the ’221 Patent. (Compl. ¶19). This knowledge is implied by the procedural history involving the prior lawsuit (1:23-cv-04587). (Compl. ¶¶ 5, 18). The complaint further alleges that Defendants operate under "various aliases" and use "tactics to evade enforcement efforts," which, if proven, could be used to support a finding of willful conduct. (Compl. ¶15).

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

1. A core issue will be one of visual similarity: Applying the "ordinary observer" test, is the overall ornamental design of the accused "Yummy Makeup" and "Wings of Esa" products substantially the same as the design claimed in the ’221 Patent, or are there sufficient visual differences to distinguish them?
2. A key evidentiary question will be the materiality of design details: How will the court weigh specific differences between the patented design and the accused products, particularly the integrated-versus-removable nature of the hooks, in determining whether an ordinary observer would be deceived?
3. A significant procedural factor will be the impact of the prior ruling: How will the court's denial of a motion to dismiss in the prior, related action influence the current case, given that a judge has already determined the infringement allegations are plausible enough to proceed?