Guangdongsheng Shunhechuanmei Co Ltd v. Partnerships Unincorp Associations

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Guangdongsheng Shunhechuanmei Co., Ltd. (China)
  • Defendant: The Partnerships and Unincorporated Associations Identified on Schedule "A" (Jurisdictions Unknown)
  • Plaintiff’s Counsel: The Law Offices of Konrad Sherinian, LLC
• Case Identification: 1:24-cv-00748, N.D. Ill., 01/29/2024
• Venue Allegations: Venue is alleged based on Defendants targeting business activities toward consumers in the United States, including Illinois, through interactive e-commerce stores and shipping products to residents of the state.
• Core Dispute: Plaintiff alleges that Defendants’ online sales of a "metal nibbler drill attachment" infringe the ornamental design claimed in a U.S. design patent.
• Technical Context: The technology is a power tool accessory that attaches to a drill for cutting sheet metal, sold through online marketplaces.
• Key Procedural History: This action is brought against a group of unidentified e-commerce operators, listed on a sealed Schedule A, a common procedural posture for combating online counterfeit sales. Plaintiff also notes that a Petition for a Certificate of Correction has been filed with the USPTO to add an inventor to the patent-in-suit, though it has not yet been issued.

Case Timeline

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

U.S. Design Patent No. D1,006,076 - Metal Nibbler Drill Attachment

• Patent Identification: U.S. Design Patent No. D1,006,076, Metal Nibbler Drill Attachment, issued November 28, 2023.

The Invention Explained

• Problem Addressed: The complaint asserts that Plaintiff's products, styled with its patented designs, have become popular and are "instantly recognizable" to consumers, creating valuable goodwill (Compl. ¶6-7). The implicit problem addressed by the design patent is the need for a unique, non-functional, ornamental appearance to distinguish the product in the marketplace.
• The Patented Solution: The patent protects the specific ornamental appearance of a metal nibbler drill attachment as a whole, depicted in the patent's figures (D1,006,076 Patent, Figs. 1-10). The protected design is defined by the visual characteristics shown in solid lines, including the overall configuration of the dual-wheel housing, the shape of the mounting flange, and the particular form of the angled handle (D1,006,076 Patent, Description).
• Technical Importance: The complaint alleges that the patented design has come to "symbolize high quality metal nibbler drill attachment tools" in the United States and around the world (Compl. ¶6).

Key Claims at a Glance

• The patent contains a single claim for "The ornamental design for a metal nibbler drill attachment, as shown and described" (D1,006,076 Patent, Claim).
• The scope of a design patent claim is defined by its drawings. The essential elements are the visual features of the article shown in solid lines, including:
  • The overall configuration of the tool, featuring two vertically stacked circular housings.
  • The specific contours and shape of the main body connecting the housings.
  • The precise shape, angle, and bends of the handle element.
  • The visual appearance of the toothed gear element, as detailed in an enlarged view (D1,006,076 Patent, Fig. 9).
• The complaint asserts this single claim against the Defendants (Compl. ¶25).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are "metal nibbler drill attachment apparatus" (the "Infringing Products") offered for sale, sold, and/or imported by the Defendants (Compl. ¶4).

Functionality and Market Context

The complaint alleges that Defendants operate "fully interactive, e-commerce stores" on platforms such as Amazon, eBay, AliExpress, and others, targeting consumers in the United States, including Illinois (Compl. ¶2, ¶12). These stores are alleged to sell products that are the "same unauthorized and unlicensed product" that infringes Plaintiff's design patent (Compl. ¶4). The complaint further alleges that the Defendants are part of a network that uses tactics like fictitious aliases and common marketing strategies to conceal their identities and sell these products (Compl. ¶11, ¶18).

IV. Analysis of Infringement Allegations

The central test for design patent infringement is whether, in the eye of an "ordinary observer," the accused design is substantially the same as the claimed design, such that the observer would be deceived into purchasing the accused product believing it is the patented one. The complaint's allegations are structured to meet this test. The complaint includes a perspective view of the patented design, which serves as the basis for comparison with the accused products (Compl. p. 5, FIG. 1).

D1,006,076 Infringement Allegations

Identified Points of Contention

• Scope Questions: The primary question for infringement will be the application of the "ordinary observer" test. The dispute will center on whether the overall visual appearance of the Defendants' products is "substantially the same" as the design claimed in the ’076 Patent, considering the elements shown in solid lines and disregarding the functional aspects of the tool.
• Technical Questions: A key evidentiary question will be whether Plaintiff can demonstrate that the products actually sold by the numerous, unidentified Defendants are visually identical or nearly identical to the patented design. The complaint alleges they are the "same" product, but this will require proof on a defendant-by-defendant basis (Compl. ¶4).

V. Key Claim Terms for Construction

In design patent litigation, formal construction of specific text-based claim terms is rare, as the claim's scope is primarily defined by the drawings. The central analysis will not be about defining words but about comparing the accused product's appearance to the patented design as a whole. The scope of the claim is delineated by what is shown in solid versus broken lines in the patent's figures. Practitioners will focus on the fact that the broken lines, which "illustrate portions of the metal nibbler drill attachment that form no part of the claimed design," will limit the scope of protection to the specific ornamental features rendered in solid lines (D1,006,076 Patent, p. 3, Description). The legal analysis will therefore revolve around the application of the ordinary observer test to this specific visual scope.

VI. Other Allegations

Indirect Infringement

The complaint makes a conclusory allegation of indirect infringement (Compl. ¶25) and requests an injunction against "aiding, abetting, [or] contributing to" infringement (Prayer for Relief, ¶1.b). It also alleges Defendants are "working in active concert" (Compl. ¶21). However, the complaint does not plead specific facts detailing how Defendants might have induced infringement by third parties.

Willful Infringement

The complaint alleges that Defendants' infringement was willful (Compl. ¶22). The basis for this allegation appears to be that Defendants "knowingly and willfully" manufactured and sold the infringing products and engaged in concerted tactics to evade detection and enforcement (Compl. ¶19, ¶21).

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

• A core issue will be one of evidence and attribution: Can the Plaintiff successfully link specific infringing products to the numerous, anonymous "Schedule A" defendants and produce evidence (such as product samples or high-quality transaction records) demonstrating that the accused products are, in fact, "substantially the same" as the patented design?
• A second issue will be procedural: The case's viability may depend on the court's willingness to exercise personal jurisdiction over foreign e-commerce operators based on their online sales into the district and the effectiveness of any resulting orders against third-party platforms like Amazon and eBay.
• The ultimate substantive question will be the application of the design patent infringement test: Assuming evidence of the accused products is presented, is the overall ornamental appearance of those products similar enough to the '076 Patent's claimed design to deceive an ordinary purchaser, or are there sufficient visual differences to avoid infringement?