HIC Ipco LLC v. Individuals Corps Ltd

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: HIC Ipco LLC, Hickies OpCo LLC, and TCJ I, LLC (Delaware)
  • Defendant: The Individuals, Corporations, Limited Liability Companies, Partnerships, and Unincorporated Associations Identified on Schedule A to the Complaint (People's Republic of China or other foreign jurisdictions)
  • Plaintiff’s Counsel: Boies Schiller Flexner LLP
• Case Identification: 1:24-cv-00952, N.D. Ill., 02/02/2024
• Venue Allegations: Venue is asserted based on Defendants allegedly committing acts of patent infringement in the district by offering to sell, selling, and shipping accused products to consumers in Illinois.
• Core Dispute: Plaintiff alleges that Defendant e-commerce store operators infringe eight of its design patents by making, using, selling, and importing unauthorized "no tie" elastic shoelace alternatives that are colorable imitations of its patented designs.
• Technical Context: The technology resides in the consumer footwear accessories market, specifically elastic lacing systems that replace traditional shoelaces to provide convenience and a custom fit.
• Key Procedural History: The complaint is structured as a collective action against numerous online sellers, identified on a sealed Schedule A, who are alleged to be part of a larger counterfeiting network that uses tactics to conceal identities and evade enforcement. No prior litigation or post-grant proceedings are mentioned.

Case Timeline

Date	Event
2012-07-XX	HICKIES Laces product line launched
2013-09-20	U.S. Patent No. D714,631 Priority Date
2013-10-01	U.S. Patent No. D762,459 Priority Date
2013-10-04	U.S. Patent Nos. D716,645, D719,823, D721,268 Priority Date
2014-04-08	U.S. Patent No. D720,123 Priority Date
2014-10-07	U.S. Patent No. D714,631 Issued
2014-11-04	U.S. Patent No. D716,645 Issued
2014-12-23	U.S. Patent No. D719,823 Issued
2014-12-30	U.S. Patent No. D720,123 Issued
2015-01-20	U.S. Patent No. D721,268 Issued
2015-09-04	U.S. Patent No. D797,548 Priority Date
2016-04-15	U.S. Patent No. D786,055 Priority Date
2016-08-02	U.S. Patent No. D762,459 Issued
2017-05-09	U.S. Patent No. D786,055 Issued
2017-09-19	U.S. Patent No. D797,548 Issued
2024-02-02	Complaint Filing Date

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

U.S. Patent No. D714,631 - "FASTENING DEVICE," Issued October 7, 2014

The Invention Explained

• Problem Addressed: The complaint identifies the patented product line as a "no tie shoelace alternative" (Compl. ¶1).
• The Patented Solution: This design patent claims the ornamental appearance of a fastening device. The claimed design consists of a flat, elongated body with a series of circular indentations, a T-bar anchor at one end, and a rounded fastening head at the opposite end, as depicted in the patent's figures (D’631 Patent, FIG. 1-6; col. 1:19-35). The design's overall visual impression is defined by the specific shapes and proportions of these elements as a whole (D’631 Patent, Claim).
• Technical Importance: The complaint alleges that the HICKIES Laces represented a "game-changing design" and that Plaintiffs were the "first to market" this type of product (Compl. ¶19).

Key Claims at a Glance

• The patent asserts a single claim for "The ornamental design for a fastening device, as shown and described" (D’631 Patent, Claim).

U.S. Patent No. D716,645 - "FASTENING DEVICE," Issued November 4, 2014

The Invention Explained

• Problem Addressed: The patented product is positioned as an alternative to conventional shoelaces (Compl. ¶1, ¶15).
• The Patented Solution: This patent claims the ornamental design for a fastening device, focusing on its end portions. The design features two symmetrical, enlarged, eyelet-like ends through which a T-bar element passes (D’645 Patent, FIG. 1). The central strap connecting the two ends is shown in broken lines, indicating that its length and specific contour are not part of the claimed design (D’645 Patent, Description; col. 1:44-51). The claim protects the specific visual appearance of the end fasteners (D’645 Patent, Claim).
• Technical Importance: The complaint asserts that the distinctive design of the HICKIES Laces is broadly recognized by consumers and associated with quality and innovation (Compl. ¶22).

Key Claims at a Glance

• The patent asserts a single claim for "The ornamental design for a fastening device, as shown and described" (D’645 Patent, Claim).

U.S. Patent No. D719,823 - "FASTENING DEVICE," Issued December 23, 2014

• Technology Synopsis: This patent claims the ornamental design for a fastening device characterized by two ends with crescent-shaped protrusions and a wider, central portion containing a circular detail. The central shaft connecting the features is disclaimed via broken lines (D’823 Patent, Description).
• Asserted Claims: One claim for the ornamental design as shown and described (D’823 Patent, Claim).
• Accused Features: The overall design of the "Counterfeit Products" sold by Defendants is alleged to infringe (Compl. ¶49).

U.S. Patent No. D720,123 - "EYELET COVER," Issued December 30, 2014

• Technology Synopsis: This patent claims the ornamental design for what is described as an eyelet cover. The design consists of a cap portion and two downward-projecting prongs with hooked ends. The circular cap is disclaimed via broken lines (D’123 Patent, Description).
• Asserted Claims: One claim for the ornamental design as shown and described (D’123 Patent, Claim).
• Accused Features: The overall design of the "Counterfeit Products" sold by Defendants is alleged to infringe (Compl. ¶49).

U.S. Patent No. D721,268 - "FASTENING DEVICE," Issued January 20, 2015

• Technology Synopsis: This patent claims the ornamental design for the end-portions of a fastening device. One end has a hook-like shape, while the other end has a complementary shape. The connecting strap between them is disclaimed via broken lines (D’268 Patent, Description).
• Asserted Claims: One claim for the ornamental design as shown and described (D’268 Patent, Claim).
• Accused Features: The overall design of the "Counterfeit Products" sold by Defendants is alleged to infringe (Compl. ¶49).

U.S. Patent No. D762,459 - "FASTENING DEVICE," Issued August 2, 2016

• Technology Synopsis: This patent claims an ornamental design for a fastening device similar to the '631 Patent. It features a T-bar anchor, a flattened strap body with circular design elements, and a rounded fastener at the opposite end. The circular elements are disclaimed via broken lines (D’459 Patent, Description).
• Asserted Claims: One claim for the ornamental design as shown and described (D’459 Patent, Claim).
• Accused Features: The overall design of the "Counterfeit Products" sold by Defendants is alleged to infringe (Compl. ¶49).

U.S. Patent No. D786,055 - "FASTENING DEVICE," Issued May 9, 2017

• Technology Synopsis: This patent claims the ornamental design for a fastening device with a circular, button-like top at one end and an eyelet-shaped opening with a protruding tab at the other. The connecting strap is disclaimed via broken lines (D’055 Patent, Description).
• Asserted Claims: One claim for the ornamental design as shown and described (D’055 Patent, Claim).
• Accused Features: The overall design of the "Counterfeit Products" sold by Defendants is alleged to infringe (Compl. ¶49).

U.S. Patent No. D797,548 - "FASTENING DEVICE," Issued September 19, 2017

• Technology Synopsis: This patent claims an ornamental design for a fastening device visually similar to the '055 Patent. It features a button-like top at one end and an eyelet-shaped opening with a tab at the other. The connecting strap is disclaimed via broken lines (D’548 Patent, Description).
• Asserted Claims: One claim for the ornamental design as shown and described (D’548 Patent, Claim).
• Accused Features: The overall design of the "Counterfeit Products" sold by Defendants is alleged to infringe (Compl. ¶49).

III. The Accused Instrumentality

Product Identification

• The accused instrumentalities are identified as "Counterfeit Products," specifically "elastic no tie shoelace alternative[s]" (Compl. ¶1, ¶3).

Functionality and Market Context

• The complaint alleges these products are unauthorized copies of Plaintiff's patented designs, sold through various e-commerce storefronts on platforms like Amazon and eBay (Compl. ¶3, ¶49). The complaint provides a photo of "Exemplary Counterfeit Products," showing several colorful, elastic, strap-like items with distinct fasteners on each end (Compl. p. 17). Another image shows the accused products in use, laced through the eyelets of a shoe (Compl. p. 18). Plaintiff alleges that the success and popularity of its HICKIES Laces have led to "significant counterfeiting" by Defendants, who trade on Plaintiff's goodwill (Compl. ¶24, ¶46).

IV. Analysis of Infringement Allegations

The standard for design patent infringement is whether, in the eye of an ordinary observer familiar with the prior art, the accused design is substantially the same as the claimed design, such that the observer would be deceived into purchasing the accused product supposing it to be the patented one.

D714,631 Infringement Allegations

Claim Element (from Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
The ornamental design for a fastening device, as shown and described.	The complaint alleges that the "Counterfeit Products" sold by Defendants embody designs that are colorable imitations of the patented design. A visual comparison is presented between a patent figure and the accused products, which are alleged to be confusingly similar.	¶49, ¶50, p. 17	col. 1:19-35

D716,645 Infringement Allegations

Claim Element (from Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
The ornamental design for a fastening device, as shown and described.	The "Counterfeit Products" are alleged to incorporate the ornamental design claimed in the '645 patent, creating a visual appearance that is substantially similar to that of the patented design as a whole.	¶49, ¶50, p. 17-18	col. 1:24-51

Identified Points of Contention

• Scope Questions: A central question will be whether the overall visual impression of the various accused products (Compl. p. 17) is substantially similar to the specific designs claimed in each of the eight asserted patents. The complaint makes a general allegation, but a court's analysis would require a one-to-one comparison for each patent.
• Technical Questions: The infringement analysis will depend on a visual comparison. A key question is whether the differences between the accused products and the patent drawings are minor enough to be overlooked by an ordinary observer, or if they create a sufficiently distinct overall visual appearance. The effect of the disclaimed portions (broken lines) in several of the patents, such as the connecting straps, will be critical in defining the scope of what is actually protected and compared.

V. Key Claim Terms for Construction

In design patent cases, the "claim" is the visual design itself, so traditional claim construction of terms is rare. The analysis focuses on the scope of the design as depicted in the drawings.

• The Term: "The ornamental design ... as shown and described."
• Context and Importance: This phrase defines the entire scope of the patent right. The infringement analysis depends entirely on comparing the visual appearance of the accused products to the design "shown and described" in the patent figures. Practitioners may focus on this "term" because the heart of the dispute is the visual similarity, or lack thereof, between the patented drawings and the accused products.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The design is protected as a whole, not as a collection of separable parts. An interpretation favoring the patentee might argue that as long as the overall visual effect of the accused product is substantially the same as the patented design, minor differences in individual features are immaterial.
  • Evidence for a Narrower Interpretation: The solid lines in the patent drawings define the precise boundaries of the claimed design. Any portion shown in broken lines, such as the strap in the ’645 Patent, is expressly disclaimed and cannot be part of the infringement analysis (D’645 Patent, col. 1:44-51). An accused infringer may argue that any deviation from the specific, solid-line features creates a different overall visual impression.

VI. Other Allegations

Indirect Infringement

• The complaint includes a general allegation of direct and/or indirect infringement (Compl. ¶49) and seeks to enjoin aiding, abetting, and inducement (Compl. p. 22, ¶1.b, e). However, the body of the complaint does not plead specific facts to support a claim for either induced or contributory infringement, such as alleging Defendants instructed third parties on how to infringe.

Willful Infringement

• The complaint alleges that Defendants' infringement was "knowing[]," "intentional[]," "willful," and undertaken with "reckless disregard" (Compl. ¶47, ¶51). The factual basis for this allegation is the assertion that Defendants are engaging in "counterfeiting" by intentionally copying Plaintiff's designs to trade on the goodwill and success of the HICKIES brand (Compl. ¶46, ¶47).

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

• A core issue will be one of visual comparison: For each of the eight asserted patents, is the overall ornamental design of the accused "Counterfeit Products" substantially the same as the claimed design in the eyes of an ordinary observer? This will require a patent-by-patent analysis, and the outcome may differ for each asserted design.
• A key evidentiary question will be one of scope and disclaimer: How will the court treat the portions of the designs shown in broken lines? The analysis for patents like the '645 Patent, which disclaims the connecting strap, will focus narrowly on the end fasteners, raising the question of whether similarity in those specific parts is enough to find infringement of the design as a whole.
• A final question will relate to willfulness and damages: If infringement is found, how will the allegations of a widespread, evasive "counterfeiting" operation (Compl. ¶34, ¶38) affect the analysis of willfulness and the potential for enhanced damages under 35 U.S.C. § 284 or recovery of total profits under 35 U.S.C. § 289?