DCT
1:24-cv-02149
Shenzhen Jinshui Technology Co Ltd v. Huang
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Shenzhen Jinshui Technology Co.,Ltd. (China)
- Defendant: Guanming Huang (China)
- Plaintiff’s Counsel: J. Zhang and Associates, P.C.
- Case Identification: 1:24-cv-02149, N.D. Ill., 03/14/2024
- Venue Allegations: Plaintiff alleges venue is proper because the Defendant, a non-U.S. resident, may be sued in any judicial district. The complaint also asserts personal jurisdiction based on the Defendant enforcing a U.S. patent against product listings on Amazon.com and having sufficient national contacts with the United States.
- Core Dispute: Plaintiff seeks a declaratory judgment that Defendant’s design patent for a "wrappage dispenser tool" is invalid, following Defendant’s successful effort to have Plaintiff’s product listings removed from Amazon.com for alleged infringement.
- Technical Context: The technology concerns the ornamental design of handheld tools used to dispense materials like plastic wrap or foil from a roll.
- Key Procedural History: The dispute arose after the Defendant, through counsel, submitted an infringement report to Amazon.com on or before February 10, 2024, identifying Plaintiff's products. This resulted in the removal of Plaintiff's listings. The complaint alleges that subsequent settlement discussions, involving a "Promise Letter" from the Defendant, failed, prompting this declaratory judgment action. The complaint also raises an inequitable conduct claim, alleging the patentee failed to disclose known Chinese prior art patents to the USPTO during prosecution.
Case Timeline
| Date | Event |
|---|---|
| 2019-12-21 | Alleged publication date of prior art (Exhibit E) |
| 2021-01-13 | Alleged publication date of prior art (Exhibit F) |
| 2021-10-28 | Critical date for prior art invalidating the ’732 patent |
| 2022-10-28 | U.S. Patent D993,732 application filing date |
| 2023-08-01 | U.S. Patent D993,732 issue date |
| 2024-02-10 | Amazon informs Plaintiff of product listing removal due to Defendant's infringement report |
| 2024-02-21 | Plaintiff and Defendant hold telephone conversation regarding the dispute |
| 2024-02-23 | Defendant submits draft "Promise Letter" to Plaintiff for settlement |
| 2024-03-14 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D993,732 - "Wrappage Dispenser Tool"
- Patent Identification: U.S. Design Patent No. D993,732, "Wrappage Dispenser Tool", issued August 1, 2023.
The Invention Explained
- Problem Addressed: The patent does not describe a technical problem, as is typical for design patents. The focus is on creating a new, original, and ornamental design for an article of manufacture, specifically a tool for dispensing wrap (Compl. ¶27; ’732 Patent, Abstract).
- The Patented Solution: The patent discloses a specific visual appearance for a wrappage dispenser tool. Key ornamental features include a two-part body with a distinct handle and an insertable core. The handle section features a flared base, a grip area with recessed vertical panels, and a wider section below a collar. The core-insert section features multiple thin, fin-like protrusions extending axially from a central shaft (’732 Patent, Figs. 1, 8). The overall impression is of a columnar, stylized tool.
- Technical Importance: The complaint alleges that dispenser tools with designs identical or highly similar to the patented design were sold on e-commerce platforms like Amazon prior to the patent's critical date, suggesting the design configuration itself had market relevance (Compl. ¶¶29-30).
Key Claims at a Glance
- The patent asserts a single claim: "The ornamental design for a wrappage dispenser tool, as shown and described" (’732 Patent, Claim).
- The claim's scope is defined by the visual appearance depicted in the eight figures of the patent.
- The complaint seeks a declaratory judgment that this single claim is invalid (Compl. ¶1).
III. The Accused Instrumentality
Product Identification
- The products at issue are Plaintiff's "wrap dispenser" products sold on Amazon.com, identified by specific ASINs including B0BF4ZGF51, B0BYJRYPFC, and B0C2Q2568S, among others (Compl. ¶12). Plaintiff refers to these collectively as the "Accused Products" (Compl. ¶12).
Functionality and Market Context
- The complaint describes the products as "wrappage dispenser tools" (Compl. ¶29). The infringement allegation that prompted the lawsuit, sent by Defendant's counsel to Amazon, described the products as "wrap dispenser products" and asserted their design was "EXACTLY IDENTICAL" to the patented design (Compl. ¶13).
IV. Analysis of Invalidity Allegations
The complaint does not allege infringement; rather, it seeks a declaration of non-infringement and invalidity in response to the Defendant’s enforcement actions (Compl. ¶¶1, 7). The Defendant’s infringement theory, as quoted in the complaint, is based on a direct visual comparison: "we believe that certain wrap dispenser products listed on Amazon.com infringe the ’732 Patent because each of their design is EXACTLY IDENTICAL to the patented design" (Compl. ¶13).
The Plaintiff’s central allegations focus on invalidity under 35 U.S.C. §§ 102 (anticipation) and 103 (obviousness), asserting that the patented design was disclosed in prior art before the patent's October 28, 2021 critical date (Compl. ¶27). The complaint provides visual evidence to support this claim. A side-by-side image compares a figure from the ’732 Patent with a photograph of an alleged prior art product from an Amazon review dated December 21, 2019 (Compl. ¶31). This image presents a comparison of the tools' side profiles, highlighting similarities in the handle shape, collar, and core insert design (Compl. ¶31).
| Claim Element (from Claim 1) | Alleged Invalidating Prior Art Feature | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a wrappage dispenser tool, as shown and described. | An allegedly identical design shown in an Amazon product review published on December 21, 2019, nearly two years before the patent's critical date. | ¶¶30-31 | Figs. 1-8 |
- Identified Points of Contention:
- Anticipation and the On-Sale Bar: The primary dispute will likely center on the authenticity and public accessibility of the alleged prior art, particularly the Amazon product review from 2019. A key question for the court will be whether the evidence provided by the Plaintiff is sufficient to prove by clear and convincing evidence that a product embodying the patented design was on sale or described in a printed publication before the critical date.
- Visual Identity: While the Defendant alleged the designs were "EXACTLY IDENTICAL," the court will apply the "ordinary observer" test. The question is whether an ordinary observer, giving such attention as a purchaser usually gives, would be deceived into purchasing the prior art product believing it to be the patented design. The complaint's visual evidence directly addresses this test (Compl. ¶¶31-32).
- Functionality: A separate invalidity argument raises the question of whether the patented design is "primarily functional rather than ornamental" under 35 U.S.C. §171, which would render the design patent invalid (Compl. ¶33).
V. Key Claim Terms for Construction
For a design patent, the single claim is typically construed by reference to the drawings as a whole. There are no specific terms to construe in the traditional sense. The analysis focuses on the overall ornamental appearance of the claimed design.
- The Term: "The ornamental design for a wrappage dispenser tool, as shown and described."
- Context and Importance: The scope of the claim is defined entirely by the visual representations in Figures 1-8 of the ’732 Patent. The central issue is not the meaning of a word, but the overall visual impression created by the design. The outcome of both the infringement and invalidity analyses will depend on a comparison of this visual impression with the Plaintiff's product and the alleged prior art.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim is not limited to a specific size, material, or color. Parties arguing for a broader scope may contend that the claim covers any dispenser tool with the same overall shape and configuration of features, regardless of minor variations.
- Evidence for a Narrower Interpretation: The specific details shown in the drawings, such as the proportions of the handle sections, the number and shape of the fins on the insert, and the particular curvature of the flared base, define the limits of the design. A party could argue that any deviation from these specific illustrated features places a design outside the claim's scope (’732 Patent, Figs. 1-8). The broken lines in the drawings explicitly disclaim certain subject matter, thereby limiting the scope of the claimed design (’732 Patent, Description).
VI. Other Allegations
- Inequitable Conduct: The complaint alleges that the ’732 patent is invalid or unenforceable due to inequitable conduct during prosecution (Compl. ¶34). The specific allegation is that the Defendant knew of, but failed to disclose to the USPTO, a Chinese design patent and a Chinese utility patent held by his "Chinese supplier" covering the same subject matter. The complaint notes that the patent’s file history shows the Examiner considered only U.S. references (Compl. ¶34).
- Incorrect Inventorship: As an alternative theory, the complaint alleges the patent is invalid because the named inventor, Guanming Huang, was not the original inventor of the design (Compl. ¶35). The allegation suggests the design originated with the "Chinese supplier" and that Mr. Huang was, at most, authorized to file the application but was not the actual inventor (Compl. ¶¶14, 35).
- Functionality: The complaint asserts that the patent is invalid under 35 U.S.C. §171 because the design is "primarily functional rather than ornamental" (Compl. ¶33).
VII. Analyst’s Conclusion: Key Questions for the Case
This case appears to turn on fundamental questions of patent validity rather than nuanced infringement analysis. The key questions for the court are likely to be:
- A core evidentiary issue will be one of prior public disclosure: Can the Plaintiff produce clear and convincing evidence that the product depicted in the 2019 Amazon review is, in fact, the same design as the one claimed in the ’732 patent and that the review itself constitutes a "printed publication" or evidence of an on-sale bar under 35 U.S.C. § 102?
- A second issue will be one of proper inventorship and candor: Does discovery show that the named inventor, Guanming Huang, was not the true and original inventor of the claimed design, or that he withheld material prior art from the USPTO with an intent to deceive, potentially rendering the patent invalid or unenforceable?
- A final question will be one of statutory subject matter: Is the claimed design dictated by its function to such an extent that it is "primarily functional," stripping it of design patent protection under 35 U.S.C. § 171?