Minimore Living Inc v. Huizhou Jiushengchen Furniture Co Ltd

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Minimore Living Inc (Delaware)
  • Defendant: Huizhou Jiushengchen Furniture Co., Ltd. (China); Taining Zhitaiou Technology Co., Ltd (China)
  • Plaintiff’s Counsel: Glacier Law LLP
• Case Identification: 1:24-cv-03323, N.D. Ill., 10/25/2024
• Venue Allegations: Venue is based on allegations that Defendants target and conduct business with consumers in Illinois through interactive e-commerce stores, including shipping products into the district. The complaint also invokes FRCP 4(k)(2) for personal jurisdiction over the foreign defendants.
• Core Dispute: Plaintiff seeks a declaratory judgment that it does not infringe Defendants' design patent for a sofa, and further that the patent is invalid and unenforceable.
• Technical Context: The dispute centers on the ornamental design of residential furniture, specifically a modern-style sofa, a highly competitive consumer product category.
• Key Procedural History: The action was precipitated by an infringement complaint Defendants filed with the e-commerce platform Wayfair, which targeted Plaintiff's sofa product. The complaint alleges this action created a justiciable controversy. The core of Plaintiff’s case rests on allegations that the patent is invalid over prior art from 1970 and unenforceable due to inequitable conduct for failing to disclose that art to the U.S. Patent and Trademark Office (PTO).

Case Timeline

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

U.S. Design Patent No. D1,004,993 - "Sofa," issued November 21, 2023

The Invention Explained

• Problem Addressed: Design patents do not articulate a technical problem. Their purpose is to protect a novel, original, and ornamental design for an article of manufacture, thereby preventing others from selling products with a confusingly similar appearance.
• The Patented Solution: The patent claims the specific ornamental design for a sofa as depicted in its eight figures (’993 Patent, Claim; FIGS. 1-8). Key visual features include a low-profile, two-seat cushion configuration, distinctive blocky armrests that are visually integrated with the backrest, and a distinct separation between the seat cushions and the sofa's base structure (’993 Patent, FIG. 7). The claim protects the overall visual impression created by this combination of features.
• Technical Importance: The commercial value of a furniture design lies in its aesthetic appeal and ability to create a distinct look in a crowded marketplace, as suggested by the complaint's focus on the long-standing popularity of the alleged prior art sofa's "unique and modern design" (Compl. ¶23).

Key Claims at a Glance

• The patent asserts a single claim.
• The claim protects: "The ornamental design for a sofa, as shown and described" (’993 Patent, col. 2:1-2).
• The scope of this claim is defined by the visual features depicted in solid lines in the patent's drawings, including:
  • The overall rectilinear shape and proportions.
  • The configuration of two large, distinct seat cushions and two back cushions.
  • The shape and profile of the armrests, which flow continuously into the back of the sofa.
  • The specific visual details shown in the front, back, side, top, bottom, and perspective views (’993 Patent, FIGS. 1-8).

III. The Accused Instrumentality

Product Identification

The complaint identifies the accused product as "Plaintiff's Sofa" sold through its online store on Wayfair (Compl. ¶¶17-18).

Functionality and Market Context

The complaint does not provide a detailed description or visual representation of the Plaintiff’s sofa. It alleges the product is "highly rated," "well-priced," and was "selling exceptionally well on Wayfair" prior to the Defendants' infringement complaint (Compl. ¶17). The core of the dispute is not the product's function but its appearance, which Defendants have alleged infringes the '993 Patent's design (Compl. ¶18).

IV. Analysis of Infringement Allegations

The complaint seeks a declaratory judgment of non-infringement. It does not provide a detailed infringement analysis or a feature-by-feature comparison of its product to the patent. Instead, its primary argument for non-infringement is that the '993 Patent is invalid and unenforceable, and therefore cannot be infringed (Compl. ¶¶32, 37). The complaint's substantive allegations focus entirely on invalidity based on pre-existing prior art.

A key visual from the complaint is the perspective view of the patented design. (Compl. ¶20, p.5). This view is central to any visual comparison against the alleged prior art. The complaint also provides a screenshot of a YouTube video, posted in 2020, showing a yellow sofa alleged to be the prior art "Marenco Sofa" (Compl. ¶24). This evidence is used to assert that the patented design was publicly known before its 2022 filing date.

The core allegations supporting the requested judgment of non-infringement are summarized below.

• Identified Points of Contention:
  • Scope Questions: The primary question for the court will be whether the overall ornamental design of the '993 Patent is substantially the same as the prior art Marenco Sofa. This will require a detailed visual comparison between the patent figures and evidence of the Marenco Sofa's design as it existed before July 20, 2022.
  • Technical Questions: A key evidentiary question will be whether the YouTube videos and other exhibits provided by the Plaintiff accurately depict the Marenco Sofa as it was known publicly and prove it was "on sale" or in "public use" more than one year prior to the patent's filing date.

V. Key Claim Terms for Construction

In design patent litigation, the claim is typically not construed with detailed verbal definitions; rather, the claim is understood to be for the design as a whole, as depicted in the drawings. The key issue is the overall visual impression.

• The Term: "The ornamental design for a sofa, as shown."
• Context and Importance: The scope of this "term" is the entire case. The comparison between the patented design and the alleged prior art Marenco Sofa will define the invalidity dispute. Practitioners may focus on this issue because the invalidity case hinges on whether the Marenco Sofa's design falls within the scope of what is "shown" in the '993 Patent's figures.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party could argue the claim covers the overall visual impression of a low-slung, two-cushion sofa with integrated, blocky arms and back, suggesting that minor differences in proportion or detail do not distinguish it from similar prior art. The "as shown and described" language directs focus to the overall aesthetic captured in the figures (’993 Patent, Claim; FIGS. 1-8).
  • Evidence for a Narrower Interpretation: A party could argue the claim is narrowly limited to the exact shapes, proportions, and surface contours shown in the patent's eight figures. Any discernible difference between the patent figures and the Marenco Sofa, such as the curvature of the cushions or the construction of the base, could be argued to place the prior art outside the scope of the claimed design.

VI. Other Allegations

• Inequitable Conduct:
  • The complaint alleges that the '993 Patent is unenforceable due to inequitable conduct (Compl. ¶27; Count II). The basis for this allegation is the claim that Defendant Jiushengchen, as a furniture manufacturer, "knew or at least should have known" of the famous Marenco Sofa prior art (Compl. ¶26). Plaintiff alleges that Defendant "intentionally concealed the existence of the Marenco Sofa" from the PTO and that the PTO would not have granted the patent if this material prior art had been disclosed (Compl. ¶¶26, 37).

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

1. A question of historical fact and visual identity: Is the design claimed in the '993 Patent substantially the same as the Marenco Sofa design from 1970? This will require the court to first establish the precise appearance of the Marenco Sofa as it was publicly known before the critical date and then compare it to the patent's drawings from the perspective of an ordinary observer.
2. A question of intent and materiality: Can the Plaintiff prove by clear and convincing evidence that the '993 Patent applicant knew the Marenco Sofa was material prior art and made a deliberate decision to conceal it from the PTO with the specific intent to deceive? The outcome of the unenforceability claim will depend heavily on evidence of the applicant's state of mind.
3. A preliminary jurisdictional question: Have the foreign-based Defendants, through their alleged e-commerce sales into Illinois and the act of sending an infringement complaint to Wayfair affecting an Illinois-based business interest, established sufficient "minimum contacts" to subject them to personal jurisdiction in the Northern District of Illinois?