DCT

1:24-cv-03355

Nazano v. Shenzhen Aixiangpai E Business Co Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:24-cv-03355, N.D. Ill., 04/25/2024
  • Venue Allegations: Venue is alleged to be proper as Defendants are a foreign company and individuals residing in China with no established place of business in the United States, and who have conducted business in the judicial district via an Amazon storefront.
  • Core Dispute: Plaintiffs, who are Amazon sellers, seek a declaratory judgment of non-infringement, invalidity, and unenforceability of Defendants' design patent for a magnifier, following Defendants' filing of patent infringement complaints against Plaintiffs on the Amazon platform.
  • Technical Context: The dispute centers on the ornamental design of a handheld magnifier, a common consumer product sold in competitive online marketplaces.
  • Key Procedural History: This declaratory judgment action was prompted by a series of infringement complaints filed by Defendants on the Amazon platform in April 2024, which resulted in the removal of Plaintiffs' product listings. The complaint alleges that the patent-in-suit is invalid over multiple prior art references, including Defendants' own alleged prior sales, and is unenforceable due to inequitable conduct for failing to disclose this material prior art to the USPTO. Notably, a provided Ex Parte Reexamination Certificate, requested after the filing of the complaint, indicates that the sole claim of the patent-in-suit has been cancelled.

Case Timeline

Date Event
2017-09-25 Alleged public disclosure of 'CN382 Patent (prior art)
2018-08-03 Alleged prior sale on Amazon by Defendant Aixiangpai (prior art)
2018-12-07 Alleged public disclosure of 'CN529 Patent (prior art)
2019-07-16 Alleged prior sale on Alibaba (prior art)
2021-07-14 '466 Patent Application Filing Date / Priority Date
2023-03-21 '466 Patent Issue Date
2024-04-01 Defendant files first Amazon Infringement Complaint against Plaintiff
2024-04-25 Complaint for Declaratory Judgment Filed
2024-05-09 Ex Parte Reexamination of '466 Patent Requested

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

U.S. Design Patent No. D981,466 S - MAGNIFIER

  • Patent Identification: U.S. Design Patent No. D981,466 S, MAGNIFIER, issued March 21, 2023.

The Invention Explained

  • Problem Addressed: As a design patent, the '466 Patent does not address a technical problem but instead protects the novel, non-obvious, and ornamental appearance of an article of manufacture (D'466 Patent, Claim).
  • The Patented Solution: The patent claims the specific ornamental design for a handheld magnifier. Key visual features shown in the solid lines of the drawings include a circular lens housing connected to a smooth, rectangular handle with rounded corners, and a recessed, rectangular slide switch with a textured surface on the handle (D'466 Patent, FIGS. 1, 7). The design as a whole presents a clean, modern aesthetic.
  • Technical Importance: The complaint does not allege any technical importance; the design's value lies in its specific aesthetic appearance as a consumer product (Compl. ¶12).

Key Claims at a Glance

  • The patent contains a single claim for "The ornamental design for a magnifier, as shown and described" (D'466 Patent, Claim). This single claim incorporates by reference the visual appearance of the magnifier as depicted in Figures 1-7 of the patent.

III. The Accused Instrumentality

Product Identification

  • Plaintiffs' "magnifier products" sold on the Amazon platform under various ASINs, including B09YHDSGPM, B0CGTQ7LRQ, B08PP4RJ5J, and B09LVB92V2 (Compl. ¶20).

Functionality and Market Context

  • The complaint describes the products as "magnifiers" sold through Plaintiffs' Amazon storefronts (Compl. ¶12). It does not provide further technical details or images of the Plaintiffs' products, as the dispute centers on the products' alleged visual similarity to the patented design and the validity of that design patent itself. The complaint alleges that the filing of infringement reports by Defendants on Amazon led to the removal of Plaintiffs' product listings, causing harm to their business operations (Compl. ¶23).

IV. Analysis of Infringement Allegations

The complaint seeks a declaratory judgment of non-infringement. The primary basis for this claim is the argument that the ’466 Patent is invalid and unenforceable, and therefore cannot be infringed (Compl. ¶39). The complaint does not provide a direct comparison of the Plaintiffs' product designs to the patented design to argue for non-infringement on the merits of the design comparison itself.

Instead, the core of the Plaintiffs' case is an invalidity challenge. The complaint provides a side-by-side visual comparison of the patented design with four separate prior art references. This comparison table from the complaint shows the claimed design from the '466 Patent next to images of two Chinese patents and two prior online sales listings, all of which predate the patent's filing date (Compl. ¶14). The complaint alleges these prior art references are "identical/near identical" to the claimed design (Compl. ¶15).

Identified Points of Contention

  • Scope Questions: The central question for the invalidity analysis will be whether an "ordinary observer," familiar with the prior art, would find the patented design to be substantially the same as the designs disclosed in the prior art references identified by the Plaintiffs (Compl. ¶14). The visual evidence presented in the complaint suggests a high degree of similarity between the patented design and the prior art, raising a significant question of anticipation under 35 U.S.C. § 102.
  • Factual Questions: A key factual dispute will likely concern the public accessibility and authenticity of the alleged prior art, particularly the "Aixiangpai's Prior Sale on Amazon" from August 3, 2018 and the "Prior Sale on Alibaba" from July 16, 2019 (Compl. ¶14). The court will need to determine if these constituted public disclosures or "on sale" events sufficient to create a statutory bar to patentability.

V. Key Claim Terms for Construction

As this is a design patent, the "claim" consists of the ornamental design as depicted in the drawings rather than a series of text-based limitations. Formal claim construction of specific terms is typically not a central issue. The analysis instead focuses on the overall visual appearance of the claimed design as a whole, as viewed by an ordinary observer. The scope of the claim is defined by the solid lines in the patent's figures (D'466 Patent, FIGS. 1-7).

VI. Other Allegations

Unenforceability (Inequitable Conduct)

  • The complaint alleges that the '466 Patent is unenforceable due to inequitable conduct (Compl. ¶¶32-37). The specific basis for this allegation is the claim that Defendants knew of their own prior sale of an "identical" magnifier on Amazon on August 3, 2018, that this prior sale was material prior art, and that they intentionally failed to disclose it to the USPTO during the patent's prosecution (Compl. ¶¶33, 35, 36).

Willful Infringement

  • Willfulness is not alleged against the Plaintiffs. Rather, the Plaintiffs allege that the Defendants acted in "bad faith" by filing "knowingly and objectively false" infringement complaints on the Amazon platform, with knowledge that the '466 Patent was invalid and unenforceable (Compl. ¶¶22, 44). These allegations support Plaintiffs' request for a declaration that the case is "exceptional" for the purpose of recovering attorneys' fees under 35 U.S.C. § 285 (Compl. p. 10, ¶ f).

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

The litigation appears to center on the validity and enforceability of the '466 Patent, rather than a nuanced dispute over infringement. The following questions are central to the resolution of the case:

  • A primary question of validity: Do the prior art references cited in the complaint—particularly the alleged prior public sale by one of the Defendants—anticipate or render obvious the ornamental design claimed in the '466 Patent? The visual evidence provided in the complaint presents a strong basis for this challenge.

  • A critical question of enforceability: Did the patent owner breach its duty of candor to the USPTO by failing to disclose its own alleged prior sales of an identical product, and if so, does this failure rise to the level of inequitable conduct that would render the patent unenforceable?

  • A dispositive procedural question: Given that a provided reexamination certificate indicates the subsequent cancellation of the patent's sole claim, the court will likely need to determine the ongoing viability of the case. This development may render the core patent dispute moot and shift the focus to whether Defendants' enforcement actions prior to cancellation were objectively baseless, potentially making the case exceptional for an award of attorneys' fees.