Pingyang Wanwei E Commerce Co Ltd v. John Doe

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Pingyang Wanwei E-commerce Co., Ltd. (People's Republic of China)
  • Defendant: John Doe (Jurisdiction Unknown)
  • Plaintiff’s Counsel: Glacier Law LLP
• Case Identification: 1:24-cv-03942, N.D. Ill., 05/15/2024
• Venue Allegations: Venue is based on allegations that the Defendant targets business activities and has made sales to consumers in Illinois through the Amazon e-commerce platform.
• Core Dispute: Plaintiff, an Amazon seller, seeks a declaratory judgment that a design patent for a spice jar lid is invalid and not infringed, following the patent holder's successful complaint to Amazon which resulted in the de-listing of Plaintiff's product.
• Technical Context: The dispute centers on the ornamental design of a common consumer kitchenware product, specifically a dual-function shaker and pour lid for a spice jar.
• Key Procedural History: This action was precipitated by a pre-suit patent infringement complaint filed by the Defendant patent holder directly to Amazon. This complaint led to the removal of the Plaintiff's product listing, prompting the Plaintiff to file this declaratory judgment action to challenge the patent's validity and seek reinstatement of its product.

Case Timeline

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

U.S. Design Patent No. D1,004,430 - "Lid"

• Patent Identification: U.S. Design Patent No. D1,004,430, titled "Lid," issued November 14, 2023.

The Invention Explained

• Problem Addressed: As a design patent, the specification does not articulate a technical problem. The objective is to claim a new, original, and ornamental design for an article of manufacture, in this case, a lid ('430 Patent, Title).
• The Patented Solution: The patent claims the specific visual appearance of a circular lid for a container ('430 Patent, CLAIM). The ornamental design features a flip-top cover that, when opened, reveals two distinct dispensing sections: one side has seven circular apertures arranged in a specific pattern for shaking, and the other side has a single, larger oblong opening for pouring ('430 Patent, FIG. 1, 2, 6). The claim covers the aesthetic appearance of these features as depicted in the solid lines of the patent's figures ('430 Patent, DESCRIPTION).

Key Claims at a Glance

• The single claim asserted is for "The ornamental design for a lid, as shown and described" ('430 Patent, CLAIM).
• The protected design consists of the visual elements depicted in the patent's figures in solid lines, primarily:
  • The overall circular shape of the lid.
  • The specific configuration of a flip-top cover.
  • The pattern of seven small, circular shaker holes.
  • The shape and placement of the larger pour spout.
  • The embossed recycling symbol.

III. The Accused Instrumentality

Product Identification

The Plaintiff’s product is identified as a "bottle lid" sold on Amazon under ASIN B0C6WSWTQK (Compl. ¶9).

Functionality and Market Context

The complaint does not provide a detailed description or any visual representations of the Plaintiff's own bottle lid. The allegations focus instead on the Defendant's assertion of infringement to Amazon and the Plaintiff's counter-argument that the patent is invalid due to prior art (Compl. ¶9, 16, 19). The complaint notes that the delisting of the product from Amazon has caused "significant financial loss" (Compl. ¶7).

IV. Analysis of Infringement Allegations

The complaint is a declaratory judgment action seeking a declaration of non-infringement, and therefore does not contain a traditional infringement claim chart. The Plaintiff's primary argument for non-liability is the alleged invalidity of the '430 Patent.

The Plaintiff’s non-infringement position is stated conclusorily: "Plaintiff’s bottle lid does not infringe the ’430 Patent based on the prior arts listed above" (Compl. ¶21). The central factual allegation in the complaint is not about infringement, but about invalidity. The complaint presents a screenshot from an Amazon customer review, dated June 25, 2018, which includes a photograph of a spice jar lid (Compl. p. 4). Plaintiff asserts this photographed lid is "identical to the '430 design" and was available for sale years before the patent's filing date (Compl. ¶12).

Identified Points of Contention

• Validity Question: The principal dispute raised by the complaint is whether the '430 Patent is invalid under 35 U.S.C. § 102 due to the on-sale bar. The core question for the court will be whether the evidence, such as the 2018 Amazon review, is sufficient to prove that a design substantially the same as the patented design was "on sale" in the U.S. more than one year before the patent's August 9, 2021 filing date (Compl. ¶12, 16).
• Infringement Question: Should the patent be found valid, the infringement analysis would turn on the "ordinary observer" test. This raises the question of whether an ordinary observer, familiar with the prior art, would believe the Plaintiff's accused lid is substantially the same as the design claimed in the '430 Patent. The complaint does not provide the evidence needed to conduct this comparison.

V. Key Claim Terms for Construction

In design patent cases, the "claim" is the visual design depicted in the drawings, not a set of text-based limitations. As such, traditional claim construction of terms is generally not performed. The central interpretive task is to determine the scope of the claimed design as a whole, based on the patent's figures.

• The Term: The scope of "the ornamental design for a lid."
• Context and Importance: The scope of the design is defined by what is shown in solid lines versus broken lines in the patent drawings. This determination is critical because only the elements shown in solid lines are protected.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent claims the overall visual impression of the lid's top surface. An argument could be made that minor variations not affecting the overall aesthetic are still within the scope of the design.
  • Evidence for a Narrower Interpretation: The patent explicitly disclaims the bottom of the lid by depicting it in broken lines ('430 Patent, DESCRIPTION; FIG. 7). The specific arrangement and number of the seven shaker holes and the precise shape of the pour spout are shown in solid lines and could be argued to be strict limitations of the design's scope ('430 Patent, FIG. 1, 6).

VI. Other Allegations

Willful Infringement

The complaint does not contain allegations of willful infringement. Instead, the Plaintiff alleges that the Defendant's conduct warrants a finding that the case is "exceptional" under 35 U.S.C. § 285, which could entitle the Plaintiff to attorney's fees (Compl., Prayer for Relief ¶4). This allegation is based on the assertion that the Defendant filed a "fraudulent patent infringement complaint to Amazon" (Compl. ¶2) to de-list the Plaintiff's product, allegedly with knowledge of the patent's invalidity.

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

• A core issue will be one of validity: Is the '430 design patent invalid under the on-sale bar of 35 U.S.C. § 102? The resolution will depend on whether the Plaintiff can produce sufficient evidence to establish that the design shown in the 2018 Amazon review was publicly sold or offered for sale in the United States before the critical date of August 9, 2020.
• A key procedural and legal question concerns the Defendant's enforcement conduct: Did the patentee's use of Amazon's reporting mechanism to de-list a competitor's product, based on a patent that is allegedly invalid due to pre-existing public art, constitute behavior that makes this an "exceptional case" justifying an award of attorney's fees?
• Finally, should the patent survive the validity challenge, a dispositive question will be one of infringement: Is the Plaintiff's accused lid design substantially the same as the design claimed in the '430 Patent from the perspective of an ordinary observer? The court's ability to even address this question will first require the introduction of evidence depicting the Plaintiff's actual product.