DCT

1:24-cv-05482

Shenzhen Huamingjun Rubber Co Ltd v. Dongguan Saien Chuangke Technology Co Ltd

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: Shenzhen Huamingjun Rubber Co. Ltd., et al. v. Dongguan Saien Chuangke Technology Co., Ltd., 1:24-cv-05482, N.D. Ill., 07/12/2024
  • Venue Allegations: Venue is based on Defendant's alleged business activities targeting consumers in Illinois through e-commerce platforms like Amazon, and the existence of a related lawsuit filed by Defendant in the same district.
  • Core Dispute: Plaintiffs seek a declaratory judgment that their various reusable water balloon products do not infringe Defendant's design patent for a "spherical toy water ball."
  • Technical Context: The dispute concerns the ornamental design of reusable, magnetically-sealing water balloon toys, a popular consumer product category.
  • Key Procedural History: The action was precipitated by Defendant's intellectual property complaints to Amazon, which resulted in the delisting of Plaintiffs' products. Plaintiffs allege these complaints are baseless. The complaint also notes that Defendant has sued Plaintiff Huamingjun in the same court over a different patent, indicating a broader competitive dispute.

Case Timeline

Date Event
2020-12-25 '929 Patent Earliest Priority Date
2022-04-01 Huamingjun identifies market for reusable water balloons (approx.)
2022-06-01 Huamingjun launches first-generation product (approx.)
2023-09-01 Huamingjun launches second-generation product (approx.)
2024-06-11 U.S. Design Patent D1,030,929 S Issues
2024-06-14 Defendant begins filing Amazon infringement complaints (approx.)
2024-07-12 Plaintiffs file Amended Complaint for Declaratory Judgment

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

  • Patent Identification: U.S. Design Patent No. D1,030,929 S, titled "Spherical toy water ball," issued on June 11, 2024.
  • The Invention Explained:
    • Problem Addressed: As a design patent, the specification does not articulate a technical problem. It protects the novel, ornamental appearance of the article of manufacture shown in the drawings (Compl. ¶40).
    • The Patented Solution: The patent claims the ornamental design for a water toy. The design features a spherical object comprised of two hemispherical halves joined by a connecting member ('929 Patent, DESCRIPTION, col. 2:61-65). The exterior surface is characterized by a pattern of broken, wavy lines, while the interior is shown as smooth and unadorned ('929 Patent, Figs. 1-3). The patent protects the specific visual appearance of the toy, not the underlying concept of a two-part, self-sealing water ball (Compl. ¶40).
    • Technical Importance: The design provides a specific aesthetic in the competitive market for reusable water toys, where visual appeal is a key driver of consumer choice (Compl. ¶18).
  • Key Claims at a Glance:
    • Design patents contain a single claim. The asserted claim is: "The ornamental design for a spherical toy water ball, as shown and described" ('929 Patent, Claim, col. 2:58-59).
    • The scope of this claim is defined by the visual features depicted in the patent's drawings, including:
      • A generally spherical overall shape when closed.
      • A surface pattern of wavy, dashed lines.
      • A seam where two halves meet, interrupted by a connecting block.
      • An open configuration revealing two plain, concave hemispherical cups.

III. The Accused Instrumentality

  • Product Identification: The complaint identifies several categories of "Accused Water Balloons" manufactured by Plaintiff Huamingjun and sold by the other Plaintiffs on Amazon (Compl. ¶27). These include a "Basic Round shape," a round shape with "special pattern customization," and numerous non-spherical novelty shapes such as octopus, grenade, poop, bomb, pumpkin, and star shapes (Compl. ¶¶ 18, 23).
  • Functionality and Market Context: The accused products are described as high-quality, reusable silicone water toys that seal using magnets (Compl. ¶17). Plaintiffs allege their products have become popular and feature safety enhancements, such as making magnets less likely to fall out and using more tear-resistant silicone, to address deficiencies in other products on the market (Compl. ¶17). These products are sold online, and the dispute arose from their delisting from Amazon following Defendant's infringement reports (Compl. ¶¶ 2, 27).

IV. Analysis of Infringement Allegations

The complaint seeks a declaratory judgment of non-infringement. The following table summarizes the key visual differences alleged by Plaintiffs to distinguish their products from the patented design.

D'929 Patent Non-Infringement Allegations

Claim Element (from '929 Patent Figures) Alleged Non-Infringing Product Feature Complaint Citation Patent Citation
Open state shows smooth, blank circular contact surfaces in each hemisphere. The contact surfaces of the "Basic Round shape" product display "multiple dark rectangular blocks," which are not shown in the patent's drawings. This is depicted in a side-by-side visual comparison. ¶35, p. 17 col. 2:63-65
Closed state shows a specific three-line configuration at the seam. The "Basic Round shape" product exhibits different lines, including protruding lines and additional parallel lines that create distinct "color-block regions" on the surface. ¶36, p. 18 col. 2:61-62
Surface ornamentation consists solely of a specific wavy, broken-line pattern. The "Round shape with special pattern customization" product is "extensively covered with bright-colored patterns," creating a substantially different visual appearance. An image provided highlights these applied patterns. ¶37, p. 20 col. 2:61-62
The overall design is for a "spherical" toy water ball. Nine of the eleven accused product types are explicitly non-spherical, having shapes like an octopus, grenade, pumpkin, diamond, and star. The complaint provides a photo gallery of these distinct shapes. ¶¶ 38-39, pp. 21-27 col. 2:58
  • Identified Points of Contention:
    • Scope Questions: A primary issue is the scope of the term "spherical" in the claim. The complaint argues this term strictly limits the patent to spherical objects, placing the nine non-spherical accused products outside the patent's scope (Compl. ¶38). The court will need to determine if the "ordinary observer" test allows a design patent for a spherical object to read on objects with fundamentally different overall shapes.
    • Technical Questions: For the spherical accused products, the analysis will focus on whether the visual differences alleged by Plaintiffs are substantial. The key question is whether an ordinary observer, familiar with the prior art, would be deceived into thinking the accused products are the same as the patented design despite the presence of rectangular blocks on the rim, different seam lines, or added bright-colored patterns (Compl. ¶¶ 35-37, 42).

V. Key Claim Terms for Construction

  • The Term: "spherical"
  • Context and Importance: This term, found in the patent's title and the preamble of its single claim, is the foundation of Plaintiffs' non-infringement argument for a majority of the accused products (Accused Water Balloons #3-#11) (Compl. ¶38). Practitioners may focus on this term because its construction could be dispositive for nine of the eleven product categories at issue, potentially resolving a significant portion of the case early on.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A defendant might argue that "spherical" is merely descriptive of the preferred embodiment and that the overall design could be found substantially similar even in a slightly non-spherical product. However, the intrinsic evidence offers limited support for a construction that strays far from a spherical shape.
    • Evidence for a Narrower Interpretation: The patent's claim explicitly uses the word "spherical" ('929 Patent, col. 2:58). All drawings in the patent (Figures 1, 2, and 3) consistently depict a geometrically spherical object. This provides strong intrinsic evidence that the patented design is limited to articles that are, in fact, spherical, an argument the complaint advances directly (Compl. ¶38, 41).

VI. Other Allegations

  • Indirect Infringement: Plaintiffs seek a declaration that they have not contributorily infringed or induced infringement of the '929 Patent (Compl. ¶44). The complaint does not present a detailed factual analysis for this, as its primary focus is on demonstrating a lack of direct infringement, which is a prerequisite for any indirect infringement claim.
  • Willful Infringement: There is no allegation of willfulness. Instead, Plaintiffs allege that Defendant's enforcement actions on Amazon are "baseless" and constitute a "misuse" of the platform's infringement complaint process (Compl. ¶¶ 3, 45). On this basis, Plaintiffs request a declaration that the case is "exceptional" under 35 U.S.C. § 285, which would entitle them to an award of attorney's fees (Compl., Prayer for Relief ¶3).

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

  • A core issue will be one of definitional scope: Is the claim for a "spherical" design strictly limited to spherical objects, as Plaintiffs argue, or can it be construed to cover the various non-spherical novelty shapes of the accused products? The resolution of this question may be dispositive for a majority of the products in the case.
  • A key evidentiary question will be one of holistic visual comparison: For the spherical accused products, are the identified differences—such as internal rim blocks, different seam lines, and added color patterns—substantial enough to create a different overall visual impression for the "ordinary observer," or are they minor variations that fail to distinguish the products from the patented design?
  • A central theme of the case is the propriety of enforcement: The court will likely consider whether Defendant's use of Amazon's infringement reporting system to delist numerous products, including those with arguably significant visual differences, was a good-faith enforcement of its patent rights or an improper attempt to stifle competition, which could support Plaintiffs' request for an "exceptional case" finding.