DCT
1:24-cv-06782
Shenzhen Topegg Technology Co Ltd v. Lu
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Shenzhen Topegg Technology Co., Ltd. (People's Republic of China)
- Defendant: Haochen Lu (People's Republic of China)
- Plaintiff’s Counsel: McDonald Hopkins LLC; Bayes PLLC
- Case Identification: 1:24-cv-06782, N.D. Ill., 08/01/2024
- Venue Allegations: Venue is based on allegations that Defendant targeted Plaintiff's business activities toward consumers in the Northern District of Illinois via e-commerce stores and that Defendant's threats to have Plaintiff's products delisted would cause substantial injury in the district.
- Core Dispute: Plaintiff seeks a declaratory judgment that its "Meoky" brand vacuum tumblers do not infringe Defendant's design patent, and further seeks to have the patent declared invalid and unenforceable due to alleged derivation, prior art, and inequitable conduct.
- Technical Context: The technology at issue is the ornamental design for vacuum-insulated tumblers, a highly popular consumer product category characterized by features like handles and tapered bases for vehicle compatibility.
- Key Procedural History: The complaint alleges that the Defendant's patented design was derived directly from Plaintiff's product after the Defendant visited Plaintiff's showroom. Plaintiff alleges its design was already on sale and the subject of a Chinese patent application (CN '138) well before the Defendant filed for the U.S. patent-in-suit. The complaint further alleges that the Defendant committed inequitable conduct during prosecution by failing to disclose this material information to the USPTO and by improperly claiming micro-entity status.
Case Timeline
| Date | Event |
|---|---|
| 2022-07-06 | Plaintiff's affiliate allegedly files Chinese Patent application (CN '138) |
| 2022-08-31 | Plaintiff's 'Meoky' product allegedly "Date First Available" on Amazon.com |
| 2022-10-28 | Chinese Patent CN '138 issues |
| 2023-03-21 | Alleged prior art Chinese Patent CN '867 filed |
| 2023-06-23 | Chinese Patent CN '867 published |
| 2023-08-11 | Defendant allegedly visited Plaintiff's showroom and received product samples |
| 2023-08-31 | U.S. Patent D1,033,140 ('140 Patent) filed (Priority Date) |
| 2024-07-02 | '140 Patent issues |
| 2024-07-XX | Defendant allegedly accuses Plaintiff of infringement |
| 2024-08-01 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. D1,033,140 - "VACUUM CUP"
- Patent Identification: U.S. Patent No. D1,033,140, "VACUUM CUP," issued July 2, 2024.
The Invention Explained
- Problem Addressed: As a design patent, the '140 Patent does not contain a background section describing a technical problem. Its purpose is to protect a new, original, and ornamental design for an article of manufacture, not a functional solution. (’140 Patent, DESCRIPTION).
- The Patented Solution: The patent protects the specific visual appearance of a vacuum cup. The claimed design consists of the cup’s particular shape and configuration, characterized by a two-tiered body with a wider, cylindrical upper section and a narrower, tapered lower section, along with a handle of a specific contour attached to the upper section. (’140 Patent, Figs. 1-8). The scope of protection is defined by the solid lines in the patent drawings.
- Technical Importance: The complaint alleges that the underlying product design is popular due to its combination of a tapered base that fits in automobile cupholders with a large-capacity upper body, handle, and fitted lid. (Compl. ¶11).
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is: "The ornamental design for a vacuum cup, as shown and described." (’140 Patent, CLAIM).
- The essential visual elements of the design claim, as depicted in the drawings, include:
- The overall configuration of a cup with a two-tiered body and an attached handle.
- A generally cylindrical upper body portion.
- A tapered lower body portion with a smaller diameter than the upper portion.
- The specific proportions and contours of the body and handle as shown in solid lines in the patent's figures.
III. The Accused Instrumentality
Product Identification
- The Plaintiff's "Meoky" brand vacuum tumbler. (Compl. ¶10).
Functionality and Market Context
- The Meoky tumbler is described as a vacuum-insulated tumbler featuring a handle, a leak-proof lid with a straw, and a tapered base designed to fit into standard automobile cupholders. (Compl. ¶10). The complaint includes a photograph of the product. (Compl. p. 4).
- Plaintiff alleges its Meoky tumbler has achieved "significant financial success" and is sold worldwide through major e-commerce channels, including Amazon, TikTok, and Temu. (Compl. ¶¶13-14).
IV. Analysis of Infringement Allegations
As this is a declaratory judgment action for non-infringement, the complaint does not contain a traditional infringement claim chart. Instead, it presents evidence arguing that the '140 Patent is an invalid copy of Plaintiff's pre-existing product. The table below summarizes the alleged correspondence between the patent's design and the Plaintiff's product, which forms the basis for Plaintiff's invalidity and derivation claims rather than a direct infringement analysis.
| Claim Element (Visual Feature from Claim 1) | Corresponding Feature of Plaintiff's Product | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental appearance of a vacuum cup with a handle and a two-tiered body. | The complaint alleges the overall design of its Meoky product is an "exact copy" of the patented design and provides a side-by-side comparison. | ¶25, p. 8 | Figs. 1, 3 |
| A generally cylindrical upper portion and a tapered, smaller-diameter lower portion. | Plaintiff's Meoky tumbler is described as having a "larger top and a tapered bottom shape" to fit in cupholders. | ¶11 | Figs. 3, 5 |
| The specific contours and proportions of the handle attached to the upper portion. | A visual comparison in the complaint shows a handle on the Meoky product that appears to have the same shape and placement as the handle in the '140 Patent's drawings. | ¶25, p. 9 | Figs. 2, 4, 9 |
- Identified Points of Contention:
- Inventorship: The central dispute is over who invented the design. The complaint alleges that the named inventor, Defendant Haochen Lu, derived the design directly from Plaintiff's product after receiving samples, raising the question of whether the '140 Patent is invalid for naming the incorrect inventor. (Compl. ¶¶ 15, 34, 45).
- Validity and Prior Art: The complaint asserts that the '140 Patent is invalid as anticipated or obvious in light of several pieces of alleged prior art, including Plaintiff's own Meoky tumbler, the CN '138 Patent, and the CN '867 Patent. (Compl. ¶¶ 25-26). This raises the question of whether these references disclose a design that is substantially the same as the claimed design to an ordinary observer.
- On-Sale Bar: The complaint alleges the '140 Patent is invalid due to prior public use and sales of the Meoky tumbler. (Compl. ¶31). A key piece of evidence is an Amazon listing with a "Date First Available" of August 31, 2022. (Compl. ¶14). This raises a factual and legal question as to whether this date, which is exactly one year before the patent's filing date of August 31, 2023, is sufficient to trigger the on-sale bar under 35 U.S.C. § 102, which requires the sale to be more than one year prior to the application date.
V. Key Claim Terms for Construction
The complaint does not raise any specific disputes regarding the construction of claim terms. In design patent litigation, the claim is typically understood to be the design as a whole, as depicted in the drawings, rather than any specific text. Courts generally do not perform a detailed verbal construction of the claim, focusing instead on the visual comparison between the patented design and the accused product from the perspective of an ordinary observer.
VI. Other Allegations
- Inequitable Conduct / Unenforceability: Plaintiff seeks a declaration that the '140 Patent is unenforceable due to inequitable conduct allegedly committed by the Defendant during prosecution. (Compl. Count III). The specific allegations include that the Defendant, with intent to deceive the USPTO, knowingly:
- Concealed the prior public use and sale of Plaintiff's tumbler. (Compl. ¶47).
- Concealed the existence of Plaintiff's prior CN '138 Patent. (Compl. ¶47).
- Signed a false declaration of inventorship. (Compl. ¶47).
- Certified eligibility for micro-entity status, which provides an 80% fee reduction, despite allegedly not meeting the gross income limits. (Compl. ¶¶ 21, 47).
- Prior Use Defense: Plaintiff asserts that it is entitled to a "prior use defense" under 35 U.S.C. § 273 due to its commercial use of the design prior to the filing of the '140 Patent. (Compl. ¶41).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this declaratory judgment action will likely depend on the court's findings on three central questions:
- A primary question will be one of inventorship and derivation: can Plaintiff prove by clear and convincing evidence that Defendant derived the patented design from Plaintiff's pre-existing "Meoky" tumbler, rendering the patent invalid for naming the incorrect inventor?
- A second key issue will be validity over prior art: do Plaintiff's own product and the cited Chinese patents constitute prior art that anticipates or makes obvious the design claimed in the '140 Patent from the perspective of an ordinary observer familiar with the art?
- Finally, the case will likely involve a fact-intensive inquiry into enforceability: did the Defendant intentionally conceal information material to patentability—such as Plaintiff’s product and prior foreign patent application—from the USPTO with an intent to deceive, thereby rendering the '140 Patent unenforceable for inequitable conduct?