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

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Shenzhen Huamingjun Rubber Co. Ltd. (People's Republic of China)
  • Defendant: Dongguan Saienchuangke Technology Co. Ltd. (People's Republic of China)
  • Plaintiff’s Counsel: Ni, Wang & Massand, PLLC
• Case Identification: 1:24-cv-07133, N.D. Ill., 08/13/2024
• Venue Allegations: Plaintiff alleges venue is proper based on Defendant’s business activities in Illinois, including deriving substantial revenue from residents, and directing patent enforcement activities into the district.
• Core Dispute: Plaintiff seeks a declaratory judgment that its reusable silicone water balloon products do not infringe, and that the claims are invalid, for two of Defendant's U.S. design patents.
• Technical Context: The dispute concerns ornamental designs for reusable, magnetically-sealing water balloons, a competitive product category within the children's toy market, particularly on e-commerce platforms.
• Key Procedural History: The action was precipitated by Defendant lodging infringement complaints against Plaintiff's products on the Amazon Marketplace, which resulted in the delisting of those products. Plaintiff filed this suit to challenge the validity of the patents and obtain a judicial declaration of non-infringement to counter these enforcement actions.

Case Timeline

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

U.S. Design Patent No. D1,030,929, "Spherical Toy Water Ball" (issued June 11, 2024)

The Invention Explained

• Problem Addressed: The complaint does not describe a technical problem addressed by the patent. As a design patent, its specification is limited to describing the figures and does not contain a background or problem-solution narrative (D'929 Patent, DESCRIPTION).
• The Patented Solution: The patent claims the ornamental design for a "spherical toy water ball" (D'929 Patent, Title). The design consists of a spherical body made of two hinged halves that can open and close (D'929 Patent, FIG. 2). The defining surface ornamentation is a pattern of continuous, undulating wavy lines distributed across the exterior of the sphere (D'929 Patent, FIG. 1). The claim protects the overall visual appearance of the design as depicted in the patent's figures (D'929 Patent, CLAIM).
• Technical Importance: The complaint describes a market for reusable water balloons flooded with "low-end, poor-quality" products, suggesting that distinct ornamental designs may serve as a key point of differentiation for consumers (Compl. ¶14).

Key Claims at a Glance

• The complaint seeks a declaration of non-infringement and invalidity of the single claim of the D'929 patent (Compl. Counts I & II).
• The single claim covers: "The ornamental design for a spherical toy water ball, as shown and described" (D'929 Patent, CLAIM).
• The essential visual elements of the claimed design are:
  • A distinctly spherical overall shape.
  • A two-part, hinged construction.
  • A surface ornamentation consisting of a specific pattern of wavy lines.

U.S. Design Patent No. D1,034,861, "Toy Water Ball" (issued July 9, 2024)

The Invention Explained

• Problem Addressed: As with the '929 Patent, the '861 Patent is a design patent and its specification does not include a problem-solution narrative (D'861 Patent, DESCRIPTION).
• The Patented Solution: The patent claims the ornamental design for a "toy water ball" and discloses two distinct embodiments (D'861 Patent, Title, DESCRIPTION). The first embodiment shows a spherical ball with a wavy-line surface pattern, appearing identical to the design in the '929 Patent (D'861 Patent, FIG. 1). The second embodiment shows a spherical ball with a surface pattern of straight, intersecting lines, creating a grid-like or faceted appearance (D'861 Patent, FIG. 3). Both embodiments feature a two-part, hinged construction (D'861 Patent, FIGS. 2, 4).
• Technical Importance: In the context of the reusable water balloon market described in the complaint, the different surface patterns of the '861 Patent's embodiments may represent alternative approaches to creating a visually distinct product (Compl. ¶14).

Key Claims at a Glance

• The complaint seeks a declaration of non-infringement and invalidity of the single claim of the '861 patent (Compl. Counts III & IV).
• The single claim covers: "The ornamental design for a toy water ball, as shown and described" (D'861 Patent, CLAIM).
• The essential visual elements encompass both disclosed embodiments:
  • A distinctly spherical overall shape.
  • A two-part, hinged construction.
  • Either a surface pattern of wavy lines (Embodiment 1) or a pattern of straight, intersecting lines (Embodiment 2).

III. The Accused Instrumentality

Product Identification

The Plaintiff’s (Huamingjun's) line of "reusable silicone water balloons," which are referred to as the "Accused Products" in the complaint (Compl. ¶18). The complaint identifies a variety of specific designs, including "diamond, ice cream, grenade, star, octopus, bomb, spaceship, pumpkin, and avocado" shapes (Compl. ¶40).

Functionality and Market Context

The Accused Products are described as high-quality, durable, and safe alternatives to traditional water balloons, made of tear-resistant silicone with enhancements to the magnet slots (Compl. ¶16). Plaintiff alleges its products are "distinct" from others on the market due to their unique structural designs and appearances (Compl. ¶18). The complaint includes a table showing eight different Accused Product designs, such as the "Octopus Design," to illustrate their dissimilarity from the patented design (Compl. p. 11). These products are sold to e-commerce retailers who resell them on platforms like Amazon (Compl. ¶19).

IV. Analysis of Infringement Allegations

The complaint seeks a declaratory judgment of non-infringement. Its core contention is that an "ordinary observer" would not find the Accused Products to be "substantially the same" as the patented designs (Compl. ¶38, ¶53).

D'929 Patent Non-Infringement Contentions

• Identified Points of Contention:
  • Scope Questions: A central issue is whether the claimed design for a "spherical" ball with a specific wavy pattern can be interpreted to cover the Plaintiff's non-spherical and thematically diverse products.
  • Aesthetic Questions: The analysis will hinge on a visual comparison of the overall aesthetic effect. For example, does the "Octopus Design" create a different overall visual impression in the mind of an ordinary observer than the patented wavy sphere (Compl. p. 11)?

D'861 Patent Non-Infringement Contentions

• Identified Points of Contention:
  • Scope Questions: The infringement analysis will question whether the scope of the claimed designs, though showing two different surface patterns, is strictly limited to the spherical form depicted in all figures.
  • Aesthetic Questions: The key question is whether the visual differences in both overall shape and surface texture between an accused product (e.g., the "Spaceship Design") and the two patented embodiments are significant enough to avoid infringement under the ordinary observer test (Compl. p. 18).

V. Key Claim Terms for Construction

• The Term: "Spherical"
• Context and Importance: This term, appearing in the title of the '929 Patent and visually defining all figures in both patents, is critical because Plaintiff’s primary non-infringement argument rests on its products having non-spherical shapes (e.g., diamond, octopus, pumpkin) (Compl. ¶39, ¶55). Practitioners may focus on this term because a significant difference in overall shape is a potent argument against design patent infringement.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party could argue the term should be construed more broadly as "generally round" or "globular," which might bring more rounded accused products (like the "Bomb Design") closer to the claim's scope (Compl. p. 12). The title of the '861 Patent is simply "Toy Water Ball," which could suggest the spherical nature is not an indispensable feature of the invention itself, even if the embodiments shown are spherical.
  • Evidence for a Narrower Interpretation: The figures in both patents consistently and unambiguously depict a near-perfect sphere (D'929 Patent, FIG. 1; D'861 Patent, FIGS. 1, 3). The explicit title of the '929 Patent, "Spherical Toy Water Ball," provides strong evidence that the spherical shape is a definite and limiting characteristic of that claimed design.

VI. Other Allegations

• Invalidity: The complaint includes counts seeking a declaration that both the '929 and '861 patents are invalid under 35 U.S.C. § 102 for anticipation by prior art (Compl. Counts II & IV).
  • The complaint alleges that designs substantially the same as the patented designs were in public use, on sale, or otherwise available to the public before the patents' effective filing dates (Compl. ¶46, ¶61).
  • Specifically, Plaintiff identifies products sold on Amazon by "Feechagier" and "Feng" as invalidating prior art (Compl. ¶46, ¶48). The complaint includes a side-by-side comparison of the patented design with a product image from the "Feechagier" reference (Compl. p. 14, p. 20).
  • To establish that these references predate the patents' priority dates, the complaint provides screenshots of customer reviews, including one for the Feechagier product dated July 2, 2020, and one for the Feng product dated April 20, 2021 (Compl. ¶47, ¶49, ¶62, ¶64). These dates are prior to the claimed priority dates of both patents-in-suit.
• Indirect Infringement: The complaint seeks a declaration that Plaintiff has not infringed "either directly or indirectly," but does not provide specific factual allegations related to indirect infringement theories (Compl. ¶37, ¶52).

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

• A core issue will be one of visual identity for anticipation: Are the prior art products identified by Plaintiff, evidenced by dated online reviews and product images, "substantially the same" in appearance as the designs claimed in the '929 and '861 patents? The court's finding on this factual question will determine the validity of the patents under 35 U.S.C. § 102.
• A second key issue will be one of aesthetic scope for infringement: If the patents are found valid, would an ordinary observer, viewing the designs as a whole, confuse Plaintiff's diverse, non-spherical, and thematically distinct products (e.g., "Octopus," "Avocado") with the patented designs for a sphere with specific surface line patterns? This raises the question of how much variation in shape and ornamentation a design patent's scope can tolerate.