Chen v. Partnerships Unincorp Associations

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Zhaoyou Chen (Jiangxi Province, China)
  • Defendant: Partnerships and Unincorporated Associations Identified on Schedule A
  • Plaintiff’s Counsel: Renner Otto
• Case Identification: 1:24-cv-07164, N.D. Ill., 10/07/2024
• Venue Allegations: Venue is alleged to be proper because Defendants target business activities toward consumers in the United States, including Illinois, through the operation of interactive, commercial e-commerce stores that sell the accused products directly to Illinois consumers.
• Core Dispute: Plaintiff alleges that Defendants’ online sales of a mobile air conditioning kit infringe a U.S. design patent covering the ornamental appearance of such a kit.
• Technical Context: The dispute concerns consumer products, specifically venting kits for portable air conditioners, sold through online marketplaces.
• Key Procedural History: Plaintiff alleges that authorized products practicing the patent have been marked with a patent notice since February 16, 2022. The complaint also notes that certain Defendants have allegedly compared the accused products to what they assert is "highly relevant prior art," suggesting that validity and the scope of the patented design in view of prior art may become a central issue.

Case Timeline

Date	Event
2021-03-09	U.S. Patent No. D941,982 Filing Date
2022-01-25	U.S. Patent No. D941,982 Issue Date
2022-02-16	Plaintiff began patent marking
2024-10-07	Complaint Filing Date

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

U.S. Design Patent No. D941,982 - “Mobile Air Conditioning Kit”

• Patent Identification: U.S. Design Patent No. D941,982 ("the ’982 Patent"), “Mobile Air Conditioning Kit,” issued January 25, 2022.

The Invention Explained

As this is a design patent, the "invention" is the specific ornamental appearance of the article of manufacture, not its utilitarian function.

• Problem Addressed: The patent does not describe a technical problem; rather, it presents a new, original, and ornamental design for a mobile air conditioning kit. (D941,982 Patent, Claim).
• The Patented Solution: The patent discloses an ornamental design for what appears to be a window vent kit for a portable air conditioner. The claimed design consists of two primary sliding rectangular panels, one of which features a circular port for a hose connection. (’982 Patent, Figs. 1-3). The design's overall visual impression is characterized by its elongated, flat form factor, the specific shape of the hose connector, and the visual relationship between the sliding panels. (’982 Patent, Figs. 1, 5, 6). The broken lines in the drawings depict portions of the kit that are not part of the claimed design. (’982 Patent, Description).
• Technical Importance: The complaint alleges that Plaintiff and prior owners have offered for sale products that practice the patent, suggesting a commercial embodiment of the design. (Compl. ¶2).

Key Claims at a Glance

• The single claim asserted is: "The ornamental design for a mobile air conditioning kit, as shown and described." (’982 Patent, Claim). This claim protects the overall visual appearance of the kit as depicted in the patent's nine drawing sheets.

III. The Accused Instrumentality

Product Identification

• The "Accused Products" are unauthorized and unlicensed mobile air conditioning kits. (Compl. ¶3).

Functionality and Market Context

• The complaint alleges that Defendants are e-commerce store operators who make, use, offer for sale, sell, and/or import the Accused Products into the United States. (Compl. ¶3). These products are allegedly sold through various "Marketplace Stores," including those on Amazon, to consumers in the United States. (Compl. ¶7, ¶11). The complaint alleges that the Accused Products are sold with "minor variations" and "similar if not identical product images and descriptions." (Compl. ¶12). The complaint references an exhibit containing a comparison chart. (Compl. ¶6). This chart, which is not attached to the complaint, allegedly shows the Accused Products, the patented design, and what Defendants have characterized as "highly relevant prior art." (Compl. ¶6).

IV. Analysis of Infringement Allegations

The complaint does not contain an embedded claim chart or attach the exhibits it references. The infringement theory is described narratively.

Plaintiff alleges that the Accused Products infringe the ’982 Patent because their ornamental design is a "reproduction, copy or colorable imitation of the Patented Design." (Compl. ¶24; Prayer ¶1(a)). The central test for design patent infringement is whether, in the eye of an ordinary observer familiar with the prior art, the accused design is substantially the same as the claimed design, such that the observer would be deceived into purchasing one supposing it to be the other. The complaint alleges that its unprovided Exhibit 3 contains a comparison chart demonstrating this similarity. (Compl. ¶24). The complaint also references its unprovided Exhibit 2, which is described as depicting Defendants' product listings and offers for sale. (Compl. ¶24).

• Identified Points of Contention:
  • Visual Similarity: The core factual question will be whether the overall ornamental appearance of the Accused Products is substantially the same as the design claimed in the ’982 Patent.
  • Impact of Prior Art: The complaint states that Defendants have allegedly compared the Accused Products to "highly relevant prior art." (Compl. ¶6). This raises the question of how the scope of the patented design will be construed in light of this prior art. If the prior art is visually similar to the patented design, the scope of protection for the ’982 Patent may be limited to its specific novel features, potentially making it more difficult for the Plaintiff to prove infringement.

V. Key Claim Terms for Construction

In design patent cases, claim construction is typically not a matter of defining textual terms, as the claim is understood to be the design itself as depicted in the drawings. The Federal Circuit has cautioned against extensive verbal descriptions of the claimed design, as the visual depiction is paramount. The analysis focuses on the overall visual impression of the design.

Practitioners may focus on identifying the specific ornamental features that distinguish the ’982 Patent's design from the prior art. The complaint’s reference to a prior art comparison (Compl. ¶6) suggests that the novelty may lie in a particular combination of elements, such as the specific profile of the hose connector, the proportions of the sliding panels, or the way the panels interlock. The ultimate "construction" will be a visual one performed by the fact-finder, who will compare the patented design and the accused product from the perspective of an ordinary observer.

VI. Other Allegations

• Indirect Infringement: The complaint makes a general allegation of direct "and/or indirectly" infringing conduct. (Compl. ¶24). The prayer for relief seeks to enjoin Defendants from "aiding, abetting, contributing to, or otherwise assisting anyone" in infringing the patent. (Prayer ¶1(b)).
• Willful Infringement: The complaint alleges that Defendants have acted "knowingly and willfully." (Compl. ¶12). The basis for this allegation includes the assertion that Defendants have had "full knowledge of the Patent" (Compl. ¶14) and are part of an "interrelated group of infringers working in active concert." (Compl. ¶12). The complaint further alleges that Defendants participate in online communities that provide notice of new lawsuits, suggesting a mechanism for pre-suit or rapid post-suit knowledge. (Compl. ¶17).

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

• A core issue will be one of visual comparison: From the perspective of an ordinary observer, is the overall ornamental appearance of the Defendants' "Accused Products" substantially the same as the design claimed in the ’982 Patent?
• A second key question will concern the impact of prior art: How will the "highly relevant prior art" referenced in the complaint (Compl. ¶6) affect the scope of the ’982 Patent's design? The answer will determine whether the patent protects a broad overall configuration or is limited to finer ornamental details, which will be dispositive for the infringement analysis.
• An evidentiary question will be one of identity and concert of action: Can the Plaintiff prove that the various anonymous e-commerce operators listed in Schedule A are an "interrelated group" acting in concert, as alleged, which is central to its claims of joinder and willfulness? (Compl. ¶12-¶13).