Wang v. Partnerships Unincorp Associations

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Hongying Wang
  • Defendant: The Partnerships and Unincorporated Associations Identified on Schedule A (China and other foreign countries)
  • Plaintiff’s Counsel: Lance Y. Liu, Esq.
• Case Identification: 1:24-cv-07631, N.D. Ill., 08/28/2024
• Venue Allegations: Venue is asserted on the basis that Defendants are foreign entities, which may be sued in any judicial district.
• Core Dispute: Plaintiff alleges that butter knives sold by a network of online merchants infringe a U.S. design patent for a butter knife.
• Technical Context: The dispute is in the field of consumer kitchen utensils, where the ornamental appearance of a product can be a key driver of its market appeal.
• Key Procedural History: The complaint is filed against a large number of "Schedule A" defendants, a litigation strategy often used to combat diffuse online infringement from foreign sellers by grouping them as an interrelated enterprise.

Case Timeline

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

• Patent Identification: U.S. Patent No. D774,846 S, "Butter Knife", issued December 27, 2016.

The Invention Explained

• Problem Addressed: Design patents protect the ornamental appearance of an article of manufacture rather than its utilitarian features. The patent does not articulate a technical problem, but instead provides a new, original, and ornamental design for a butter knife.
• The Patented Solution: The patent discloses a specific visual design for a butter knife. The key ornamental features shown in the drawings include a smoothly contoured handle that tapers into a wider, rounded blade. A distinctive feature is a series of small, circular perforations arranged in a line along one edge of the blade, with a serrated pattern on the opposite edge ('D846 Patent, Figs. 1-2). The overall impression is a modern and unique look for a common utensil.
• Technical Importance: The complaint alleges that the patented design is "distinctive," "instantly recognizable," and "well recognized by consumers," suggesting its value lies in creating a unique market identity for the product (Compl. ¶8, ¶10).

Key Claims at a Glance

• Design patents contain a single claim. The asserted claim is for: "The ornamental design for a butter knife, as shown and described" ('D846 Patent, CLAIM).
• This claim protects the overall visual appearance of the butter knife as depicted in the solid lines of the patent's five figures.

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are "counterfeit" and "Infringing Products," specifically butter knives sold by the Defendants through numerous e-commerce stores on platforms including Amazon (Compl. ¶2, ¶13, ¶24).

Functionality and Market Context

The complaint describes the accused products as "inferior imitations" of Plaintiff's authorized products (Compl. ¶24). It alleges that Defendants operate a "massive network" of e-commerce stores, using tactics such as fictitious names and deceptive search engine optimization to conceal their identities and mislead consumers looking for genuine products (Compl. ¶17-18). The complaint further alleges these online stores are designed to appear legitimate and share common features, suggesting they are part of an interrelated operation (Compl. ¶19).

IV. Analysis of Infringement Allegations

The complaint does not include a claim chart exhibit. The infringement theory is based on the allegation that the accused products are "copycat" or "colorable imitations" of the patented design, which is likely to confuse an ordinary observer (Compl. ¶10). The infringement analysis for a design patent turns on the "ordinary observer" test, which asks whether an ordinary observer, familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented one.

The complaint alleges that the accused products from each Defendant are "compared directly with the claimed design in the 'D846 Patent (Exhibit C)" (Compl. ¶13). A screenshot of a checkout page for purchasing an allegedly infringing product is referenced as Exhibit B (Compl. ¶4). This checkout page screenshot from an online store shows an image of a butter knife with a perforated blade edge being offered for sale and shipment to Illinois (Compl. ¶4, Exhibit B).

Identified Points of Contention

• Scope Questions: The central issue will be whether the overall visual appearance of the Defendants' butter knives is "substantially the same" as the design claimed in the 'D846 Patent. The analysis will depend on the visual evidence presented and any prior art designs that may inform the perspective of the ordinary observer.
• Technical Questions: A key evidentiary question will be the degree of visual similarity between the accused products and the patent's figures. The complaint’s allegation of "slavish copying" suggests Plaintiff's theory is that the accused products are nearly identical to the patented design, not merely similar (Compl. ¶10). Proving this level of similarity would strongly support an infringement finding.

V. Key Claim Terms for Construction

Claim construction in design patent litigation differs significantly from utility patent cases, as the "claim" is defined by the drawings, not words. The focus is on the overall visual impression of the design as a whole.

The Term

"ornamental design for a butter knife, as shown and described"

Context and Importance

While there are no specific terms to construe, the scope of protection is defined by the solid-line drawings in the patent. The critical legal question is not the meaning of a word, but the overall visual scope of the claimed design and how it compares to the accused products and the prior art. The phrase "butter knife" anchors the design to a specific article of manufacture.

Intrinsic Evidence for Interpretation

• Evidence for a Broader Interpretation: The claim is for the design "as shown and described," which encompasses the overall visual impression created by the combination of all features in the drawings, not any single feature in isolation.
• Evidence for a Narrower Interpretation: The scope is limited to the specific design shown in the figures. Any significant deviation in the shape of the handle, the contours of the blade, or the pattern of perforations in an accused product could support a non-infringement argument. The existence of prior art butter knife designs could also narrow the perceived scope of the patent's novelty to its specific combination of elements.

VI. Other Allegations

Indirect Infringement

The complaint makes a passing allegation of indirect infringement (Compl. ¶28) and references "inducing, or enabling others to sell" in the prayer for relief (Prayer for Relief ¶1(b)). However, the factual allegations focus on Defendants' own acts of making, offering for sale, and selling the accused products, which constitute direct infringement.

Willful Infringement

Willfulness is alleged based on Defendants having "knowingly and willfully" used the patented design (Compl. ¶22). This allegation is supported by claims of "slavish copying" and Defendants' alleged efforts to conceal their identities, which may be presented as evidence of a deliberate intent to infringe and evade legal consequences (Compl. ¶10, ¶18).

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

1. Visual Similarity: The case will fundamentally turn on a question of visual comparison: will an ordinary observer, viewing the accused butter knives and taking into account any relevant prior art, be deceived into believing the accused products embody the patented design from the 'D846 Patent?
2. Enterprise Liability: A key procedural and evidentiary challenge will be proving that the numerous, independent-appearing online storefronts are, in fact, an interrelated enterprise. The outcome of this question will determine the scope and effectiveness of any potential injunctive relief or damages award against the diffuse group of foreign defendants.