Dongguan Benyuan Food Co Ltd v. Zhiguang Zhang

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Dongguan Benyuan Food Co., Ltd. (China)
  • Defendant: Zhiguang Zhang (China)
  • Plaintiff’s Counsel: AVEK IP, LLC
• Case Identification: 1:24-cv-08301, N.D. Ill., 09/11/2024
• Venue Allegations: Plaintiff alleges venue is proper because Defendant’s actions of filing patent infringement reports with Amazon.com caused Plaintiff substantial injury in Illinois through the delisting of its products.
• Core Dispute: Plaintiff seeks a declaratory judgment that its dancing cactus toys do not infringe Defendant’s design patent and/or that the patent is invalid as anticipated by or obvious in light of prior art.
• Technical Context: The dispute concerns the ornamental design of plush, animated toys, a consumer product category where visual appearance is a primary driver of purchasing decisions.
• Key Procedural History: The action was precipitated by Defendant filing a design patent infringement report with Amazon.com against Plaintiff's products, leading Amazon to deactivate the corresponding product listings. Plaintiff now proactively seeks a court ruling on infringement and validity to resolve the controversy.

Case Timeline

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

U.S. Design Patent No. D995,660 - "DANCING CACTUS PLUSH TOY"

• Patent Identification: U.S. Design Patent No. D995,660, "DANCING CACTUS PLUSH TOY", issued August 15, 2023.

The Invention Explained

• Problem Addressed: Design patents do not solve technical problems in the manner of utility patents; rather, they protect a new, original, and ornamental design for an article of manufacture. The goal is to create a novel aesthetic appearance for a product (D995,660 Patent, Title).
• The Patented Solution: The patent claims the specific ornamental design for a "dancing cactus plush toy" as depicted in its eight figures ('660 Patent, Claim, Figs. 1-8). The design consists of a stylized, anthropomorphic cactus with a main body, two upward-curving arms, and a smiling face with large, round eyes, all situated in a tapered, pot-like base ('660 Patent, Fig. 1). The claim covers the visual appearance of the article, not its mechanical function.
• Technical Importance: The complaint alleges that toys with this general appearance were publicly available and sold years before the patent's filing date, suggesting the design was part of an existing market trend (Compl. ¶¶ 13-20).

Key Claims at a Glance

• Design patents contain a single claim. The claim asserted is for: "The ornamental design for a dancing cactus plush toy, as shown and described." ('660 Patent, Claim).

III. The Accused Instrumentality

Product Identification

Plaintiff’s "dancing cactus toys" sold on Amazon.com under the ASINs B09PDPYC2T and B09PDS2GLX (collectively, the "Accused Products") (Compl. ¶¶ 8, 13).

Functionality and Market Context

• The Accused Products are described as plush cactus toys that have the same overall appearance, differing only by color (Compl. ¶ 9). An image provided in the complaint shows a green, plush cactus toy in a pot with two arms and a face, consistent with the product category (Compl. ¶ 10).
• The complaint alleges that these products were sold through Plaintiff's "Hunfur" storefront on Amazon.com until Defendant’s infringement report led to their deactivation (Compl. ¶¶ 8, 11-12). The complaint further alleges the Accused Products are "in all material respects the same" as products shown in YouTube publications from 2019 (Compl. ¶¶ 13, 17).

IV. Analysis of Invalidity and Non-Infringement Allegations

The complaint’s counts for non-infringement and invalidity are factually intertwined. The core allegation is that the '660 Patent is invalid under 35 U.S.C. §§ 102 (anticipation) and 103 (obviousness) in light of prior art that publicly disclosed the same design more than one year before the patent's June 2021 filing date (Compl. ¶¶ 28, 30). The complaint presents a "squeeze" argument for non-infringement: if the patent is not invalid, its scope must be so narrow that it does not cover the Accused Products, which are alleged to be very close to the prior art (Compl. ¶ 32).

The complaint provides a screenshot from a February 2019 YouTube video showing what appear to be multiple dancing cactus toys in a retail setting (Compl. ¶ 14). It also includes a screenshot from a March 2019 YouTube publication showing a similar toy in a home environment (Compl. ¶ 18).

The central factual dispute is the comparison between the patented design and the alleged prior art.

Identified Points of Contention

• Prior Art Authentication: A threshold question will be whether the 2019 YouTube publications cited by the Plaintiff can be authenticated and qualify as publicly accessible prior art under 35 U.S.C. § 102.
• Scope Questions: The case raises the question of how the Defendant (patent holder) can define the scope of the claimed design to be broad enough to cover the Plaintiff's Accused Products, while simultaneously distinguishing it from the alleged prior art, which the Plaintiff claims is "in all material respects the same" as its products (Compl. ¶ 13).
• Technical Questions: The key comparison for both infringement and anticipation will be a visual one: from the perspective of an ordinary observer, is the design claimed in the '660 Patent substantially the same as the designs shown in the 2019 publications?

V. Key Claim Terms for Construction

Analysis of specific claim terms is generally not a central issue in design patent litigation. The single claim is for the design "as shown and described" ('660 Patent, Claim). The controlling legal standard is the "ordinary observer" test, which involves a visual comparison of the accused design and the patented design, informed by the prior art. The dispute will likely focus on the overall visual similarity rather than the construction of any particular word.

VI. Other Allegations

• The complaint makes no allegations regarding indirect or willful infringement, as it is a declaratory judgment action filed by the accused infringer. Instead, Plaintiff requests that the court find the case "exceptional" under 35 U.S.C. § 285, which would permit an award of attorney fees (Compl., Request for Relief d). The basis for this request is not explicitly detailed but may relate to the allegation that the patent was obtained and/or asserted despite the existence of clear invalidating prior art.

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

This declaratory judgment action appears to center on the validity of the '660 Patent in light of alleged prior art. The outcome will likely depend on the resolution of two primary questions:

1. An evidentiary question: Can the Plaintiff prove that the 2019 YouTube videos are authentic, were publicly accessible before the critical date, and disclose a design that is "substantially the same" as the one claimed in the '660 Patent?
2. A legal strategy question: Can the Defendant advance a theory of infringement against the Plaintiff's product that is broad enough to succeed, yet narrow enough to survive the invalidity challenge posed by the visually similar prior art? This creates a potential "infringement squeeze" that will be a central dynamic of the case.