Shenzhen Bi Mo Shuxiang Culture Development Co Ltd v. Zhiguang Zhang

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Shenzhen Bi Mo Shuxiang Culture Development Co., Ltd. (China)
  • Defendant: Zhiguang Zhang (China)
  • Plaintiff’s Counsel: AVEK IP, LLC
• Case Identification: 1:24-cv-08304, N.D. Ill., 09/11/2024
• Venue Allegations: Plaintiff alleges venue is proper because Defendant’s actions—specifically, filing patent infringement complaints with Amazon.com—have affected Plaintiff's ability to sell products to consumers within the Northern District of Illinois.
• Core Dispute: Plaintiff seeks a declaratory judgment that its dancing cactus toys do not infringe Defendant’s design patent and that the patent is invalid due to prior public disclosures and sales.
• Technical Context: The dispute concerns the ornamental design of a "dancing cactus plush toy," a popular novelty item.
• Key Procedural History: The action was precipitated by Defendant's assertion of the patent-in-suit against Plaintiff's products via Amazon.com's intellectual property complaint process, which resulted in the deactivation of Plaintiff's product listings.

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; they protect the novel, original, and ornamental appearance of an article of manufacture. This patent claims rights to a specific visual design for a toy.
• The Patented Solution: The patent claims "the ornamental design for a dancing cactus plush toy, as shown and described" (’660 Patent, Claim). The design, depicted in Figures 1-8, features a stylized plush cactus with a main vertical stalk, two smaller, curved "arms" extending upwards, and a smiling facial expression, all seated in a tapered, pot-like base (’660 Patent, Figs. 1, 7).
• Technical Importance: The complaint does not address the technical importance, but the filing seeks to protect the aesthetic appearance of a commercial product in the toy market.

Key Claims at a Glance

• Design patents contain a single claim, which incorporates the drawings by reference.
• The sole claim of the ’660 Patent is for: "The ornamental design for a dancing cactus plush toy, as shown and described" (’660 Patent, Claim).

III. The Accused Instrumentality

Product Identification

• The complaint identifies "dancing cactus toys" sold by Plaintiff via its "Keculf Shop" storefront on Amazon.com under multiple ASINs, including B09N2Z7QWB (collectively, the "Accused Products") (Compl. ¶8, ¶13).

Functionality and Market Context

• The complaint describes the Accused Products as plush toys that are, in all material respects, the same as products shown in YouTube videos from February and March 2019 (Compl. ¶13, ¶17). An image provided in the complaint shows one of the Accused Products, depicting a green, plush cactus with a smiling face and two arms, situated in a brown pot. The complaint provides an image of one such product, described as a dancing cactus toy (Compl. ¶10).
• The complaint alleges that Defendant’s infringement reports filed with Amazon.com led to the deactivation of the Accused Products' listings, affecting Plaintiff's ability to sell them to consumers (Compl. ¶2, ¶12).

IV. Analysis of Infringement Allegations

The complaint seeks a declaratory judgment of non-infringement. The central argument is that if the ’660 Patent is interpreted broadly enough to cover the Accused Products, it must be invalid in view of nearly identical prior art. Conversely, if the patent is deemed valid over that prior art, its scope must be too narrow to cover the Accused Products (Compl. ¶32). The core of this argument rests on the alleged invalidity of the ’660 Patent due to anticipation under 35 U.S.C. § 102. The complaint alleges that publications from 2019 disclose the patented design more than one year before the patent's 2021 application date.

The complaint provides screenshots from a February 2019 YouTube video, which allegedly shows a product identical to the Accused Products (Compl. ¶14). A screenshot from a March 2019 YouTube publication allegedly shows the same product in a home environment (Compl. ¶18).

Because this is a declaratory judgment action focused on invalidity, the following table summarizes the anticipation allegations from Count I, comparing the patented design to the alleged prior art.

D'660, Count I (Anticipation) Allegations

• Identified Points of Contention:
  • Invalidity Question: The primary issue is factual: do the 2019 YouTube publications cited in the complaint disclose a design that is identical to the one claimed in the ’660 Patent? If so, the patent would be anticipated under 35 U.S.C. § 102.
  • Scope Question (The "Squeeze"): The case presents a classic non-infringement/invalidity "squeeze." A central question for the court will be whether any meaningful visual distinctions exist between the patented design, the Accused Products, and the alleged prior art. If the designs are found to be legally indistinct, the patent cannot be both valid and infringed.

V. Key Claim Terms for Construction

For design patents, the claim is defined by the drawings as a whole, and traditional claim construction of written terms is generally not performed. The legal analysis focuses on the overall visual appearance of the claimed design. The dispute in this case is not expected to turn on the interpretation of a specific term but rather on a visual comparison between the design claimed in the ’660 Patent and the designs disclosed in the alleged prior art references. Practitioners will focus on the holistic comparison required by the "ordinary observer" test.

VI. Other Allegations

• Invalidity for Obviousness: In addition to anticipation, the complaint pleads in the alternative that the ’660 Patent is invalid as obvious under 35 U.S.C. § 103 in view of the same 2019 YouTube publications (Compl. ¶30).
• Request for Attorney Fees: Plaintiff requests that the court find this to be an "exceptional case" under 35 U.S.C. § 285, which would entitle Plaintiff to an award of reasonable attorney fees (Compl. p. 6, ¶d). The basis for this request is not explicitly detailed but is implicitly tied to Defendant's assertion of a patent that Plaintiff alleges is clearly invalid.

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

This declaratory judgment action appears to hinge on a small number of core issues, primarily centered on prior art.

• A key evidentiary question will be one of anticipation: Do the 2019 YouTube videos cited by Plaintiff constitute prior art that is publicly accessible and discloses every element of the ornamental design claimed in the ’660 Patent? The visual evidence provided in the complaint suggests a high degree of similarity.
• The central legal issue will be the non-infringement/invalidity squeeze: Can the Defendant establish a scope for the ’660 Patent that is broad enough to cover Plaintiff's Accused Products, yet narrow enough to be valid over the alleged prior art? The resolution of this question will likely determine the outcome of the entire case.