DCT
1:24-cv-08877
Li v. Partnerships Unincorp Associations
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Peng Li (China)
- Defendant: The Partnerships and Unincorporated Associations Identified on Schedule “A” (China or other foreign jurisdictions)
- Plaintiff’s Counsel: Palmer Law Group, P.A.
- Case Identification: 1:24-cv-08877, N.D. Ill., 09/25/2024
- Venue Allegations: Venue is based on allegations that Defendants operate interactive e-commerce stores that directly target and make sales to consumers in the United States, including residents of Illinois.
- Core Dispute: Plaintiff alleges that numerous e-commerce operators are infringing a U.S. design patent covering the ornamental appearance of a "shoe light."
- Technical Context: The technology is personal lighting accessories designed to be attached to footwear to improve the wearer's visibility in low-light conditions, particularly for activities like running or cycling.
- Key Procedural History: The complaint does not mention any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patent-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2022-10-14 | U.S. Design Patent No. D992,787 Application Filed |
| 2023-07-18 | U.S. Design Patent No. D992,787 Issued |
| 2024-09-25 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D992,787 - "SHOE LIGHT"
- Patent Identification: U.S. Design Patent No. D992,787, issued on July 18, 2023 (the "’787 Patent").
The Invention Explained
- Problem Addressed: The complaint asserts that the product category of shoe lights is intended to solve the problem of poor visibility for individuals such as runners and cyclists in low-light conditions, making the wearer more noticeable to others and illuminating their path (Compl. ¶7).
- The Patented Solution: As a design patent, the ’787 Patent does not describe a technical solution but protects a specific ornamental design for an article of manufacture (D’787 Patent, Claim). The protected design, as illustrated in the patent’s figures, consists of the visual characteristics of a shoe light, including its cylindrical body with horizontal grooves, a beveled top portion, and an attached side clip (D’787 Patent, FIG. 1, 4). The patent explicitly notes that portions shown in broken lines form no part of the claimed design (D’787 Patent, p. 3, Description).
- Technical Importance: The complaint alleges that the D’787 design has "gained popularity and recognition among consumers" and has become a "hallmark of Plaintiff's innovative approach" in the market for advanced shoe lights (Compl. ¶8).
Key Claims at a Glance
- The patent asserts a single claim: "The ornamental design for a shoe light, as shown and described" (D’787 Patent, Claim).
- The scope of this claim is defined by the overall visual appearance of the shoe light as depicted in the solid-line drawings of the patent.
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are "shoe lights" sold by the Defendants, collectively referred to as the "Infringing Products" (Compl. ¶3).
Functionality and Market Context
The complaint describes the Infringing Products as unauthorized shoe lights that are made, used, offered for sale, sold, and/or imported by Defendants through various e-commerce stores operating under multiple "Seller Aliases" (Compl. ¶3-¶4). The complaint includes a composite image showing three views of the patented design to illustrate the subject matter of the dispute (Compl. p. 3). Plaintiff alleges these online stores are designed to appear as authorized retailers to unknowing consumers and that the Infringing Products originate from a "common source" (Compl. ¶16, ¶19).
IV. Analysis of Infringement Allegations
Design patent infringement is determined by 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 design. The analysis focuses on the overall ornamental appearance, not a list of technical elements.
D992,787 Infringement Allegations
| Claim Element (from the Single Claim) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a shoe light, as shown and described. | Defendants are alleged to be making, using, offering for sale, and selling "the same product that infringes directly and/or indirectly the D’787 patent." The complaint asserts that the "Infringing Products" infringe the "ornamental design claimed in the D’787 patent." | ¶22, ¶25 | p. 3, Claim; FIGs. 1-9 |
Identified Points of Contention
- Visual Similarity: The central question for the court will be whether the overall visual appearance of the Defendants' accused shoe lights is substantially the same as the ornamental design claimed in the ’787 Patent, from the perspective of an ordinary observer.
- Scope and Prior Art: The scope of protection afforded to the ’787 Patent design will be informed by the prior art in the field of shoe lights and similar personal lighting devices. The degree of difference between the patented design and the prior art will be a key factor in the infringement analysis, although the complaint does not discuss specific prior art.
- Impact of Unclaimed Elements: The ’787 Patent uses broken lines to disclaim certain features as not being part of the patented design (D’787 Patent, p. 3, Description). A potential point of contention may be whether the similarities and differences between the patented design and the accused products lie in the claimed (solid-line) or unclaimed (broken-line) features.
V. Key Claim Terms for Construction
Formal claim construction of specific terms is uncommon in design patent litigation, as the claim is understood to be the design itself as depicted in the drawings. The primary interpretive exercise involves defining the scope of the design in view of the prior art.
- The "Claim" as a Whole: The ornamental design for a shoe light.
- Context and Importance: The entire dispute hinges on the visual scope of the patent's drawings. The key legal question is not the definition of a word but the overall visual impression created by the claimed design. Practitioners will focus on the holistic comparison between the patent figures and the accused products.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim covers the design "as shown and described," which could be argued to encompass the overall visual gestalt presented in all figures, giving less weight to minor details.
- Evidence for a Narrower Interpretation: The specific visual features shown in solid lines—such as the number and placement of the horizontal ribs, the specific shape of the beveled top, and the proportions of the side clip—will likely define the outer boundary of the claim's scope. The existence of prior art designs could further narrow the scope to only the novel aspects of the claimed design.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendants infringe "directly and/or indirectly" (Compl. ¶25). The factual basis centers on allegations that Defendants are "working in active concert" and are "interrelated," suggesting a potential theory of joint infringement among the various e-commerce entities (Compl. ¶19, ¶22). The prayer for relief also requests an injunction against "aiding, abetting, [or] contributing to" infringement (Prayer for Relief, ¶1.b).
- Willful Infringement: The complaint alleges that Defendants' infringement was "willful" (Compl. ¶23). This allegation is supported by claims that Defendants act "knowingly and willfully" and are part of a network of infringers who communicate about evading detection and litigation (Compl. ¶20, ¶22).
VII. Analyst’s Conclusion: Key Questions for the Case
- The Core Visual Question: The case will turn on the application of the "ordinary observer" test. The central issue is whether the accused shoe lights sold by the Defendants are substantially the same in overall ornamental appearance to the design claimed in the ’787 Patent, such that a typical consumer would be deceived.
- The Prior Art Question: A critical question in determining the scope of the patent's protection will be the role of the prior art. The novelty and non-obviousness of the ’787 Patent's design over previous shoe lights will define how broad or narrow that protection is, and consequently, whether the accused products are close enough to infringe.
- The Enforcement Question: A significant practical challenge will be one of identity and enforcement. Given the allegation that Defendants are a large, shifting network of foreign e-commerce operators using aliases to conceal their identities (Compl. ¶5, ¶11), a key question is whether Plaintiff can successfully identify, serve, and enforce a potential judgment against the responsible parties.