DCT

1:24-cv-09622

Solawave Inc v. Partnerships Unincorp Associations

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
    • Plaintiff: Solawave Inc. (Delaware)
    • Defendant: The Partnerships and Unincorporated Associations Identified on Schedule “A” (Jurisdictions Unknown)
    • Plaintiff’s Counsel: Greer, Burns & Crain, Ltd.
  • Case Identification: 1:24-cv-09622, N.D. Ill., 10/07/2024
  • Venue Allegations: Venue is alleged to be proper in the Northern District of Illinois because the Defendants target business activities, including sales, to consumers in Illinois through interactive e-commerce stores.
  • Core Dispute: Plaintiff alleges that Defendants’ online sales of facial wands infringe its U.S. design patent covering the ornamental appearance of a massage wand.
  • Technical Context: The case concerns the product design in the consumer market for personal skincare devices, which are often distinguished by their unique aesthetic and ergonomic features.
  • Key Procedural History: The complaint targets numerous, unidentified e-commerce operators, alleging they operate in concert to sell infringing goods. The complaint notes that Plaintiff's products embodying the patented design are marked in compliance with 35 U.S.C. § 287(a).

Case Timeline

Date Event
2023-02-02 D1,024,350 Patent Priority Date (Application Filing Date)
2024-04-23 D1,024,350 Patent Issue Date
2024-10-07 Complaint Filing Date

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

U.S. Design Patent No. D1,024,350 - "Massage Wand"

  • Patent Identification: U.S. Design Patent No. D1,024,350, "Massage Wand," issued April 23, 2024 (D’350 Patent).

The Invention Explained

  • Problem Addressed: In the market for consumer skincare products, establishing a unique and recognizable product appearance is a commercial objective. The complaint asserts that Solawave’s products are known for their “distinctive patented designs” which consumers associate with the brand’s quality (Compl. ¶7).
  • The Patented Solution: The D’350 Patent protects the purely ornamental design of a massage wand. The design, as depicted in the patent’s figures, consists of a slender, pen-like cylindrical body with an angled head. The head has a flattened, oblong, racetrack-like shape, and the body features a single, vertically-oriented oval button (D’350 Patent, Figs. 1, 3, 5).
  • Technical Importance: The commercial importance of the design is that it is allegedly “instantly recognizable” to the purchasing public and has become a symbol of the quality associated with the Solawave brand (Compl. ¶5).

Key Claims at a Glance

  • The patent contains a single claim for: "The ornamental design for a massage wand, as shown and described" (D’350 Patent, p. 3, Claim).
  • The scope of the claim is defined by the visual characteristics depicted in the patent's nine figures, which show the design from multiple perspectives. The essential ornamental elements include:
    • The overall configuration of a wand with an angled head.
    • The specific proportions and slender, cylindrical shape of the wand’s body.
    • The flattened, oblong shape of the wand’s head.
    • The placement and oval shape of the single button on the body.

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are "facial wands" sold by the Defendants, referred to in the complaint as the "Infringing Products" (Compl. ¶3).

Functionality and Market Context

  • The complaint alleges that Defendants operate e-commerce stores on platforms including Amazon, eBay, AliExpress, and others, targeting consumers in the United States (Compl. ¶11). These stores are allegedly designed to appear as authorized retailers to sell products that feature Plaintiff’s patented design (Compl. ¶¶2, 14). The complaint includes a table showing Figure 1 from the D'350 patent to represent the design embodied in Plaintiff's products, which Defendants are accused of copying (Compl. p. 4). This figure depicts a perspective view of the massage wand design (Compl. p. 4).

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 complaint alleges that the Infringing Products are visually the same as the patented design.

D1,024,350 Infringement Allegations

Claim Element (from the single claim) Alleged Infringing Functionality Complaint Citation Patent Citation
The ornamental design for a massage wand, as shown and described. Defendants are alleged to be making, using, offering for sale, and selling "the same unauthorized and unlicensed product" that infringes the ornamental design claimed in the D’350 Patent. ¶3, ¶24 D’350 Patent, Figs. 1-9
  • Identified Points of Contention:
    • Factual Question: The central issue will be a factual comparison of the accused products' appearance against the design claimed in the D’350 Patent. The determination of infringement will depend on whether an ordinary observer would find the two designs "substantially the same," such that the resemblance is deceptive.
    • Scope Question: A potential dispute may arise over the scope of the claimed design and what constitutes its overall visual impression. Defendants could argue that any differences in proportion, surface ornamentation, or specific feature shapes between their products and the patent figures are sufficient to create a different visual impression for an ordinary observer.

V. Key Claim Terms for Construction

In design patent litigation, formal construction of specific textual claim terms is uncommon, as the claim is defined by the drawings. The analysis focuses on the overall visual appearance.

  • The "Term": The "overall ornamental design"
  • Context and Importance: The entire case hinges on the scope of the claimed design and its visual similarity to the accused products. The court's interpretation of the design's overall appearance, as shown in the figures, will be determinative of infringement.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A party seeking a broader scope may argue that the core of the design is the general configuration of a slim, cylindrical wand with an angled, flattened, oblong head. They may assert that minor variations in curvature or proportion do not alter this fundamental visual impression, which is consistently conveyed across all nine figures of the patent (D’350 Patent, Figs. 1-9).
    • Evidence for a Narrower Interpretation: A party seeking a narrower scope may argue that the design is strictly limited to the precise shapes and proportions depicted in the drawings. They could point to the specific angle of the head, the exact ratio of the head's length to its width, and the specific curvature of the wand body as essential, limiting features of the claimed design (D’350 Patent, Figs. 1, 3, 5, 7).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that Defendants infringe "directly and/or indirectly" and asks for an injunction against "aiding, abetting, [or] contributing to" infringement (Compl. ¶24; p. 14, ¶1(b)). The factual basis centers on allegations that the numerous unidentified defendants are "working in active concert" and are "interrelated," using common tactics and sourcing products from a common manufacturer to sell the Infringing Products (Compl. ¶¶17, 20).
  • Willful Infringement: Willfulness is explicitly alleged (Compl. ¶21). The complaint supports this by claiming Defendants acted "knowingly and willfully" in concert to sell the infringing goods and employed tactics to conceal their identities, such as using multiple fictitious aliases, which suggests an intent to evade detection and liability (Compl. ¶¶16, 20).

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

  1. A central issue will be one of visual comparison: applying the ordinary observer test, is the ornamental design of the Defendants' accused products substantially the same as the design claimed in the D’350 Patent? The outcome will depend on a side-by-side factual analysis of the products and the patent figures.
  2. The case may also turn on the scope of the design: how much visual weight will be given to the overall configuration versus the specific, detailed features shown in the patent drawings? This will influence whether minor differences in the accused products are sufficient to avoid a finding of infringement.
  3. A key procedural question will be one of enforcement and jurisdiction: given that the lawsuit targets a network of anonymous international e-commerce sellers, a primary challenge for the Plaintiff will be effectively identifying, serving, and enforcing any potential judgment against these entities.