DCT
1:24-cv-09635
Solawave Inc v. Partnerships Unincorp Associations
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Solawave Inc. (Delaware)
- Defendant: [REDACTED] and The Individuals and Entities Operating [REDACTED] (Jurisdiction unknown, alleged to be People's Republic of China or other foreign jurisdictions)
- Plaintiff’s Counsel: Greer, Burns & Crain, Ltd.
- Case Identification: 1:24-cv-09635, N.D. Ill., 11/25/2024
- Venue Allegations: Venue is asserted on the basis that Defendants target and conduct e-commerce business with consumers in the United States, including Illinois, through interactive online stores.
- Core Dispute: Plaintiff alleges that Defendants’ sale of certain facial wands via online marketplaces infringes its design patent for a "Massage Wand."
- Technical Context: The technology resides in the field of personal skincare devices, a market where distinctive product design is a significant driver of brand recognition and commercial success.
- Key Procedural History: The complaint is structured as an action against a network of online sellers operating under various aliases, a common strategy to combat diffuse infringement by foreign entities on e-commerce platforms. The identities of the defendants are largely unknown and are designated by their online seller aliases.
Case Timeline
| Date | Event |
|---|---|
| 2023-02-02 | D1,024,350 Patent Application Filing Date |
| 2024-04-23 | D1,024,350 Patent Issue Date |
| 2024-11-25 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D1,024,350 - "Massage Wand," issued April 23, 2024
The Invention Explained
- Problem Addressed: Design patents do not articulate a technical problem in the manner of utility patents. Their purpose is to protect the novel, non-functional, ornamental appearance of an article of manufacture (Compl. ¶7). The implicit challenge is to create a visually distinct and aesthetically pleasing design for a product in a competitive market (Compl. ¶5).
- The Patented Solution: The patent protects the specific ornamental design of a massage wand. The claimed design consists of a slender, wand-like body with a broader, oblong head element at one end and a single, vertically-oriented oval control button on the front face of the body ('350 Patent, FIG. 1, FIG. 3). The design's overall visual impression is defined by the specific proportions and shapes of its components as depicted in the patent's nine drawing sheets ('350 Patent, DESCRIPTION).
- Technical Importance: In the consumer skincare device market, a unique and recognizable product configuration, such as the one claimed, can serve as a key source of brand identity and consumer appeal (Compl. ¶¶5, 7).
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is for: "The ornamental design for a massage wand, as shown and described." ('350 Patent, CLAIM).
- The "elements" of a design claim are the visual features shown in the drawings, which collectively create an overall ornamental appearance. Key features of the D'350 patent design include:
- The overall configuration of a slender, elongated body with a distinct head.
- The specific shape of the head, which is oblong and wider than the body.
- The shape, placement, and orientation of the control button on the body.
- The appearance of the top, bottom, and side profiles as shown in the patent figures (Compl. pp. 6-7, FIG. 4-8).
III. The Accused Instrumentality
Product Identification
The accused products are facial wands, referred to as the "Infringing Products," which are allegedly sold by Defendants through various e-commerce stores operating under multiple "Seller Aliases" (Compl. ¶¶3, 9). The complaint references a specific visual example of an infringing product in its "Exhibit 1" (Compl. ¶3).
Functionality and Market Context
The complaint alleges these are skincare devices sold to unknowing consumers through online marketplaces such as Amazon, eBay, AliExpress, and Temu (Compl. ¶11). It is alleged that Defendants use tactics to conceal their identities and operate through multiple virtual storefronts to appear as legitimate retailers, when in fact they are selling unauthorized products that copy Plaintiff's design (Compl. ¶¶10, 14). The complaint includes a table with various views of the patented design, such as the front perspective view shown in Figure 1. (Compl. p. 4, FIG. 1). This figure illustrates the overall shape and configuration of the wand that Plaintiff seeks to protect.
IV. Analysis of Infringement Allegations
The complaint does not provide a claim chart exhibit. The core infringement allegation is that the accused products are visually so similar to the patented design that they would deceive an ordinary observer.
D1,024,350 Infringement Allegations
| Claim Element (from the Single Design 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, selling, and/or importing" products that "infringe directly and/or indirectly the ornamental design claimed in the Solawave Design." The complaint asserts this infringement creates a product that is visually indistinguishable from Plaintiff's genuine product to the ordinary consumer. The complaint also provides a top view of the patented design. (Compl. p. 7, FIG. 7). | ¶24 | '350 Patent, CLAIM, p. 3* |
*Design patents are not formatted with columns and lines; this citation refers to the page containing the claim text in the patent grant document.
Identified Points of Contention
- Visual Similarity: The central issue will be a factual comparison between the accused products and the design claimed in the D'350 patent. The legal test is whether an "ordinary observer," familiar with the prior art, would be deceived into believing the accused product is the same as the patented design. The outcome will depend on a side-by-side comparison of the products' overall visual appearance, not on a feature-by-feature dissection.
- Scope Questions: The scope of a design patent is defined by the drawings. A potential question for the court is how broadly to interpret the "overall appearance." For example, how much variation in proportion, curvature, or button shape would be sufficient to move a product outside the scope of the claimed design?
V. Key Claim Terms for Construction
In design patent litigation, formal claim construction of specific terms is rare. The "claim" is understood to be the design as depicted in the drawings. The analysis focuses on the overall visual impression rather than the definition of words.
- The Term: "The ornamental design for a massage wand"
- Context and Importance: The entire case hinges on the scope of this "design." The key legal question is not the meaning of a word, but the boundary of the visual property right defined by the patent's figures. Practitioners will focus on comparing the overall visual effect of the accused product to the drawings in the D'350 patent.
- Intrinsic Evidence for Interpretation: The primary evidence is the drawings themselves.
- Evidence for a Broader Interpretation: A party arguing for broader scope might emphasize the overall configuration—a slim wand with an oblong, rotating head—as the dominant visual impression that the patent protects, allowing for minor variations in other features.
- Evidence for a Narrower Interpretation: A party arguing for narrower scope would contend that the design is defined by the exact combination of all its depicted elements, including the specific proportions of the head to the body, the precise curvature of the head's top surface ('350 Patent, FIG. 7), and the specific shape of the bottom of the wand ('350 Patent, FIG. 8). Any deviation in these specific details could be argued to create a different overall visual impression.
VI. Other Allegations
- Indirect Infringement: The prayer for relief requests an injunction against "aiding, abetting, contributing to, or otherwise assisting" infringement (Prayer for Relief ¶1(b)). The complaint's theory that Defendants operate as an interrelated network, sharing tactics and sources, may support a claim of joint or indirect liability among the various unnamed entities (Compl. ¶¶17-18).
- Willful Infringement: The complaint alleges that Defendants' infringement was "willful" (Compl. ¶21) and that they have "knowingly and willfully offered for sale, sold, and/or imported" the infringing products without authorization (Compl. ¶20).
VII. Analyst’s Conclusion: Key Questions for the Case
- Visual Similarity and the Ordinary Observer: The case's outcome will primarily depend on an evidentiary question: are the accused products "substantially the same" as the D'350 patent design from the perspective of an ordinary observer? This will require a direct visual comparison between the accused products (as shown in the yet-unseen Exhibit 1 and any products obtained in discovery) and the patent's drawings.
- Identifying the Infringers: A significant practical challenge, central to the complaint's structure, will be piercing the anonymity of the "Seller Aliases." Plaintiff will need to successfully link the online storefronts to specific, identifiable individuals or entities to enforce any judgment, a common hurdle in litigation against diffuse e-commerce sellers.
- Scope of the Design: A key legal question will be the scope of the D'350 patent's protection. The court will need to determine if the patent protects the general concept of a wand-shaped massager with a wide head, or if its protection is limited to the very specific proportions and contours shown in the drawings.