DCT

1:24-cv-09743

Shenzhen Hai Le Bang Trading Co Ltd v. Zhiguang Zhang

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:24-cv-09743, N.D. Ill., 10/09/2024
  • Venue Allegations: Plaintiffs allege venue is proper because the Defendant availed himself of the forum by filing patent infringement complaints with Amazon that caused the delisting of Plaintiffs' products and affected sales in Illinois.
  • Core Dispute: Plaintiffs seek a declaratory judgment that their "Talking Cactus Toy" product does not infringe U.S. Design Patent No. D995,660 and that the patent is invalid, following Defendant’s infringement complaints to Amazon which resulted in the delisting of Plaintiffs' products.
  • Technical Context: The dispute concerns the ornamental design of a "dancing cactus" plush toy, a novelty consumer product primarily sold through online marketplaces.
  • Key Procedural History: The action was precipitated by Defendant's patent infringement complaint filed with Amazon, which led to the removal of Plaintiffs' product listings. The complaint's central legal theory is that the patent-in-suit is invalid under 35 U.S.C. § 102 due to prior public use and on-sale activity predating the patent's filing date.

Case Timeline

Date Event
2019-03-22 Date of YouTube video alleged to show prior art design (Compl. ¶19)
2020-12-26 Date of second YouTube video alleged to show prior art design (Compl. ¶20)
2021-01-01 Date of Wayback Machine snapshot alleged to show prior art design (Compl. ¶21)
2021-06-14 Filing date of the D'660 Patent (Compl. ¶17)
2023-08-15 Issue date of the D'660 Patent (Compl. ¶17)
2024-08-24 Plaintiffs receive notice from Amazon of Defendant's infringement report (Compl. ¶14)
2024-10-09 Complaint for Declaratory Judgment filed (Compl. p. 1)

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

  • 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 but rather protect the novel, ornamental appearance of an article of manufacture (D’660 Patent, Claim).
    • The Patented Solution: The patent claims the specific ornamental design for a plush toy, as depicted in its figures (D’660 Patent, Figs. 1-8). The design consists of a stylized plush cactus with a main vertical stalk, two upward-curving arms, and a cartoon-like face, all situated in a base resembling a flowerpot (D’660 Patent, Fig. 1). The patent explicitly states that any features shown in broken lines form no part of the claimed design (D’660 Patent, Description).
    • Technical Importance: The design's importance lies in its specific aesthetic, which can be a significant factor in consumer purchasing decisions for novelty products, a point underscored by the allegation that the accused product was a "top selling product" before being delisted (Compl. ¶4).
  • Key Claims at a Glance:
    • The patent contains a single claim: "The ornamental design for a dancing cactus plush toy, as shown and described." (D'660 Patent, Claim).
    • The scope of this claim is defined by the visual features depicted in solid lines in the patent's drawings, including:
      • A stylized cactus figure with a main vertical stalk and a rounded top.
      • Two symmetrical, upward-curving arms extending from the stalk.
      • An anthropomorphic face with two eyes and a smile on the upper portion of the stalk.
      • A base resembling a tapered, cylindrical flowerpot.

III. The Accused Instrumentality

  • Product Identification: Plaintiffs' "Talking Cactus Toy" products sold on Amazon, identified by ASINs B0BFWNVQXK, B0BWXP2M8D, and B0BX4698XP (Compl. ¶¶ 13, 16).
  • Functionality and Market Context:
    • The complaint describes the accused products as "Talking Cactus Toy" items sold through Plaintiffs' Amazon stores (Compl. ¶13). The functionality relevant to the design patent dispute is the products' exterior ornamental appearance.
    • Plaintiffs allege that Defendant's infringement report to Amazon resulted in the delisting of these products, which were previously "top selling" items (Compl. ¶¶ 4, 16). The complaint includes a screenshot from a 2019 YouTube video allegedly depicting an identical design to demonstrate prior public availability (Compl. p. 6).

IV. Analysis of Infringement Allegations

This is a declaratory judgment action for non-infringement. The complaint does not contain a claim chart but summarizes the infringement allegations made by the Defendant to a third party (Amazon).

The complaint states that the Defendant alleged to Amazon that "The ASINs are directly copying the protected design under US patent D995,660S" (Compl. ¶15).

Plaintiffs' primary argument for non-infringement is that the D'660 Patent is invalid. The complaint asserts, "Based on the forgoing prior arts, Plaintiffs' products can not infringe the ’660 Patent because the ’660 Patent is invalid" (Compl. ¶22). The complaint does not offer a direct comparison between the accused products and the patented design under the "ordinary observer" test, which is the standard for design patent infringement. Instead, the non-infringement claim is premised on the invalidity claim (Compl. ¶¶ 31, 26).

  • Identified Points of Contention:
    • Scope Questions: A central question for the court will be the scope of the patented design in light of the alleged prior art. If the prior art is proven, the court may need to determine whether the D'660 Patent protects the overall design or only minor, specific features not present in the prior art.
    • Evidentiary Questions: The invalidity claim rests on establishing that the designs shown in the cited YouTube videos and website archives were publicly available or on sale in the U.S. before the patent's June 14, 2021 filing date (Compl. ¶¶ 18-21). A key question will be whether the evidence, such as a YouTube comment stating a sister "brought it for her kids years ago," is sufficient to meet the clear and convincing standard for proving invalidity (Compl. p. 6).

V. Key Claim Terms for Construction

In design patent litigation, construction focuses on the overall visual impression of the design as shown in the drawings, rather than on discrete text-based terms.

  • The "Term": The scope of the claimed ornamental design as a whole.
  • Context and Importance: Determining the scope of the design is critical. The analysis will involve identifying which visual features are part of the claimed design (solid lines) and which are not (broken lines). This determination will define the boundaries of the patent right and is foundational to both the infringement and validity analyses.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim covers the overall visual impression created by the combination of the cactus shape, its arms, face, and pot as shown in solid lines in Figures 1-8 of the D'660 Patent. An ordinary observer may perceive any similarly-shaped dancing cactus toy as embodying the design.
    • Evidence for a Narrower Interpretation: The patent explicitly disclaims matter shown in broken lines, stating it "form[s] no part of the claimed design" (D'660 Patent, Description). Further, if the prior art cited by Plaintiffs (Compl. ¶¶ 19-21) is found to be closely related, a court may construe the patent's scope narrowly, limiting protection to only those specific visual details that distinguish the patented design from what was previously known.

VI. Other Allegations

  • Tortious Interference: Plaintiffs assert state law claims for tortious interference with contractual relations and prospective economic advantage (Compl. Counts III & IV). These claims are based on the allegation that Defendant knowingly and without justification made "materially false allegations of patent infringement" to Amazon, intending to interfere with Plaintiffs' business relationships and remove their products from the marketplace (Compl. ¶¶ 37, 47).

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

  • A central issue will be one of validity: can Plaintiffs produce clear and convincing evidence that the "Dancing Cactus Toy" design was "in public use, on sale, or otherwise available to the public" before the patent’s June 14, 2021 filing date, thereby rendering the D'660 Patent invalid under 35 U.S.C. § 102?
  • A second key question concerns infringement scope: assuming the patent is deemed valid, is the visual appearance of Plaintiffs' product "substantially the same" as the patented design from the perspective of an ordinary observer, or does the prior art so narrow the scope of the design that minor differences are sufficient to avoid infringement?
  • Finally, the case presents a question of improper conduct: did the Defendant's infringement report to Amazon constitute a tortious interference with Plaintiffs' business, potentially supporting a finding that the case is "exceptional" under 35 U.S.C. § 285?