Shenzhen Aixining Trading Co Ltd v. He

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Shenzhen Aixining Trading Co., Ltd. (China)
  • Defendant: Nengwu He (China)
  • Plaintiff’s Counsel: AVEK IP, LLC
• Case Identification: 1:24-cv-11459, N.D. Ill., 11/06/2024
• Venue Allegations: Plaintiff alleges venue is proper because Defendant's actions of asserting the patent on Amazon.com have allegedly caused Plaintiff substantial injury in Illinois by affecting its ability to sell products to consumers in the district.
• Core Dispute: Plaintiff seeks a declaratory judgment that its acrylic sign holders do not infringe Defendant’s design patent and that the patent is invalid as anticipated or obvious in light of prior art.
• Technical Context: The dispute concerns the ornamental design of freestanding, T-shaped acrylic sign holders, a common commodity product used for retail and office displays.
• Key Procedural History: The complaint alleges that Defendant filed a design patent infringement report with Amazon.com, which resulted in the de-listing of Plaintiff's products from the platform on September 17, 2024. The products were later restored on October 21, 2024. This enforcement action by the Defendant is presented as the basis for an "actual controversy" justifying the declaratory judgment action.

Case Timeline

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

U.S. Design Patent No. D1,029,109 - "SIGN HOLDER"

Issued May 28, 2024

The Invention Explained

• Problem Addressed: As a design patent, the '109 Patent does not solve a technical problem but instead protects the ornamental, non-functional appearance of an article of manufacture ('109 Patent, Claim).
• The Patented Solution: The patent claims the ornamental design for a sign holder, characterized by a vertically oriented, rectangular display portion and a flat, horizontal T-shaped base that allows it to stand upright ('109 Patent, FIG. 1-14). The design features a bottom-loading slot for inserting a sign. The scope of the claimed design is defined by the solid lines in the patent figures, while broken lines indicate portions of the sign holder that are not part of the claimed design ('109 Patent, Description).
• Technical Importance: The design provides a specific aesthetic appearance for a common consumer and business product, which can be a distinguishing feature in a competitive market (Compl. ¶8).

Key Claims at a Glance

• Design patents have a single claim. The asserted claim is for: "The ornamental design for a sign holder, as shown and described" ('109 Patent, Claim).
• The visual elements protected by the claim include the overall configuration and proportions of the sign holder as depicted in the patent's drawings ('109 Patent, FIG. 1-14).

III. The Accused Instrumentality

Product Identification

The "Accused Products" are acrylic sign holders sold by Plaintiff under the storefront "Dooiclear" on Amazon.com, identified by ASINs B0D7SFJY17 and B0D7SDMFKB (Compl. ¶8).

Functionality and Market Context

The products are described as having an "identical ornamental appearance" and are designed to hold and display 8.5" x 11" documents (Compl. ¶¶9-10). The complaint includes an image of the Accused Products, showing them as clear, T-shaped, bottom-loading sign holders (Compl. ¶10). The complaint alleges that Defendant's infringement assertions to Amazon.com resulted in the temporary de-listing of these products and caused Plaintiff to suffer lost sales, suggesting their commercial relevance to Plaintiff (Compl. ¶¶11, 13).

IV. Analysis of Infringement Allegations

This is a declaratory judgment action where the Plaintiff (the accused infringer) alleges non-infringement. The complaint's primary focus is on invalidity, with non-infringement pleaded in the alternative. The central argument is that if the '109 Patent is interpreted broadly enough to cover the Accused Products, it is invalid over the prior art; conversely, if the patent is valid, its scope must be narrow enough that the Accused Products do not infringe (Compl. ¶29).

The complaint presents its argument visually through a side-by-side comparison table. This table shows an image of the Accused Products, an image of the alleged prior art product from a 2019 Amazon listing, and a figure from the '109 Patent (Compl. ¶19). A second table provides enlarged views of the bases of the three designs (Compl. p. 6). Plaintiff uses these visuals to assert that the Accused Products, the prior art, and the patented design are substantially identical, which forms the basis for both its invalidity and non-infringement arguments (Compl. ¶¶19, 25, 29). The complaint does not offer a detailed element-by-element breakdown for non-infringement, relying instead on the visual identity between the accused design and the alleged prior art.

V. Key Claim Terms for Construction

In design patent cases, there are typically no claim "terms" to construe as in utility patent litigation. The analysis focuses on the scope of the single claim, which is defined by the patent's drawings as a whole.

• The "Term": The overall ornamental design of the "sign holder" as shown in the figures.
• Context and Importance: The central issue will be the scope of the claimed design and whether any subtle ornamental features distinguish it from both the prior art and the Accused Products. The outcome of the case will depend on whether an "ordinary observer," familiar with the prior art, would find the patented design to be substantially the same as the Accused Product. The Plaintiff's position suggests that the designs are so similar that if the patent covers the Accused Product, it must also cover the prior art (Compl. ¶29).
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The design is for a simple, common article. A fact-finder could determine that the overall visual impression is the only relevant feature, potentially capturing any T-shaped acrylic holder of similar proportions.
  • Evidence for a Narrower Interpretation: A court could focus on minute details of the curvature, angles, or proportions shown in the solid lines of the patent's figures as points of novelty ('109 Patent, FIG. 11-14). If such specific features are deemed to be the core of the patented design, and are absent from the Accused Product, it could support a finding of non-infringement.

VI. Other Allegations

The primary counts in the complaint are for declaratory judgment of invalidity.

• Anticipation (35 U.S.C. § 102): The complaint alleges that the '109 Patent is invalid as anticipated by prior art, specifically identifying an Amazon product listing (ASIN B07YNNJ2TB) that was allegedly publicly available as early as December 10, 2019 (Compl. ¶¶15, 25). This date is over three years before the patent's May 15, 2023 priority date (Compl. ¶17). The complaint asserts this prior art product is identical in all material respects to the Accused Products and, by visual comparison, to the patented design (Compl. ¶¶15, 19).
• Obviousness (35 U.S.C. § 103): As an alternative to anticipation, the complaint alleges that the '109 Patent would have been obvious to a designer of ordinary skill in view of the same prior art (Compl. ¶27).

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

The resolution of this case will likely depend on the answers to two closely related questions:

1. Prior Art and Validity: A primary factual question will be whether the "December 10, 2019 ASIN B07YNNJ2TB Listing" constitutes invalidating prior art. The court will need to determine if this product was publicly disclosed before the '109 Patent's priority date and, if so, whether its design is identical to (for anticipation) or renders obvious (for obviousness) the claimed design.

2. Scope and Infringement: A core issue will be one of visual scope: assuming the patent is valid, are there any non-trivial ornamental differences between the design claimed in the '109 Patent and the Plaintiff's Accused Products? The Plaintiff's argument directly links this question to validity, suggesting that the designs are so similar that a finding of infringement may necessitate a finding of invalidity.