Wang Pengfei v. Partnerships Unincorp Associations

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Wang Pengfei (Guangdong, China)
  • Defendant: The Partnerships and Unincorporated Associations Identified on Schedule A (alleged to be located in China or other foreign jurisdictions)
  • Plaintiff’s Counsel: Aronberg Goldgehn Davis & Garmisa
• Case Identification: 1:24-cv-11494, N.D. Ill., 11/12/2024
• Venue Allegations: Venue is alleged to be proper because a substantial part of the events, including offers for sale and sales to Illinois residents, occurred in the district. It is also asserted on the basis that Defendants are foreign entities.
• Core Dispute: Plaintiff alleges that unidentified e-commerce operators’ sales of wrapping paper cutting tools infringe a utility patent and the trade dress of Plaintiff's own product.
• Technical Context: The technology concerns handheld mechanical devices designed to provide a straight, clean cut for a roll of wrapping paper, a common consumer product.
• Key Procedural History: This action is an Amended Complaint filed against a list of unidentified e-commerce store operators, a common strategy for targeting diffuse online counterfeiters. The asserted patent is a continuation-in-part of a prior U.S. design patent application.

Case Timeline

Date	Event
2023-03-10	Earliest Priority Date for ’678 Patent (CIP filing)
2024-09-17	U.S. Patent No. 12,090,678 Issues
2024-11-12	Amended Complaint Filed

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

U.S. Patent No. 12,090,678 - Cutter assembly, paper cutting device and paper cutter (Issued Sep. 17, 2024)

The Invention Explained

• Problem Addressed: The patent's background section asserts that conventional methods of cutting wrapping paper, such as with scissors, often require two hands, result in tearing or uneven cuts, and lead to wasted paper (U.S. Patent No. 12,090,678, col. 1:20-28).
• The Patented Solution: The invention is a paper cutter that fits over a roll of paper and is designed for one-handed operation. It features a housing with guide rails for stable, linear sliding. A key aspect is a cutting device with an "object picking member" that lifts the paper from a flat surface and an integrated "paper guide member" that folds the paper into an arch. This arching action creates tension in the paper just before it meets the blade, which is intended to produce a clean, straight cut and increase the success rate of the cutting operation (’678 Patent, col. 2:30-61). The complaint includes a representative figure from the patent, showing an isometric view of the assembled paper cutter. (Compl. p. 5).
• Technical Importance: The claimed solution seeks to improve the efficiency and reliability of a common consumer task by creating a purpose-built tool that mechanizes the process of achieving a straight, tear-free cut on rolled paper (’678 Patent, col. 2:36-38).

Key Claims at a Glance

• The complaint asserts independent claim 1 (Compl. ¶54).
• The essential elements of independent claim 1 include:
  • A paper cutter housing with a space to accommodate a paper roll.
  • Two parallel guide rails on the housing to assist in linear sliding.
  • A paper cutting device connected to the housing, which includes a cutter assembly.
  • The cutter assembly comprises an "object picking member" to lift and feed the paper and a cutter.
  • The direction of the cutter's edge is opposite to the paper feeding direction.
  • The paper cutting device also includes a "paper guide member" arranged near the paper's discharge end to interact with the paper before cutting.
• The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

• The accused instrumentalities are "wrapping paper cutting tools" sold by Defendants on e-commerce websites, referred to as "Unauthorized Pengfei Products" (Compl. ¶¶ 5, 7).

Functionality and Market Context

• The complaint alleges that Defendants operate e-commerce stores that advertise, offer for sale, and sell the accused products to consumers in the United States, including in Illinois (Compl. ¶¶ 7, 38). The complaint does not describe the specific functionality of the accused products beyond alleging that they are "counterfeiting" the Plaintiff's product and infringe at least claim 1 of the ’678 Patent (Compl. ¶¶ 10, 53-54). The infringement theory is predicated on the allegation that the accused products contain all the elements recited in the asserted claim.

IV. Analysis of Infringement Allegations

The complaint references an "accompanying claim chart, Exhibit B" that was not provided with the filed document (Compl. ¶54). The analysis below is based on the narrative recitation of claim 1 in the complaint body.

’678 Patent Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
a paper cutter, comprising; a paper cutter housing which comprises an accommodating space for axially accommodating a roll of paper to be cut...	The complaint alleges the accused products are paper cutters with a housing that accommodates a roll of paper.	¶¶ 26, 54	col. 8:60-63
...wherein a side wall of the paper cutter housing further comprises two parallel guide rails arranged in an axial direction thereof, and the parallel guide rails can serve as contact planes for the paper cutter and a paper cutter placement surface and are applied to positioning, force bearing and supporting...	The complaint alleges the accused products possess two parallel guide rails for positioning and support.	¶¶ 26, 54	col. 8:63-col. 9:3
...and a paper cutting device which is connected to the side wall of the paper cutter housing and comprises a paper cutting device housing and a cutter assembly which is connected to the paper cutting device housing, wherein the cutter assembly comprises an object picking member and a cutter...	The complaint alleges the accused products include a paper cutting device with a cutter assembly containing an object picking member and a cutter.	¶¶ 26, 54	col. 9:4-10
...the object picking member picks the paper to be cut away from a placement surface for the paper to be cut and feeds the paper towards a cutting edge of the cutter, and a direction corresponding to the cutting edge of the cutter is opposite to a paper feeding direction of the paper to be cut...	The complaint alleges the accused products' object picking member lifts and feeds paper to a cutter whose cutting edge opposes the feed direction.	¶¶ 26, 54	col. 9:14-21
...and wherein the paper cutting device further comprises a paper guide member, the paper guide member is arranged close to a paper discharging end of the paper cutting device housing and is arranged above a paper bottom layer contact surface, and the paper guide member is connected to the paper cutting device housing...	The complaint alleges the accused products feature a paper guide member positioned to interact with the paper near the device's discharging end.	¶¶ 26, 54	col. 9:22-28

• Identified Points of Contention:
  • Scope Questions: A central dispute may concern the scope of the terms "object picking member" and "paper guide member." The patent specification describes these components performing specific functions to create an "arched arc surface" that puts the paper in a "tensioned state" (’678 Patent, col. 7:40-46). A question for the court will be whether the claims require this specific tension-creating functionality, or if any structure that merely lifts and guides the paper would suffice.
  • Technical Questions: The complaint makes conclusory allegations of infringement without providing technical evidence, such as diagrams or operational descriptions of the accused products. A key question will be what evidence Plaintiff can produce to demonstrate that the accused products, sold by numerous unrelated sellers, actually perform the coordinated lifting, feeding, and guiding functions as claimed.

V. Key Claim Terms for Construction

• The Term: "object picking member"

  • Context and Importance: This is a patentee-coined term. Its construction is critical because its claimed function—to "pick[] the paper to be cut away from a placement surface" (’678 Patent, col. 9:14-16)—is a key step in the claimed process. The parties may dispute the structural and functional requirements of this element.
  • Intrinsic Evidence for a Broader Interpretation: The claim language itself does not impose specific structural limitations, defining the element by its function of picking and feeding paper.
  • Intrinsic Evidence for a Narrower Interpretation: The specification describes the member having a "paper bottom layer contact surface" that is a "slope gradually rising from the object picking end to the cutting edge" (’678 Patent, col. 3:1-4; col. 6:24-26). A defendant may argue this specific sloped embodiment limits the scope of the term.

• The Term: "paper guide member"

  • Context and Importance: This element is central to the patent's asserted technical advantage of creating tension for a better cut. Practitioners may focus on this term because its definition will determine whether infringement requires a specific arching and tensioning function.
  • Intrinsic Evidence for a Broader Interpretation: Claim 1 requires only that the member be "arranged close to a paper discharging end" and "above a paper bottom layer contact surface" (’678 Patent, col. 9:23-25), without explicitly requiring tension creation.
  • Intrinsic Evidence for a Narrower Interpretation: The detailed description explains that this member "can extrude the paper to be cut into the paper having the arced arc surface" to put it in a "tensioned state" (’678 Patent, col. 7:40-46). An accused infringer may argue that this disclosed function is a required limitation.

VI. Other Allegations

• Indirect Infringement: While the complaint uses the phrase "directly and/or indirectly" infringing (Compl. ¶52), it does not plead specific facts to support a claim for either induced or contributory infringement, such as allegations regarding user instructions or the sale of non-staple components.
• Willful Infringement: The complaint alleges that Defendants acted "knowingly and willfully" (Compl. ¶52). The factual basis appears to be the allegation that Defendants are part of a "counterfeiting operation" that uses tactics like fictitious aliases to conceal their identities and evade enforcement (Compl. ¶¶ 9, 17, 45). This suggests an allegation of willfulness based on both post-suit notice and potential pre-suit knowledge inferred from the alleged intentional copying of Plaintiff's product.

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

• A key evidentiary question will be one of technical proof: Can Plaintiff, facing a diffuse network of anonymous online sellers, obtain and present sufficient evidence to prove that the accused products actually perform the specific, multi-step functions recited in Claim 1, particularly the coordinated actions of the "object picking member" and "paper guide member"?
• The case may also turn on a question of claim scope: Will the functional language of the claims be interpreted broadly, or will the court construe key terms like "paper guide member" more narrowly to require the specific "arching" and "tensioning" functions described as the core of the invention in the patent's specification?
• A central practical issue will be one of enforcement and identity: The structure of the lawsuit against numerous unidentified "Schedule A" defendants raises the question of whether Plaintiff can effectively identify the responsible parties, establish jurisdiction, and enforce any potential judgment against a shifting network of e-commerce storefronts.