DCT
1:24-cv-11650
Wang Pengfei v. Partnerships Unincorp Associations
Key Events
Complaint
I. Executive Summary and Procedural Information
- Case Name: Wang Pengfei v. The Partnerships and Unincorporated Associations Identified on Schedule A
- Plaintiff’s Counsel: Aronberg Goldgehn Davis & Garmisa
- Case Identification: 1:24-cv-11650, N.D. Ill., 11/12/2024
- Venue Allegations: Venue is asserted in the Northern District of Illinois on the basis that a substantial part of the events giving rise to the claims occurred in the district and because the defendants are foreign entities.
- Core Dispute: Plaintiff alleges that Defendants’ sales of wrapping paper cutting tools via various e-commerce websites infringe two of Plaintiff's utility patents, one design patent, and associated trade dress.
- Technical Context: The technology concerns handheld mechanical devices designed to be fitted onto a roll of wrapping paper to facilitate a straight, clean cut, addressing common issues of tearing and unevenness associated with using scissors.
- Key Procedural History: The complaint indicates this action is part of a broader brand protection program to combat what it describes as a network of online counterfeiters operating under numerous aliases to sell unauthorized products. The defendants are unnamed entities, and the action proceeds against them based on their online seller aliases.
Case Timeline
| Date | Event |
|---|---|
| 2023-02-01 | U.S. Patent No. D985,353 Priority Date |
| 2023-03-10 | U.S. Patent No. 12,090,678 Priority Date |
| 2023-03-10 | U.S. Patent No. 12,091,276 Priority Date |
| 2023-05-09 | U.S. Patent No. D985,353 Issued |
| 2024-09-17 | U.S. Patent No. 12,090,678 Issued |
| 2024-09-17 | U.S. Patent No. 12,091,276 Issued |
| 2024-11-12 | 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 addresses the difficulty of using conventional methods to cut paper from a roll, which often requires two hands and results in tearing, poor cutting effects, and non-parallel cuts (’678 Patent, col. 1:20-28).
- The Patented Solution: The invention is a paper cutter with a C-shaped housing that fits over a paper roll and features parallel guide rails to ensure linear movement. Its key component is a cutting device with an “object picking member” that lifts the paper away from its placement surface, feeding it into a cutter. This action is described as automatically folding the paper into an arch, which creates tension and allows for a cleaner, more successful one-handed cut (’678 Patent, col. 1:32-38; Abstract).
- Technical Importance: The claimed solution provides a mechanical structure intended to improve the user experience and result of a common consumer activity by automating the creation of paper tension, a key factor in achieving a straight cut (’678 Patent, col. 4:1-5).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶57).
- Essential Elements of Claim 1:
- A paper cutter housing with an accommodating space for a paper roll and two parallel guide rails for linear sliding.
- A paper cutting device connected to the housing, which includes a cutter assembly.
- The cutter assembly comprises an "object picking member" and a cutter mounted in a cutter bearing member.
- The object picking member "picks the paper to be cut away from a placement surface" and "feeds the paper towards a cutting edge of the cutter," where the cutting edge direction is opposite to the paper feeding direction.
- The paper cutting device also includes a "paper guide member" connected to the housing via a mounting member.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 12,091,276 - “Wrapper Cutter,” issued Sep. 17, 2024
The Invention Explained
- Problem Addressed: The patent identifies the problem of wrapper cutters on the market having poor cutting effects, making it difficult to cut a rolled wrapper along a straight line and often leading to uneven surfaces (’276 Patent, col. 1:19-27).
- The Patented Solution: The invention is a wrapper cutter comprising a shell with an axially penetrating hollow structure, an open slot, and a notch where a cutting knife is fixedly arranged. The shell includes "supporting planes" or protrusions to assist with linear sliding. A core feature is the use of a fixed or vertical plate to bend the wrapper into an arc-shaped surface, thereby creating stiffness and tension that enables the fixed blade to make a clean cut (’276 Patent, Abstract; col. 2:31-43).
- Technical Importance: The invention provides a specific mechanical structure designed to manipulate the paper itself to create optimal cutting conditions, rather than just guiding a blade (’276 Patent, col. 2:31-34).
Key Claims at a Glance
- The complaint asserts independent claim 8 (Compl. ¶65).
- Essential Elements of Claim 8:
- A shell with an axially penetrating hollow structure and an open slot formed in a sidewall.
- A notch extending along an axial direction in a side edge of the shell, with a cutting knife fixedly arranged on an inner bottom wall of the notch.
- Supporting protrusions axially arranged on the shell's sidewall to position, support, and assist the cutter to slide linearly.
- A fixed plate arranged within the notch and on one side edge of the notch.
- The complaint does not explicitly reserve the right to assert dependent claims.
Multi-Patent Capsule: U.S. Patent No. D985,353
- Patent Identification: U.S. Patent No. D985,353, “Paper Cutter,” issued May 9, 2023.
- Technology Synopsis: This patent protects the ornamental, non-functional design of a paper cutter. The claimed design consists of a C-shaped body for enveloping a paper roll, featuring a distinct, angular handle structure on one side and a cutting mechanism housing on the other, creating a specific overall visual appearance (’353 Patent, Figs. 1-8).
- Asserted Claims: The single claim for the ornamental design for a paper cutter as shown and described in the patent's figures (Compl. ¶¶71-72).
- Accused Features: The complaint alleges that the overall ornamental appearance of the defendants' "Unauthorized Pengfei Products" is identical or substantially similar to the design protected by the ’353 Patent (Compl. ¶71).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are "Unauthorized Pengfei Products," which are described as wrapping paper cutting tools (Compl. ¶5).
Functionality and Market Context
- The complaint alleges the accused products are tools shaped to wrap around a roll of gift-wrapping paper and contain a protected blade to make an easy, seamless cut in a straight line (Compl. ¶¶2-3). These products are allegedly sold by the defendants through a network of e-commerce stores operating under various aliases, targeting consumers in the United States, including Illinois (Compl. ¶¶7, 42). The complaint provides a representative figure from the ’276 Patent, which depicts the wrapper cutter with its shell (1), grip (2), and open slot (3). (Compl. p. 7).
IV. Analysis of Infringement Allegations
The complaint alleges infringement but does not provide the referenced claim chart exhibits. The following analysis is based on the narrative allegations in the complaint.
’678 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a paper cutter housing which comprises an accommodating space for axially accommodating a roll of paper to be cut, wherein a side wall of the paper cutter housing further comprises two parallel guide rails arranged in an axial direction thereof... and configured to assist the paper cutter in linearly sliding | The complaint alleges the accused products are shaped to wrap around a roll of paper and have features that enable a straight-line cut, which is asserted to meet this limitation. | ¶3; ¶28; ¶57 | col. 8:1-8 |
| 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 | The accused products are alleged to possess a paper cutting device with a housing and cutter assembly. The complaint provides a representative patent figure showing this overall structure. (Compl. p. 6). | ¶28; ¶57 | col. 8:8-12 |
| the cutter assembly comprises an object picking member and a cutter... 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 | The complaint alleges the accused products have these features as part of their cutting mechanism. | ¶28; ¶57 | col. 8:12-19 |
| a direction corresponding to the cutting edge of the cutter is opposite to a paper feeding direction of the paper to be cut | The accused products are alleged to have a cutting edge oriented in this manner relative to the paper feed direction. | ¶28; ¶57 | col. 8:19-21 |
| the paper cutting device further comprises a paper guide member... connected to the paper cutting device housing by means of a paper guide mounting member | The accused products are alleged to include a paper guide member connected to the cutting device housing. | ¶28; ¶57 | col. 8:21-25 |
- Identified Points of Contention:
- Technical Question: A primary evidentiary question will be whether the accused products actually perform the functions recited in the claim. What evidence demonstrates that the accused device has an "object picking member" that actively "picks the paper... away from a placement surface" to create tension, as opposed to a simpler structure that merely guides a blade along the paper's surface?
- Scope Question: The analysis may focus on whether the structure of the accused products includes distinct components corresponding to the "object picking member" and the "paper guide member," or if these functions are performed by a single, undifferentiated component.
’276 Patent Infringement Allegations
| Claim Element (from Independent Claim 8) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a shell having an axially penetrating hollow structure, wherein an open slot from one end to an other end is formed in a sidewall of the shell along an axial direction thereof | The accused products are alleged to have a shell-like body with an open slot for engaging with wrapping paper. | ¶3; ¶29; ¶65 | col. 6:53-56 |
| a notch extending along an axial direction is further formed in one side edge of the shell... and a cutting knife is arranged fixedly on an inner bottom wall of the notch | The complaint asserts the accused products contain a notch with a fixed cutting knife. | ¶29; ¶65 | col. 6:56-60 |
| supporting protrusions are axially arranged on the sidewall of the shell, and are configured to position and support the wrapper cutter and assist the wrapper cutter to slide linearly | The accused products are alleged to have structures that function as supporting protrusions for linear sliding. | ¶29; ¶65 | col. 6:60-63 |
| the wrapper cutter further comprises a fixed plate arranged within the notch and on one side edge of the notch | The complaint alleges the accused products contain a fixed plate as claimed. | ¶29; ¶65 | col. 6:64-67 |
- Identified Points of Contention:
- Structural Question: The dispute will likely center on a direct structural comparison. Do the accused products physically contain both "supporting protrusions" for linear sliding and a "fixed plate arranged within the notch"? The existence and arrangement of these specific physical components will be critical.
- Scope Question: How the term "supporting protrusions" is construed will be important. Does it cover any raised surface on the cutter's body that might aid in sliding, or does the patent require a more specific structure, such as the "parallel guideways" described in the specification (’276 Patent, col. 3:46-54)?
V. Key Claim Terms for Construction
For the ’678 Patent:
- The Term: "object picking member"
- Context and Importance: This term appears central to the novelty of claim 1, defining a functional element that distinguishes the invention from a simple blade in a guide. The construction of this term will determine whether infringement requires a mechanism that actively lifts and tensions the paper, or if any structure that guides paper to a blade can satisfy the limitation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term itself is not facially complex, and one could argue it encompasses any component that separates the paper from a resting surface before it meets the blade.
- Evidence for a Narrower Interpretation: The specification repeatedly describes this member's function as to "pick[] the paper to be cut away from a placement surface" and "feed[] the paper towards a cutting edge" (’678 Patent, col. 8:14-17). The summary emphasizes that this action "can automatically pick the paper to be cut away" to create an arch and tension, suggesting a specific, active function beyond simple guidance (’678 Patent, col. 2:56-61).
For the ’276 Patent:
- The Term: "fixed plate"
- Context and Importance: This term in claim 8 defines a key structural element "arranged within the notch." Its presence and arrangement are required elements. The construction will determine what physical structure in an accused product qualifies.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue that any fixed, planar surface within the cutting notch that interacts with the paper meets the limitation.
- Evidence for a Narrower Interpretation: The specification describes the fixed plate (6) and a vertical plate (7) working together to "bend an introduced wrapper into an arc-shaped surface" (’276 Patent, col. 4:30-34; col. 5:10-14). Figure 6 shows the fixed plate (6) as a distinct component inside the notch (8). This may support a narrower construction requiring a discrete plate structure intended to bend the paper, not just any part of the notch wall.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that defendants "knowingly and willfully" offered for sale, sold, and imported products for "subsequent resale or use" that infringe the ’678 and ’276 patents (Compl. ¶¶55, 63). The pleading does not, however, specify facts to support a claim of inducement, such as allegations that defendants provided instructions or advertising that encouraged end-users to perform an infringing act.
- Willful Infringement: The complaint alleges willful infringement for all asserted patents, based on assertions of knowing and deliberate conduct (Compl. ¶¶54, 62, 73). The allegations are supported by claims that the defendants are part of a larger, sophisticated network of counterfeiters who use fictitious aliases, conceal their identities, and move funds to offshore accounts to evade enforcement, which may be presented as evidence of egregious conduct justifying enhanced damages (Compl. ¶¶45-49).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of functional proof: can Plaintiff provide sufficient evidence that the accused products’ cutting mechanisms perform the specific, active function of an "object picking member" as claimed in the ’678 patent—namely, lifting the paper away from a surface to create an arch and tension—or do they operate through a different, non-infringing technical method?
- A central dispute for the ’276 patent will be one of structural correspondence: does a physical inspection of the accused products reveal the presence of discrete components that meet the claim limitations of "supporting protrusions" for linear sliding and a "fixed plate arranged within the notch," or is there a fundamental structural mismatch?
- For the ’353 design patent, the case will hinge on the ordinary observer test: would an ordinary observer, giving the matter such attention as a purchaser usually gives, be deceived by the resemblance between the accused products and the patented design, inducing them to purchase one supposing it to be the other?