Zhong v. Partnerships Unincorp Associations In Schedule A

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Binglin Zhong (Guangdong, CHINA)
  • Defendant: The Partnerships and Unincorporated Associations Identified in Schedule A
  • Plaintiff’s Counsel: DeWitty and Associates
• Case Identification: 1:24-cv-11783, N.D. Ill., 11/15/2024
• Venue Allegations: Venue is based on Defendants allegedly targeting business activities toward U.S. consumers, including in Illinois, through interactive commercial websites that offer shipping to the state and accept payment in U.S. dollars.
• Core Dispute: Plaintiff alleges that Defendants’ online stores sell “knock-off” charge protectors that infringe Plaintiff’s design patent.
• Technical Context: The technology concerns the ornamental design of a charge protector, likely for recreational vehicles or other high-power applications, a market where both functionality and product appearance can influence purchasing decisions.
• Key Procedural History: The complaint alleges Plaintiff was "first to market" with the product embodying the patented design and has established a reputation for quality. It also identifies specific authorized sellers on Amazon.com, distinguishing them from the unauthorized defendant sellers. The case targets numerous online sellers, identified in a sealed Schedule A, who are alleged to be an interrelated group selling the same infringing product.

Case Timeline

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

U.S. Patent No. D1,008,977 S - "CHARGE PROTECTOR"

• Patent Identification: U.S. Patent No. D1,008,977 S, “CHARGE PROTECTOR,” issued December 26, 2023.

The Invention Explained

• Problem Addressed: The complaint does not frame the invention in terms of solving a technical problem, but rather as the creation of a "unique and proprietary design" developed through "months of innovative effort and careful polish" (Compl. ¶¶ 6-7). This aligns with the purpose of a design patent, which protects the ornamental appearance of an article of manufacture rather than its utility.
• The Patented Solution: The patent protects the specific visual appearance of a charge protector. The claimed design, depicted in the patent's figures, features a rectangular main body with a translucent, hinged front cover, a short, thick cable extending from the top, and a large, handled plug at the end of the cable (’977 Patent, FIGS. 1, 9). The main body includes distinctive visual elements such as a particular arrangement of indicator lights, a recessed three-prong socket, and textured gripping surfaces along the sides (’977 Patent, FIGS. 2, 4). The complaint provides renderings of the patented design, showing it with the cover closed (Image A) and open (Image B) (Compl. p. 5).
• Technical Importance: The complaint alleges the design was developed to meet "both functional and aesthetic standards" and that the resulting product has an "established reputation for quality" (Compl. ¶¶ 5, 7).

Key Claims at a Glance

• Design patents contain a single claim. The asserted claim is for "The ornamental design for a charge protector, as shown and described" (’977 Patent, Claim).
• The scope of the claim is defined by the solid lines in the nine drawing figures included in the patent. The patent notes that "broken lines throughout the drawing figures depict portions of the charge protector that form no part of the claimed design" (’977 Patent, Description).

III. The Accused Instrumentality

Product Identification

• The accused instrumentalities are "knock-off" charge protectors sold by Defendants through various online stores (Compl. ¶¶ 3, 11).

Functionality and Market Context

• The complaint alleges that Defendants sell the "same infringing product" across numerous online storefronts (Compl. ¶3). These stores are alleged to use common tactics, such as copying product images and text from Plaintiff's original listings, to appear legitimate while concealing their identities (Compl. ¶14).
• The products are marketed and sold to consumers in the United States, including Illinois, via "fully interactive, commercial Internet stores" (Compl. ¶2). The complaint refers to "Exhibit C" for images of the infringing products, but this exhibit was not included with the public filing (Compl. ¶11). This visual from the complaint shows the patented product design with its protective cover open (Compl. p. 5, Image B).

IV. Analysis of Infringement Allegations

The complaint does not provide a claim chart exhibit. The infringement allegation rests on the assertion that the Defendants' products are "knock-off" versions that are visually identical or nearly identical to the patented design. In design patent cases, the central test for infringement is whether an "ordinary observer," familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented design.

The complaint alleges that Defendants "offer for sale, sell, and/or import... Infringing Products that infringe directly and/or indirectly the ornamental design claimed in the U.S. Patent US D1,008,977 S" (Compl. ¶22). Without images of the accused products (which were to be provided in Exhibit C), a direct visual comparison is not possible based on the provided documents. The infringement theory relies on the allegation that Defendants sell the "same, knock-off product featuring the Plaintiff's patented design" (Compl. ¶2).

• Identified Points of Contention:
  • Visual Similarity: The central factual question will be the degree of visual similarity between the accused products and the design claimed in the ’977 Patent. The case will turn on whether the accused products are "substantially the same" in overall visual appearance to an ordinary observer.
  • Evidentiary Questions: As the complaint alleges Defendants use Plaintiff's own product images (Compl. ¶14), a key question for the court will be to determine the actual appearance of the products sold by Defendants and compare them to the patent's drawings, not just to the marketing materials.

V. Key Aspects of the Claimed Design for Infringement Analysis

For a design patent, the analysis focuses on the overall visual impression rather than the construction of specific terms. The infringement analysis will likely focus on the combination of several key ornamental features shown in the patent's drawings.

• The Overall Configuration and Proportions: The design's overall appearance is defined by the relationship between the rectangular housing, the short, thick cable, and the large plug with an integrated handle (’977 Patent, FIG. 1). Practitioners may focus on whether the accused products replicate these specific proportions and overall shape.
• The Face of the Main Housing: The front view presents a distinct combination of elements: a large, hinged, and transparent cover over a recessed socket, and a specific linear arrangement of small, circular indicator lights above the socket (’977 Patent, FIG. 2). The similarity of this specific combination of features in an accused product may be a strong indicator of copying.
• The Side Grips and Contours: The design includes a repeating pattern of vertical ridges on the sides of the housing, presumably for grip, and a unique contoured shape where the side extends outward to accommodate the hinged cover (’977 Patent, FIGS. 4-5). An analysis by the court may consider whether an accused product incorporates these non-obvious, ornamental surface treatments and contours.

VI. Other Allegations

• Indirect Infringement: The complaint alleges that Defendants infringe "directly and/or indirectly" (Compl. ¶22) and seeks to enjoin those who "aid, abetting, contributing to, or otherwise assisting anyone in infringing" (Compl. p. 9, ¶1(b)). The factual basis for this is tied to the allegation that Defendants are an "interrelated group of infringers working in active concert" (Compl. ¶11).
• Willful Infringement: Willfulness is alleged based on the assertion that Defendants are knowingly selling "knock-off" products that copy Plaintiff's design (Compl. ¶¶ 3, 11, 19). The complaint further alleges that Defendants use tactics to conceal their identities and evade enforcement, which may be presented as evidence of willful conduct (Compl. ¶¶ 13, 15).

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

1. A Question of Visual Identity: The core of the case is a factual determination of visual similarity. Assuming the accused products are produced, the primary question for the court will be: Is the ornamental design of the Defendants' charge protectors substantially the same as the design claimed in the ’977 Patent from the perspective of an ordinary observer? The allegation that the products are "knock-offs" suggests the Plaintiff expects this comparison to be straightforward.
2. A Question of Joinder and Enforcement: A significant procedural hurdle will be proving that the numerous, nominally distinct online sellers identified in Schedule A constitute an "interrelated group" selling the "same" product. The Plaintiff's ability to present evidence linking these entities will be critical to the case's scope and the effectiveness of any potential injunction.
3. A Question of Damages: Should infringement be found, a central issue will be quantifying damages. Plaintiff has requested Defendants' profits under 35 U.S.C. § 289, a remedy specific to design patent infringement. The challenge will be conducting an accounting of profits from the allegedly evasive and difficult-to-track Defendants.