GS Holistic LLC v. Partnerships Unincorp Associations

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: GS Holistic, LLC (Delaware)
  • Defendant: The Partnerships and Unincorporated Associations Identified on Schedule "A" (People's Republic of China or other foreign jurisdictions)
  • Plaintiff’s Counsel: Greer, Burns & Crain, Ltd.
• Case Identification: 1:24-cv-11913, N.D. Ill., 11/19/2024
• Venue Allegations: Venue is alleged based on Defendants' targeting of business activities and sales to consumers in the United States, including Illinois, through interactive e-commerce stores.
• Core Dispute: Plaintiff alleges that Defendants’ unauthorized hookahs infringe two U.S. design patents covering the ornamental appearance of its gravity infuser products.
• Technical Context: The case concerns the ornamental design of hookahs, specifically gravity infusers, a niche but recognizable product category within the consumer smoking accessories market.
• Key Procedural History: The complaint is filed against a schedule of unidentified e-commerce operators, a common procedural posture in actions targeting alleged counterfeit goods from foreign online sellers. The complaint does not mention any prior litigation, inter partes review proceedings, or licensing history related to the patents-in-suit.

Case Timeline

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

U.S. Design Patent No. D943,817 - "Hookah," issued February 15, 2022

The Invention Explained

• Problem Addressed: The complaint suggests the goal was to create a distinctive and recognizable ornamental design for a gravity infuser-style hookah to distinguish Plaintiff's products in the marketplace (Compl. ¶¶ 5, 7).
• The Patented Solution: The patent protects the ornamental design for a hookah, not its functional aspects. The claimed design, shown in solid lines in the patent's figures, consists of two vertically aligned, capsule-shaped transparent globes connected by a central band (D'817 Patent, FIG. 1, CLAIM). The patent drawings explicitly disclaim the stand, base, and mouthpiece elements by rendering them in broken lines, indicating they do not form part of the claimed design (D'817 Patent, DESCRIPTION).
• Technical Importance: The complaint alleges that this design has become "iconic" and is "instantly recognizable" by consumers, associating it with the Plaintiff's brand and quality (Compl. ¶5).

Key Claims at a Glance

• The patent contains a single claim for "The ornamental design for a hookah, as shown and described" (D'817 Patent, CLAIM).
• The essential visual elements are the specific shape, proportions, and arrangement of the features depicted in solid lines, primarily the two globes and their connecting band.

U.S. Design Patent No. D970,804 - "Hookah," issued November 22, 2022

The Invention Explained

• Problem Addressed: As with the '817 patent, the objective was the creation of a unique ornamental design for a hookah to serve as a source identifier for consumers (Compl. ¶¶ 5, 7).
• The Patented Solution: This patent also claims an ornamental design for a hookah. However, in contrast to the '817 patent, the '804 patent's claim focuses on the support structure. The globes are depicted in broken lines and are thus disclaimed (D'804 Patent, DESCRIPTION). The claimed design, shown in solid lines, consists of the central mounting collar, the vertical stand, the circular base, and an angled mouthpiece assembly (D'804 Patent, FIG. 1, CLAIM).
• Technical Importance: This design patent protects a different aspect of the same commercial product's appearance, contributing to its overall unique look which the Plaintiff alleges is broadly recognized by consumers (Compl. ¶7).

Key Claims at a Glance

• The patent contains a single claim for "The ornamental design for a hookah, as shown and described" (D'804 Patent, CLAIM).
• The essential visual elements are the features shown in solid lines: the stand, base, central collar, and mouthpiece assembly.

III. The Accused Instrumentality

Product Identification

• The accused instrumentalities are hookahs, referred to as the "Infringing Products," allegedly sold by the Defendants through various e-commerce stores operating under the "Seller Aliases" (Compl. ¶¶ 3, 11).

Functionality and Market Context

• The complaint alleges that Defendants operate e-commerce stores on platforms including Amazon, eBay, AliExpress, and Temu to sell unauthorized hookahs that copy Plaintiff's patented designs (Compl. ¶11). These stores are designed to appear as though they are authorized retailers to "unknowing consumers" (Compl. ¶14). The complaint includes a figure depicting a perspective view of the design claimed in the D'817 Patent (Compl. p. 4). A subsequent figure shows a perspective view of the design claimed in the '804 Patent (Compl. p. 10). The complaint alleges that the Infringing Products, shown in an unattached Exhibit 1, embody these designs and are sold to consumers in the United States, including Illinois (Compl. ¶¶ 3, 13).

IV. Analysis of Infringement Allegations

The complaint alleges that the accused hookahs are "substantially the same" as the patented designs, which is the legal standard for design patent infringement. The central inquiry will be whether an ordinary observer, familiar with the prior art, would be deceived into purchasing the accused product, believing it to be the patented design.

D943,817 Infringement Allegations

D970,804 Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: The primary question will be the application of the "ordinary observer" test. The dispute will likely focus on whether the overall visual impression of the accused products is substantially the same as the specific combination of elements claimed (and not disclaimed) in each patent.
  • Technical Questions: A key factual question will be the effect of the disclaimed subject matter. For the '817 patent, the court will have to consider infringement based on the similarity of the globes, while disregarding the stand. Conversely, for the '804 patent, the court will have to assess the similarity of the stand and frame while disregarding the globes. The case may turn on whether the similarity in the claimed portions is sufficient to cause deception, even if the disclaimed portions of the accused products differ from the patent drawings.

V. Key Claim Terms for Construction

In design patent litigation, the "claim" is understood through the drawings rather than textual limitations. The central issue is not the construction of a specific term but the overall visual scope of the design.

• The "Term": The scope of the "ornamental design for a hookah" as depicted in the solid-line drawings of each patent.
• Context and Importance: The scope of the claimed designs will be determinative. Practitioners may focus on this issue because establishing a broader scope of protection around the depicted designs would make it easier for the Plaintiff to prove infringement, while a narrower scope limited to nearly identical copies would favor the Defendants.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: Plaintiff may argue that the protection extends to the overall visual impression created by the claimed elements, covering products that evoke the same aesthetic despite minor variations. For the '817 patent, this would be the distinctive look of the two capsule-like globes; for the '804 patent, it would be the specific configuration of the stand and mounting hardware (D'817 Patent, FIG. 1; '804 Patent, FIG. 1).
  • Evidence for a Narrower Interpretation: Defendants may argue the scope is confined to the exact designs shown. The explicit disclaimer of certain elements via broken lines in both patents (the stand in the '817 patent; the globes in the '804 patent) provides strong intrinsic evidence that the patentee intentionally narrowed the scope of protection to only the features shown in solid lines (D'817 Patent, DESCRIPTION; '804 Patent, DESCRIPTION).

VI. Other Allegations

• Indirect Infringement: The complaint makes a passing reference to indirect infringement and seeks to enjoin aiding and abetting (Compl. ¶24; Prayer ¶1(b)). However, the factual allegations focus on Defendants’ own acts of making, using, and selling, which are characteristic of direct infringement, and do not provide specific facts to support a standalone claim for induced or contributory infringement.
• Willful Infringement: The complaint alleges that Defendants' infringement was willful (Compl. ¶21). This allegation is based on the assertion that Defendants knowingly and intentionally sold products that copy the patented "GS Designs" without authorization and used tactics such as multiple seller aliases to conceal their identities and evade detection (Compl. ¶¶ 16, 20).

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

• A primary issue will be one of visual comparison: Applying the "ordinary observer" test, is the overall ornamental appearance of the accused hookahs substantially the same as the specific elements claimed in the '817 and '804 patents, respectively, particularly when viewed in the context of any prior art designs?
• A key legal question will be the impact of disclaimed features: How will the court and fact-finder weigh the visual effect of the elements shown in broken lines (the stand in the '817 patent, the globes in the '804 patent)? The case may hinge on whether similarity in the claimed portions alone is sufficient to support a finding of infringement.
• A foundational procedural question will be one of identification and jurisdiction: Can the Plaintiff successfully pierce the anonymity of the online "Seller Aliases" to identify the responsible parties, establish personal jurisdiction, and prove that these specific entities conducted the infringing acts alleged in the complaint?