DPG USA Inc v. Partnerships Unicorp Associations

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: DPG USA Inc. (Illinois)
  • Defendant: The Partnerships and Unincorporated Associations Identified on Schedule A (Jurisdiction Unknown)
  • Plaintiff’s Counsel: AVEK IP, LLC
• Case Identification: 1:24-cv-12341, N.D. Ill., 12/04/2024
• Venue Allegations: Venue is alleged to be proper based on Defendants' operation of interactive e-commerce websites that directly target and make sales to consumers in Illinois.
• Core Dispute: Plaintiff alleges that Defendants' online stores are selling bobbin and spool holder products that infringe its U.S. design patent.
• Technical Context: The technology relates to sewing accessories, specifically devices designed to hold a spool of thread and a corresponding bobbin together for organizational purposes.
• Key Procedural History: This action is brought against a collective of unidentified defendants listed on a sealed "Schedule A," a procedural approach common in anti-counterfeiting litigation. The complaint asserts that joinder is proper under 35 U.S.C. § 299 because the various accused products are alleged to be the same in all respects relevant to the patent-in-suit.

Case Timeline

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

U.S. Design Patent No. D1,041,869 - "BOBBIN AND SPOOL HOLDER"

• Patent Identification: U.S. Design Patent No. D1,041,869, "BOBBIN AND SPOOL HOLDER," issued September 17, 2024.

The Invention Explained

• Problem Addressed: Design patents protect ornamental appearance rather than functional utility. The implicit problem addressed is the need for a new, original, and ornamental design for an article of manufacture, specifically a bobbin and spool holder (D1,041,869 S, Title; Compl. ¶10).
• The Patented Solution: The patent discloses a specific aesthetic design for a bobbin and spool holder. The design consists of a central post that passes through a circular, ring-like structure. The upper portion of the post is shaped to secure a bobbin, while the lower portion is shaped to fit within a spool of thread, with the ring resting on top of the spool ('869 Patent, FIG. 1, FIG. 3). The complaint alleges this "unique patented design" is a reason the product is "loved by customers" (Compl. ¶10).
• Technical Importance: The design provides a distinct visual appearance for a common sewing accessory, aiming to create a recognizable product identity in the marketplace (Compl. ¶10).

Key Claims at a Glance

• The single claim asserted is for "The ornamental design for a bobbin and spool holder, as shown and described" ('869 Patent, CLAIM; Compl. ¶27).
• The core ornamental features of the claimed design, as depicted in the patent figures, include:
  • A central vertical post with a flared lower end and a multi-tiered upper end.
  • A separate, circular ring-shaped component through which the central post passes.
  • The specific proportions and contours of the post and ring relative to one another.

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are "bobbin and spool holder products" (the "Infringing Products") sold by Defendants through various online e-commerce stores (Compl. ¶3).

Functionality and Market Context

The complaint alleges that the Infringing Products are "unauthorized and unlicensed" items that trade upon DPG's patented design (Compl. ¶3). The complaint asserts these products are sold through numerous online storefronts operated by the Defendants to target consumers in the United States, including Illinois (Compl. ¶2, ¶15). The complaint includes representative figures from the '869 Patent to illustrate the patented design that is allegedly copied. (Compl. ¶10). Figure 1 from the patent, provided in the complaint, shows a top perspective view of the bobbin and spool holder design (Compl. ¶10).

IV. Analysis of Infringement Allegations

The complaint alleges that the overall appearance of the accused products is substantially the same as the claimed design, such that an ordinary observer would be deceived. While the complaint does not contain a formal claim chart, its allegations map the accused products to the patented design as follows.

'869 Patent Infringement Allegations

Identified Points of Contention

• Scope Questions: The central question in a design patent case is whether "an ordinary observer, giving such attention as a purchaser usually gives, would be so deceived by the similarity between the two designs as to purchase one supposing it to be the other." The dispute will turn on a visual comparison between the patent figures and the specific accused products sold by each Defendant.
• Technical Questions: A key evidentiary question will be whether the specific products sold by the various joined Defendants are, in fact, "the same in all respects relevant to the patent" as alleged for joinder purposes (Compl. ¶6). Discovery will be needed to establish the precise appearance of each Defendant's product.

V. Key Claim Terms for Construction

This section is not applicable. Design patent claims are defined by the drawings and are not typically subject to claim construction in the manner of utility patents. The scope of the claim is determined by the overall visual impression of the design as shown in the patent figures.

VI. Other Allegations

Indirect Infringement

The complaint makes passing references to "indirectly" infringing the '869 Patent (Compl. ¶21, ¶26) and seeks to enjoin aiding and abetting (Prayer for Relief ¶A(2)). However, it does not plead specific facts to support the knowledge and intent elements required for a claim of induced or contributory infringement against the named Defendants.

Willful Infringement

The complaint alleges that Defendants' infringement has been "knowing[] and willful[]" (Compl. ¶21, ¶22). The basis for this allegation appears to be the assertion that Defendants are operating as a network of infringers who are deliberately copying Plaintiff's design and using tactics to conceal their identities (Compl. ¶17, ¶19).

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

• A primary issue will be one of procedural propriety: can the Plaintiff successfully argue that the numerous accused products from the various unidentified Defendants are "the same" for the purposes of joinder under 35 U.S.C. § 299, or will the court find misjoinder?
• The core substantive question will be one of visual similarity: does a side-by-side comparison of the accused products and the '869 Patent's figures reveal a design that is "substantially the same" in the eyes of an ordinary observer, or are there sufficient visual differences to avoid infringement?
• A key evidentiary question will concern willfulness: assuming infringement is found, can the Plaintiff produce sufficient evidence of Defendants' knowledge and deliberate conduct to support a finding of willful infringement, particularly given the challenges of discovery against foreign, unidentified parties?