DCT
1:24-cv-12342
Dongguan Jiashi Display Products Co Ltd v. Shaopeng Guo
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Dongguan Jiashi Display Products Co., Ltd., and Hangzhou Jupai Network Technology Co., Ltd. (China)
- Defendant: Shaopeng Guo (China)
- Plaintiff’s Counsel: Glacier Law LLP
- Case Identification: 1:24-cv-12342, N.D. Ill., 12/01/2024
- Venue Allegations: Venue is alleged based on the Defendant targeting business activities toward consumers in the United States, including Illinois, through an interactive e-commerce store on Amazon.
- Core Dispute: Plaintiffs seek a declaratory judgment that their vacuum stand products do not infringe Defendant's design patent, and further that the patent is invalid and unenforceable.
- Technical Context: The dispute concerns the ornamental design of freestanding storage stands for cordless vacuum cleaners and their accessories, a product category common in the online consumer home goods market.
- Key Procedural History: The action was precipitated by Defendant filing a patent infringement complaint with Amazon, which resulted in the removal of Plaintiffs' product listings from the e-commerce platform. The complaint also alleges the patent is invalid based on numerous prior art patents and products that were publicly available before the patent's filing date.
Case Timeline
| Date | Event |
|---|---|
| 2019-01-10 | Alleged Prior Art: CN Patent 305292065 Filing Date |
| 2019-08-06 | Alleged Prior Art: CN Patent 305292065 Issue Date |
| 2021-11-21 | Alleged Prior Art: PureMounts product available on Amazon |
| 2022-01-13 | Alleged Prior Art: Customer review screenshot of PureMounts product |
| 2023-05-24 | Alleged Prior Art: CN Patent 219720565 Filing Date |
| 2023-05-24 | Alleged Prior Art: CN Patent 308269461 Filing Date |
| 2023-09-22 | Alleged Prior Art: CN Patent 219720565 Issue Date |
| 2023-10-04 | Alleged Prior Art: Foho product available on Amazon |
| 2023-10-11 | Alleged Prior Art: Customer review screenshot of Foho product |
| 2023-10-17 | Alleged Prior Art: CN Patent 308269461 Issue Date |
| 2023-12-08 | Alleged Prior Art: MOOPHY product available on Amazon |
| 2023-12-11 | U.S. Patent No. D1,021,487 Filing Date |
| 2024-04-09 | U.S. Patent No. D1,021,487 Issue Date |
| 2024-11-06 | Amazon notifies Plaintiffs of product listing removal |
| 2024-12-01 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Design Patent No. D1,021,487, “Vacuum Cleaner Stand,” Issued April 9, 2024.
- The Invention Explained:
- Problem Addressed: Design patents protect the ornamental appearance of an article of manufacture rather than its utilitarian features. The '487 Patent does not describe a technical problem but instead claims rights to a specific aesthetic design for a vacuum cleaner stand (D1,021,487 Patent, Claim).
- The Patented Solution: The patent claims "the ornamental design for a vacuum cleaner stand, as shown and described" (D1,021,487 Patent, Claim). The claimed design, depicted in solid lines in the patent's figures, consists of a flat, rectangular base supporting a tall, slender vertical mast. The mast features a series of angled, V-shaped hooks on its front face for holding accessories (D1,021,487 Patent, Figs. 1, 4). The design also includes concave, oblong cutouts on the mast (D1,021,487 Patent, Fig. 2).
- Technical Importance: In the market for consumer goods sold online, a distinct ornamental design can serve as a key product differentiator, influencing consumer choice and establishing a recognizable product identity (Compl. ¶11, 19).
- Key Claims at a Glance:
- The single claim of the patent is for "The ornamental design for a vacuum cleaner stand, as shown and described" (D1,021,487 Patent, Claim).
- The scope of a design patent claim is defined by its drawings. The key visual features of the asserted design include:
- A tall vertical mast mounted on a rectangular base.
- A series of angled, V-shaped hooks distributed along the mast.
- Concave, oblong cutouts on the front and rear of the mast.
- The overall proportions and visual impression created by the combination of these elements.
III. The Accused Instrumentality
- Product Identification: Plaintiffs' "Vacuum Stand Products" sold on Amazon under the brand names "Haturi Selected" and "JUPAI-A Selected" (Compl. ¶3, 4). Specific Amazon Standard Identification Numbers (ASINs) are identified as B0D8HLHN8B, B0CQYJ3XTJ, and B0D2CZTTF9 (Compl. ¶12, 13).
- Functionality and Market Context: The accused products are freestanding stands used to store cordless vacuum cleaners and organize their corresponding attachments (Compl. ¶11). The complaint alleges that the Amazon marketplace is Plaintiffs' primary sales channel into the United States, and the delisting of their products has caused significant financial harm (Compl. ¶9, 14). The complaint provides a side-by-side visual comparison of the patented design and one of the Plaintiffs' accused products. A photograph shows the Plaintiffs' product, which features a vertical mast on a rectangular base with multiple hooks for accessories (Compl. ¶49, p. 14).
IV. Analysis of Infringement Allegations
As this is a complaint for a declaratory judgment of non-infringement, the analysis focuses on the Plaintiffs' arguments for why their products do not infringe. The complaint presents these arguments in a comparative chart, asserting that an "ordinary observer" familiar with the prior art would not be confused between the products (Compl. ¶49).
| Claimed Design Feature ('487 Patent) | Alleged Non-Infringing Feature (Plaintiff's Product) | Complaint Citation | Patent Citation |
|---|---|---|---|
| Base features two straight, inset lines on the top surface. | The base of the product has no straight, inset lines on its top surface. | ¶49; p. 14 | D1,021,487 Patent, Fig. 6 |
| Oblong cutouts on the mast are described as "Concave oval." | The corresponding oblong cutouts on the product's mast are "Raised oval" in shape. | ¶49; p. 14 | D1,021,487 Patent, Fig. 2 |
| The bottom surface of the base features four square decorations in the corners. | The bottom surface of the product's base has "No square decoration." | ¶49; p. 15 | D1,021,487 Patent, Fig. 7 |
- Identified Points of Contention: The central infringement question will be decided by the "ordinary observer" test: whether an ordinary observer, in light of the prior art, would be deceived into purchasing the Plaintiffs' product believing it to be the patented design.
- Scope Questions: The dispute raises the question of how broadly the claimed design should be interpreted. A key issue will be whether the specific details highlighted by the Plaintiffs (e.g., concave vs. raised ovals, lines on the base) are ornamental details that create a different overall visual impression, or if they are minor variations that fall within the scope of the patented design.
- Technical Questions: A factual question for the court will be to assess the visual impact of the differences. Does the "raised oval" feature on the Plaintiffs' product create a sufficiently distinct visual appearance from the "concave oval" feature shown in the '487 Patent to avoid confusing an ordinary observer? (Compl. ¶49, p. 14).
V. Key Claim Terms for Construction
In design patent litigation, there are no "terms" to construe in the manner of a utility patent. The "claim" is the visual design as a whole, depicted in the drawings. The analysis therefore focuses on the scope of the design's visual elements.
- The Term: "The ornamental design for a vacuum cleaner stand, as shown and described."
- Context and Importance: The entire case hinges on the scope of the design's appearance. Practitioners may focus on whether the patent protects only the exact configuration shown or a broader concept of a stand with these general features. The asserted prior art, which shares many general features with the patented design, may suggest that the scope of protection is narrow and limited to the specific combination of details shown in the '487 Patent's figures (Compl. ¶26, 37).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The solid lines in Figures 1-8 of the '487 Patent define the claimed design. A party could argue that the overall visual impression of a tall mast on a rectangular base with a specific arrangement of hooks is the core of the design, and minor variations should not escape infringement.
- Evidence for a Narrower Interpretation: The precise details shown in the solid lines—such as the specific concave shape of the ovals (D1,021,487 Patent, Fig. 2) and the inset lines on the base (D1,021,487 Patent, Fig. 6)—could be argued to be limitations of the claim. The existence of numerous similar prior art designs may support an interpretation where only the specific, unique combination of all depicted elements is protected (Compl. ¶27-36).
VI. Other Allegations
- Invalidity: The complaint includes a count for a declaration of invalidity under 35 U.S.C. §§ 102 and 103 (Compl. ¶23-40). Plaintiffs allege that the claimed design was disclosed to the public before the patent's filing date through several prior art references, including three Chinese patents and at least three different vacuum stand products sold on Amazon.com since as early as 2021 (Compl. ¶27, 29, 31, 33, 35). A side-by-side comparison shows a prior art design from a Chinese patent that appears visually similar to the '487 Patent's design (Compl. ¶27, p. 6).
- Unenforceability / Inequitable Conduct: The complaint alleges that the '487 Patent is unenforceable due to inequitable conduct (Compl. ¶41-46). The basis for this allegation is that the Defendant was allegedly aware of the material prior art before filing the patent application but withheld this information from the U.S. Patent and Trademark Office with an intent to deceive (Compl. ¶45).
- Unfair Competition: The complaint asserts a claim for unfair competition under Illinois common law, alleging that the Defendant fraudulently obtained the patent and then used Amazon's intellectual property system as a tool to harm legitimate competitors and damage Plaintiffs' business (Compl. ¶53, 54).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of validity: Do the prior art references cited by the Plaintiffs—particularly the earlier Chinese patents and products sold on Amazon—disclose a design that is identical or substantially the same as the one claimed in the '487 Patent, thereby rendering the patent invalid?
- A second core issue will be the scope of the design for infringement purposes: Assuming the patent is valid, are the visual differences between Plaintiffs' products and the patented design (e.g., raised vs. concave ovals, features of the base) significant enough that an ordinary observer, taking the prior art into account, would not be deceived?
- A key evidentiary question will concern inequitable conduct: Can the Plaintiffs provide evidence to show that the Defendant had knowledge of the specific, material prior art references and made a deliberate decision to withhold them from the patent office with an intent to deceive?