DCT

1:24-cv-12453

Solawave Inc v. Partnerships Unincorp Associations

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
    • Plaintiff: Solawave Inc. (Delaware)
    • Defendant: The Partnerships and Unincorporated Associations Identified on Schedule "A" (Jurisdictions Unknown)
    • Plaintiff’s Counsel: Greer, Burns & Crain, Ltd.
  • Case Identification: 1:24-cv-12453, N.D. Ill., 12/18/2024
  • Venue Allegations: Venue is alleged to be proper because the defendants target business activities, including sales, toward consumers in the United States and specifically in Illinois through interactive e-commerce stores.
  • Core Dispute: Plaintiff alleges that numerous online store operators are making, using, selling, and importing facial wands that infringe Plaintiff's U.S. design patent.
  • Technical Context: The dispute is in the field of personal care and beauty devices, where the ornamental and aesthetic design of a product can be a significant market differentiator.
  • Key Procedural History: The action is brought against a group of unidentified defendants, a common procedural posture for enforcement actions against diffuse online sellers who allegedly use multiple aliases to conceal their identities and evade infringement liability.

Case Timeline

Date Event
2023-02-02 **D1,024,350** Patent Priority Date (Filing Date)
2024-04-23 D1,024,350 Patent Issue Date
2024-12-18 Complaint Filing Date

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

U.S. Design Patent No. D1,024,350 - "Massage Wand,"

  • Issued: April 23, 2024.

The Invention Explained

  • Problem Addressed: Design patents do not solve a functional problem but instead provide a new, original, and ornamental design for an article of manufacture. The filing of the patent application suggests a perceived need for a novel aesthetic appearance for a massage wand.
  • The Patented Solution: The D'350 Patent protects the specific visual characteristics of a massage wand. The design consists of a long, slender, cylindrical body with an ovular control button and a distinct head. The head features a rounded, oblong, loop-like shape that is oriented at an angle relative to the main body (D'350 Patent, Figs. 1, 5, 9). The overall impression is one of a sleek, minimalist device.
  • Technical Importance: In the market for consumer electronics and personal care devices, a distinctive ornamental design can create brand identity and consumer recognition (Compl. ¶5, ¶7).

Key Claims at a Glance

  • The patent contains a single claim: "The ornamental design for a massage wand, as shown and described" (D'350 Patent, Claim).
  • Unlike a utility patent, a design patent's claim is not composed of separable text-based elements but is defined by the solid lines in the patent's drawings as a whole.

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are "unauthorized and unlicensed" facial wands sold by the Defendants through various e-commerce stores on platforms such as Amazon, eBay, AliExpress, and Temu (Compl. ¶3, ¶11).

Functionality and Market Context

  • The complaint identifies the accused products as "Infringing Products" that embody the patented "Solawave Design" (Compl. ¶3, ¶7).
  • The core of the allegation is not functional, but aesthetic; the complaint asserts that Defendants sell products with a design that is substantially the same as the one protected by the D'350 Patent. The complaint includes several figures from the D'350 patent to illustrate the patented design, such as a front perspective view of the wand (Compl. p. 4, FIG. 1).
  • Plaintiff alleges that Defendants' e-commerce stores are designed to appear as though they are authorized retailers, and that the products come from a common source (Compl. ¶14, ¶17).

IV. Analysis of Infringement Allegations

Design patent infringement is determined by the "ordinary observer" test, which asks 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 the Infringing Products meet this standard.

  • Infringement Theory: The complaint alleges that Defendants are making, using, offering for sale, selling, and/or importing products that "infringe directly and/or indirectly the ornamental design claimed in the Solawave Design" (Compl. ¶24). The legal basis is that the overall visual appearance of the accused facial wands is substantially the same as the design depicted in the figures of the D'350 Patent. The complaint provides the front view of the patented design to support this contention (Compl. p. 5, FIG. 3). The infringement case will depend on a visual comparison between the patented design and the products sold by each Defendant.
  • Identified Points of Contention:
    • Visual Similarity: The central question will be whether the overall ornamental appearance of the Defendants' products is substantially the same as the claimed design in the D'350 Patent. Any visual differences between the accused products and the patent figures will be a focus of dispute.
    • Evidentiary Link: A significant practical hurdle for the Plaintiff may be producing sufficient evidence to prove that each of the anonymously operated "Seller Aliases" listed on Schedule A sold a product with a design that infringes the patent.

V. Key Claim Terms for Construction

Formal claim construction of specific terms is uncommon in design patent cases, as the claim is understood to be the visual design shown in the drawings. The analysis focuses on the scope of the design as a whole rather than the definition of individual words.

  • The "Claim" as a Whole: The primary focus will be on the overall visual impression created by the patented design drawings.
  • Context and Importance: The scope of protection is defined by the solid lines in the patent figures. The court will consider the design as a whole, and the analysis will not be a piecemeal comparison of individual features. The dispute will center on whether the design of the accused products is confusingly similar to the holistic design protected by the patent.
  • Intrinsic Evidence for Interpretation:
    • Evidence for Broader Interpretation: The claim is for a "massage wand" generally, which may support an argument that the design's scope is not limited to a device with specific, unclaimed functionalities. The use of multiple, comprehensive views (e.g., front, back, side, top, bottom, perspective) defines the design from all angles (D'350 Patent, Figs. 1-9).
    • Evidence for Narrower Interpretation: The specific proportions, surface contours, and arrangement of features shown in the drawings (e.g., the precise angle of the head, the shape of the button) strictly define the metes and bounds of the claim. Any accused product that deviates significantly from these illustrated features may be argued to fall outside the patent's scope.

VI. Other Allegations

  • Indirect Infringement: The complaint makes a passing allegation of indirect infringement (Compl. ¶24) and the prayer for relief requests an injunction against "aiding, abetting, [or] contributing to" infringement (Prayer for Relief, ¶1.b). However, the factual allegations focus primarily on direct infringement by the Defendants as direct sellers and importers.
  • Willful Infringement: Willfulness is explicitly alleged (Compl. ¶21). This allegation is supported by claims that Defendants are knowingly part of a widespread network of infringers who use tactics to conceal their identities and evade enforcement, such as using multiple aliases and participating in online forums discussing such tactics (Compl. ¶16, ¶18, ¶20).

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

  1. A core issue will be one of visual comparison: From the perspective of an ordinary observer, is the overall ornamental design of the accused facial wands substantially the same as the holistic design protected by the figures of the D'350 patent?
  2. A key challenge will be evidentiary: Can the Plaintiff successfully link each unidentified defendant listed in Schedule A to the actual sale or importation of a product that infringes the patented design?
  3. The case will likely raise questions of remedy and enforcement: Given the allegations that Defendants operate anonymously and offshore (Compl. ¶9, ¶19), a central challenge, if infringement is found, will be the practical enforcement of any resulting injunction or monetary award against elusive parties.