Shenzhen Xiang Wang Technology Co Ltd v. Vikingstrength LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Shenzhen Xiang Wang Technology Co., Ltd. (People's Republic of China)
  • Defendant: Vikingstrength, LLC (Norway)
  • Plaintiff’s Counsel: Glacier Law LLP
• Case Identification: 1:24-cv-12486, N.D. Ill., 12/05/2024
• Venue Allegations: Plaintiff alleges venue is proper because Defendant directed enforcement activities into Illinois by filing a patent infringement complaint with Amazon that affected Plaintiff's sales in the state, and because Defendant sells its own products in Illinois via online stores.
• Core Dispute: Plaintiff seeks a declaratory judgment that its "Wrist Roller" products do not infringe Defendant’s design patent and that the patent is invalid, following Defendant's infringement complaint to Amazon which resulted in the de-listing of Plaintiff's products.
• Technical Context: The dispute concerns the ornamental design of wrist roller exercise devices, a product category for strength training.
• Key Procedural History: The action was precipitated by a cease and desist letter sent from Defendant to Plaintiff, followed by an infringement complaint filed by Defendant with Amazon. This resulted in the removal of Plaintiff's products from the Amazon marketplace, which Plaintiff cites as the basis for an actual and justiciable controversy between the parties.

Case Timeline

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

• Patent Identification: U.S. Design Patent No. D1,052,668, "Wrist Roller," issued November 26, 2024 ('668 Patent).

The Invention Explained

• Problem Addressed: Design patents do not articulate a technical problem and solution in the manner of utility patents. They protect the novel, ornamental appearance of an article of manufacture.
• The Patented Solution: The ’668 Patent claims the specific ornamental design for a wrist roller. The design consists of two slightly tapered, cylindrical handles separated by a central spool formed by two parallel flanges, with a small central opening for a rope or cable ('668 Patent, FIG. 1-7). The overall visual impression is defined by the specific proportions, contours, and arrangement of these features as depicted in the patent's drawings ('668 Patent, DESCRIPTION).
• Technical Importance: The complaint alleges that Defendant, in its communications, characterized the design as having "ergonomic dimensions" and a "unique rope or cable integration," suggesting an attempt to protect functional aspects through a design patent (Compl. ¶14).

Key Claims at a Glance

• Design patents contain a single claim. The asserted claim is: "The ornamental design for a wrist roller as shown and described" (’668 Patent, Claim).
• The claim's scope is defined by the visual appearance of the article as shown in the patent's seven figures, which depict the device from perspective, side, front, rear, top, and bottom views.

III. The Accused Instrumentality

Product Identification

• The accused instrumentalities are Plaintiff’s "Wrist Roller" products sold on its Amazon store, identified by ASINs B0D7397J6M, B0D73DRFS7, B0D739D2TM, and B0D736RX9Z (Compl. ¶11, 13).

Functionality and Market Context

• The complaint describes Plaintiff's products as wrist rollers that were sold on Amazon.com before being de-listed due to Defendant’s infringement complaint (Compl. ¶11, 13).
• The complaint presents the Plaintiff's product as an improvement upon a basic design profile established by prior art (Compl. ¶32). A visual provided in the complaint contrasts the patented design with the Plaintiff's product, highlighting alleged differences. This figure shows the end-cap design of the Plaintiff's product, which is alleged to be domed rather than flat (Compl. ¶32, "Difference No. 1").
• The complaint alleges that the de-listing has caused "significant financial loss" and could lead to the "total shut down of Plaintiff's business," positioning the products as commercially important to the Plaintiff (Compl. ¶4, 6).

IV. Analysis of Infringement Allegations

As this is a complaint for declaratory judgment of non-infringement, the following table summarizes the Plaintiff's arguments for why its product design is not substantially the same as the patented design.

Identified Points of Contention

• Scope Questions: The complaint argues that the "ordinary observer" test for design patent infringement must be conducted after filtering out purely functional elements (Compl. ¶28, 29). This raises the question of which features of the ’668 Patent design—such as the handles, central flanges, and winding cylinder—are dictated by function and must therefore be disregarded when comparing the designs.
• Technical Questions: A central factual question is whether the visual differences alleged by the Plaintiff (e.g., flat vs. domed ends, concave vs. straight handles, small vs. large rope opening) are significant enough that an ordinary observer, familiar with the prior art, would not be deceived into believing the Plaintiff's product is the same as the patented design (Compl. ¶30, 36). The complaint provides a visual comparison of prior art designs to support its argument that the foundational appearance of such products was already established. This image presents two combinations of prior art patents that allegedly render the '668 patent's design obvious (Compl. ¶22).

V. Key Claim Terms for Construction

In a design patent case, the "claim" is the set of drawings, and formal construction of text is rare. The central dispute analogous to claim construction is determining the scope of the design by separating ornamental features from functional ones.

• The Term: The overall "ornamental design" protected by the patent.
• Context and Importance: Plaintiff's case for both non-infringement and invalidity relies heavily on narrowing the scope of the protected design by arguing that several key features are "inherently functional" (Compl. ¶28). Practitioners may focus on this issue because if the court agrees to exclude these "standard functional requirements," the remaining ornamental features may be too dissimilar or too minor to support a finding of infringement.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation (favoring Patentee): A court could find that the specific combination and arrangement of elements, even if individually functional, creates a unique overall ornamental appearance that is protectable as a whole. The patent's title, "Wrist Roller," and its depiction of a recognizable exercise device do not, on their own, dedicate all features to function ('668 Patent, Title, FIG. 1).
  • Evidence for a Narrower Interpretation (favoring Plaintiff/Accused Infringer): The complaint alleges that "the two side handles, the two central flanges, and the cylindrical portion in the middle for winding the rope" are "standard functional requirements for this type of product" (Compl. ¶28). It further argues that by describing an "Attachment Mechanism," the Defendant is attempting to "improperly protect the functional aspects" of the device (Compl. ¶15).

VI. Other Allegations

• Tortious Interference: The complaint includes counts for Tortious Interference with Contractual Relations (Count III) and Prospective Economic Advantage (Count IV). Plaintiff alleges that Defendant knew of Plaintiff's contractual relationship with Amazon and intentionally interfered by filing "materially false allegations of patent infringement" in order to have Plaintiff's product listings removed and eliminate competition (Compl. ¶39, 42, 48).

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

1. The Functionality Doctrine: A primary issue is one of scope filtration: to what extent will the court deem the core components of the wrist roller design (handles, spool, flanges) to be functional? The answer will dictate how much of the patented design is left to compare against the accused product for the infringement analysis.
2. The Ordinary Observer Test: The case will turn on a core factual question of visual comparison: are the alleged differences between the patented design and the accused product—such as the shape of the handles and end-caps—significant enough, particularly in light of the cited prior art, to prevent an ordinary observer from being deceived?
3. Bad Faith Enforcement: A key question for the tortious interference claims will be one of intent: can the Plaintiff demonstrate that the Defendant’s infringement complaint to Amazon was not merely an exercise of its patent rights, but was objectively baseless and made in bad faith, a standard that presents a high evidentiary bar.