DPG USA Inc v. Partnerships Unincorp 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, Allegedly People's Republic of China)
  • Plaintiff’s Counsel: AVEK IP, LLC
• Case Identification: 1:24-cv-12771, N.D. Ill., 12/12/2024
• Venue Allegations: Venue is based on allegations that Defendants operate interactive e-commerce websites that target and make sales to consumers in Illinois.
• Core Dispute: Plaintiff alleges that numerous online retailers are selling "bobbin and spool holder products" that infringe its design patent.
• Technical Context: The dispute concerns the ornamental design of a consumer product used for organizing sewing accessories, specifically bobbins and spools of thread.
• Key Procedural History: The complaint asserts joinder of numerous unidentified defendants is proper under 35 U.S.C. § 299, alleging they are all selling the same infringing product and that there are common questions of fact. The asserted patent is a continuation-in-part of an earlier application, which itself claims priority back to a 2017 international application. Plaintiff alleges it has been selling products embodying the design since at least 2018.

Case Timeline

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

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

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

The Invention Explained

• Problem Addressed: The complaint does not specify a problem, which is typical for a design patent. The context suggests a need for a visually distinct way to organize sewing materials like bobbins and thread spools (Compl. ¶9).
• The Patented Solution: The patent claims a specific ornamental design for a bobbin and spool holder. The design consists of a lower, flared base from which a central post extends upward, passing through a disc-like element, and terminating in a tiered, cap-like structure. Figure 1 provides a top perspective view of the overall assembly. The distinctive visual features include the proportions of the flared base, the wide disc, and the stacked geometric shapes at the top of the central post (’869 Patent, FIG. 1, 3).
• Technical Importance: The complaint alleges that the unique patented design is a reason for the product's popularity with customers (Compl. ¶10).

Key Claims at a Glance

• The patent contains a single claim: "The ornamental design for a bobbin and spool holder, as shown and described" (’869 Patent, Claim).
• The scope of the claimed design is defined by the solid lines in the patent's figures; portions shown in broken lines are disclaimed and form no part of the patented design (’869 Patent, Description).

III. The Accused Instrumentality

Product Identification

• "bobbin and spool holder products" ("the Infringing Products") sold by Defendants through various online storefronts (Compl. ¶3).

Functionality and Market Context

• The complaint alleges that the accused products are unauthorized and unlicensed items that "trade upon DPG's patented design" (Compl. ¶3).
• The complaint further alleges that the accused products sold by the various joined defendants have "components that are the same as one another and function the same in all respects relevant to the '869 Patent" (Compl. ¶6). The complaint includes representative figures of the patented design, such as FIG. 1, which shows a perspective view of the holder. (Compl. ¶10). Another visual, FIG. 3, shows a side elevation view, detailing the profile of the central post and top structure (Compl. ¶10). Plaintiff alleges that Defendants operate through a network of e-commerce stores, using tactics like fictitious names to conceal their identities and interworking (Compl. ¶7, ¶14, ¶16).

IV. Analysis of Infringement Allegations

The complaint alleges that Defendants infringe the sole claim of the '869 Patent, which covers the ornamental design as a whole. Infringement of a design patent is assessed from the perspective of an "ordinary observer." The central question is whether such an observer would find the design of the accused product to be substantially the same as the design claimed in the patent. The complaint alleges the infringing products are the "same unauthorized and unlicensed product" (Compl. ¶3).

'869 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: A primary question will be the scope of the claimed design. The patent disclaims certain features shown in broken lines, and the court will need to determine how these disclaimed elements affect the analysis of the overall visual impression (’869 Patent, Description).
  • Evidentiary Questions: The complaint alleges that the accused products sold by numerous, separate online stores are the "same" (Compl. ¶3, ¶6). A key factual question will be whether discovery confirms that a single, identical product is being sold by all joined Defendants, or if there are variations that could impact the infringement analysis for different sellers. The complaint references "Schedule A-1" and "Schedule A-2" containing product comparisons and screenshots, but these exhibits were not included with the complaint filing; their contents will be critical evidence (Compl. ¶6, ¶15).

V. Analysis of Claimed Design Scope

In a design patent case, the "claim" is the visual design itself. Analysis focuses on what visual features are included in, or excluded from, the claimed design.

• The Claimed Scope: The scope is defined by the solid lines in the patent drawings (’869 Patent, Description).
• Context and Importance: The distinction between solid (claimed) and broken (disclaimed) lines is fundamental to determining infringement. An accused design that copies only disclaimed subject matter cannot infringe. Practitioners will focus on whether the allegedly infringing products copy the specific ornamental features shown in solid lines.
• Intrinsic Evidence for Interpretation:
  • Evidence for Broader Scope: The claim is for the design "as shown and described" (’869 Patent, Claim). A party might argue this protects the overall visual impression created by the combination of all claimed elements, even if individual elements are simple geometric shapes. The several views provided (e.g., perspective, side, top) collectively define a complete three-dimensional appearance (’869 Patent, FIG. 1-6).
  • Evidence for Narrower Scope: The patent explicitly states that "The broken lines shown in the drawings depict portions of the bobbin and spool holder that form no part of the claimed design" (’869 Patent, Description). This language definitively limits the scope of protection and prevents the patentee from claiming infringement based on any similarity in the disclaimed portions. Any functional aspects of the design are also not protected by a design patent, which could further narrow the scope of enforceable rights.

VI. Other Allegations

• Indirect Infringement: While the prayer for relief seeks an injunction against "aiding, abetting, [or] contributing to" infringement, the body of the complaint does not contain specific factual allegations detailing a theory of indirect infringement (Compl. ¶ A(2)). The allegations focus on direct infringement by the named Defendants (Compl. ¶27).
• Willful Infringement: The complaint alleges that Defendants’ infringement "is and has been willful" and that they have "knowingly and willfully" offered the products for sale (Compl. ¶21, ¶22). The factual basis provided is the general allegation of offering for sale without authorization, rather than specific facts showing pre-suit knowledge of the patent.

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

1. A central issue will be one of infringement and joinder: Can Plaintiff establish, as alleged, that the products sold by dozens of separate online storefronts are in fact the "same" accused product and are all "substantially the same" as the patented design in the eyes of an ordinary observer? The evidence in the unfiled Schedules A-1 and A-2 will be pivotal.
2. A second key question will be damages and enforcement: Given that Defendants are alleged to be a diffuse network of foreign entities operating under fictitious names, a practical challenge will be identifying the defendants, effecting service, and, if infringement is found, calculating and collecting damages or profits from entities that allegedly use tactics to evade enforcement.