DCT
1:24-cv-13029
Solawave Inc v. Partnerships Unincorp Associations
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Solawave Inc. (Delaware)
- Defendant: The Partnerships and Unincorporated Associations Identified on Schedule “A” (Jurisdiction Unknown)
- Plaintiff’s Counsel: Greer, Burns & Crain, Ltd.
- Case Identification: 1:24-cv-13029, N.D. Ill., 12/18/2024
- Venue Allegations: Venue is based on allegations that Defendants operate interactive e-commerce stores that directly target and make sales to consumers in the United States, including Illinois.
- Core Dispute: Plaintiff alleges that numerous unnamed e-commerce operators infringe a design patent covering the ornamental appearance of a handheld facial wand.
- Technical Context: The dispute concerns the ornamental design of handheld electronic skincare devices, a segment of the personal beauty and wellness product market.
- Key Procedural History: The complaint alleges Plaintiff is the lawful assignee of the patent-in-suit and that its commercial products embodying the design are marked in compliance with 35 U.S.C. § 287(a). No other litigation or administrative proceedings are mentioned.
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
- Patent Identification: U.S. Design Patent No. D1,024,350, titled "Massage Wand", issued April 23, 2024.
The Invention Explained
- Problem Addressed: The complaint does not frame the invention in terms of a technical problem, but rather as an aesthetic one. It posits Plaintiff as an "innovator in the design" of skincare tools and states its products are known for their "distinctive patented designs" that are "broadly recognized by consumers" (Compl. ¶¶ 5, 7). The implied challenge is the creation of a novel and aesthetically distinct appearance for a product in a crowded market.
- The Patented Solution: The patent protects the ornamental design for a massage wand, not its functional aspects ('350 Patent, CLAIM). The design, as depicted in the patent's figures, consists of a slender, wand-like body with an articulated head at its terminus (Compl. p. 4, FIG. 1). Key visual features include the elongated, rounded-rectangular shape of the head, a recessed central portion within the head, and a single circular control element on the front face of the body ('350 Patent, Figs. 3, 7).
- Technical Importance: The complaint alleges that the "Solawave Design" is associated with the "quality and innovation that the public has come to expect from Solawave Products" (Compl. ¶7).
Key Claims at a Glance
- As a design patent, there is a single claim for the ornamental design as a whole.
- The claim is for: "The ornamental design for a massage wand, as shown and described" ('350 Patent, "CLAIM"). The scope of this claim is defined by the visual representations in the patent's nine drawing sheets.
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are "unauthorized and unlicensed" facial wands, collectively referred to as the "Infringing Products" (Compl. ¶3).
Functionality and Market Context
The complaint alleges that the Infringing Products are sold by the unidentified Defendants through numerous e-commerce stores operating under various "Seller Aliases" on platforms such as Amazon, eBay, AliExpress, and Temu (Compl. ¶11). The complaint asserts that these online stores are designed to mimic authorized retailers and that they "often include content and images that make it very difficult for consumers to distinguish such stores from an authorized retailer" (Compl. ¶11). A front perspective view of the patented design is included in the complaint to represent the claimed "Solawave Design." (Compl. p. 4, FIG. 1).
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. While a formal claim chart is not used, the following table breaks down the key ornamental features of the patented design and the corresponding infringement allegations.
D1,024,350 Infringement Allegations
| Ornamental Feature (from the design "as shown and described") | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An elongated, generally cylindrical body with a distinct head element at one end. | The complaint alleges that Defendants sell products that infringe the "ornamental design claimed in the Solawave Design." | ¶24 | Figs. 1, 5 |
| A head element with an overall lozenge or rounded-rectangular shape, featuring a recessed central surface. | The complaint alleges infringement of the overall design, which includes this head shape. The complaint includes a top-down view of this feature. (Compl. p. 7, FIG. 7). | ¶24 | Figs. 3, 7 |
| A single, circular control element located on the front face of the body, below the head element. | The complaint alleges infringement of the overall design, which includes this control element. A front view showing this element is provided. (Compl. p. 5, FIG. 3). | ¶24 | Figs. 1, 3 |
| The overall visual impression created by the combination and proportion of the body, head, and control element. | The complaint alleges that Defendants sell the "same product that infringes directly and/or indirectly the Solawave Design." | ¶20 | Figs. 1-9 |
- Identified Points of Contention:
- Factual Question: The central factual question for the court will be whether the Defendants' accused products are "substantially the same" as the patented design. This analysis will require a side-by-side comparison of the actual accused products (which are not pictured in the complaint) with the drawings of the ’350 patent.
- Scope Questions: The scope of a design patent is limited by the prior art. A key question, not addressed in the complaint, will be the extent to which prior art designs in the handheld skincare device field may limit the scope of the ’350 patent. The infringement analysis will focus on the novel ornamental aspects of the design, not on features that are functional or common to prior art devices.
V. Key Claim Terms for Construction
As this is a design patent, the "claim" consists of the ornamental design as depicted in the patent's drawings. Formal claim construction of specific verbal terms is generally not performed. The scope of the claim is determined by the overall visual appearance of the design as shown in the patent's figures, interpreted in light of the prior art.
VI. Other Allegations
- Indirect Infringement: The prayer for relief seeks to enjoin "aiding, abetting, contributing to, or otherwise assisting anyone" in infringing the patent (Compl., Prayer for Relief ¶1(b)). However, the factual allegations in the body of the complaint focus on the direct infringement by the seller Defendants rather than pleading specific facts to support a claim of indirect infringement against other parties, such as the e-commerce platforms.
- Willful Infringement: The complaint alleges that Defendants' infringement was "willful" (Compl. ¶21) and that they acted "knowingly and willfully" (Compl. ¶20). This allegation appears to be based on the assertion that Defendants operate e-commerce stores designed to look like authorized retailers and sell the "same product" that infringes the patent, thereby trading on Plaintiff's reputation (Compl. ¶¶ 11, 14, 20).
VII. Analyst’s Conclusion: Key Questions for the Case
- A primary challenge in this case will be jurisdictional and logistical: given that the Defendants are alleged to be a diffuse network of anonymous, foreign-based e-commerce operators (Compl. ¶¶ 9, 10), a threshold question is whether the Plaintiff can effectively identify, serve, and enforce any potential judgment against them.
- The core substantive issue will be one of visual identity: is the overall ornamental design of the accused products "substantially the same" as that claimed in the ’350 patent from the perspective of an ordinary purchaser? The outcome will depend on a visual comparison of the products in light of the relevant prior art, focusing on the novel, non-functional features of the patented design.