DCT
1:24-cv-13098
Guangdongsheng Shunhechuanmei Co Ltd v. Partnerships Unincorp Associations
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Guangdongsheng Shunhechuanmei Co., Ltd. (China)
- Defendant: The Partnerships and Unincorporated Associations Identified on Schedule “A” (China or other foreign jurisdictions)
- Plaintiff’s Counsel: The Law Offices of Konrad Sherinian, LLC
- Case Identification: 1:24-cv-13098, N.D. Ill., 12/20/2024
- Venue Allegations: Venue is asserted based on Defendants allegedly targeting consumers in the United States, including Illinois, through the operation of interactive e-commerce stores and shipping products to Illinois residents.
- Core Dispute: Plaintiff alleges that Defendants’ sale of certain metal nibbler drill attachments via online stores infringes its U.S. design patent.
- Technical Context: The technology falls within the domain of power tool accessories, specifically attachments that enable standard drills to function as metal cutters or nibblers.
- Key Procedural History: The complaint notes that the case is related to two earlier filed cases, 2024-cv-748 and 2024-cv-5863, which deal with some of the same intellectual property. Plaintiff also discloses that a Petition for a Certificate of Correction has been submitted to the USPTO to add a second inventor to the patent-in-suit, which could be relevant to questions of ownership and standing.
Case Timeline
| Date | Event |
|---|---|
| 2022-12-06 | D1,006,076 Patent Priority Date |
| 2023-01-01 | Plaintiff marketing begins (est.) |
| 2023-11-28 | D1,006,076 Patent Issue Date |
| 2024-12-20 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Design Patent No. D1,006,076, “Metal Nibbler Drill Attachment,” issued November 28, 2023.
The Invention Explained
As a design patent, the '076 Patent does not claim a functional invention but rather protects the specific ornamental appearance of an article of manufacture.
- Problem Addressed: The complaint does not articulate a technical problem but instead focuses on aesthetic differentiation, alleging the creation of a "unique and innovative design" for a metal nibbler drill attachment (Compl. ¶7).
- The Patented Solution: The patent protects the novel, non-functional, visual characteristics of the drill attachment as depicted in its figures. The claimed design consists of a main body with two vertically stacked, circular housings, an angled handle emerging from the upper housing, and an exposed gear-like cutting wheel, among other features shown in solid lines ('076 Patent, FIG. 1-10). The specific visual impression created by the combination of these elements constitutes the patented design (Compl. ¶8; ’076 Patent, Description).
- Technical Importance: The complaint alleges that the patented design has become "instantly recognizable" to the public and is associated with the quality and innovation of the Shunhechuanmei brand (Compl. ¶7-8).
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is: "The ornamental design for a metal nibbler drill attachment, as shown and described." (’076 Patent, Claim).
- The scope of the claim is defined by the visual appearance of the article in the patent drawings. The essential ornamental elements shown in solid lines include:
- The overall configuration of the device, featuring two stacked circular housings.
- The specific shape of the upper housing, including a flanged mounting point and an exposed cutting wheel.
- The specific shape of the lower housing and its connection to the upper housing.
- The particular curve and angle of the handle element extending from the main body.
- The complaint asserts infringement of the entire patented design (Compl. ¶26).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are "metal nibbler drill attachment apparatus" sold by the Defendants and referred to in the complaint as the "Infringing Products" (Compl. ¶5).
Functionality and Market Context
The accused products are drill attachments designed for cutting metal (Compl. ¶7). They are allegedly offered for sale and sold on various online marketplace platforms, including Amazon, eBay, AliExpress, and others, through e-commerce stores operated by the Defendants under various "Seller Aliases" (Compl. ¶13). The complaint asserts that these products are unauthorized and unlicensed copies that are designed to appear like Plaintiff's genuine products to consumers (Compl. ¶16). The complaint includes a perspective view of the patented design, which it alleges is being infringed (Compl. p. 5, FIG. 1).
IV. Analysis of Infringement Allegations
The complaint does not contain a claim chart. The infringement theory is based on the "ordinary observer" test for design patents, which posits that infringement occurs if 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" create a visual impression that is substantially the same as the patented design (Compl. ¶5, ¶26).
D1,006,076 Infringement Allegations
| Claim Element (from the Patented Design) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental configuration of the metal nibbler drill attachment, including its two-tiered housing. | The complaint alleges that the "Infringing Products" sold by Defendants embody the ornamental design claimed in the '076 patent. | ¶5, ¶26 | '076 Patent, FIG. 3 |
| The specific ornamental appearance of the upper housing, including its flanged mount and exposed gear-like cutting wheel. | The complaint's allegations suggest the accused products replicate the specific visual features of the patented design, leading to consumer confusion. | ¶5, ¶16, ¶26 | '076 Patent, FIG. 9 |
| The particular ornamental shape and angle of the handle extending from the main body. | The "Infringing Products" are alleged to be the "same product that infringes directly and/or indirectly the Shunhechuanmei Design." | ¶22, ¶26 | '076 Patent, FIG. 5 |
| The combination of all ornamental features as shown in the patent drawings in solid lines. | The complaint asserts direct infringement through the making, using, selling, offering for sale, and/or importing of products that bear the patented design. | ¶26 | '076 Patent, Claim |
- Identified Points of Contention:
- Scope Questions: A central question will be how the "ordinary observer" test applies. The court will need to determine if the overall visual impression of the accused products is substantially the same as the claimed design. A key issue in this analysis is that the patent's claim is limited to the features shown in solid lines; the features shown in broken lines are for illustrative purposes only and are not part of the protected design ('076 Patent, Description). Any differences between the accused products and the unclaimed (broken line) portions of the patent figures may not be relevant to the infringement analysis.
- Technical Questions: The primary question is factual: do the accused products sold by the "Schedule A" defendants actually possess the ornamental features of the '076 patent? The case may depend on the evidence Plaintiff can gather to link the specific products sold by the anonymous Defendants to the patented design.
V. Key Claim Terms for Construction
The complaint does not provide sufficient detail for analysis of claim construction. In design patent cases, formal claim construction is rare. The claim is understood to be the design itself as depicted in the patent's drawings. The infringement analysis is typically a direct visual comparison between the claimed design and the accused product from the perspective of an "ordinary observer," rather than an exercise in construing textual terms.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendants work in "active concert" and "indirectly" infringe the patent (Compl. ¶22, ¶26). The prayer for relief seeks to enjoin "aiding, abetting, contributing to, or otherwise assisting" in infringement, which suggests a theory of induced infringement based on Defendants' operation of online storefronts that facilitate sales to end-users (Compl. p. 20, ¶1(b)).
- Willful Infringement: The complaint alleges that Defendants' infringement was willful (Compl. ¶23). This allegation is based on the assertion that Defendants "knowingly and willfully" manufacture and sell the Infringing Products as part of a coordinated effort (Compl. ¶22). The pleading does not specify whether this alleged knowledge is pre-suit or post-suit.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual comparison: Applying the "ordinary observer" test in light of the relevant prior art, is the overall ornamental appearance of the Defendants' accused products substantially the same as the design claimed in the '076 patent, such that a potential purchaser would be deceived?
- An essential question will be evidentiary linkage: Given that the Defendants are anonymous entities identified only on a sealed "Schedule A," what evidence can Plaintiff produce to prove that the specific products sold by these particular online sellers are, in fact, the "Infringing Products" that embody the patented design?
- A further question concerns the scope of the design: How will the presence of features shown in broken lines in the patent drawings affect the infringement analysis? The court will need to properly distinguish between the claimed ornamental features (solid lines) and the unclaimed environmental structure (broken lines) when comparing the design to the accused products.