DCT

1:24-cv-13131

Zhang v. Individuals Corps Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
    • Plaintiff: Canrui Zhang (China)
    • Defendant: The Individuals, Corporations, Limited Liability Companies, Partnerships, and Unincorporated Associates Identified on Schedule “A”
    • Plaintiff’s Counsel: Bishop Diehl & Lee, LTD.
  • Case Identification: 1:24-cv-13131, N.D. Ill., 12/20/2024
  • Venue Allegations: Venue is asserted based on Defendants allegedly targeting consumers in the United States, including Illinois, through interactive e-commerce stores, offering shipping to Illinois, and accepting payment in U.S. dollars.
  • Core Dispute: Plaintiff alleges that numerous online retailers are selling toy boards that infringe a U.S. design patent covering the ornamental design for such a product.
  • Technical Context: The technology relates to sensory or educational toys, commonly known as "busy boards," which feature a variety of interactive components like switches, lights, and dials for young children.
  • Key Procedural History: The complaint initiates the action against a large group of unnamed e-commerce sellers, identified only in a "Schedule A," alleging they are part of an interrelated network. The validity of this joinder under 35 U.S.C. § 299 may be a central procedural issue.

Case Timeline

Date Event
2023-09-07 D'195 Patent Priority Date
2024-01-23 D'195 Patent Issue Date
2024-12-20 Complaint Filing Date

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

U.S. Patent No. D1,012,195 - “Toy Board”

  • Patent Identification: U.S. Patent No. D1,012,195, “Toy Board,” issued January 23, 2024.

The Invention Explained

  • Problem Addressed: The patent does not describe a technical problem, as is typical for design patents. Instead, it presents a new, original, and ornamental design for an article of manufacture (D'195 Patent, CLAIM). The context provided by the complaint is the creation of a design for a "successful toy board" (Compl. ¶10).
  • The Patented Solution: The patent claims "the ornamental design for a toy board, as shown and described" (D'195 Patent, CLAIM). The design, depicted across eight figures, consists of a rectangular board with a specific visual arrangement of various knobs, switches, lights, a plug-and-socket element, a rotatable dial, and other components intended for sensory interaction (D'195 Patent, FIG. 1, FIG. 3).
  • Technical Importance: The complaint alleges that the design, as embodied in Plaintiff's licensed product, has become associated with the Plaintiff and has acquired goodwill and secondary meaning in the market (Compl. ¶11).

Key Claims at a Glance

  • The single claim of the patent covers the ornamental design for the toy board as depicted in the patent's drawings (D'195 Patent, CLAIM). The key visual features defining the design include the specific selection, combination, and layout of the various interactive elements on the face of the board.

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are "Unauthorized Products," described as a "type of toy board" sold by the Defendants through various e-commerce stores on platforms such as Amazon.com (Compl. ¶3, ¶17, ¶20).

Functionality and Market Context

The accused products are alleged to be toy boards that are sold online to consumers in the United States (Compl. ¶25). The complaint alleges that the "accused products and accused listings share identical components and function in the same way relevant to Plaintiff's Patent" and that they are sold by a network of infringers operating under multiple aliases (Compl. ¶17, ¶29). The complaint provides an image of what it identifies as its own licensed product to illustrate the product category at issue (Compl. ¶9, p. 3).

IV. Analysis of Infringement Allegations

The complaint alleges direct infringement of the single claim of the D'195 patent but does not provide the referenced claim chart exhibit for detailed analysis. The complaint references "Exhibit 6" as a claim chart showing that the accused products "incorporate each of the design elements claimed in Plaintiff's Patent" (Compl. ¶36). However, as this exhibit is not included with the complaint, the infringement theory must be summarized from the complaint's narrative allegations.

The core of the infringement allegation is that the "Unauthorized Products" sold by Defendants are substantially similar in appearance to the patented design (Compl. ¶36-37). The legal test for design patent infringement is whether, in the eye of an ordinary observer, the accused design is substantially the same as the claimed design, such that the observer would be deceived into purchasing one thinking it was the other. The complaint alleges that the infringing products feature the "same type of toy board" and thereby infringe the D'195 Patent "in the same manner" (Compl. ¶17).

Identified Points of Contention

  • Visual Similarity: The central question will be whether the overall visual appearance of the Defendants' "Unauthorized Products" is substantially similar to the specific arrangement of elements shown in the figures of the D'195 patent. The analysis will depend on a side-by-side comparison of the products and the patent drawings.
  • Scope of Protection: A potential dispute may arise over the scope of the patented design. A court will need to distinguish between the purely ornamental aspects of the design, which are protected, and any functional elements of a toy busy board, which are not. The question will be whether the similarity between the products resides in protected ornamental features or unprotected functional aspects.

V. Key Claim Terms for Construction

In a design patent case, claim construction is typically not focused on textual terms but on the overall visual impression of the design as shown in the drawings. The "claim" is understood to be the design itself.

  • The Term: The overall ornamental appearance of the "toy board" as shown in Figures 1-8.
  • Context and Importance: The entire infringement case rests on comparing the visual appearance of the accused products to the claimed design. Practitioners may focus on how to characterize the design's scope—is it the specific collection and arrangement of every depicted element, or a more general layout of similar-looking components?
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A party arguing for broader scope might emphasize the overall composition: a rectangular board with multiple horizontal rows of varied interactive elements, including a mix of lights, switches, and plug-in features, creating a particular "busy" aesthetic.
    • Evidence for a Narrower Interpretation: A party arguing for narrower scope would point to the specific shapes, proportions, and precise placement of each individual element as depicted in the drawings, such as the specific style of the rocker switch, the circular dial with a water drop icon, the arrangement of musical note graphics, and the particular plug-and-socket configuration (D'195 Patent, FIG. 3). They would argue the claim is limited to this exact visual combination.

VI. Other Allegations

Indirect Infringement

While not a separate count, 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)).

Willful Infringement

The complaint alleges that infringement "has been and continues to be willful" (Compl. ¶39). This allegation is based on the assertion that Defendants are knowingly working in concert to sell infringing products and are using tactics to conceal their identities and evade enforcement, suggesting knowledge of their infringing conduct (Compl. ¶30, ¶35).

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

  1. Visual Deception: A core issue will be one of infringement scope: are the "Unauthorized Products" sold by the Defendants substantially the same in overall ornamental appearance to the design claimed in the D'195 patent, such that an ordinary observer would be deceived? The outcome will depend on a visual comparison that filters out unprotectable functional elements.
  2. Propriety of Joinder: A key procedural question will be whether the complaint's allegations are sufficient to join numerous, separately operating e-commerce storefronts as a single group of Defendants. The court will need to decide if their actions constitute the "same transaction, occurrence, or series of transactions" related to the sale of the "same accused product" as required by 35 U.S.C. § 299.
  3. Evidentiary Foundation: An immediate hurdle for the Plaintiff will be to produce sufficient evidence (such as the unattached Exhibits 2 and 6) to establish that the products sold by each of the named defendant-aliases are, in fact, the same or substantially similar products and that these products infringe the patented design.