Guangzhou Linyu Trading Co Ltd v. Shengzhou Yuneng Trade Department

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Guangzhou Linyu Trading Co., Ltd. (People's Republic of China)
  • Defendant: Shengzhou Yuneng Trade Department (People's Republic of China)
  • Plaintiff’s Counsel: Glacier Law LLP
• Case Identification: 1:24-cv-13369, N.D. Ill., 12/31/2024
• Venue Allegations: Venue is asserted based on the Defendant having directed a patent infringement complaint to Amazon, which resulted in the delisting of Plaintiff's product and affected Plaintiff's sales and activities within the state of Illinois.
• Core Dispute: Plaintiff seeks a declaratory judgment that Defendant's design patent for a rolling storage cart is invalid due to prior public sale and use, and consequently, that Plaintiff's product does not infringe.
• Technical Context: The dispute centers on the ornamental design of a multi-tiered, wheeled plastic storage cart, a common consumer product sold in online marketplaces.
• Key Procedural History: The action was precipitated by an infringement complaint filed by the Defendant with Amazon, which led to the removal of the Plaintiff's product listing. The complaint alleges the Defendant expedited the patent application process to obtain the patent quickly before asserting it.

Case Timeline

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

U.S. Patent No. D1,002,985 - "Rolling Storage Cart"

• Patent Identification: U.S. Design Patent No. D1,002,985, "Rolling Storage Cart," issued October 24, 2023.

The Invention Explained

• Problem Addressed: Design patents do not solve technical problems; they protect the novel, original, and ornamental appearance of an article of manufacture. The patent does not contain a background section describing a problem.
• The Patented Solution: The patent claims the specific ornamental design for a rolling storage cart. Key visual features shown in the patent figures include a multi-tiered structure with several angled, perforated baskets, a solid lower bin, a flat top tray with circular depressions, and wheels at the base (’985 Patent, Figs. 1, 3, 5, 7). The overall visual impression created by the combination of these elements constitutes the patented design (’985 Patent, CLAIM).
• Technical Importance: The complaint alleges that this specific design is a "top selling product," suggesting its aesthetic is commercially significant in the online marketplace for home storage solutions (Compl. ¶6).

Key Claims at a Glance

• The patent contains a single claim: "The ornamental design for a rolling storage cart, as shown and described." (’985 Patent, p.3).
• The claim's scope is defined by the eight figures illustrating the design from various perspectives (’985 Patent, Figs. 1-8).

III. The Accused Instrumentality

Product Identification

• The Plaintiff's "Desk Organizer" product, sold on Amazon under ASIN B0BGXCPXYQ (Compl. ¶¶1, 15).

Functionality and Market Context

• The complaint describes the product as a "top selling product" for the Plaintiff on Amazon prior to its delisting (Compl. ¶6).
• The Plaintiff's primary assertion is that its product, the subject of the infringement complaint to Amazon, embodies a design that was publicly available and on sale long before the Defendant's patent application was filed (Compl. ¶¶17-18). The complaint includes a perspective view of the patented design, which Plaintiff implies is identical to its own product and the prior art (Compl. p.5).

IV. Analysis of Invalidity Allegations

The complaint does not allege infringement; rather, it seeks a declaratory judgment that U.S. Design Patent No. D1,002,985 is invalid under 35 U.S.C. § 102. The central allegations concern prior art that allegedly predates the patent's July 10, 2023 filing date.

• Identified Points of Contention:
  • Authenticity of Evidence: A primary question for the court will be the authentication and credibility of the screenshots and metadata offered as evidence of prior art. The Defendant may challenge the source and integrity of this digital evidence.
  • Identity of Designs: The court will need to determine if the design shown in the alleged prior art is "substantially the same" as the design claimed in the ’985 Patent, as viewed by an ordinary observer.
  • "On Sale" and "Public Use" Thresholds: A factual dispute may arise over whether the alleged prior online listings and promotional photos constitute a public use or a commercial offer for sale sufficient to trigger the statutory bars to patentability under 35 U.S.C. § 102.

V. Key Claim Terms for Construction

The single claim of the ’985 Patent is for the ornamental design "as shown and described." In design patent cases, claim construction is typically not a major focus, as the claim is defined by the drawings rather than words. The central analysis will be a visual comparison between the patented design and the accused product (or, in this case, the alleged prior art) through the lens of the "ordinary observer" test. Therefore, there are no specific claim terms whose construction is expected to be a central point of dispute.

VI. Other Allegations

• Fraudulent Procurement: The complaint alleges that the Defendant made "fraudulent representations to the USPTO when applying for the '985 Patent by falsely naming the inventor and intentionally concealing the sales records from 2022" (Compl. ¶29). These allegations, if proven, could render the patent unenforceable due to inequitable conduct.
• Tortious Interference: The complaint includes counts for Tortious Interference with Contractual Relations (Count II) and Tortious Interference with Prospective Economic Advantage (Count III) (Compl. ¶¶31-48). These counts are based on the allegation that the Defendant knowingly and improperly used a "fraudulently obtained" patent to interfere with the Plaintiff's business relationship with Amazon, causing the Plaintiff's product listing to be removed (Compl. ¶¶6, 35, 45).

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

This declaratory judgment action appears to center on factual questions of patent validity rather than complex legal or technical disputes. The key questions for the court will likely be:

1. A question of prior art: Can the Plaintiff produce authenticated evidence sufficient to prove, by clear and convincing evidence, that the patented design was on sale or in public use more than one year before the patent's effective filing date, thereby invalidating the patent under 35 U.S.C. § 102?

2. A question of improper conduct: Did the Defendant engage in tortious interference by asserting its patent rights with Amazon? The resolution of this question will likely depend on whether the Defendant's infringement complaint to Amazon was objectively baseless or made in bad faith, which in turn hinges on the ultimate validity of the ’985 Patent.

3. A question of inequitable conduct: Do the Plaintiff's allegations that the Defendant concealed prior art and falsely named the inventor during prosecution rise to the level of inequitable conduct, which could render the patent unenforceable and potentially support a finding that this is an exceptional case?