DCT

1:25-cv-02061

Jtle Investments LLC v. Shenzhen HEROFUN Bio Tech Co Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:25-cv-02061, N.D. Ill., 02/27/2025
  • Venue Allegations: Plaintiff alleges that Defendant, a Chinese entity, purposefully directs infringing activities to the Northern District of Illinois by operating interactive e-commerce stores, such as on Amazon.com, through which it offers to sell and has sold the accused products to consumers in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s TV wall mount infringes its U.S. design patent covering the ornamental design for a TV wall mount.
  • Technical Context: The dispute concerns the ornamental design of television wall mounts, a consumer electronics accessory, specifically within the "stud-free" or "do-it-yourself" market segment.
  • Key Procedural History: The complaint notes that Plaintiff has a pending utility patent application (filed June 15, 2023) for the functional aspects of its TV mount. It also alleges that Defendant was notified of its infringing activities but continued its conduct.

Case Timeline

Date Event
2019-01-08 U.S. Patent No. D887,255 S Priority Date (Filing Date)
2020-06-16 U.S. Patent No. D887,255 S Issue Date
2022-06-30 Plaintiff's "Hang Smart" Product Launch Date
2023-06-15 Plaintiff's Utility Patent Application Filing Date
2025-02-27 Complaint Filing Date

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

U.S. Patent No. D887,255 S - "TV WALL MOUNT"

  • Patent Identification: U.S. Patent No. D887,255 S (“the ’255 Patent”), "TV WALL MOUNT," issued June 16, 2020.

The Invention Explained

  • Problem Addressed: Design patents protect ornamental appearance rather than solving a technical problem. The implicit goal of the ’255 Patent is to provide a novel and non-obvious ornamental design for a TV wall mount that distinguishes it visually from other mounts in the marketplace.
  • The Patented Solution: The patent claims the specific ornamental design for a TV wall mount as depicted in its figures ('255 Patent, CLAIM). The design consists of a single-piece mount featuring a distinct upper portion with five rounded lobes arranged in a cross-like pattern, each containing a circular element, which tapers into a central neck and then descends into a strap-like lower portion with two circular holes ('255 Patent, FIG. 1-2). The side profile shows a specific curvature and depth ('255 Patent, FIG. 4).
  • Technical Importance: The complaint alleges that this particular design has become "enormously popular" and is "distinctive," such that consumers broadly recognize it as originating from the Plaintiff (Compl. ¶17).

Key Claims at a Glance

  • Design patents contain a single claim. The asserted claim is: "The ornamental design for a TV wall mount, as shown and described." ('255 Patent, CLAIM; Compl. ¶1).

III. The Accused Instrumentality

Product Identification

  • The accused product is a TV wall mount sold under the brand name "Benherofun" on e-commerce platforms, including an Amazon store operated by the Defendant (Compl. ¶10, ¶19).

Functionality and Market Context

  • The complaint describes the accused product as an "identical infringing product" to Plaintiff's Hang Smart TV Wall Mount (Compl. ¶19). A side-by-side visual provided in the complaint shows the accused product and the patented design, alleging they are substantially similar (Compl. p. 8). The complaint alleges that Defendant's product is "inferior" and has not undergone the same safety and laboratory testing as Plaintiff's product (Compl. ¶46). The Defendant’s Amazon store is alleged to be an interactive website targeting U.S. consumers, including those in Illinois (Compl. ¶10, ¶18).

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. The complaint alleges the accused product is "substantially similar" to the patented design (Compl. ¶19-20). A side-by-side image comparison is provided to support this allegation (Compl. p. 8).

The analysis below is adapted for a design patent infringement claim.

’255 Patent Infringement Allegations

Claimed Design Feature (from ’255 Patent, FIG. 1-4) Alleged Infringing Feature (from Complaint Images) Complaint Citation Patent Citation
The overall ornamental design for a TV wall mount, as shown and described. The accused "Benherofun" product allegedly embodies a design that is "identical" or "substantially similar" to the patented design, creating the same overall visual impression. A photograph depicts the accused product having a multi-lobed head and a descending strap. ¶19, ¶20 ’255 Patent, CLAIM
A five-lobed upper portion in a cross-like configuration, with each lobe containing a circular element. The accused product's upper portion appears to have a similar five-lobed configuration with circular elements, as shown in the complaint's comparative figure. p. 8, p. 10 ’255 Patent, FIG. 2
A tapering neck connecting the upper and lower portions. The accused product features a similarly tapering neck section. p. 8 ’255 Patent, FIG. 2
A descending strap-like lower portion with two holes. The accused product includes a descending strap-like lower portion with two holes, which appears to match the patented design's configuration in the comparative image. p. 8 ’255 Patent, FIG. 2
  • Identified Points of Contention:
    • Scope Questions: The central question is whether the overall visual impression of the accused Benherofun mount is "substantially the same" as the ’255 Patent's design in the eyes of an ordinary observer. A defense may focus on any perceived visual differences, arguing they are sufficient to prevent consumer confusion.
    • Technical Questions: A key issue in design patent cases is the distinction between ornamental and functional features. A defendant may argue that the similarities (e.g., the number and placement of holes, the overall shape for weight distribution) are dictated by the mount's function and are therefore not protectable as part of the ornamental design. The complaint's reference to a pending utility patent for the device's function could be used by the defense to support an argument that the design is primarily functional (Compl. ¶8).

V. Key Claim Terms for Construction

In design patent litigation, there are no traditional claim terms to construe. Instead, the analysis focuses on the scope of the claimed design as a whole, particularly by distinguishing ornamental features from functional ones.

  • The "Term": The "ornamental design" as a whole.
  • Context and Importance: The scope of what is legally protected by the ’255 Patent is the core of the dispute. The court must determine which aspects of the depicted TV mount are ornamental and which are dictated by function. Practitioners may focus on this distinction because only ornamental features are considered in the infringement analysis.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader (More Ornamental) Interpretation: Plaintiff will likely argue that the specific aesthetic choices—the particular shape of the five lobes, the graceful taper of the neck, and the proportional relationship between the elements—combine to create a unique, non-functional overall appearance. The primary evidence is the design itself as depicted in the patent's drawings ('255 Patent, FIG. 1-4).
    • Evidence for a Narrower (More Functional) Interpretation: A defendant may argue that the basic structure is functional: the lobed head for distributing weight across drywall, the holes for securing the mount to a television, and the overall shape for strength. The complaint's own statement that Plaintiff filed a utility patent for its "stud-free, 'do-it-yourself' TV wall mount device" (Compl. ¶8) may be presented as evidence that the design's features serve a functional purpose, potentially narrowing the scope of what is considered purely ornamental. The complaint also includes an image from a "pressure test video," which highlights the functional load-bearing aspect of the design (Compl. p. 12).

VI. Other Allegations

  • Indirect Infringement: The complaint focuses on direct infringement under 35 U.S.C. § 271(a) by alleging Defendant makes, uses, sells, offers for sale, and imports the accused products (Compl. ¶50). The prayer for relief also seeks to enjoin Defendant from "inducing, or enabling others to manufacture, sell, or pass off" infringing products, which suggests a potential theory of indirect infringement (Prayer for Relief, ¶1b).
  • Willful Infringement: The complaint explicitly pleads willful infringement (Compl. ¶52). The alleged basis for willfulness includes Defendant’s purported knowledge of Plaintiff's patent and brand, as evidenced by the "distinct similarities between the Infringing Product design, product function, packaging design, colors, images, descriptions, and marketing materials" (Compl. ¶21), and the allegation that Defendant was notified of its infringing conduct but "ignored these attempts and continued" (Compl. ¶48).

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

  1. The Ordinary Observer Test: The central issue will be one of visual comparison: is the overall ornamental appearance of the accused "Benherofun" product substantially the same as the design claimed in the ’255 Patent, such that an ordinary observer would be deceived into believing the accused product is the patented one?
  2. Functionality vs. Ornamentality: A critical secondary question will be the scope of the patent's protection: to what extent are the similarities between the two products dictated by mechanical function rather than ornamental choice? The court's determination of which design elements are purely aesthetic will be pivotal, particularly in light of the plaintiff's parallel pursuit of a utility patent for the device's functional aspects.