DCT

1:25-cv-03456

Putian Diselanke Trading Co Ltd v. XI

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:25-cv-03456, N.D. Ill., 04/01/2025
  • Venue Allegations: Venue is based on the defendant allegedly targeting business activities toward customers in all 50 states, including Illinois, through e-commerce storefronts on Amazon.com, and directing a patent assertion campaign at the plaintiff.
  • Core Dispute: Plaintiff seeks a declaratory judgment that its neck massager products do not infringe the defendant’s design patent and that the defendant's patent is invalid and unenforceable.
  • Technical Context: The dispute concerns the ornamental design of a handheld electronic facial and neck massager, a product within the competitive consumer personal care device market.
  • Key Procedural History: The lawsuit was precipitated by the defendant, Changbin XI, filing a patent infringement report against the plaintiff, koyou, via Amazon.com's intellectual property notice program. This action by the defendant created the basis for the plaintiff's declaratory judgment complaint, which asserts that the patent-in-suit is invalid due to an on-sale bar and anticipation by a prior Chinese patent.

Case Timeline

Date Event
2020-07-28 Alleged prior art Chinese design patent (CN2020301249817) issued
2021-11-18 Alleged public sale of goods embodying the patented design, creating potential on-sale bar
2023-01-05 Alleged public release of a 3D model showing the patented design
2023-09-07 U.S. Design Patent No. D1,022,239 S application filed (Priority Date)
2024-04-09 U.S. Design Patent No. D1,022,239 S issued
2024-07-09 Defendant reported Plaintiff to Amazon.com for alleged patent infringement
2025-04-01 Complaint for Declaratory Judgment filed

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

U.S. Design Patent No. D1,022,239 S - “Facial Massager”

The patent-in-suit is U.S. Design Patent No. D1,022,239 S, issued April 9, 2024 (the "’239S Patent").

The Invention Explained

  • Problem Addressed: As a design patent, the ’239S Patent does not describe a technical problem or a functional solution. Instead, it seeks to protect the purely ornamental, non-functional, visual characteristics of an article of manufacture, in this case, a facial massager (Compl. ¶20; ’239S Patent, Claim).
  • The Patented Solution: The patent protects the specific aesthetic appearance of the facial massager. The design is characterized by a smooth, elongated body that flares into a distinctive head shaped like a dolphin or whale tail, as depicted in the patent's figures (’239S Patent, FIGS. 1, 6). The claim protects the overall visual impression created by the design shown in solid lines in the drawings (’239S Patent, Claim, Description).
  • Technical Importance: The design’s importance lies in its aesthetic appeal, intended to provide a unique and recognizable appearance that distinguishes the product from competitors in the consumer marketplace.

Key Claims at a Glance

  • The complaint challenges the validity and asserts non-infringement of the patent’s single claim (Compl. ¶¶ 26, 28).
  • The single claim is for: "The ornamental design for a facial massager, as shown and described." (’239S Patent, Claim). The scope of this claim is defined by the visual appearance of the device as depicted in the solid lines of Figures 1-7.

III. The Accused Instrumentality

Product Identification

The accused products are Plaintiff's "neck massager" products sold on Amazon.com, identified in the complaint as the "Non-Infringing Product" and listed under multiple Amazon Standard Identification Numbers (ASINs) (Compl. ¶2, ¶14).

Functionality and Market Context

The complaint describes the products as massage devices sold through the Amazon.com e-commerce platform (Compl. ¶14). The central issue is not the product’s function but its ornamental design, which Defendant Changbin XI alleged to Amazon infringes the ’239S Patent (Compl. ¶16). Plaintiff initiated this action to obtain a court declaration that its products do not infringe and that the patent is invalid, in part to prevent the removal of its product listings from Amazon (Compl. ¶17).

IV. Analysis of Infringement Allegations

The complaint seeks a declaratory judgment of non-infringement and does not contain a claim chart alleging infringement. It focuses primarily on arguments for invalidity.

Identified Points of Contention

  • Visual Similarity: The central question for infringement is whether the plaintiff’s product design and the patented design are "substantially the same" in the eyes of an ordinary observer. The complaint makes a general assertion of non-infringement without providing a specific visual comparison to support its position (Compl. ¶28).
  • Invalidity as a Primary Defense: The complaint's primary focus is on invalidating the ’239S Patent. It alleges that goods embodying the patented design were publicly sold nearly two years before the patent's filing date, which would render the patent invalid under the on-sale bar of 35 U.S.C. § 102(a)(1) (Compl. ¶21).
  • Anticipation by Prior Art: The complaint further alleges that the ’239S Patent is invalid as anticipated under 35 U.S.C. § 102 by a prior Chinese design patent, CN2020301249817 (Compl. ¶22). The complaint states that Exhibit 6 contains a side-by-side comparison of the figures from both patents, allegedly demonstrating that the Chinese patent discloses the same ornamental features (Compl. ¶22).
  • Obviousness: As an alternative, the complaint argues that any minor differences between the prior Chinese patent and the ’239S Patent would have been obvious to a designer of ordinary skill, rendering the patent invalid for obviousness under 35 U.S.C. § 103 (Compl. ¶23).

V. Key Claim Terms for Construction

In design patent litigation, the "claim" is understood to be the drawings themselves, and traditional claim term construction is rare. The central issue is the scope of the design as a whole.

The "Term"

The overall ornamental design depicted in the solid lines of Figures 1-7.

Context and Importance

The infringement analysis will turn on a comparison of the accused product's design to the holistic visual appearance of the claimed design. The patent's description explicitly notes that "The broken lines in FIG. 1 depicts a boundary in the claimed design. The broken lines form no part of the claimed design," which precisely defines the scope of what is protected (’239S Patent, Description). The court's application of the "ordinary observer" test will be guided by the visual elements shown in solid lines.

Intrinsic Evidence for Interpretation

  • Evidence for Scope: The scope is defined entirely by the illustrations. The solid lines in Figures 1-7 show the claimed features, including the unique "whale tail" head, the tapering body, and the specific contours and proportions of the device (’239S Patent, FIGS. 1-7).
  • Evidence for Limitation: The patent explicitly disclaims matter shown in broken lines, which appear in Figure 1 near the base of the device (’239S Patent, FIG. 1, Description). This disclaimer limits the scope of protection and clarifies that those specific elements are not part of the patented design.

VI. Other Allegations

Indirect Infringement

The complaint seeks a declaration that the Plaintiff does not infringe "either directly or indirectly, literally or under the doctrine of equivalents" but does not provide specific facts regarding any allegations of indirect infringement made by the Defendant (Compl. ¶28).

Willful Infringement

No allegation of willful infringement is made. However, the Plaintiff requests that the court find the case "exceptional under 35 U.S.C. § 285" based on the Defendant's alleged "anticompetitive actions aimed at eliminating a competitor's product by falsely claiming that the Non-Infringing Products infringe" (Compl. Prayer for Relief ¶4).

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

This declaratory judgment action appears poised to turn on the validity of the ’239S Patent, which the plaintiff has challenged on multiple grounds.

  • A central issue will be one of validity: has the plaintiff marshaled sufficient evidence to prove, by the clear and convincing standard, that the ’239S Patent is invalid? This question encompasses two distinct factual inquiries: (1) whether the patented design was "on sale" in the U.S. more than one year prior to its September 7, 2023 filing date, and (2) whether the design was fully disclosed in the prior Chinese patent, rendering it anticipated.

  • A second key question, which may be in tension with the plaintiff's anticipation argument, is one of non-infringement: assuming the patent is found valid, would an ordinary observer comparing the plaintiff's product to the specific ornamental design claimed in the ’239S Patent's drawings find the two designs to be substantially the same? The resolution will depend on a holistic visual comparison of the products.