1:25-cv-05003
Tan v. Xianghuo
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Cong Tan (China)
- Defendant: Xianghuo (China)
- Plaintiff’s Counsel: D&A|RM DeWitty, U.S. Pat. Atty., LLC
- Case Identification: 1:25-cv-05003, N.D. Ill., 05/06/2025
- Venue Allegations: Venue is based on allegations that Defendant operates commercial internet stores that directly target and conduct business with consumers in the United States, including the State of Illinois.
- Core Dispute: Plaintiff alleges that Defendant’s online stores sell “knock-off” storage boxes that infringe a U.S. design patent covering the ornamental appearance of a storage box.
- Technical Context: The dispute concerns the ornamental design of a consumer product, specifically a wheeled storage box, in the competitive e-commerce market for household goods.
- Key Procedural History: The complaint does not reference any prior litigation, administrative proceedings, or licensing history related to the patent-in-suit. This appears to be the initial filing in this dispute.
Case Timeline
| Date | Event |
|---|---|
| 2024-03-12 | U.S. Design Patent D1,054,752 Filed |
| 2024-12-24 | U.S. Design Patent D1,054,752 Issued |
| 2025-05-06 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D1,054,752 S - “STORAGE BOX”
The Invention Explained
- Problem Addressed: As a design patent, the '752 Patent does not articulate a technical problem and solution. Instead, it protects the novel, non-functional, ornamental appearance of an article of manufacture. The complaint alleges the design was created to achieve "both aesthetic appeal and functionality" (Compl. ¶6).
- The Patented Solution: The patent claims the specific ornamental design for a storage box as depicted in its figures ('752 Patent, Claim). The claimed design is a rectangular container on four wheels, featuring a top lid, a drop-down door on the front face, a pattern of concentric rectangles on the side panels, and specific handle/latch features ('752 Patent, FIG. 1, 3, 5, 9). The drop-down door on the front face is shown with vertical ribbing ('752 Patent, FIG. 3).
- Technical Importance: Plaintiff alleges it established the product as "first to market, with a well-earned reputation for quality and innovation" (Compl. ¶7).
Key Claims at a Glance
- The single asserted claim is for: "The ornamental design for a storage box, as shown and described" ('752 Patent, Claim).
- The scope of a design patent claim is defined by the solid lines in the patent's drawings.
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are "knock-off" storage boxes sold through the "Defendant Internet Stores" (Compl. ¶¶ 2, 3). The complaint alleges Defendant is a collective entity of online sellers (Compl. ¶3).
Functionality and Market Context
The complaint alleges that the accused products are the "same product that infringes the **752 Patent" and that Defendant uses "the same text and images, including content copied from Plaintiff’s original product listings" to market them (Compl. ¶¶ 12, 15). The complaint includes an image of the patented design that it alleges is infringed by Defendant's "knock-off" products (Compl. p. 4, FIG. 1). This image from the complaint shows a perspective view of the storage box with its front door open, revealing its wheeled base and ribbed door texture (Compl. p. 4, FIG. 1).
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 that Defendant sells products that are a "reproduction, copy, or colorable imitation" of the patented design (Prayer for Relief, ¶1.a).
D1,054,752 Infringement Allegations
| Ornamental Feature (from '752 Patent Figures) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall visual impression of the storage box. | The complaint alleges Defendant sells "knock-off products" that are the "same product" that infringes the patented design, thereby creating a substantially similar overall visual impression. | ¶3, ¶12 | FIG. 1-9 |
| Front-facing, drop-down door with vertical ribs. | The complaint alleges the accused products are "knock-off" versions that embody a "reproduction, copy, or colorable imitation" of the design shown in the patent's figures, which include the ribbed front door. | ¶3, Prayer ¶1.a | FIG. 1, 3 |
| Concentric rectangular pattern on side panels. | The complaint alleges the accused products are "knock-off" versions that embody a "reproduction, copy, or colorable imitation" of the design shown in the patent's figures, which include the concentric rectangular side pattern. | ¶3, Prayer ¶1.a | FIG. 5, 6 |
| Wheeled base and top lid configuration. | The complaint alleges the accused products are "knock-off" versions that embody a "reproduction, copy, or colorable imitation" of the design shown in the patent's figures, which include the wheeled base and top lid. | ¶3, Prayer ¶1.a | FIG. 1, 7 |
- Identified Points of Contention:
- Factual Question: The central issue will be a factual comparison of the accused products to the patented design. The court will need to determine if the designs are "substantially the same" from the perspective of an ordinary observer. The complaint's allegation that Defendant sells the "same product" (Compl. ¶12) suggests Plaintiff's position is that the products are identical or nearly so.
- Scope Questions: The analysis may require identifying which elements of the design are ornamental versus purely functional. However, the complaint does not raise any specific functionality arguments, instead focusing on the overall visual similarity of the alleged "knock-off" products (Compl. ¶3).
V. Key Claim Terms for Construction
In design patent cases, formal claim construction is rare because the single claim typically refers to the ornamental design "as shown and described," making the drawings the primary definition of the claim's scope ('752 Patent, Claim). The analysis focuses on the overall visual impression created by the design, rather than on the definition of specific words.
Practitioners will focus on the combination of key ornamental features that create the design's unique visual identity. The infringement analysis will likely center on the visual effect of the following features in combination:
- The overall rectangular form factor combined with four corner-mounted wheels.
- The dual-access method provided by both a top lid and a drop-down front door.
- The specific surface ornamentation, including the vertical ribbing on the front door and the concentric, recessed rectangular pattern on the side panels.
VI. Other Allegations
- Indirect Infringement: The complaint does not contain a formal count for indirect infringement. However, the prayer for relief requests an injunction against those "aiding, abetting, contributing to, or otherwise assisting anyone in infringing" (Prayer for Relief, ¶1.b). The factual allegations primarily focus on direct infringement by Defendant through its own sales activities (Compl. ¶19).
- Willful Infringement: The complaint explicitly alleges that Defendant's infringement was "willful" (Compl. ¶20). This allegation is supported by claims that Defendant acted "knowingly" (Compl. ¶19), sells "knock-off" products (Compl. ¶3), and uses "common tactics... to conceal their identities" and "evade enforcement efforts," such as using fictitious names and creating new marketplace accounts after notice (Compl. ¶¶14, 16).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual identity: does the accused storage box design, when viewed by an ordinary observer, create an overall visual impression that is substantially the same as the design claimed in the '752 Patent? The case's outcome will depend heavily on a visual comparison between the patent figures and the accused products.
- A key evidentiary question will concern liability and scope: can Plaintiff successfully prove that "XIANGHUO" is a single, collective enterprise responsible for the infringing sales, as alleged, or will it be required to establish liability for numerous, legally distinct online sellers? The complaint’s allegations of a coordinated network using tactics to conceal identities will be central to this issue (Compl. ¶¶ 12, 14).