DCT

1:25-cv-05846

KAIHER Technology Co Ltd v. Scan2cad Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: KAIHER TECHNOLOGY CO., LIMITED v. Scan2cad Inc., 1:25-cv-05846, N.D. Ill., 05/26/2025
  • Venue Allegations: Plaintiff alleges venue is proper because Defendant directed patent enforcement activities into the district by filing an infringement complaint with Amazon against Plaintiff's product, which was offered for sale to consumers in Illinois, causing the product to be delisted.
  • Core Dispute: Plaintiff seeks a declaratory judgment that its cable product does not infringe Defendant's design patent for a connector, and that the patent is invalid and unenforceable.
  • Technical Context: The dispute concerns the ornamental design of an electrical connector, a component widely used in consumer electronics and communications hardware.
  • Key Procedural History: This action was filed after Defendant submitted a design patent infringement complaint to Amazon, which resulted in the takedown of Plaintiff’s product listing. The complaint alleges that during prosecution, the USPTO determined the application for the patent-in-suit was not entitled to the earlier filing date of its parent application. Plaintiff argues the patent is therefore invalid over prior art that was publicly available before the patent’s actual filing date.

Case Timeline

Date Event
2023-08-13 Alleged first public disclosure of Starlink Gen 3 connector via YouTube videos
2023-11-17 Alleged public disclosure of Starlink Gen 3 connector specifications via Internet Archive
2023-11-23 Chinese priority date for related U.S. Patent D1,035,585
2024-07-14 U.S. Design Patent D1,063,856 application filed
2024-11-01 USPTO issues Ex Parte Quayle Action for '856 Patent application, denying earlier priority date
2025-02-25 U.S. Design Patent D1,063,856 issues
2025-05-17 Defendant allegedly files infringement complaint with Amazon
2025-05-20 Plaintiff’s product allegedly removed from Amazon
2025-05-24 Plaintiff’s counsel allegedly contacts Defendant to request withdrawal of Amazon complaint
2025-05-26 Complaint for Declaratory Judgment filed

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

  • Patent Identification: U.S. Design Patent No. D1,063,856, “Connector,” issued February 25, 2025. (Compl. ¶12; '856 Patent, Cover Page).

The Invention Explained

  • Problem Addressed: As a design patent, the '856 Patent does not articulate a technical problem; it protects an ornamental design for an article of manufacture.
  • The Patented Solution: The patent claims "the ornamental design for a connector as shown and described." ('856 Patent, Claim). The claimed design consists of the visual appearance of a connector housing, characterized by a series of rounded, circumferential ribs. ('856 Patent, FIGS. 1-7). The patent's figures show the design from front, rear, side, top, bottom, and perspective views, while broken lines indicate that the attached cable and mating end are not part of the claimed design. ('856 Patent, Description).
  • Technical Importance: The complaint alleges the claimed design is strikingly similar to a connector component of the "Starlink Gen 3 system," a widely known satellite communications product developed by SpaceX. (Compl. ¶17).

Key Claims at a Glance

  • The single claim covers the ornamental design for the connector as depicted in the patent's drawings. ('856 Patent, Claim).
  • The essential visual elements of the design include:
    • The overall shape and proportions of the connector body.
    • A specific arrangement of several rounded, circumferential ribs.
    • The particular contour, size, and spacing of these ribs.
  • Design patents do not have dependent claims.

III. The Accused Instrumentality

Product Identification

  • A cable sold by Plaintiff under the "Hugener" brand on Amazon, identified by ASIN B0DD32WPRH (referred to as the "Non-Infringing Cable"). (Compl. ¶2).

Functionality and Market Context

  • The complaint identifies the product as a "cable" and does not detail its specific technical function. (Compl. ¶2). It was sold on the Amazon marketplace to U.S. consumers, and its removal from the platform is alleged to have caused Plaintiff "substantial financial harm," including loss of sales revenue and damage to goodwill. (Compl. ¶¶8, 28).

IV. Analysis of Infringement Allegations

As this is a complaint for declaratory judgment, the analysis focuses on the Plaintiff's allegations of non-infringement. The core of the non-infringement argument rests on the "ordinary observer" test, asserting that legally significant visual differences exist between the patented design and the accused product, especially when viewed in the context of the alleged prior art. (Compl. ¶¶40-42).

Claimed Design Feature ('856 Patent) Alleged Non-Infringing Feature (Accused Cable) Complaint Citation Patent Citation
An outwardly projecting step at the terminal end of the connector. The complaint alleges the Non-Infringing Cable "lacks the outwardly projecting step at the terminal end of the connector." ¶42 col. 2:61-68; FIG. 1
The overall visual impression created by the combination of claimed features. The complaint argues that where a design is close to prior art, "even minor differences...are likely to be significant to the ordinary observer," suggesting the overall visual impression of its cable is distinct from the patented design. ¶41 col. 2:57-59

The complaint includes a visual aid that juxtaposes a figure from the '856 Patent with a photograph of the accused product, using red circles to highlight the alleged absence of the "outwardly projecting step" on the accused cable. (Compl. ¶42).

  • Identified Points of Contention:
    • Scope Questions: The complaint directly raises the question of how the scope of the patented design is constrained by the prior art. (Compl. ¶41). A central issue for the court will be whether the relevant design field is crowded, which would narrow the scope of the '856 Patent's protection and amplify the significance of any visual differences between the patented design and the accused product.
    • Technical Questions: The key factual dispute is visual rather than technical: would an ordinary observer, familiar with the prior art, be deceived into thinking the Plaintiff's "Non-Infringing Cable" is the same as the patented design? The Plaintiff's case hinges on the argument that the alleged difference in the connector's terminal end is legally sufficient to avoid such a finding. (Compl. ¶42).

V. Key Claim Terms for Construction

In a design patent case, the focus is not on construing textual claim terms but on defining the scope of the claimed "ornamental design" as a whole, primarily through its visual characteristics.

  • The Term: The scope of the "ornamental design for a connector." ('856 Patent, Claim).
  • Context and Importance: The scope of the design is the dispositive issue for infringement. Plaintiff's primary argument is that the '856 Patent is extremely close to the prior art "Starlink Gen 3 connector." (Compl. ¶¶17, 35). If this is established, the patent's scope of protection may be narrowly limited to its precise ornamental features, making even minor variations in an accused product, such as those alleged here, potentially non-infringing. Practitioners may focus on the degree of similarity between the patented design and the alleged prior art to frame the scope argument.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A party seeking a broader interpretation would emphasize the overall visual impression created by the unique combination of the shape, proportion, and specific contours of the ribs as depicted in the patent's seven figures. ('856 Patent, FIGS. 1-7).
    • Evidence for a Narrower Interpretation: The patent itself limits the design's scope by showing the cable and mating interface in broken lines, thereby disclaiming them as part of the invention. ('856 Patent, Description). Plaintiff's argument for a narrow scope relies heavily on extrinsic evidence—the alleged prior art—to contend that the patent only protects the specific design shown and nothing more. (Compl. ¶¶17, 41).

VI. Other Allegations

  • Inequitable Conduct: Plaintiff alleges the '856 Patent is unenforceable due to inequitable conduct. (Compl. ¶¶45-47). The basis for this claim is the allegation that Defendant failed to disclose the "publicly disclosed Starlink Gen 3 connector" as material prior art to the USPTO during prosecution, and that this omission was made with the intent to deceive the agency. (Compl. ¶¶46-47).
  • Bad Faith Enforcement: The complaint alleges that Defendant's enforcement of the '856 Patent through its complaint to Amazon constitutes "bad faith enforcement" and "misuse of the patent process," particularly given Defendant's alleged knowledge of the patent's invalidity. (Compl. ¶¶24, 27, 48).
  • State Law and Other Federal Claims: The complaint includes counts for Tortious Interference with Contract and Tortious Interference with Prospective Business Expectancy. (Compl. ¶¶54-64). These claims are premised on the allegation that Defendant knowingly submitted a baseless infringement complaint to Amazon, thereby inducing Amazon to breach its contractual relationship with Plaintiff and damage its business relationships. (Compl. ¶¶57, 63).

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

  • A threshold issue will be one of validity: Is the '856 Patent anticipated by or obvious over the "Starlink Gen 3 connector" design? The resolution of this question will depend heavily on evidence of when the Starlink design was first publicly disclosed and on the court's assessment of the plaintiff's allegation that the patent is not entitled to an earlier priority date.
  • A core infringement issue will be one of design scope: Assuming the patent is valid, is the patented design entitled to a broad or narrow scope of protection? The court's determination will likely depend on whether the design is a pioneer in a new field or a minor variation in a crowded field of similar connector designs.
  • A key evidentiary question will concern intent: Can the plaintiff prove the factual allegations that the defendant knew the patent was invalid or not infringed when it initiated its enforcement action on Amazon? An affirmative finding would be critical to sustaining the plaintiff’s claims for inequitable conduct and bad-faith enforcement.