DCT

1:25-cv-05847

DPG USA Inc v. Partnerships Unincorp Associations

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
    • Plaintiff: DPG USA Inc. (Illinois)
    • Defendant: THE PARTNERSHIPS AND UNINCORPORATED ASSOCIATIONS IDENTIFIED ON SCHEDULE A (People's Republic of China or other foreign jurisdictions, on information and belief)
    • Plaintiff’s Counsel: AVEK IP, LLC
  • Case Identification: 1:25-cv-05847, N.D. Ill., 05/26/2025
  • Venue Allegations: Venue is alleged to be proper based on Defendants’ operation of interactive e-commerce websites that target and sell products to consumers in the United States, including Illinois.
  • Core Dispute: Plaintiff alleges that numerous online retailers are selling bobbin and spool holder products that infringe its U.S. design patent.
  • Technical Context: The dispute concerns the ornamental design of an accessory for sewing and crafting, specifically a device intended to hold a bobbin and a corresponding spool of thread together for organization.
  • Key Procedural History: The complaint asserts claims against a large group of unidentified online sellers, a common procedural posture in the Northern District of Illinois for enforcing intellectual property against diffuse foreign e-commerce networks. The complaint argues for joinder of all defendants on the basis that they are selling products that are the same in all respects relevant to the patent and are engaged in a series of related transactions.

Case Timeline

Date Event
2017-05-09 '869 Patent Earliest Priority Date (PCT Application)
2018-01-01 Plaintiff begins marketing DPG Products (on or before this date)
2024-09-17 U.S. Patent No. D1,041,869 Issues
2025-05-26 Complaint Filed

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

U.S. Design Patent No. D1,041,869 - "BOBBIN AND SPOOL HOLDER"

  • Patent Identification: U.S. Design Patent No. D1,041,869, "BOBBIN AND SPOOL HOLDER," issued September 17, 2024.

The Invention Explained

  • Problem Addressed: Design patents protect the ornamental appearance of an article of manufacture rather than its utilitarian function. The patent does not contain a background section describing a technical problem; instead, it protects the novel visual characteristics of the item (Compl. ¶10; '869 Patent, Claim).
  • The Patented Solution: The patent claims the specific ornamental design for a bobbin and spool holder as depicted in its figures ('869 Patent, Claim, FIG. 1-6). The design features a central post assembly with a flared, conical base, a shaft, and a top portion comprising two stacked, beveled rings. The central post is shown inserted through a wider, circular ring or band ('869 Patent, FIG. 1, FIG. 3). The claim is defined by the features shown in solid lines in the patent drawings ('869 Patent, Description).
  • Technical Importance: The complaint alleges the patented design is a key reason the product is "loved by customers" (Compl. ¶10).

Key Claims at a Glance

  • The complaint asserts the sole claim of the '869 Patent (Compl. ¶27).
  • In a design patent, there is only one claim, which reads: "The ornamental design for a bobbin and spool holder, as shown and described." ('869 Patent, Claim).
  • The scope of this claim is defined by the overall visual appearance of the article depicted in the patent’s figures, not by a list of textual elements.

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are "bobbin and spool holder products" sold by Defendants through various online e-commerce storefronts (Compl. ¶3).

Functionality and Market Context

The complaint alleges that the Defendants operate numerous "Defendant Internet Stores" which target U.S. consumers and have made sales in Illinois (Compl. ¶2, ¶15). These stores are alleged to share common features, such as using similar product images and text, lacking contact information, and offering identically or similarly priced items, suggesting a coordinated infringement network (Compl. ¶17). The complaint references a "Schedule A-2" which allegedly contains a screenshot of each Defendant offering the infringing products for sale in Illinois (Compl. ¶15).

IV. Analysis of Infringement Allegations

The complaint does not contain a claim chart but states that an appended exhibit, Schedule A-1, "shows each of the accused products compared to the claimed design of the '869 Patent" (Compl. ¶6). As this exhibit was not available for review, the infringement theory is summarized from the complaint's narrative allegations.

The infringement test for a design patent is whether an "ordinary observer," giving such attention as a purchaser usually gives, would be deceived into purchasing the accused product believing it to be the patented design. The complaint alleges that the accused products sold by Defendants infringe the sole claim of the '869 Patent (Compl. ¶27). The complaint includes representative figures from the patent itself, establishing the visual benchmark for infringement. For example, a top perspective view from the patent is included to show the claimed design's unique appearance (Compl. ¶10, FIG. 1). The core of the infringement allegation is that the design of the "Infringing Products" is substantially the same as the ornamental design depicted in the figures of the '869 Patent.

Identified Points of Contention

  • Scope Questions: The primary question will be a visual one: are the accused products sold by Defendants substantially similar in overall ornamental appearance to the design claimed in the '869 Patent? The analysis will depend on a side-by-side comparison of the accused products with the patent figures.
  • Visual Comparison Questions: What evidence, such as the product comparison images from the unavailable Schedule A-1, will be presented to demonstrate that the accused products create the same overall visual impression as the patented design? The comparison will involve the product's overall configuration and the specific shapes of its constituent parts, such as the flared base, the stacked rings at the top, and the surrounding band.

V. Key Claim Terms for Construction

In design patent litigation, claim construction focuses on the scope of the design as a whole, as depicted in the patent drawings, rather than on interpreting specific textual terms.

  • The Term: The scope of the "claim" as defined by the drawings.
  • Context and Importance: The central issue is defining what visual features are covered by the patent. Practitioners will focus on the figures to determine the boundaries of the claimed design. The patent's description clarifies that "The broken lines shown in the drawings depict portions of the bobbin and spool holder that form no part of the claimed design" ('869 Patent, Description). This distinction is critical, as only the elements shown in solid lines are protected.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim is for the design as a whole, not just isolated features. A court may find infringement even if minor differences exist, so long as the overall visual impression is the same. The title, "BOBBIN AND SPOOL HOLDER," provides context for the article of manufacture but does not limit the scope of the protected design itself ('869 Patent, Title).
    • Evidence for a Narrower Interpretation: The scope is limited to the specific visual appearance shown in the solid-line drawings ('869 Patent, FIG. 1-6). Any significant deviation in the shape, configuration, or proportions of the accused product from what is depicted in the patent figures could support a finding of non-infringement.

VI. Other Allegations

  • Indirect Infringement: The complaint makes passing reference to indirect infringement and seeks to enjoin "aiding, abetting, [or] contributing to" infringement (Compl. ¶26; Prayer for Relief, ¶A(2)). However, the body of the complaint does not allege specific facts to support a claim for either induced or contributory infringement, focusing instead on Defendants' own acts of making, using, and selling the accused products (Compl. ¶27).
  • Willful Infringement: The complaint alleges that Defendants' infringement is and has been willful (Compl. ¶22). This allegation is based on the assertion that Defendants have "knowingly and willfully" offered for sale the infringing products and have engaged in tactics to conceal their identities and evade enforcement, such as operating under multiple fictitious names and creating new marketplace accounts after notice of a lawsuit (Compl. ¶16-18, ¶21).

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

  1. Visual Similarity: The case will fundamentally turn on a question of visual comparison: when viewed by an ordinary observer, is the overall ornamental appearance of the Defendants' bobbin and spool holders substantially the same as the design claimed in the '869 Patent?
  2. Procedural Joinder: A threshold issue for the court will be one of procedural propriety: do the activities of the numerous, separately-named "Defendant Internet Stores" arise from the "same transaction, occurrence, or series of transactions" involving the "same accused product" sufficient to permit their joinder in a single action under 35 U.S.C. § 299?
  3. Enforcement and Damages: An anticipated practical challenge will be one of enforcement and proof: given the allegations of Defendants' foreign location and identity-masking tactics, can the Plaintiff effectively obtain discovery to prove the full scope of infringement and calculate damages, particularly Defendants' total profits as permitted for design patent infringement under 35 U.S.C. § 289?