DCT
1:23-cv-01911
Excelnecia Importing Pty Ltd v. Leng
I. Executive Summary and Procedural Information
- Case Name: Excelencia Importing PTY LTD v. Jinping Leng
- Parties & Counsel:
- Plaintiff: Excelencia Importing PTY LTD d/b/a Kennels & Kats (Australia)
- Defendant: Jinping Leng d/b/a DELOMO (China)
- Plaintiff’s Counsel: Reichel Stohry Dean LLP
- Case Identification: 1:23-cv-01911, S.D. Ind., 10/25/2023
- Venue Allegations: Venue is asserted based on the defendant being a non-U.S. resident who may be sued in any judicial district, and on the allegation that the defendant is subject to the court's personal jurisdiction.
- Core Dispute: Plaintiff seeks a declaratory judgment that Defendant's design patent for a pet grooming glove is invalid and unenforceable, alleging it was anticipated by prior art and procured through inequitable conduct.
- Technical Context: The dispute centers on the ornamental design of pet grooming gloves, a consumer product sold through major e-commerce platforms like the Amazon Marketplace.
- Key Procedural History: The action was precipitated by Defendant submitting a notice of patent infringement to Amazon.com, which resulted in the delisting of Plaintiff's product. The complaint alleges that Plaintiff’s subsequent request for Defendant to retract the notice was refused.
Case Timeline
| Date | Event |
|---|---|
| Before 2016-07-31 | Alleged prior art "Allstar" pet grooming glove on sale in the U.S. |
| 2017-07-31 | Priority Date of D'946 Patent |
| 2018-09-04 | Issue Date of D'946 Patent |
| September 2023 | Defendant's representative contacts Amazon to report infringement |
| 2023-09-20 | Amazon delists Plaintiff's product |
| 2023-10-05 | Plaintiff's counsel sends letter to Defendant's representative |
| 2023-10-17 | Defendant's U.S. counsel refuses to retract the infringement complaint |
| 2023-10-25 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D827,946 - "Pet Grooming Glove"
The Invention Explained
- Problem Addressed: As is typical for design patents, the specification does not articulate a technical problem. The objective is the creation of a new, original, and ornamental design for an article of manufacture, in this case, a pet grooming glove. (D’946 Patent, Title).
- The Patented Solution: The patent claims the specific ornamental appearance of a pet grooming glove as depicted in its figures. The design features a five-fingered glove with a field of raised, cylindrical nubs covering the palm and finger surfaces, a textured fabric appearance on the back of the hand, and a wrist strap for closure. (’946 Patent, Claim; Figs. 1-8). The overall visual impression is defined by the combination of these elements. (’946 Patent, DESCRIPTION).
- Technical Importance: The complaint alleges that products bearing this design are sold by multiple parties on e-commerce platforms, suggesting the design has commercial relevance in the pet supply market. (Compl. ¶14, ¶23, ¶28).
Key Claims at a Glance
- The single claim of the D’946 Patent is asserted.
- The claim covers: "The ornamental design for a pet grooming glove, as shown and described." (’946 Patent, Claim).
- This single, holistic claim encompasses the entire visual appearance of the glove depicted in the patent's eight figures.
III. The Accused Instrumentality
Product Identification
- The product at issue is the Plaintiff’s (K&K's) own pet grooming glove, sold on Amazon under ASIN B07GD2YTLJ (the "Accused Product"). (Compl. ¶36).
Functionality and Market Context
- The complaint identifies the product as a "pet grooming glove" that K&K sells as an online retailer of pet supply products, primarily through the Amazon Marketplace. (Compl. ¶12, ¶14).
- The complaint alleges that Defendant submitted an intellectual property complaint to Amazon asserting that K&K's product infringes the D'946 Patent, which led to the product's delisting from the platform. (Compl. ¶36, ¶39). Exhibit C to the complaint is a copy of the infringement report allegedly submitted by Defendant's representative to Amazon, identifying K&K's product by its ASIN. (Compl. ¶36, Ex. C).
IV. Analysis of Invalidity Allegations
This is a declaratory judgment action where the plaintiff alleges patent invalidity. The following table summarizes the plaintiff's anticipation argument, which alleges that the claimed design is not novel because it is identical to a prior art product. The complaint provides a visual comparison in its Exhibit B to support this allegation. (Compl. ¶26, ¶55).
D'946 Patent Invalidity Allegations (Anticipation by Prior Art)
| Claim Element (from Claim 1) | Alleged Anticipating Feature (from "Allstar" Prior Art Product) | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a pet grooming glove, as shown and described. | The complaint alleges that a pet grooming glove sold by Allstar Marketing Group, LLC more than one year before the patent's filing date is "identical in all respects to the design" claimed in the D'946 Patent. | ¶26, ¶54-55 | ’946 Patent, Figs. 1-8 |
- Identified Points of Contention:
- Factual Question: The central factual dispute will be whether the "Allstar" pet grooming glove cited by the Plaintiff was, in fact, on sale in the United States more than one year prior to the D'946 patent's filing date of July 31, 2017. (Compl. ¶26, ¶54).
- Scope Question: A secondary question is whether the design of the alleged prior art "Allstar" glove is legally identical to the design claimed in the D'946 Patent from the perspective of an ordinary observer. The complaint's Exhibit B presents photographic evidence juxtaposed with patent figures to argue for identity. (Compl. ¶26, Ex. B).
V. Key Claim Terms for Construction
The complaint does not provide sufficient detail for analysis of claim construction. In design patent cases, the analysis typically does not focus on construing discrete textual terms. Instead, the inquiry centers on the overall visual appearance of the claimed design as a whole, as shown in the patent figures. The primary legal question is not the meaning of a word, but how the scope of the claimed visual design compares to the prior art.
VI. Other Allegations
- Inequitable Conduct (Count II): The complaint alleges that the D'946 Patent is unenforceable due to inequitable conduct. (Compl. ¶57-67). It asserts that Defendant knew that third parties, such as Allstar, were selling gloves with the same design prior to the patent application filing. (Compl. ¶60). The complaint further alleges this prior art was material to patentability and that Defendant intentionally failed to disclose it to the USPTO with an intent to deceive the agency. (Compl. ¶62-64).
- Unfair Competition & Defamation (Counts III & IV): The complaint alleges that by knowingly asserting an invalid and unenforceable patent against K&K in a notice to Amazon, Defendant engaged in bad faith business practices constituting unfair competition under the Lanham Act and defamation. (Compl. ¶69-70, ¶73, ¶75). The complaint alleges these actions were taken with the intent to injure K&K as a competitor. (Compl. ¶42, ¶73).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this declaratory judgment action will likely depend on the court's determination of the following key questions:
- A primary evidentiary question will be one of anticipation: Can the plaintiff, K&K, produce sufficient evidence to prove by clear and convincing evidence that the "Allstar" pet grooming glove is identical in design to the D'946 Patent and was publicly sold in the U.S. more than one year before the patent's effective filing date?
- A dispositive question for the unenforceability claim will be one of intent: Assuming the Allstar glove is proven to be invalidating prior art, can K&K further establish that the defendant-inventor knew of this specific prior art during prosecution and made a deliberate decision to withhold it from the USPTO with the specific intent to deceive?
- A key question for the non-patent claims will be one of bad faith: Does the evidence surrounding the defendant’s infringement notice to Amazon demonstrate knowledge of the patent's invalidity, supporting the claims for unfair competition and defamation, or were the defendant's actions a good-faith effort to enforce presumptively valid patent rights?