DCT

2:25-cv-10716

Binzhiyuan Hong Kong Paper Products Ltd v. XI

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:25-cv-10716, E.D. Mich., 03/13/2025
  • Venue Allegations: Plaintiff alleges venue is proper because neither defendant resides in the United States, and thus venue is appropriate in any judicial district.
  • Core Dispute: Plaintiff seeks a declaratory judgment that Defendant's design patent for a facial massager is invalid in view of prior art, following Defendant's allegations of infringement that resulted in the deactivation of Plaintiff's product listings on Amazon.
  • Technical Context: The dispute concerns the ornamental design of handheld electronic facial massagers, a product category within the online consumer personal care market.
  • Key Procedural History: The complaint alleges that the controversy arises from Defendant's accusations to Amazon that Plaintiff's products infringe the patent-in-suit. These accusations allegedly led to the deactivation of Plaintiff's product listings, a brief resolution, and a subsequent, ongoing deactivation, prompting Plaintiff to seek a judicial declaration of invalidity.

Case Timeline

Date Event
2020-04-02 Chinese Patent No. 305951923 ('923 Patent) filed
2020-10-06 "BeautyGym" product allegedly available for sale
2022-08-02 "Bestauty" product allegedly available for sale
2023-09-07 U.S. Design Patent No. D1,022,239 application filed
2024-04-09 U.S. Design Patent No. D1,022,239 issued
2024 Defendant alleges infringement to Amazon
2025-03-13 Complaint for Declaratory Judgment filed

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

U.S. Design Patent No. D1,022,239 - "FACIAL MASSAGER"

The Invention Explained

  • Problem Addressed: As a design patent, the '239 Patent does not articulate a technical problem. Its purpose is to protect the novel, ornamental, and non-functional visual characteristics of the article of manufacture, a facial massager ('239 Patent, Title).
  • The Patented Solution: The patent claims the ornamental design for a facial massager. The design features a smooth, teardrop-shaped handle that transitions into a wider head piece shaped like a bifurcated tail fin ('239 Patent, FIG. 1, FIG. 6). The overall aesthetic evokes a dolphin or mermaid tail, a common motif for such products. The claim covers the visual appearance of the device as depicted in the seven provided figures ('239 Patent, Claim).
  • Technical Importance: The complaint does not provide sufficient detail for analysis of the design's specific market impact, but it suggests the design is one of several competing, visually similar products sold on Amazon (Compl. ¶5, ¶10).

Key Claims at a Glance

  • The patent contains a single claim: "The ornamental design for a facial massager, as shown and described." ('239 Patent, Claim). This claim protects the overall visual impression of the design depicted in the patent's drawings.

III. The Accused Instrumentality

Product Identification

Plaintiff’s facial massagers, previously sold on Amazon under Amazon Standard Identification Numbers (ASINs) B0CZ79889Q and B0CSYS9CVR (Compl. ¶12).

Functionality and Market Context

The complaint identifies the products as "facial massagers" that compete directly with Defendant's products on the Amazon e-commerce platform (Compl. ¶5, ¶10). The complaint's central allegations focus on the visual appearance of these products as being substantially similar to pre-existing prior art, rather than on their specific technical functionality (Compl. ¶23-29).

IV. Analysis of Infringement Allegations

The complaint seeks a declaratory judgment of invalidity and does not contain affirmative infringement allegations or a formal claim chart. The legal controversy arises from Defendant's pre-suit allegations to Amazon that Plaintiff's products infringe the '239 Patent, which Plaintiff contests by asserting the patent is invalid (Compl. ¶12, ¶15, ¶19). The core of the complaint is an invalidity contention based on prior art.

A side-by-side comparison image in the complaint displays the asserted prior art next to an image from the '239 Patent to visually support the argument that the designs are substantially the same (Compl. ¶28).

  • Identified Points of Contention: The primary dispute framed by the complaint is not over infringement elements, but over the validity of the '239 Patent itself.
    • Anticipation Question: Does the prior art, specifically the "Bestauty" product, the "BeautyGym" product, or the Chinese '923 Patent design, create an identical visual impression to the '239 Patent design in the mind of an ordinary observer? The complaint alleges these designs are "nearly identical" or "substantially the same" as the patented design (Compl. ¶23, ¶29).
    • Obviousness Question: In the alternative, the complaint raises the question of whether the '239 Patent design would have been obvious to a designer of ordinary skill in the art in view of the "Bestauty" and "BeautyGym" products and the '923 Patent design (Compl. ¶30).

V. Key Claim Terms for Construction

In design patent litigation, the focus is on the overall visual appearance as shown in the drawings, rather than the construction of specific text-based claim terms. The single claim--"The ornamental design for a facial massager, as shown and described"--does not contain terms requiring significant construction. The complaint does not raise any disputes regarding the meaning of "facial massager" or other terms. The central legal test will be a comparison of the claimed design to the prior art from the perspective of an "ordinary observer."

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

The resolution of this case will likely depend on the court's findings regarding the validity of the '239 Patent in light of the prior art identified by the Plaintiff.

  • A core issue will be one of anticipation: Are any of the cited prior art references—the "Bestauty" product, the "BeautyGym" product, or the '923 Chinese patent—"substantially the same" as the '239 patented design from the perspective of an ordinary observer, thereby invalidating the patent?
  • A key alternative question will be one of obviousness: If the design is not anticipated, do the similarities between the patented design and the combination of prior art references render the '239 Patent's design obvious to a person of ordinary skill in the art of product design?