DCT

5:25-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 Defendants are not U.S. residents and have purposefully directed their commercial activities, specifically the sale of facial massagers, to consumers in the United States, including Michigan.
  • Core Dispute: Plaintiff seeks a declaratory judgment that Defendant’s design patent for a facial massager is invalid, following Defendant’s allegations to Amazon that Plaintiff’s products infringe the patent.
  • Technical Context: The dispute concerns the ornamental design of handheld electronic facial massagers, a product category within the consumer beauty and wellness market.
  • Key Procedural History: The action was precipitated by Defendant Xi's communications to Amazon alleging that Plaintiff's products infringed the patent-in-suit. These allegations resulted in Amazon deactivating Plaintiff's product listings, creating the actual controversy required for a declaratory judgment action.

Case Timeline

Date Event
2020-04-02 Chinese Patent No. 305951923 filing date (alleged prior art)
2020-10-06 BeautyGym product first available for sale (alleged prior art)
2022-08-02 Bestauty product first available for sale (alleged prior art)
2023-09-07 '239' Patent application filing date
2024-04-09 '239 Patent issue date
2025-03-13 Complaint filing date

II. Technology and Patent-in-Suit Analysis

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

The Invention Explained

  • Problem Addressed: Design patents protect ornamental appearance rather than functional utility. The objective is to create a "new, original, and ornamental design for an article of manufacture" ('239 Patent, Cover).
  • The Patented Solution: The '239 Patent claims the specific ornamental design for a facial massager. The design features a smooth, elongated body that transitions into a flared, bilaterally symmetrical head. The head's shape is reminiscent of a whale's tail or a stylized heart, with two curved prongs creating a central concave curve ('239 Patent, Figs. 1, 6). The claim covers the visual appearance embodied in the patent's drawings ('239 Patent, Claim).

Key Claims at a Glance

  • Design patents contain a single claim. The asserted claim is: "The ornamental design for a facial massager, as shown and described." ('239 Patent, Claim).
  • This claim protects the overall visual impression of the facial massager as depicted in the solid lines of the patent's seven figures.

III. Plaintiff's Products

Product Identification

The products that were the subject of Defendant's infringement allegations are Plaintiff's facial massagers, sold on Amazon under the Amazon Standard Identification Numbers (ASINs) B0CZ79889Q and B0CSYS9CVR (Compl. ¶12).

Functionality and Market Context

The complaint identifies these items as "facial massagers" that compete with Defendant's products (Compl. ¶10). The central controversy of the lawsuit stems from Defendant's successful requests to Amazon to deactivate these product listings based on allegations that they infringe the '239 Patent's design (Compl. ¶12, ¶13, ¶15).

IV. Analysis of Invalidity Allegations

The complaint’s primary legal claim is that the '239 Patent is invalid as anticipated or obvious in light of prior art existing more than one year before the patent's September 7, 2023 filing date (Compl. ¶23-¶27). The complaint provides a side-by-side visual comparison of the prior art against the patented design to support its allegations (Compl. ¶28).

'239 Patent Invalidity Allegations

Visual Feature of '239 Patent Design Corresponding Feature in Alleged Prior Art Complaint Citation Patent Citation
The overall ornamental design for a facial massager. The complaint alleges that the '239 Patent design is "substantially the same as the design of the Bestauty product, the BeautyGym product, and/or the '923 Patent from the eye of an ordinary observer." ¶29 Figs. 1-7
Flared, bilaterally symmetrical "whale tail" shaped head. The complaint's visual comparison shows that the Bestauty product, BeautyGym product, and '923 Patent design each feature a nearly identical head shape, size, and curvature. ¶28 Fig. 6
Smooth, contoured body transitioning to the head. The visual evidence provided suggests the body shape and proportions of the prior art products are highly similar, if not identical, to the patented design. ¶28 Fig. 1

Identified Points of Contention

  • Anticipation Question: The central issue for an anticipation analysis will be whether any single one of the prior art references—the Bestauty product, the BeautyGym product, or the '923 Patent design—is "substantially the same" as the '239 patent design in the eyes of an ordinary observer (Compl. ¶29).
  • Obviousness Question: Alternatively, the court may consider whether the differences between the '239 Patent design and the prior art references are so minor that the design as a whole would have been obvious to a designer of ordinary skill in the art of facial massagers (Compl. ¶30). The complaint alleges that the combination of the prior art references renders the patented design obvious.

V. Key Issue for Determination: The 'Ordinary Observer' Test

The Issue

The 'Ordinary Observer' Test.

Context and Importance

For design patents, questions of both infringement and anticipation are governed by the "ordinary observer" test. The dispositive question is whether an ordinary observer, giving such attention as a purchaser usually gives, would be deceived into purchasing one design supposing it to be the other. In this invalidity context, the question is whether such an observer would view the prior art design and the patented design as substantially the same. The entire case hinges on this visual comparison.

Intrinsic Evidence for Interpretation

  • Evidence for Invalidity (as alleged by Plaintiff): Plaintiff argues that the prior art designs are "nearly identical" to the patented design (Compl. ¶23). The primary evidence is the side-by-side visual comparison, which purports to show that the overall shape, proportions, and key features of the prior art are visually indistinguishable from the '239 patent's design (Compl. ¶28). Plaintiff's argument is that no ordinary observer could tell the designs apart.
  • Evidence for Validity (potential defense position): A defense against this invalidity claim would require identifying differences between the '239 Patent design and the prior art that are sufficient to create a different overall visual impression. A potential argument could focus on subtle distinctions in surface contouring, the precise curvature of the head, or the proportional relationship between the head and the body, arguing these differences, though minor, are legally significant to an ordinary observer.

VI. Other Allegations

The complaint does not contain allegations of indirect or willful infringement.

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

This declaratory judgment action will likely be resolved by addressing two central questions concerning the validity of the '239 design patent:

  1. A core issue will be one of visual identity: From the perspective of an ordinary observer familiar with the prior art, is the ornamental design claimed in the '239 Patent substantially the same as the designs of the Bestauty product, the BeautyGym product, or the Chinese '923 Patent, any of which would anticipate the claim if found to be identical?

  2. A key alternative question will be one of design obviousness: If the designs are not identical, are the differences between the '239 Patent design and the asserted prior art references so minor that the claimed design as a whole would have been obvious to a designer of ordinary skill in the field of facial massagers at the time of the invention?