DCT
0:18-cv-01872
Juvalips LLC v. Shenzhen Mexi Technology Co Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Juvalips, LLC (Minnesota)
- Defendant: Shenzhen Mexi Technology Co., Limited (China)
- Plaintiff’s Counsel: Grumbles Law PLLC; Lawder Law, PLLC
- Case Identification: 0:18-cv-01872, D. Minn., 07/03/2018
- Venue Allegations: Venue is asserted based on the defendant being a non-U.S. resident, which permits suit in any judicial district, and on the defendant allegedly conducting acts of patent infringement in the district by making products available for purchase via commercial websites.
- Core Dispute: Plaintiff alleges that Defendant’s lip plumper device infringes a U.S. design patent covering the ornamental design for a lip suction device.
- Technical Context: The dispute concerns the ornamental design of handheld, electronic cosmetic devices intended for lip enhancement through suction.
- Key Procedural History: The complaint notes that on May 31, 2018, approximately one month before filing suit, Plaintiff sent a demand letter with a copy of the patent-in-suit to Defendant, placing Defendant on actual notice of its infringement allegations.
Case Timeline
| Date | Event |
|---|---|
| 2016-04-07 | U.S. Design Patent No. D819,222 Application (Priority) Date |
| 2018-05-29 | U.S. Design Patent No. D819,222 Issues |
| 2018-05-31 | Plaintiff sends notice letter to Defendant |
| 2018-07-03 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D819,222 - "Lip Suction Device"
- Patent Identification: U.S. Design Patent No. D819222, "Lip Suction Device", issued May 29, 2018.
The Invention Explained
- Problem Addressed: Design patents do not articulate a technical problem but instead protect a novel ornamental appearance for an article of manufacture (U.S. Design Patent No. D819,222, claim).
- The Patented Solution: The patent claims the specific ornamental design for a lip suction device as depicted in its nine figures (’222 Patent, claim). The design features a compact, handheld body with two main sections: a wider, cylindrical base section and a tapering, ergonomically curved section that terminates in an oval-shaped mouthpiece ('222 Patent, FIG. 1, 6, 7). The overall visual impression is of a smooth, modern, and contoured device. The patent explicitly disclaims any subject matter shown in broken lines, focusing the claim on the solid-line visual features ('222 Patent, Description).
- Technical Importance: The claimed design provides a distinct visual identity for a lip suction device in the consumer cosmetics market (Compl. ¶12).
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is: "The ornamental design for a lip suction device, as shown and described." ('222 Patent, claim).
- The essential visual elements of this single claim include:
- A two-part body construction with a distinct boundary line.
- A generally cylindrical base portion.
- An elongated, tapering upper portion with a gentle, ergonomic-style curve.
- A flattened, oval-shaped opening at the terminus of the curved portion.
III. The Accused Instrumentality
Product Identification
- The "Lip Plumper Device" or "Mexi Lip Plumper," sold by Defendant Shenzhen Mexi Technology Co., Limited (Compl. ¶13).
Functionality and Market Context
- The complaint identifies the accused product as a lip plumper device offered for sale in the United States, including in Minnesota, through online commercial channels such as Amazon.com (Compl. ¶¶13-15). The complaint includes a product image, "Illustration A," taken from an online listing, which depicts a handheld electronic device with a mouthpiece designed to be placed over the user's lips (Compl. ¶13, Illustration A). This image shows the accused device, which has a two-part body and a shape generally similar to the patented design (Compl. ¶13, Illustration A). Plaintiff alleges that the accused product's design was "plainly copied from Juvalips' own lip plumper device" (Compl. ¶13).
IV. Analysis of Infringement Allegations
The standard for design patent infringement is whether, in the eye of an ordinary observer, the two designs are substantially the same, such that the observer would be induced to purchase one supposing it to be the other. The analysis turns on the overall visual appearance of the accused product compared to the patented design.
D819,222 Infringement Allegations
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a lip suction device, as shown and described. | The complaint alleges that the Mexi Lip Plumper has a "shape, color scheme and overall appearance plainly copied from Juvalips' own lip plumper device" which is covered by the '222 patent. The complaint provides "Illustration A," an image of the Mexi Lip Plumper, to support the allegation of visual similarity. | ¶13, ¶17, ¶27 | '222 Patent, FIG. 1-9 |
- Identified Points of Contention:
- Overall Visual Similarity: The central question will be whether an ordinary observer, giving such attention as a purchaser usually gives, would find the overall appearance of the accused Mexi Lip Plumper to be substantially the same as the design claimed in the '222 patent. The complaint’s inclusion of patent figures (Compl. p. 3) alongside an image of the accused product (Compl. ¶13, Illustration A) invites this direct comparison.
- Scope Questions: A potential point of contention may arise from subtle differences in the proportions, contours, or specific surface features between the patented design and the accused product. The defense may argue that any such differences are significant enough to prevent an ordinary observer from being deceived.
V. Key Claim Terms for Construction
In design patent cases, the "claim" is understood to be the design itself as shown in the drawings. Formal claim construction of words is rare; the analysis focuses on the visual scope of the drawings.
- The Term: "The ornamental design... as shown and described."
- Context and Importance: This phrase defines the entire scope of the patent right. The interpretation is not about the words, but about what visual features the drawings convey to an ordinary observer. Practitioners may focus on this "term" because the entire infringement and validity analysis depends on the visual scope it represents.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent claims the overall visual impression of the device. A party could argue that minor variations in proportion or surface detail do not change the overall ornamental design, which is characterized by the two-part, curved, tapering shape.
- Evidence for a Narrower Interpretation: The patent contains a specific statement that "The broken lines in the drawings depict parts of the lip suction device that form no part of the claimed design" ('222 Patent, Description). This explicitly limits the claimed design to the elements shown in solid lines. Furthermore, a party could argue that the specific curvature, the ratio of the base to the tapered section, and the precise shape of the mouthpiece as shown in Figures 1-9 define the design, and any deviation is legally significant.
VI. Other Allegations
- Willful Infringement: The complaint alleges willful infringement based on the assertion that Plaintiff provided Defendant with "actual notice of the '222 Patent" via a demand letter sent on May 31, 2018, and that Defendant has continued to sell the accused product despite this notice (Compl. ¶¶19, 29).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this case will likely depend on the court's and/or jury's determination of the following key questions:
- A core issue will be one of visual comparison: Applying the "ordinary observer" test, is the overall ornamental design of the accused Mexi Lip Plumper substantially the same as the design claimed in the '222 patent, such that a purchaser would be deceived?
- A key factual question will be one of intent: Does the evidence, particularly Defendant's alleged continuation of sales after receiving a notice letter, support a finding of willful infringement, potentially leading to enhanced damages?
- A related question concerns commercial imitation: Do the parallel claims of unfair competition, which allege copying and false statements, bolster the patent infringement claim by suggesting a deliberate effort to trade on the goodwill associated with the Plaintiff's product design?