DCT

1:25-cv-00080

EDR Products Inc v. Shenzhen Rongxianghe Technology Co Ltd

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:25-cv-00080, E.D.N.Y., 01/06/2025
  • Venue Allegations: Venue is alleged based on Defendants conducting business within the district, including significant sales on Amazon, and a substantial part of the events giving rise to the claim occurring in the district.
  • Core Dispute: Plaintiff seeks a declaratory judgment that Defendants' design patent for a sofa cover is invalid due to an alleged on-sale bar.
  • Technical Context: The dispute concerns the ornamental design of a furniture accessory, specifically a fabric slipcover for a two-seat reclining sofa with a center console.
  • Key Procedural History: This declaratory judgment action was reportedly precipitated by Defendants initiating an infringement complaint with Amazon against Plaintiff's products. The complaint's central invalidity argument is that the patentee sold a product embodying the patented design more than one year prior to the patent's filing date, which if proven, would invalidate the patent under 35 U.S.C. §102. The complaint also contains a notable discrepancy, referencing U.S. Design Patent No. D1,009,520 in its substantive counts while requesting a declaration of invalidity for a '502 patent in its prayer for relief.

Case Timeline

Date Event
2022-10-21 U.S. Design Patent No. D1,009,520 Filing Date
2024-01-02 U.S. Design Patent No. D1,009,520 Issue Date
2024-06-15 Defendants allegedly file infringement complaint with Amazon
2025-01-06 Complaint for Declaratory Judgment filed

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

U.S. Patent No. D1,009,520 - "Sofa Cover"

  • Patent Identification: U.S. Design Patent No. D1,009,520, titled "Sofa Cover," issued on January 2, 2024.

The Invention Explained

  • Problem Addressed: As a design patent, the D'520 patent does not articulate a technical problem and solution in the manner of a utility patent. Its purpose is to protect the novel, ornamental, and non-obvious visual characteristics of the article of manufacture.
  • The Patented Solution: The patent claims the specific ornamental design for a sofa cover as illustrated in its nine drawing sheets (’520 Patent, col. 2:59-60). The claimed design consists of a fabric cover fitted for a two-seat reclining sofa that includes a central console with two cupholders and a hinged lid, as well as pockets on the outer armrests (D’520 Patent, FIG. 1, FIG. 8). The design includes specific seam lines, proportions, and overall configuration of the cover elements.

Key Claims at a Glance

  • Design patents contain a single claim. The asserted claim is: "The ornamental design for a sofa cover, as shown and described." (’520 Patent, col. 2:59-60).
  • The scope of the claim is defined by the visual appearance of the sofa cover as depicted in the patent's figures, including:
    • The overall configuration for a two-seat recliner with a center console.
    • The appearance of a center console cover with a hinged lid and two circular openings for cupholders.
    • The presence and rectangular shape of a pocket on the side of an armrest.
    • The pattern of horizontal seam lines across the seat and backrest portions.
    • A separate view showing the console component of the cover detached, illustrating its construction. (’520 Patent, FIG. 9).

III. The Accused Instrumentality

Product Identification

  • Plaintiff EDR’s "couch covers" sold on Amazon.com, referred to in the complaint as the "Accused Products" (Compl. ¶10).

Functionality and Market Context

  • The complaint alleges these are "white-labeled products" sold on the Amazon platform (Compl. ¶3). The complaint does not provide sufficient detail, such as images or specific model numbers, to allow for an analysis of the ornamental design of the Plaintiff's products. The controversy arises from Defendants' allegation to Amazon that these products infringe the '520 Patent (or the '502 Patent, as noted in the discrepancy) (Compl. ¶13).

IV. Analysis of Infringement Allegations

The complaint is for a declaratory judgment of invalidity and does not contain infringement allegations against the Defendant. Instead, it asserts that a justiciable controversy was created when Defendants accused Plaintiff of infringement in a complaint filed with Amazon (Compl. ¶13). The complaint does not provide a copy of the Amazon complaint or detail the specific basis for the infringement allegation.

The core of the filed complaint is an invalidity contention. Plaintiff alleges that the D'520 Patent is invalid under 35 U.S.C. §102 for anticipation, based on an alleged prior sale of the product by the Defendant more than one year before the patent's filing date (Compl. ¶14, ¶18). This is commonly known as an "on-sale bar." The complaint states that a copy of the prior art reference—the Defendant's own earlier sale—is attached as Exhibit B, but this exhibit was not included with the filed document (Compl. ¶18).

No probative visual evidence provided in complaint.

Identified Points of Contention

  • The primary dispute articulated in the complaint is not infringement, but patent validity.
    • Factual Question: The central issue is whether Defendants offered for sale or sold a product embodying the claimed design in the United States before the critical date of October 21, 2021 (one year prior to the patent's filing date) (Compl. ¶14, ¶18).
    • Evidentiary Question: What evidence, such as the referenced Exhibit B, can Plaintiff produce to establish both the date of the alleged prior sale and that the design of the product sold was substantially identical to the design claimed in the D’520 Patent?

V. Key Claim Terms for Construction

In design patent cases, the claim is typically construed by reference to the figures. Formal construction of specific text-based terms is rare. The claim is simply "The ornamental design for a sofa cover, as shown and described." (’520 Patent, col. 2:59-60). The analysis in this case is unlikely to center on construing a specific term. Instead, the dispositive analysis for the invalidity claim will involve a visual comparison between the overall design depicted in the D'520 Patent's figures and the design of the product allegedly sold by the Defendant prior to the critical date.

VI. Other Allegations

  • Knowing Filing: The complaint alleges that the Defendant "knowingly filed the application which became the ‘520 Patent despite understanding that they were not entitled to such protection" due to the alleged prior sales (Compl. ¶15). This allegation suggests a potential future claim of inequitable conduct before the U.S. Patent and Trademark Office, which, if proven, could render the patent unenforceable.

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

The resolution of this case appears to hinge on several key questions:

  1. A core question is procedural clarification: The court must first resolve the discrepancy between the complaint's substantive allegations, which target U.S. Design Patent No. D1,009,520 for invalidity, and the prayer for relief, which requests a declaration against a '502 patent.

  2. The central issue will be evidentiary and factual: Can the Plaintiff, EDR, provide clear and convincing evidence of a commercial sale or offer for sale by the Defendant of a product embodying the patented design that occurred in the U.S. before October 21, 2021?

  3. A related question is one of visual identity: Assuming a prior sale is proven, the court will need to determine if the design of the product sold is substantially the same as the ornamental design claimed in the D'520 patent, thereby anticipating the claim under the legal standard for design patents.