DCT

2:24-cv-07365

Xing v. Individuals Corps Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
    • Plaintiff: Yufeng Xing (China)
    • Defendant: The Individuals, Corporations, Limited Liability Companies, Partnerships, and Unincorporated Associates Identified on Schedule “A”
    • Plaintiff’s Counsel: Norris McLaughlin, P.A.
  • Case Identification: 2:24-cv-07365, E.D.N.Y., 10/22/2024
  • Venue Allegations: Venue is alleged to be proper because the Defendants operate interactive e-commerce stores that target and sell products to consumers in the United States, including within the Eastern District of New York.
  • Core Dispute: Plaintiff alleges that Defendants’ unauthorized ring toss games, sold through various online storefronts, infringe a U.S. design patent covering the ornamental appearance of a ring toss game.
  • Technical Context: The technology at issue is the ornamental design of a physical consumer product, specifically a ring toss game, a common type of indoor or outdoor recreational equipment.
  • Key Procedural History: The complaint states that the Plaintiff has implemented an "anti-infringement program" involving proactive internet sweeps to identify infringing products. The patent-in-suit disclaims, via the use of dashed lines in its figures, the base of the ring toss game, limiting the protected design to the upper structure.

Case Timeline

Date Event
2022-06-08 U.S. Design Patent No. D1,019,787 S Priority Date
2024-03-26 U.S. Design Patent No. D1,019,787 S Issued
2024-10-22 Complaint Filed

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

U.S. Design Patent No. D1,019,787 S - “Ring Toss Game”

  • Patent Identification: U.S. Design Patent No. D1,019,787 S, “Ring Toss Game,” issued March 26, 2024.

The Invention Explained

  • Problem Addressed: The complaint does not describe a technical problem in the utility patent sense, but rather asserts that the patent "discloses and claims a new ornamental design for a ring toss game" (Compl. ¶8). The purpose of a design patent is to protect the novel, non-obvious, and ornamental appearance of an article of manufacture.
  • The Patented Solution: The patent protects the specific visual appearance of a ring toss game's upper structure (’787 Patent, Figs. 1-7). A critical aspect of the design is the use of dashed lines in the figures, which explicitly disclaim the portions of the game shown with those lines, stating they "form no part of the claimed design" (’787 Patent, Description). The claimed design therefore consists only of the solid-line elements: a central vertical post, two horizontal arms extending from it, and three smaller vertical posts extending upwards from the top and ends of the arms.
  • Technical Importance: The complaint alleges that the "success of the Plaintiff's Products has resulted in significant infringement," suggesting the design has achieved market recognition (Compl. ¶11).

Key Claims at a Glance

  • The patent contains a single claim for "The ornamental design for a ring toss game, as shown and described" (’787 Patent, Claim).
  • The essential visual features of the claimed design are:
    • A central vertical post.
    • Two horizontal arms extending perpendicularly from the central post, forming a "T" shape.
    • Three smaller, upward-pointing posts, one at the top of the central post and one at the outward end of each horizontal arm.
    • The base structure and rear support elements shown in the patent figures are explicitly disclaimed and are not part of the protected design (’787 Patent, Description).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are "Unauthorized Products," described as "LED ring toss games" and other ring toss games sold by the defendants through e-commerce stores on platforms like Amazon and Walmart (Compl. ¶9, ¶11).

Functionality and Market Context

The complaint focuses on the visual appearance of the accused products rather than their specific functionality (Compl. ¶26). It alleges that Defendants operate under multiple "Seller Aliases" to sell these products, making it difficult for consumers to distinguish them from authorized products and creating challenges for enforcement (Compl. ¶16, ¶18). The complaint alleges these sales have caused loss of market share and erosion of Plaintiff's patent rights (Compl. ¶23).

IV. Analysis of Infringement Allegations

The complaint references a claim chart in its Exhibit 6, which was not included in the provided court filing (Compl. ¶26). The narrative infringement theory is summarized below.

The complaint alleges that the products sold by Defendants infringe the ’787 Patent because they "incorporate each of the design elements claimed" and that, in the eye of an ordinary observer, the accused products are "substantially the same" as the patented design (Compl. ¶26-27). The legal standard for design patent infringement is whether an "ordinary observer, giving such attention as a purchaser usually gives," would be deceived into purchasing the accused product, believing it to be the patented design (Compl. ¶26). The complaint alleges that this standard is met. No probative visual evidence provided in complaint.

Identified Points of Contention

  • Scope Questions: A central question for the court will be the legal effect of the patent's disclaimer of the game's base structure. The infringement analysis must compare the accused products to only the claimed solid-line portions of the design. The question arises whether the overall visual impression of the accused products is "substantially the same" as the claimed upper structure, regardless of any differences in the unclaimed base.
  • Technical Questions: Without visual evidence of the accused products, it is an open question what specific features they possess. A key evidentiary issue will be whether the accused products embody the specific T-shaped configuration of posts that constitutes the claimed design.

V. Key Claim Terms for Construction

In design patent cases, construction focuses on the scope of the claimed design as a whole, rather than on discrete text-based terms.

  • The "Term": The overall ornamental design for a ring toss game as depicted in solid lines in Figures 1-7.
  • Context and Importance: The scope of the design is the core of the dispute. Practitioners may focus on the disclaimer language because the infringement analysis will depend entirely on whether the comparison is properly limited to the claimed features (the upper structure) while ignoring the unclaimed features (the base).
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A party might argue for a comparison based on the overall "concept" of the game, but this is unlikely to succeed given the explicit disclaimers.
    • Evidence for a Narrower Interpretation: The patent provides strong evidence for a narrow interpretation, stating unequivocally: "The dashed broken lines in the figures depict portions of the ring toss game that form no part of the claimed design" (’787 Patent, Description). This language directs the court to filter out the disclaimed base from the infringement analysis.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that Defendants are "working in active concert" to infringe (Compl. ¶22, ¶25). The prayer for relief seeks to enjoin Defendants from "Aiding, abetting, contributing to, or otherwise assisting anyone in infringing" the ’787 Patent (Compl. Prayer ¶1(b)).
  • Willful Infringement: The complaint alleges that Defendants' infringement "has been and continues to be willful" (Compl. ¶29). This allegation is based on the assertion that Defendants knowingly infringe and engage in concerted activities to evade detection, such as using multiple aliases and consulting websites like "sellerdefense.cn" for tactics to evade intellectual property enforcement (Compl. ¶20, ¶22).

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

  • A core issue will be one of claim scope: The case will likely turn on the court's interpretation of the design claim, specifically whether the infringement analysis properly filters out the disclaimed base of the ring toss game and focuses solely on the claimed upper T-shaped structure.
  • A key evidentiary question will be one of visual similarity: Assuming a properly construed claim, the central factual question is whether the accused products are "substantially the same" in appearance as the patented design in the eyes of an ordinary observer. The resolution of this issue will depend on visual evidence of the accused products, which was not available for this analysis.
  • A third question will relate to willfulness and damages: Should infringement be found, the court will have to determine whether the alleged use of sophisticated evasion tactics by a network of online sellers constitutes the "egregious" conduct necessary to support a finding of willful infringement and enhanced damages.