Daka Research Inc v. Shenzhen Bali Electronic Technology Co Ltd Storefront

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Daka Research Inc. (British Virgin Islands)
  • Defendant: Shenzhen Bali Electronic Technology Co., Ltd. Storefront (China) and bad87hs Storefront (China)
  • Plaintiff’s Counsel: Glacier Law LLP
• Case Identification: 1:22-cv-03150, S.D.N.Y., 04/18/2022
• Venue Allegations: Venue is based on allegations that Defendants conduct regular business, derive substantial revenue from, and direct infringing product sales to consumers in New York.
• Core Dispute: Plaintiff alleges that "Electric Jar Opener" products sold by Defendants via e-commerce storefronts infringe its U.S. design patent.
• Technical Context: The technology at issue involves the ornamental design of automated kitchen gadgets, specifically electric jar openers intended for consumer use.
• Key Procedural History: No prior litigation, post-grant proceedings, or licensing history is mentioned in the complaint.

Case Timeline

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

U.S. Patent No. D594,303 - "JAR OPENER"

The Invention Explained

• Problem Addressed: Design patents protect ornamental appearance rather than function. The patent implicitly addresses the need for a new, original, and ornamental design for an electric jar opener.
• The Patented Solution: The patent discloses a distinct visual design for a jar opener. The design consists of an elongated, rounded main body featuring two opposing, C-shaped arms designed to grip a jar lid, and a circular, button-like feature on its top surface (’303 Patent, FIG. 1, 6). The claim is limited to the ornamental features shown in solid lines in the patent's drawings (’303 Patent, DESCRIPTION).
• Technical Importance: The patent grants protection for a specific aesthetic applied to a common household kitchen device.

Key Claims at a Glance

• The patent contains a single claim for "the ornamental design for a jar opener, as shown and described" in the patent's figures (’303 Patent, CLAIM).

III. The Accused Instrumentality

Product Identification

The accused products are "Electric Jar Opener" models sold by Defendants "Bali Storefront" and "bad87hs Storefront" (Compl. ¶2).

Functionality and Market Context

The complaint identifies the accused products as items sold to consumers through e-commerce webpages, including listings on Amazon.com (Compl. ¶¶4-5). The complaint provides a screenshot of an Amazon product listing for an accused "Electric-Jar-Automatic" opener sold by Defendant Bali Storefront (Compl. ¶4, Ex. 1). It also alleges the sale of similar products by Defendant bad87hs Storefront (Compl. ¶5, Ex. 2). The complaint alleges these products are made available for sale to consumers in the State of New York (Compl. ¶8).

IV. Analysis of Infringement Allegations

The complaint does not contain a claim chart. The infringement allegation is based on the overall visual appearance of the accused products. The complaint alleges that the "Electric Jar Opener" products sold by Defendants infringe the claimed design of the D’303 Patent (Compl. ¶¶2, 12). The basis for this allegation is the asserted visual similarity between the accused products, as shown in marketing images attached as exhibits to the complaint, and the design protected by the patent (Compl. ¶12, Ex. 1, Ex. 2). The complaint includes a true and correct copy of a webpage for an accused product, which depicts a device with a rounded body and two opposing arms for gripping a jar lid (Compl. ¶4, Ex. 1). The core of the infringement claim is that the ornamental design of these accused products is substantially the same as the design claimed in the D'303 Patent.

Identified Points of Contention

• Visual Similarity: The central question for the court will be whether an ordinary observer, giving the level of attention a typical purchaser would, would find the overall design of the accused products to be substantially the same as the design claimed in the ’303 Patent. The analysis will depend on a side-by-side comparison of the patented design and the accused products.
• Jurisdictional Question: A potential threshold issue may be whether Defendants' e-commerce activities directed at New York are sufficient to establish personal jurisdiction over the China-based entities (Compl. ¶¶4, 5, 7, 8).

V. Key Claim Terms for Construction

In design patent cases, claim construction focuses on the scope of the design as depicted in the drawings rather than on textual terms.

• The Term: Scope of the Claimed Design (Solid vs. Broken Lines).
• Context and Importance: The infringement analysis is limited to the features shown in solid lines in the patent's drawings. Practitioners may focus on this distinction because any features of the accused product that correspond to the unclaimed, broken-line portions of the patent drawings are legally irrelevant to the infringement analysis.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Limited Scope: The patent specification explicitly states that broken lines depict unclaimed subject matter. Regarding Figure 7, the description notes, "...the broken line portion showing environmental subject matter which forms no part of the claimed design" (’303 Patent, DESCRIPTION). This statement definitively limits the claim to the external ornamental appearance, excluding the internal mechanisms shown in broken lines in the bottom view.

VI. Other Allegations

Indirect Infringement

The complaint's prayer for relief requests an injunction against aiding and abetting infringement (Compl. Prayer ¶1(b)). However, the single infringement count contains factual allegations that appear to support only direct infringement and does not plead the elements of knowledge or intent required for an indirect infringement claim.

Willful Infringement

The complaint alleges that Defendants' infringement "has been and continues to be intentional, willful, and without regard to Daka’s protected rights" (Compl. ¶13). The complaint does not, however, plead specific facts to support this allegation, such as pre-suit notice of the D'303 Patent.

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

• A core issue will be one of visual comparison: would an ordinary observer, examining the accused "Electric Jar Opener" products, find their overall ornamental appearance to be substantially the same as the specific design claimed in the D'303 patent's drawings?
• A key evidentiary question will be one of knowledge and intent: what facts, if any, support the complaint’s allegation of willful infringement, particularly regarding whether Defendants had knowledge of the D'303 patent?
• A potential threshold issue is jurisdictional: will the complaint's allegations of e-commerce sales directed at New York be sufficient to establish personal jurisdiction over the named foreign defendants?