DCT
1:22-cv-06958
Cuiping Zhou v. TCHH Dayup
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Cuiping Zhou (PRC)
- Defendant: TCHH-DayUp, Innifer, Sumgogo, DLseego, Nuer New, foliates, easygogo, Belsmi, Xiying, juntianshangmaoyouxiangongsi and Ruimo
- Plaintiff’s Counsel: Zhonghao Law Firm, LLP
- Case Identification: 1:22-cv-06958, S.D.N.Y., 11/17/2022
- Venue Allegations: Venue is alleged to be proper based on Defendants operating seller accounts on Amazon.com, through which they advertise, offer for sale, and sell allegedly infringing products to consumers in New York.
- Core Dispute: Plaintiff alleges that numerous sellers on the Amazon.com marketplace infringe its U.S. design patent for a wallet by selling wallets with a virtually identical ornamental design.
- Technical Context: The dispute is in the consumer goods sector, specifically concerning the ornamental design of women's wallets sold in the competitive e-commerce market.
- Key Procedural History: The complaint alleges that Plaintiff began selling products embodying the patented design in 2018 and saw significant sales growth, which then declined after numerous alleged infringers entered the market. The complaint further alleges that the multiple defendants may be the same entity or working together, citing similarities in product images and the identical nature of the physical products.
Case Timeline
| Date | Event |
|---|---|
| 2018-04-09 | Plaintiff's first use of the design in commerce |
| 2019-07-01 | Alleged start of infringement by Defendants (approximate) |
| 2019-08-12 | ’179 Patent Application Filing Date (Priority Date) |
| 2021-08-10 | ’179 Patent Issue Date |
| 2022-11-17 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D927,179 S - "WALLET"
- Patent Identification: U.S. Design Patent No. D927,179 S, "WALLET", issued August 10, 2021.
The Invention Explained
- Problem Addressed: The complaint asserts that prior art wallet openings, such as zippers or buttons, could be difficult to use or inconvenient (Compl. ¶18).
- The Patented Solution: The patent claims "the ornamental design for a wallet, as shown and described" ('179 Patent, Claim). The design features a generally rectangular, tri-fold wallet body, but its most prominent characteristic is the closure mechanism. As depicted in the patent figures and highlighted in the complaint, this consists of a metal clasp assembly from which hangs a decorative, leaf-shaped pendant (Compl. ¶16; '179 Patent, FIG. 2). The patent also explicitly states that the broken lines representing stitching are part of the claimed design ('179 Patent, Description).
- Technical Importance: The complaint alleges the "Leaf Shape Wallet Opening" is not merely decorative but also makes it easier for a user to locate the opening and open the wallet, distinguishing it from prior designs in the marketplace (Compl. ¶19, ¶21).
Key Claims at a Glance
- As a design patent, there is a single claim for the ornamental design as a whole.
- The core elements of the claimed design are the visual characteristics embodied in the patent's figures, including:
- The overall configuration and shape of the wallet.
- The specific appearance of the closure, featuring a clasp and a leaf-shaped pendant.
- The pattern of stitching, which is expressly included as a claimed element.
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are "leaf pendant decorated wallets" sold by the eleven named Defendants through individual storefronts on the Amazon.com marketplace (Compl. ¶1, ¶7).
Functionality and Market Context
- The complaint alleges that the accused wallets are "knockoffs" of Plaintiff's patented wallets and that the ornamental design of each is "virtually identical" to the design disclosed in the ’179 Patent (Compl. ¶26, ¶36). The complaint provides visual evidence comparing Plaintiff's product to those sold by Defendants (Compl. pp. 8-11). It is further alleged that Defendants' products are sold at significantly lower prices than Plaintiff's product, leading to price erosion and loss of market share for the Plaintiff (Compl. ¶34, ¶36). A table in the complaint lists numerous Amazon Standard Identification Numbers (ASINs) corresponding to the allegedly infringing product listings (Compl. pp. 8-11).
IV. Analysis of Infringement Allegations
The infringement analysis for a design patent centers on the "ordinary observer" test, which asks whether an ordinary observer, familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented one. The complaint alleges that a side-by-side comparison shows the designs are "virtually identical" (Compl. ¶26, ¶48). A table on pages 8-11 of the complaint presents images of the wallets sold by each of the eleven defendants, all featuring a leaf-pendant closure. (Compl. pp. 8-11).
| Claim Element (from the single claim of the '179 Patent) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a wallet, as shown and described. | The accused wallets sold by Defendants on Amazon.com embody an ornamental design that is alleged to be virtually identical to the patented design, including the overall shape, tri-fold construction, and, most notably, a closure mechanism featuring a leaf-shaped pendant. | ¶26, ¶46, ¶48 | '179 Patent, FIGs. 1-8 |
Identified Points of Contention
- Scope Questions: The primary dispute will concern the scope of the patented design. A central question is whether the overall visual impression of the accused products is substantially the same as the claimed design in the eyes of an ordinary observer. This will depend on the similarities of the overall shape, proportions, and, critically, the prominent leaf-pendant closure feature.
- Technical Questions: A factual question will be the degree of similarity between the claimed stitching (shown in broken lines and explicitly part of the claim) and the stitching on the accused products. While the overall impression governs, significant differences in this claimed feature could be a point of dispute. The complaint alleges the designs are "virtually identical," suggesting any such differences are minor (Compl. ¶26).
V. Key Claim Terms for Construction
In a design patent case, the "claim" is the set of drawings, and traditional claim construction of words is rare. The analysis focuses on the scope of the design as a whole.
- The Term: The overall "ornamental design for a wallet."
- Context and Importance: The central issue is not the definition of a word but the scope of the claimed design's visual elements. Practitioners may focus on which specific features of the design are most significant to its overall appearance, as this will determine how similar an accused product must be to infringe.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that the most prominent and novel feature—the leaf-shaped pendant on the closure—creates the dominant visual impression. Under this view, any wallet incorporating this key feature, regardless of minor differences in wallet dimensions or stitching, would be considered substantially similar ('179 Patent, FIG. 2). The complaint's focus on the "Leaf Shape Wallet Opening" supports this approach (Compl. ¶19).
- Evidence for a Narrower Interpretation: A party could argue that the claim is limited to the exact design shown, including the specific proportions of the wallet, the style of the hardware, the shape of the leaf, and the precise pattern of the stitching. The patent's explicit inclusion of the stitching in the claim ("The broken lines representing stitching are part of the claimed design") may support an argument that the design as a whole is a narrow combination of all these specific elements ('179 Patent, Description).
VI. Other Allegations
- Indirect Infringement: The complaint's factual allegations focus on direct infringement by the Defendants (selling and offering to sell). While the prayer for relief seeks to enjoin "inducing infringement," the complaint does not contain specific factual allegations detailing acts of inducement, such as providing instructions or encouragement to a third party to directly infringe (Compl. Prayer ¶3).
- Willful Infringement: The complaint alleges that the infringement was "willful and deliberate" (Compl. Prayer ¶2) and that Defendants' acts were "knowing, deliberate, willful, [and] intended to cause confusion" (Compl. ¶55). The basis for this allegation appears to be the alleged "knockoff" nature of the products and their entry into the market after Plaintiff's product became established (Compl. ¶24, ¶36). The complaint does not allege pre-suit notice was provided to the Defendants.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of design scope: To what extent does the patent protect the overall appearance of the wallet versus the specific, prominent "leaf pendant" closure feature? The court's assessment of the design's novelty in light of the prior art will be critical in defining this scope.
- The central factual question will be whether an ordinary observer would be deceived. This will require a direct visual comparison of the accused products against the patent's drawings, weighing the similarity of the overall impression against any minor differences in proportion, hardware, or the claimed stitching pattern.
- A significant procedural question will be the propriety of joinder. The complaint joins eleven distinct seller entities as defendants, alleging their conduct arises from the same series of transactions and that they may be part of a single enterprise (Compl. ¶14, ¶41). Whether these defendants can be properly sued in a single action will likely be an early point of contention.