DCT
1:24-cv-01812
Wang v. Xindakangmaoyi
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Jierong Wang (China)
- Defendant: xindakangmaoyi (China) and 9iuoom Inc (China)
- Plaintiff’s Counsel: J. Zhang and Associates, P.C.
- Case Identification: 1:24-cv-01812, S.D.N.Y., 04/23/2024
- Venue Allegations: Plaintiff alleges venue is proper in the Southern District of New York because Defendants actively market and have shipped the accused product into the district.
- Core Dispute: Plaintiff alleges that Defendants’ connector piece for a toy building set infringes a U.S. design patent covering the ornamental appearance of such a piece.
- Technical Context: The dispute is in the field of mechanical connectors for modular toy building sets, where the aesthetic design of components can be a distinguishing feature.
- Key Procedural History: The complaint notes that the Plaintiff has previously licensed their patented inventions to other sellers, which may become relevant to damages calculations. The current filing is a First Amended Complaint.
Case Timeline
| Date | Event |
|---|---|
| 2020-09-18 | Priority Date for U.S. Patent No. D931,947 S |
| 2021-09-28 | U.S. Patent No. D931,947 S Issued |
| 2024-04-23 | First Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D931,947 S - Connector Piece For Toy Building Set
- Patent Identification: U.S. Design Patent No. D931,947 S (Connector Piece For Toy Building Set), issued September 28, 2021.
The Invention Explained
- Problem Addressed: Design patents protect ornamental appearance rather than solving a technical problem. The patent protects a "new design used for toy building sets," securing rights to a specific aesthetic for a functional item (Compl. ¶14).
- The Patented Solution: The patent claims the unique ornamental design of the connector piece, which is defined by its visual appearance as depicted in the patent's figures ('947 Patent, Claim, Figs. 1-7). The claimed design features a bifurcated, pincer-like connecting head, a sculpted middle body, and a cylindrical base, with the overall visual impression created by the solid lines in the drawings ('947 Patent, Figs. 1-7). The patent explicitly disclaims the article's internal structure and portions of its rear, which are shown in broken lines and "form no part of the claimed design" ('947 Patent, Description).
- Technical Importance: The complaint suggests the design's value lies in creating a "unique product positioning," indicating its importance is tied to market differentiation and brand identity rather than functional superiority (Compl. ¶20).
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is for: "The ornamental design for a connector piece for toy building set, as shown and described." ('947 Patent, Claim).
- The scope of this claim is defined by the visual appearance of the article as shown in the solid lines of the patent's seven figures. Key ornamental features include:
- A perspective view of the overall configuration (Fig. 1).
- A top-down view showing the shape of the pincer-like head (Fig. 2).
- A side-view profile (Fig. 4).
- Front and rear elevational views (Figs. 3, 6).
III. The Accused Instrumentality
Product Identification
- The "9IUoom branded Connector Piece For Toy Building Set," also referred to as the "9IUoom Connector Piece" (Compl. ¶1).
Functionality and Market Context
- The accused product is a component for toy building sets, sold by Defendants through an eCommerce storefront on Amazon.com (Compl. ¶¶4-7). The complaint alleges that Defendants actively "manufacture, market, and distribute" the accused connector pieces in the United States (Compl. ¶19). The complaint uses side-by-side photographic evidence to allege that the accused product is "virtually identical in appearance" to the patented design (Compl. ¶17). The complaint provides a top-down photographic comparison of the accused product and the patented design's FIG. 2, illustrating the alleged similarity in the shape of the connecting head (Compl. p. 4).
IV. Analysis of Infringement Allegations
The central test for design patent infringement is whether an "ordinary observer," familiar with the prior art, would be deceived into believing the accused design is the same as the patented design. The complaint alleges direct infringement under 35 U.S.C. § 271(a) (Compl. ¶1).
D931,947 S Infringement Allegations
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a connector piece for toy building set, as shown and described. | The complaint alleges the accused "9IUoom Connector Piece" embodies a design that is "virtually identical in appearance" to the design claimed in the '947 patent. Visual evidence is provided to support this, such as a side-by-side comparison of a photograph of the accused product's side profile with the patented design's FIG. 4. | ¶17; p. 4 | Figs. 1-7 |
Identified Points of Contention
- Scope Questions: A central question will be the scope of the claimed design as defined by the solid lines in the patent figures. The analysis will hinge on whether the overall visual impression of the accused product is substantially the same as the claimed design, not merely whether individual features are similar. The portions of the article shown in broken lines are not part of the claimed design and are irrelevant to the infringement analysis ('947 Patent, Description).
- Visual Comparison Questions: The complaint asserts the designs are "virtually identical" (Compl. ¶17). The court will have to determine if any minor differences between the accused product and the patent drawings are sufficient to prevent an ordinary observer from being deceived. The complaint provides a perspective view comparison of the product to the patent's FIG. 1, which will be a key piece of evidence in this visual assessment (Compl. p. 5).
V. Key Claim Terms for Construction
In design patent cases, "claim construction" involves determining the meaning and scope of the claimed design as a whole, as depicted in the drawings, rather than construing specific text-based terms.
- The "Term": The overall "ornamental design" for the connector piece.
- Context and Importance: The entire infringement analysis depends on the scope of the patented design and the visual impression it creates. Practitioners may focus on which specific features constitute the core of the protected design and which are merely functional or disclaimed.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim covers the overall visual impression created by the combination of all features shown in solid lines across all seven figures ('947 Patent, Figs. 1-7). The title Connector Piece For Toy Building Set suggests the design is applicable to this general article of manufacture ('947 Patent, Title).
- Evidence for a Narrower Interpretation: The scope is strictly limited to the specific ornamental features shown in the solid lines. The broken lines showing the internal structure and a portion of the rear base explicitly disclaim those features from the protected design, meaning that any similarity in those areas cannot support a finding of infringement ('947 Patent, Description).
VI. Other Allegations
Willful Infringement
- The complaint alleges that Defendants' infringement is "deliberate, willful, wanton, and intentional" (Compl. ¶19). This allegation is based on the "virtually identical appearance" between the products, which Plaintiff claims provides a basis to infer knowledge of the patent (Compl. ¶¶19, 25).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual identity: In the eye of an ordinary observer, is the overall ornamental appearance of the accused 9IUoom connector piece "substantially the same" as the design claimed in the '947 patent, such that the observer would be deceived?
- A second key question will be the impact of disclaimed features: How will the court treat the portions of the design shown in broken lines? The case may turn on whether the infringement analysis properly isolates the claimed ornamental features from the disclaimed functional or structural elements.
- An underlying evidentiary question will be the role of prior art: While not detailed in the complaint, the infringement analysis in a design patent case must be conducted in view of the prior art. The degree of similarity required for infringement may depend on how crowded the field of prior art for toy connector pieces is.