DCT
1:24-cv-04209
Waying Technology Development Co Ltd v. Can Glass Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Waying Technology Development Co., Limited (People's Republic of China)
- Defendant: Can Glass Inc. (Delaware)
- Plaintiff’s Counsel: John H. Choi & Associates LLC; Ni, Wang & Massand, PLLC
- Case Identification: 1:24-cv-04209, S.D.N.Y., 06/03/2024
- Venue Allegations: Venue is based on Defendant allegedly owning and operating an Amazon storefront through which it sells products embodying the patented designs to customers within the judicial district.
- Core Dispute: Plaintiff seeks a declaratory judgment that its drinking glass products do not infringe Defendant's two design patents for a "glass can" and, further, that those patents are invalid due to pre-existing prior art.
- Technical Context: The dispute centers on the ornamental design of drinking glasses shaped to resemble a standard aluminum beverage can, a popular consumer glassware category.
- Key Procedural History: Plaintiff alleges that this action was precipitated by Defendant filing infringement complaints against Plaintiff's products with Amazon.com. The complaint also notes that Plaintiff's counsel sent letters to Defendant asserting non-infringement and invalidity prior to filing suit. Subsequent to the filing of the complaint, ex parte reexamination certificates for both patents-in-suit were issued by the USPTO, indicating that the sole claim of each patent has been cancelled. This development may render the core questions of infringement and validity moot, potentially shifting the case's focus to Plaintiff's related claims for tortious interference and attorneys' fees.
Case Timeline
| Date | Event |
|---|---|
| 2016-09-15 | Earliest date of alleged prior art product sales on Amazon.com |
| 2022-03-02 | D'426 Patent priority date |
| 2022-05-31 | D'994 Patent filed |
| 2023-02-14 | D'994 Patent issued |
| 2023-02-28 | D'426 Patent issued |
| 2023-03-01 | Plaintiff allegedly began selling its accused tumblers (approx. date) |
| 2023-11-26 | Defendant allegedly filed complaints with Amazon.com |
| 2024-06-03 | Complaint for Declaratory Judgment filed |
| 2025-03-12 | D'977,994 Reexamination Certificate issued, cancelling claim 1 |
| 2025-03-14 | D'979,426 Reexamination Certificate issued, cancelling claim 1 |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D977,994, “GLASS CAN,” Issued February 14, 2023
The Invention Explained
- Problem Addressed: Design patents protect ornamental appearance rather than solving a functional problem. This patent seeks to protect a specific aesthetic for a piece of drinkware (D'994 Patent, Claim).
- The Patented Solution: The patent claims the ornamental design for a glass can. The claimed design consists of the visual characteristics of the item shown in the patent's figures, which depict a drinking glass with the overall shape of a standard aluminum beverage can (D'994 Patent, Figs. 1, 3). Key features include a cylindrical body, a curved upper shoulder that tapers inward, and a short neck terminating in a distinct, rounded lip that flares slightly outward (D'994 Patent, Description, col. 1:50-61).
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a glass can, as shown and described" (D'994 Patent, Claim).
- The claimed design is defined by the overall visual appearance of the article depicted in the solid lines of the patent's seven figures.
U.S. Design Patent No. D979,426, “GLASS CAN,” Issued February 28, 2023
The Invention Explained
- Problem Addressed: As with the ’994 Patent, this patent protects an ornamental design (D'426 Patent, Claim).
- The Patented Solution: The patent claims the ornamental design for a glass can. The complaint notes, and a review of the patent confirms, that the figures in the ’426 Patent are identical to those in the ’994 Patent (Compl. ¶49; D’426 Patent, Figs. 1-8). The patented design therefore shares the same visual characteristics described above: a can-shaped body, curved shoulder, and flared lip (D'426 Patent, Description, col. 1:53-64).
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a glass can, as shown and described" (D'426 Patent, Claim).
- The scope of this claim is also defined by the overall visual appearance depicted in the patent's figures.
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are "drinking glasses" and "tumblers" sold by Plaintiff Waying Technology under its "Coolife USA Direct" Amazon storefront (Compl. ¶14-15). The complaint specifically references products sold with ASINs including B0C8JF71SB and B0CGDNZ4V4 (Compl. ¶17).
Functionality and Market Context
- The accused products are beverage containers whose ornamental shape is the basis of the dispute (Compl. ¶29-30). The complaint includes a photograph of an accused "Coolife" product, which is a clear glass shaped like a beverage can with printed text on its side (Compl. p. 5). Plaintiff alleges it began selling these tumblers as early as March 2023 (Compl. ¶15).
IV. Analysis of Infringement Allegations
This is a declaratory judgment action in which the Plaintiff alleges its products do not infringe. The analysis below summarizes the Plaintiff's non-infringement arguments.
D'994 Patent Infringement Allegations
| Claim Element (from Claim 1) | Alleged Non-Infringing Feature | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design for a glass can, as shown, including the curved shape leading to the mouth. | The complaint alleges the top of the accused product "does not have the same curved shape leading to the mouth" as the patented design. A side-by-side visual comparison highlights this alleged difference. | ¶30 | col. 1:50-61 |
| The overall ornamental design for a glass can, as shown, including the shape of the lip. | The complaint alleges the lip of the accused product's mouth "does not then curve outward, but rather goes straight up." | ¶30 | col. 1:50-61 |
D'426 Patent Infringement Allegations
| Claim Element (from Claim 1) | Alleged Non-Infringing Feature | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design for a glass can, as shown, including the curved shape leading to the mouth. | The complaint alleges the top of the accused product "does not have the same curved shape leading to the mouth" as the patented design. | ¶42 | col. 1:53-64 |
| The overall ornamental design for a glass can, as shown, including the shape of the lip. | The complaint alleges the lip of the accused product's mouth "does not then curve outward, but rather goes straight up." | ¶42 | col. 1:53-64 |
Identified Points of Contention
- Scope Questions: The complaint alleges that the scope of the patents is "limited...because of Applicant's prosecution history argument specific to the lip of the mouth" (Compl. ¶30, 42). This raises the question of whether prosecution history estoppel will prevent the Defendant from arguing that the patented design covers glasses without the precise lip flare shown in the drawings.
- Technical Questions: For a design patent, the question is not technical but visual. A central question will be whether the alleged differences in the shoulder's curve and the lip's angle are sufficient to make the overall visual impression of the accused product plainly dissimilar to the patented design from the perspective of an ordinary observer. The complaint provides a side-by-side comparison of the patent drawing and the accused product, with ovals highlighting the specific areas of alleged difference (Compl. p. 5, 10).
V. Key Claim Terms for Construction
In design patent cases, there are typically no terms to construe. Instead, the court describes the claimed design in words by reference to the figures. The "claim" is the design itself.
- The Term: The ornamental design for a glass can, as shown and described.
- Context and Importance: The central dispute is whether the accused product's design is the "same" as the patented design in the eyes of an ordinary observer. The description of the claimed design will be critical. Practitioners may focus on whether the specific curvature of the shoulder and the outward flare of the lip are essential, defining features of the design, or merely minor details within a broader, general "can shape."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent titles, "GLASS CAN," and the overall resemblance to a generic beverage can could support an interpretation where the general shape is the dominant feature, and minor variations in curvature do not alter the design (D'994 Patent, (54)).
- Evidence for a Narrower Interpretation: The solid lines in the patent figures define the metes and bounds of the claimed design (D'994 Patent, Figs. 1-8). Arguments for a narrower scope would emphasize that the specific, depicted curvatures are integral to the claimed design. The Plaintiff's reference to a "prosecution history argument specific to the lip of the mouth" suggests that evidence from the patent's prosecution may exist to narrow the interpretation of this feature (Compl. ¶30, 42).
VI. Other Allegations
- Invalidity: The complaint's primary allegation, aside from non-infringement, is that both patents are invalid under 35 U.S.C. § 102 as anticipated by prior art (Compl. ¶34, 46). Plaintiff alleges that "identical or substantially similar" glass cans were on sale on Amazon as early as 2016, well before the patents' 2022 priority date (Compl. ¶36, 48). The complaint provides visual evidence comparing the patented design to several allegedly prior art products sold on Amazon (Compl. p. 7-9). A side-by-side comparison shows the D'994 patent drawing next to what is alleged to be a prior art glass from a 2016 Amazon listing (Compl. p. 7).
- Bad Faith / Exceptional Case: The complaint alleges Defendant made "bad faith allegations" that were "knowingly and objectively false" when it filed complaints with Amazon (Compl. ¶24). This is based on the allegation that Defendant "knew or at least should have known" about the invalidating prior art sales on Amazon (Compl. ¶23). These allegations form the basis for Plaintiff's request for a declaration that the case is exceptional and an award of attorneys' fees under 35 U.S.C. § 285 (Compl. p. 13).
VII. Analyst’s Conclusion: Key Questions for the Case
- Enforceability and Mootness: The most significant issue is the legal status of the patents-in-suit. Given that the USPTO has issued reexamination certificates cancelling the sole claim of both the D’994 and D’426 patents, a threshold question is whether any live controversy remains regarding infringement or validity. The case may now primarily concern whether Defendant's past enforcement actions on Amazon constituted tortious interference, and whether Plaintiff is entitled to attorneys' fees.
- Validity in View of Prior Art: Should the court need to reach the merits of the original dispute, a core question is one of anticipation: does the evidence of prior "glass can" sales on Amazon, as presented in the complaint, depict designs that are identical to the designs claimed in the D’994 and D’426 patents, thereby rendering them invalid?
- Scope of Design and Infringement: If the patents were deemed valid and enforceable, the dispositive infringement question would be one of visual comparison: from the perspective of an ordinary observer, are the alleged differences in the accused product's shoulder curve and lip flare significant enough to create a different overall visual impression than the patented design, especially if the patent's scope is narrowed by prosecution history estoppel?