Wenzhou Charmhome Electronic Tech Co Ltd v. Koninklijke Philips NV

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Wenzhou Charmhome Electronic Tech. Co., Ltd. (People's Republic of China)
  • Defendant: Koninklijke Philips N.V. (The Netherlands)
  • Plaintiff’s Counsel: Dragon Sun Law Firm, P.C.
• Case Identification: 7:23-cv-08453, S.D.N.Y., 12/06/2023
• Venue Allegations: Plaintiff alleges venue is proper because Defendant conducts business in New York, lists stock on the New York Stock Exchange, and advertises and sells products to New York residents.
• Core Dispute: Plaintiff seeks a declaratory judgment that its electronic toothbrush products do not infringe Defendant's design patent for an electric toothbrush handle.
• Technical Context: The dispute centers on the ornamental design of electric toothbrush handles, a key visual differentiator in the consumer oral healthcare market.
• Key Procedural History: The action was precipitated by Defendant’s complaint filed with Amazon.com on or about September 18, 2023, which alleged that Plaintiff’s products infringed Defendant's patent. Plaintiff asserts this created an actual controversy, and further notes that its own accused product design is protected by a separate U.S. Design Patent.

Case Timeline

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

U.S. Design Patent No. D696,023 - HANDLE FOR ELECTRIC TOOTHBRUSH

• Patent Identification: U.S. Design Patent No. D696,023, HANDLE FOR ELECTRIC TOOTHBRUSH, issued December 24, 2013.

The Invention Explained

• Problem Addressed: Design patents protect the ornamental appearance of an article of manufacture rather than its utility. The patent sought to establish a new, original, and ornamental design for an electric toothbrush handle, thereby securing rights to a particular aesthetic in the marketplace ('D023 Patent, Claim).
• The Patented Solution: The patent claims the specific visual design for a toothbrush handle as depicted in its figures ('D023 Patent, Claim). Key features shown in the drawings include a generally cylindrical handle body that tapers toward the top, culminating in a distinctly curved upper portion ('D023 Patent, FIG. 11). The front face of the handle features a single, recessed, round or oval-shaped power button as its sole ornamental element ('D023 Patent, FIG. 2).
• Technical Importance: In the market for consumer electronics like toothbrushes, distinctive ornamental designs can serve as a key product differentiator and source of brand identity, and both parties in this action have secured design patents for their respective products (Compl. ¶¶ 1, 8).

Key Claims at a Glance

• Design patents contain a single claim. The asserted claim is:
  • The ornamental design for a handle for electric toothbrush, as shown and described ('D023 Patent, Claim).

III. The Accused Instrumentality

• Product Identification: Plaintiff’s "Electronic Tooth Brush" sold on e-commerce platforms such as Amazon.com (Compl. ¶¶ 1, 8).
• Functionality and Market Context: The complaint focuses on the ornamental features of the Plaintiff’s toothbrush handle, not its technical operation. It alleges the design of the accused product is distinct from the patented design and is itself protected by Plaintiff's own U.S. Patent No. D951,650 (Compl. ¶¶ 8, 12). The complaint highlights specific visual differences, including a square on/off switch with rounded corners, a straight/upright top portion, and the presence of six indicator lights below the switch (Compl. ¶11). The complaint provides a side-by-side visual comparison of the Plaintiff's product, its own patent, and the Defendant's patent ('D023 Patent) to illustrate these alleged differences (Compl. ¶9).

IV. Analysis of Infringement Allegations

This is a declaratory judgment action for non-infringement. The table below summarizes the Plaintiff's arguments for why its product design is not substantially similar to the patented design under the "ordinary observer" test.

• 'D023 Patent Infringement Allegations

• Identified Points of Contention: The analysis will center on a visual comparison.
  • Scope Questions: The primary question is whether the overall visual impression of the Plaintiff's product is "substantially the same" as the design claimed in the 'D023 Patent.
  • Technical (Visual) Questions: The court will need to assess whether the specific differences identified by the Plaintiff—the button shape, the top portion's curvature, and the addition of indicator lights—are sufficient to create a distinct overall visual impression in the eyes of an ordinary observer, or if they are merely minor variations that do not prevent a finding of similarity. The complaint provides a side-by-side comparison table showing Plaintiff's product, a figure from Plaintiff's own D'650 patent, and a figure from Defendant's 'D023 patent to support its non-infringement position (Compl. ¶9).

V. Key Claim Terms for Construction

In design patent cases, the "claim" is generally understood to be the drawings themselves, and formal construction of verbal terms is rare. The central analysis rests on a visual comparison of the patented design and the accused product as a whole, rather than a dissection of claim language. The complaint does not identify any specific terms for construction.

VI. Other Allegations

The complaint does not contain allegations of indirect or willful infringement.

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

The resolution of this declaratory judgment action will likely depend on the answers to two central questions:

1. A core issue will be one of visual comparison: When applying the "ordinary observer" test, are the alleged differences between Plaintiff's product (square button, indicator lights, straight top) and Defendant's patented design (round button, no lights, curved top) significant enough to create a different overall ornamental impression?

2. A secondary question concerns the relevance of Plaintiff’s own patent: What legal weight, if any, will the court give to the fact that Plaintiff’s accused design is itself the subject of an issued U.S. Design Patent? While the issuance of a patent is not a formal defense to infringing another, it may be presented as evidence that the U.S. Patent and Trademark Office considered the designs to be distinct.