DCT
5:16-cv-06589
A&H Sportswear Co Inc v. Yuan
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: A&H Sportswear Co., Inc. (Pennsylvania) and Global Trademarks, Inc. (Nevada)
- Defendant: Luo Qi Yuan (China)
- Plaintiff’s Counsel: Steve Harvey Law LLC
- Case Identification: A&H Sportswear Co., Inc. v. Luo Qi Yuan, 5:16-cv-06589, E.D. Pa., 12/22/2016
- Venue Allegations: Venue is alleged to be proper in the Eastern District of Pennsylvania because a substantial part of the events giving rise to the claims occurred in the district, and it is where Plaintiff A&H maintains its principal place of business.
- Core Dispute: Plaintiffs allege that Defendant’s one-piece swimsuit infringes a design patent, alongside related claims of trademark and trade dress infringement.
- Technical Context: The dispute is set in the competitive women's swimwear market, where ornamental design is a significant driver of consumer choice and brand identity.
- Key Procedural History: The complaint does not reference any prior litigation or post-grant proceedings involving the asserted patent. It does, however, detail an extensive history of marketing and commercial success for the product line associated with the patented design, which may be used to establish the design's recognition and value.
Case Timeline
| Date | Event |
|---|---|
| 2011-01-01 | Plaintiffs begin selling swimsuits with the "JENA Design" |
| 2012-08-02 | '620 Patent Priority Date (Application Filing) |
| 2015-06-02 | '620 Patent Issued |
| 2016-12-22 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D730,620 - "Swimsuit"
- Patent Identification: U.S. Design Patent No. D730,620, "Swimsuit," issued June 2, 2015.
The Invention Explained
- Problem Addressed: Design patents protect the ornamental appearance of an article of manufacture rather than its utilitarian features. The objective is to create a new, original, and non-obvious aesthetic design that distinguishes a product in the marketplace.
- The Patented Solution: The patent claims the specific ornamental design for a swimsuit as depicted in its figures ('620 Patent, Claim). The claimed design is for a one-piece, one-shoulder, asymmetrical swimsuit featuring shirred or ruched fabric across the front torso, interspersed with sheer mesh panels ('620 Patent, FIG. 1). The broken lines in the patent drawings, which depict the human form, are explicitly disclaimed and do not form part of the protected design ('620 Patent, Description).
- Technical Importance: The complaint alleges that the commercial embodiment of this design, the "JENA Design," has achieved significant commercial success, with sales totaling over $7 million since 2011, and has been featured in prominent fashion publications (Compl. ¶¶16, 19).
Key Claims at a Glance
- The patent contains a single claim: "The ornamental design for a swimsuit, as shown and described."
- The essential ornamental elements depicted in the solid lines of the patent figures include:
- An asymmetrical, one-shoulder upper torso portion.
- Shirring (ruching) across the front of the garment.
- The specific placement and shape of sheer mesh paneling on the torso.
- The overall visual combination of these elements.
III. The Accused Instrumentality
Product Identification
- The accused product is the "Cocoship Inspired Fashion Figures Jena OTS One Piece Maillot Mesh Swimsuit(FBA)" (Compl. p. 25).
Functionality and Market Context
- The accused instrumentality is a women's one-piece swimsuit offered for sale to consumers in the United States through Amazon.com (Compl. ¶¶6, 36). The complaint alleges that the Defendant, doing business as "Cocoship," has copied not only the visual design of Plaintiffs' swimsuit but also the "JENA" mark and the "Fashion Figures" collection name that Plaintiffs use in their own marketing (Compl. ¶¶15, 36). A screenshot from an Amazon.com product page shows the accused product, which is a one-piece, one-shoulder swimsuit with shirred fabric and mesh paneling (Compl. p. 25).
IV. Analysis of Infringement Allegations
The standard for design patent infringement is whether an "ordinary observer, giving such attention as a purchaser usually gives, ... would be deceived into purchasing an article, supposing it to be the other." This analysis compares the overall ornamental appearance of the claimed design and the accused product.
The complaint provides a side-by-side comparison of Plaintiffs' "Miraclesuit Solid Jena" swimsuit and Defendant's "Cocoship...Jena...Swimsuit" to support its infringement allegations (Compl. p. 25).
[D730,620] Infringement Allegations
| Claimed Ornamental Feature (from '620 Patent) | Alleged Infringing Functionality (from Accused Product) | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a swimsuit, as shown and described. | The accused "Cocoship" swimsuit allegedly embodies a design that is "substantially the same" as the patented design. The complaint asserts that an ordinary observer would be deceived into believing the accused product is the same as the patented design. | ¶50 | Claim |
| Asymmetrical, one-shoulder silhouette. | The accused swimsuit is depicted as having an asymmetrical, one-shoulder design visually similar to the patented design. | p. 25 | FIG. 1 |
| Shirred/ruched fabric across the front torso. | The accused swimsuit is shown with shirred or ruched fabric across its front torso in a manner that visually corresponds to the patented design. | p. 25 | FIG. 1 |
| Sheer mesh panels on the torso. | The accused swimsuit features sheer mesh panels on the torso, consistent in appearance and placement with the panels shown in the patented design. | p. 25 | FIG. 1 |
| Overall visual impression. | The complaint alleges that the combination of the asymmetrical cut, shirring, and mesh paneling on the accused product creates an overall visual appearance that is a "colorable imitation" of the patented design. | ¶52 | FIG. 1-4 |
- Identified Points of Contention:
- Visual Similarity: The central question will be whether the overall visual appearance of the accused Cocoship swimsuit is "substantially the same" as the design claimed in the '620 patent from the perspective of an ordinary observer.
- Role of Prior Art: The infringement analysis must also account for prior art in the field. A court will need to determine whether any differences between the patented design and the accused product are significant in light of similar, pre-existing swimsuit designs. The complaint does not present any prior art.
- Evidence of Copying: The complaint alleges that Defendant copied Plaintiffs' "JENA" trademark and "Fashion Figures" collection name for its accused product (Compl. ¶36). While this relates primarily to trademark law, a court may consider it as circumstantial evidence of an intent to copy the patented design itself, which can be persuasive in an infringement analysis.
V. Key Claim Terms for Construction
In design patent cases, the "claim" is the visual design itself, as depicted in the drawings. Formal claim construction of written terms is typically not the central issue. Instead, the analysis focuses on the scope of the design as a whole.
- The Term: "The ornamental design for a swimsuit, as shown and described."
- Context and Importance: The scope of protection is defined by the solid lines in the patent's drawings. Practitioners will focus on what is included and excluded from the claim. The patent explicitly states that the broken lines illustrating the human form are for environmental context only and "form no part of the claimed design" ('620 Patent, Description). This distinction is critical because it confirms the patent protects the swimsuit's design itself, independent of the person wearing it.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Scope: The claim is for the design as a whole, not any single feature in isolation. This allows the patent holder to argue that another design with minor differences still infringes if the overall visual impression is the same.
- Evidence for a Narrower Scope: The protection is limited to the specific combination of elements shown in the solid lines: the one-shoulder cut, the particular pattern of shirring, and the specific placement of the mesh panels ('620 Patent, FIG. 1, 3, 4). A design that omits one of these key features or arranges them differently may fall outside the patent's scope.
VI. Other Allegations
- Indirect Infringement: The complaint does not allege indirect infringement of the '620 patent. It alleges direct infringement by Defendant for making, using, offering for sale, selling, or importing the accused swimsuits (Compl. ¶51).
- Willful Infringement: The complaint alleges that Defendant's infringement was willful (Compl. ¶42). This allegation is supported by claims of "obvious copying" of Plaintiffs' designs and marks, including the use of Plaintiffs' "JENA" and "Fashion Figures" branding on the accused product listings (Compl. ¶36).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual comparison: From the perspective of an ordinary observer familiar with the prior art, is the overall ornamental appearance of the accused "Cocoship" swimsuit substantially the same as the design claimed in the '620 patent, or are the differences sufficient to avoid infringement?
- A key evidentiary question will concern intent and context: To what extent will Defendant’s alleged use of Plaintiffs' "JENA" trademark and "Fashion Figures" collection name in its product listings be considered evidence of intentional copying of the patented design, potentially influencing the infringement analysis?
- The ultimate outcome may depend on the scope of the prior art: The strength of the infringement claim will be tested against the backdrop of other swimsuit designs in the market. The degree of novelty in the '620 patent's design over what came before will inform how closely an accused product must mimic it to be found infringing.