Sichuan Xinxiangyuantong Technology Co Ltd v. Zhu

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Sichuan Xinxiangyuantong Technology Co. Ltd., d/b/a Vtinva (People's Republic of China)
  • Defendant: Zhenzhen Zhu (People's Republic of China)
  • Plaintiff’s Counsel: YZ Law Firm LLP
• Case Identification: 4:24-cv-00977, E.D. Tex., 10/31/2024
• Venue Allegations: Plaintiff alleges venue is proper because the Defendant is a foreign individual not residing in the U.S. and may therefore be sued in any judicial district.
• Core Dispute: Plaintiff, an online retailer, seeks a declaratory judgment that its remote control products do not infringe Defendant's design patent and that the patent is invalid due to a prior art product being on sale more than one year before the patent's filing date.
• Technical Context: The dispute concerns the ornamental design of remote controls for televisions, a ubiquitous consumer electronics accessory where product appearance is a significant market differentiator.
• Key Procedural History: The case arises from infringement complaints filed by the Defendant patent holder through the Amazon Marketplace platform, which resulted in the takedown of Plaintiff's product listing. This action by the Plaintiff is a direct response, seeking judicial intervention to resolve the infringement dispute and invalidate the patent-in-suit.

Case Timeline

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

U.S. Design Patent No. D971,180 - "Remote Control for Television"

• Patent Identification: U.S. Design Patent No. D971,180, "Remote Control for Television," issued November 29, 2022 (the "’180 Patent").

The Invention Explained

• Problem Addressed: Design patents protect the ornamental appearance of an article of manufacture, not a functional solution to a technical problem. The patent does not describe a problem, but rather presents a novel aesthetic design for a remote control (D’180 Patent, Claim).
• The Patented Solution: The ’180 Patent claims the specific visual appearance of a television remote control. The design is characterized by a generally rectangular body with rounded top and bottom edges, a specific layout of circular and rounded-rectangular buttons, a prominent circular directional pad, and a distinct recessed area on the rear face (D’180 Patent, FIG. 1, 3, 4). The scope of the claimed design is defined by the solid lines in the patent figures; features shown in broken lines are disclaimed and do not form part of the invention (D’180 Patent, Description).
• Technical Importance: In the competitive market for consumer electronics, a unique and aesthetically pleasing ornamental design can provide a significant commercial advantage by differentiating a product from its competitors.

Key Claims at a Glance

• Design patents contain a single claim. The asserted claim is: "The ornamental design for a remote control for television, as shown and described." (D’180 Patent, Claim).
• The essential elements of the claim are the visual features depicted in the patent's eight figures, including the overall shape and contour of the remote, and the size, shape, and arrangement of the buttons and other surface ornamentation shown in solid lines.

III. The Accused Instrumentality

Product Identification

• The "Vtinva Remote Control" sold by Plaintiff Vtinva on Amazon.com under ASIN B095RBGR83 (Compl. ¶11).

Functionality and Market Context

• The complaint describes the Vtinva Remote Control as a digital product sold by an online retailer (Compl. ¶10). The action was precipitated by infringement allegations from the Defendant that led to Amazon removing the product's listing (Compl. ¶16-17). The complaint focuses its factual allegations not on the features of the Vtinva Remote Control itself, but rather on a separate "Prior Product" that it alleges invalidates the ’180 Patent (Compl. ¶27). The complaint does not contain an image or detailed description of the Plaintiff's Vtinva Remote Control.

IV. Analysis of Invalidity Allegations

The complaint's primary argument is that the ’180 Patent is invalid under 35 U.S.C. § 102(a)(1) due to an on-sale bar. It alleges a product embodying the same design was commercially sold more than one year prior to the patent's July 11, 2022 filing date (Compl. ¶26). The complaint provides a visual comparison between this "Prior Product" and the patented design.

The complaint contains a side-by-side chart comparing images of a "Prior Product" to figures from the '180 Patent. (Compl. ¶27, p. 7). This visual evidence shows a front view of the prior art remote next to Figure 3 of the patent.

D971,180 Invalidity Allegations

Identified Points of Contention

• Evidentiary Question (On-Sale Bar): Can the Plaintiff produce sufficient evidence to prove that the identified "Prior Product" (ASIN B08H5TRFNR) was, in fact, "on sale" in the U.S. before the critical date of July 11, 2021, as alleged? (Compl. ¶26-28).
• Scope Question (Design Comparison): Assuming the Prior Product constitutes valid prior art, is its design "the same" or substantially similar to the design claimed in the '180 Patent, as viewed by an ordinary observer? The complaint's visual evidence suggests a high degree of similarity (Compl. ¶27).
• Factual Question (Non-Infringement): The complaint seeks a declaration of non-infringement but provides no images or specific analysis of its own "Vtinva Remote Control" compared to the patented design. A central question will be whether the Plaintiff's product is different enough from the patented design to be non-infringing, particularly if the patent's scope is narrowed by the alleged prior art.

V. Key Claim Terms for Construction

In design patent cases, there are typically no traditional claim terms to construe. The "claim" is the design itself, as depicted in the drawings. The analysis focuses on the scope of the claimed design as a whole.

• The Term: "The ornamental design for a remote control for television, as shown and described."
• Context and Importance: The scope of the claimed design is the central issue for both invalidity and infringement. The primary question is what visual elements are covered by the claim. Practitioners may focus on this issue because the existence of allegedly identical prior art (Compl. ¶27) could significantly narrow the protectable scope of the D'180 Patent to only the exact design shown, leaving no room for equivalents.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim covers the overall visual impression of the design shown in solid lines in all eight figures, not just isolated features. A party could argue that minor differences in an accused product would not change the overall appearance in the eyes of an ordinary observer.
  • Evidence for a Narrower Interpretation: The patent explicitly uses broken lines to disclaim certain features, stating they "form no part of the claimed design" (D’180 Patent, Description). This act of disclaiming subject matter narrows the claim's scope. Furthermore, the complaint's allegation of a nearly identical prior art product (Compl. ¶27-29) may be used to argue that the scope of the patented design is limited to its precise depiction and cannot be read to cover even minor variations.

VI. Other Allegations

• Indirect Infringement: The complaint seeks a declaration that Plaintiff Vtinva has not and does not indirectly infringe the ’180 Patent, but it provides no specific facts related to this allegation (Compl. ¶C, p. 10).

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

This declaratory judgment action appears to hinge on two central questions:

1. A dispositive question of validity: Can the Plaintiff prove with clear and convincing evidence that the "Prior Product" it identified was publicly on sale before the patent's critical date and that its design is legally identical to the one claimed in the '180 Patent? The side-by-side visual evidence presented in the complaint suggests this will be a primary focus of the litigation.

2. A secondary question of infringement scope: If the '180 Patent is found valid, what is its scope in light of the alleged prior art? The resolution of the non-infringement claim will depend on a comparison between the Plaintiff's "Vtinva Remote Control"—a product not depicted in the complaint—and the potentially narrowed scope of the patented design.