Joyin US Corp v. Lin

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: JOYIN US CORP, d/b/a JoyinDirect (Delaware)
  • Defendant: Jian Lin (People's Republic of China)
  • Plaintiff’s Counsel: Ni, Wang & Massand, PLLC
• Case Identification: 3:23-cv-01863, N.D. Tex., 08/18/2023
• Venue Allegations: Plaintiff alleges venue is proper in the Northern District of Texas because Defendant’s enforcement actions on Amazon.com caused harm to Plaintiff in Texas, which is one of its top sales markets.
• Core Dispute: Plaintiff seeks a declaratory judgment that its inflatable pool float products do not infringe Defendant’s design patent and that the patent is invalid, following Defendant’s infringement complaints on the Amazon platform which resulted in the delisting of Plaintiff's products.
• Technical Context: The dispute concerns the ornamental design of inflatable pool floats, a highly competitive product category in the consumer seasonal and recreational goods market.
• Key Procedural History: The complaint was precipitated by an intellectual property violation notice from Amazon on July 23, 2023, based on a claim filed by the Defendant. In a significant post-filing development, a request for ex parte reexamination of the patent-in-suit was filed, and the U.S. Patent and Trademark Office subsequently issued a certificate on October 18, 2024, canceling the patent's only claim.

Case Timeline

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

• Patent Identification: U.S. Design Patent No. D963,097, "Inflatable Float," issued September 6, 2022.

U.S. Design Patent No. D963,097 - "Inflatable Float"

The Invention Explained

• Problem Addressed: Design patents protect the novel ornamental appearance of an article of manufacture rather than a technical problem. The objective is to create a new, original, and ornamental design for an inflatable float to distinguish it aesthetically from other products in the market.
• The Patented Solution: The patent claims the ornamental design for an inflatable float as depicted in its figures (D’097 Patent, Claim). The design consists of a rectangular float with a continuous inflated outer tube, an integrated pillow at one end, and a ribbed main body (D’097 Patent, Fig. 1). A key characteristic of the design is the orientation of the ribs: the main body features horizontally oriented, parallel ribs, while the integrated pillow features vertically oriented, parallel ribs (Compl. ¶17; D’097 Patent, Fig. 7).

Key Claims at a Glance

• The patent contains a single claim for "The ornamental design for an inflatable float, as shown and described" (D’097 Patent, Claim; Compl. ¶16).
• The essential visual elements of the claimed design include:
  • The overall rectangular shape with rounded corners.
  • An integrated, raised pillow section.
  • A main body section comprised of parallel, horizontal inflatable ribs.
  • A pillow section comprised of parallel, vertical inflatable ribs.
  • Specific seam structures at the corners and around the pillow.
• Subsequent to the filing of the complaint, the sole claim of the '097 Patent was canceled during an ex parte reexamination proceeding (Reexam Cert. US D963,097 C1, p. 2).

III. The Accused Instrumentality

Product Identification

• Plaintiff’s “Pool Float” products, sold on Amazon under the brand name “Joyin” and identified by Amazon Standard Identification Numbers (ASINs) B0BKTLK99J, B0BKTLY5FV, B0BKTMCM9J, and B0BKTP6ZGL (Compl. ¶8, ¶11).

Functionality and Market Context

• The accused instrumentalities are inflatable pool floats sold through the Amazon Marketplace, which the complaint identifies as Plaintiff’s "primary sales channel into the United States" (Compl. ¶10). The complaint alleges that the products were delisted from Amazon following Defendant's infringement report, causing "immediate and irreparable harm" to Plaintiff's business (Compl. ¶11). The complaint includes a photograph of an accused product, showing a blue inflatable float with a leaf pattern printed on it. The complaint provides a side-by-side visual comparison of the patented design and the accused product (Compl. p. 4, ¶17).

IV. Analysis of Infringement Allegations

As this is a declaratory judgment action, the analysis focuses on the Plaintiff's allegations of non-infringement. The core of the Plaintiff's argument is that its products have a "distinct ornamental design" from that claimed in the '097 Patent (Compl. ¶17, ¶20).

• Claim Chart Summary:

  D’097 Patent Infringement Allegations

  Claim Element (from '097 Patent Figures)	Alleged Non-Infringing Feature of Joyin's Product	Complaint Citation	Patent Citation
  A design with perpendicular seams at each corner of the outer rim.	The accused product has rounded corners and does not feature the claimed perpendicular seams.	¶17	D’097 Patent, Fig. 1
  A design with a horizontal seam at the top and bottom of the pillow.	The accused product's pillow section lacks these horizontal seams.	¶17	D’097 Patent, Fig. 7
  A design with a specific number and configuration of air cells in the main body.	The accused product is alleged to have a "different number of air cells in the middle."	¶17	D’097 Patent, Fig. 7
  A design with a specific shape and size of the upper outer rim.	The accused product is alleged to have a "different shape and size of the upper outer rim."	p. 5, ¶17	D’097 Patent, Fig. 1

• Identified Points of Contention:

  • Scope Questions: The central infringement question raised by the complaint is whether the identified differences in seam construction, rib count, and rim shape are substantial enough to create a different overall visual impression in the eyes of an ordinary observer, or if the observer would focus on the similar general concept of a horizontally-ribbed body and vertically-ribbed pillow.
  • Technical Questions: A factual question is whether the visual differences highlighted by the Plaintiff (e.g., number of air cells, shape of the rim) are minor variations or fundamentally alter the product's aesthetic. The court's analysis would compare the two designs as a whole, considering the points of similarity and dissimilarity. These questions are likely rendered moot by the post-filing cancellation of the patent's claim.

V. Key Claim Terms for Construction

In design patent cases, analysis focuses on the scope of the claimed design as depicted in the drawings, rather than construction of text-based terms.

• The Term: "The ornamental design for an inflatable float, as shown and described."
• Context and Importance: The scope of a design patent is defined by the features shown in solid lines in the patent's figures. Features shown in broken lines are for illustrative purposes only and are not part of the claimed design. The '097 Patent states, "The broken lines in the figures illustrate portions of the inflatable float that form no part of the claimed design" (D’097 Patent, Description). Practitioners may focus on this distinction because it determines which visual elements are material to the infringement comparison.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party might argue that the overall visual impression is what is protected, focusing on the novel combination of the horizontal body ribs and vertical pillow ribs, which are depicted in solid lines. Under this view, minor differences in unclaimed features (those in broken lines) would not avoid infringement.
  • Evidence for a Narrower Interpretation: The complaint itself focuses on specific, solid-line features like the "perpendicular seams at each corner" and the "horizontal seam at the top and bottom of the pillow" as points of distinction (Compl. ¶17). A party could argue that these specific, claimed structural elements are integral to the design's overall appearance and that any accused product lacking them cannot be substantially similar.

VI. Other Allegations

• Invalidity: Plaintiff’s second cause of action seeks a declaratory judgment that the '097 Patent is invalid under 35 U.S.C. §§ 102 and/or 103 (Compl. ¶25). The complaint alleges that "the same or substantially similar products" were on sale on Amazon.com prior to the patent's July 2, 2021 filing date (Compl. ¶25). Specifically, the complaint points to products sold under the "Joyin" brand itself as early as March 20, 2021, and a "SWIMLINE" brand product sold as early as 2006, potentially creating an on-sale bar to patentability (Compl. ¶25).
• Exceptional Case Allegation: The complaint does not allege willfulness. Instead, as the declaratory judgment plaintiff, it requests that the court declare the case "exceptional" and award attorney's fees pursuant to 35 U.S.C. § 285 (Compl., Prayer for Relief C). The basis for this request is the allegation that Defendant Lin filed "meritless" and "baseless" infringement reports on Amazon.com to harm Plaintiff's business (Compl. ¶4, ¶5, ¶21).

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

The complaint was filed as a defensive action to combat an infringement assertion on an e-commerce platform. However, the subsequent cancellation of the patent's only claim in reexamination fundamentally changes the nature of the dispute. The key questions going forward are likely to be:

1. Mootness and Fees: With the patent's sole claim cancelled, a primary question is one of procedural finality: are the Plaintiff's claims for non-infringement and invalidity now moot? If so, does the court retain jurisdiction to decide the Plaintiff's request for a declaration that the case is "exceptional" and an award of attorney fees based on the Defendant's pre-litigation conduct?

2. Baseless Enforcement: The core remaining issue may be one of improper enforcement: did the Defendant's assertion of the '097 Patent on the Amazon platform, which the complaint alleges was invalid due to prior art and which was subsequently cancelled in reexamination, constitute the type of litigation misconduct or assertion of a patent in bad faith that would support an "exceptional case" finding under 35 U.S.C. § 285?