Waying 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: Ni, Wang & Massand, PLLC
• Case Identification: 3:24-cv-00682, N.D. Ill., 03/20/2024
• Venue Allegations: Venue is based on Defendant operating an Amazon storefront and selling the products at issue into the Northern District of Illinois.
• Core Dispute: Plaintiff, a seller of drinking glasses, seeks a declaratory judgment that its products do not infringe Defendant's design patents and that those patents are invalid.
• Technical Context: The dispute concerns the ornamental design of drinking glasses shaped to resemble a standard aluminum beverage can, a popular consumer drinkware item.
• Key Procedural History: This declaratory judgment action was filed after Defendant allegedly submitted infringement complaints to Amazon.com regarding Plaintiff’s products. Plaintiff alleges it sent a letter to Defendant detailing its non-infringement and invalidity positions prior to filing suit. Public records attached to the patents indicate that ex parte reexamination was requested for both patents-in-suit just prior to the complaint's filing. Reexamination certificates, although dated for future issuance in March 2025, state that the sole claim of each patent has been canceled. The finality and impact of these cancellations will be a threshold issue for the court.

Case Timeline

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 technical problem. The objective is to create a new, original, and ornamental design for an article of manufacture (D’994 Patent, Claim).
• The Patented Solution: The patent claims the specific ornamental design for a glass drinking vessel that emulates the distinctive shape of a classic aluminum beverage can (D’994 Patent, Claim). The claimed design consists of the visual characteristics embodied in the overall profile, including a tapered upper section, a defined lip structure, and a recessed base, as depicted in the patent's figures (D’994 Patent, Figs. 1-8).
• Technical Importance: The design leverages the widespread familiarity and aesthetic appeal of the aluminum can form, translating it into the medium of a reusable glass tumbler for consumer use.

Key Claims at a Glance

• The complaint asserts non-infringement and invalidity with respect to the patent's sole claim, Claim 1 (Compl. ¶27).
• The claim protects "The ornamental design for a glass can, as shown and described" (D’994 Patent, Claim). As a design patent claim, its scope is defined by the overall visual appearance depicted in the drawings, not by a list of text-based elements.

U.S. Design Patent No. D979,426 - "GLASS CAN," issued February 28, 2023

The Invention Explained

• Problem Addressed: As with the ’994 Patent, the goal is the creation of a new, original, and ornamental design (D’426 Patent, Claim).
• The Patented Solution: This patent also claims the ornamental design for a "glass can." The complaint alleges, and a review 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 claim is for the design "as shown and described" in those figures (D’426 Patent, Claim).
• Technical Importance: The design's market context is identical to that of the ’994 Patent.

Key Claims at a Glance

• The complaint asserts non-infringement and invalidity with respect to the patent's sole claim, Claim 1 (Compl. ¶27).
• The claim protects "The ornamental design for a glass can, as shown and described" (D’426 Patent, Claim).

III. The Accused Instrumentality

Product Identification

The accused products are "drinking glasses," also described as "tumblers" and "silicon sleeve bamboo lid products," sold by Plaintiff Waying on its "Coolife USA Direct" Amazon storefront (Compl. ¶14, 17, 31).

Functionality and Market Context

The products are can-shaped glass tumblers intended for beverages. A photograph provided in the complaint shows a glass with printed text, accompanied by a bamboo lid and straw (Compl. p. 5). The core of the dispute centers on the ornamental shape of the glass itself, particularly the profile of its upper rim and mouth, which Plaintiff alleges is different from the patented design (Compl. ¶30, 42).

IV. Analysis of Infringement Allegations

As this is a declaratory judgment action, the analysis focuses on the Plaintiff's allegations of non-infringement. The complaint presents side-by-side visual comparisons to support its arguments. The image on page 5 of the complaint is an annotated comparison between the patented design and an accused product (Compl. p. 5).

D'994 Patent Non-Infringement Allegations

D'426 Patent Non-Infringement Allegations

The complaint makes identical non-infringement allegations with respect to the ’426 Patent, supported by an identical annotated visual comparison (Compl. p. 10).

• Identified Points of Contention:
  • Scope Questions: The complaint alleges that the patents' scope is "limited because of Applicant's prosecution history argument specific to the lip of the mouth" (Compl. ¶30, 42). This raises a question of prosecution history estoppel: did the patentee make arguments or amendments during prosecution to distinguish the lip design from prior art, thereby surrendering a broader interpretation of that feature?
  • Technical Questions: The central design patent question is whether the differences alleged by the Plaintiff—a less pronounced curve at the neck and a straight rather than outwardly curved lip—are sufficient to prevent an ordinary observer from finding the overall designs to be substantially similar. The complaint also presents several images of allegedly invalidating prior art, such as a side-by-side comparison of the patented design and a "Libbey Glass" product allegedly on sale since 2016 (Compl. p. 7).

V. Key Claim Terms for Construction

In design patent cases, the "claim" is the design as a whole, depicted in the drawings. Formal construction of text is rare. However, the parties' dispute highlights the importance of the scope of the claimed design, particularly as it relates to specific features.

• The Term: "The ornamental design for a glass can"
• Context and Importance: The case's outcome depends on the legal scope of the patented design and whether the specific lip and neck profile are essential features. Practitioners may focus on this issue because the Plaintiff explicitly bases its non-infringement argument on alleged differences in these features and hints at a limiting prosecution history (Compl. ¶30, 42).
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A court could find that the design's overall visual impression is that of a can-shaped glass, and that minor variations in the lip profile do not change this fundamental similarity. The claim broadly covers the design "as shown and described" without singling out any particular feature as being of greater importance (D’994 Patent, Claim).
  • Evidence for a Narrower Interpretation: The precise, consistent rendering of the lip's double-curve profile across multiple figures could be interpreted as a critical, non-negotiable element of the claimed design (D’994 Patent, Figs. 1, 3-6). Any arguments made during prosecution to distinguish this specific lip shape from prior art would provide strong evidence for a narrower construction of the design's scope.

VI. Other Allegations

• Exceptional Case Allegations: Plaintiff requests that the court declare the case "exceptional" under 35 U.S.C. § 285, which would allow for an award of attorneys' fees (Compl. p. 13, ¶e). The basis for this request is the allegation that Defendant brought "bad faith allegations" of infringement to Amazon that were "knowingly and objectively false," particularly in light of what Plaintiff characterizes as "invalidating prior art" from numerous pre-existing sales on Amazon (Compl. ¶23-24).

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

1. Procedural Finality: The most immediate question is case-dispositive: what is the legal effect of the ex parte reexamination proceedings? A court must determine the finality of the USPTO's reported cancellation of the sole claim of each patent-in-suit, which, if confirmed, would render the declaratory judgment action for invalidity and non-infringement moot.

2. Validity over Prior Art: If the case proceeds, the key question on the merits will be validity. The complaint presents numerous examples of allegedly similar or identical can-shaped glasses sold on Amazon as early as 2016, years before the patents' 2022 priority date (Compl. ¶35-38, pp. 7-9). The court will have to determine whether the claimed designs are novel and non-obvious in view of this alleged prior art.

3. Infringement and Design Scope: Should the patents survive the validity challenge, the infringement analysis will hinge on a question of design scope. Is the specific curvature of the lip and neck, as depicted in the patent drawings, a defining feature of the claimed design, potentially narrowed by prosecution history as the Plaintiff suggests? Or are these minor details in a design whose overall impression is substantially similar to the accused products in the eye of an ordinary observer?