Shenzhein Kaimene Trading Ltd v. Du

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Shenzhen Kaimene Trading Ltd. dba Endoto (People's Republic of China)
  • Defendant: Jianfeng Du dba Ailaka (People's Republic of China)
  • Plaintiff’s Counsel: Ni, Wang & Massand, PLLC
• Case Identification: 3:24-cv-03200, N.D. Tex., 12/20/2024
• Venue Allegations: Plaintiff alleges venue is proper based on general federal venue statutes, and that personal jurisdiction exists due to Defendant's substantial business in the district, including conducting and soliciting business and deriving revenue from Texas residents.
• Core Dispute: Plaintiff seeks a declaratory judgment that its shoe insole products do not infringe Defendant's design patent and that the patent is invalid and unenforceable.
• Technical Context: The dispute concerns the ornamental design of shoe insoles sold through major online e-commerce platforms, a highly competitive consumer goods market.
• Key Procedural History: The complaint states this action was precipitated by Defendant lodging infringement complaints against Plaintiff on the Amazon marketplace, leading to the delisting of Plaintiff's products. Plaintiff alleges that Defendant's patent is invalid over several prior art references, including Defendant's own prior product listings, which Plaintiff claims were not disclosed to the U.S. Patent and Trademark Office during prosecution.

Case Timeline

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

U.S. Design Patent No. D1,031,231 - "Insole"

• Patent Identification: U.S. Design Patent No. D1,031,231, "Insole," issued June 18, 2024.

The Invention Explained

• Problem Addressed: The patent does not explicitly state a problem, as is typical for design patents. The implicit goal is to provide a new, original, and ornamental design for a shoe insole, distinguishing it visually from existing products.
• The Patented Solution: The patent claims the specific visual, ornamental characteristics of an insole as depicted in its eight figures (D1,031,231 Patent, p. 3). The design features a contoured shape with distinct regions on its bottom surface, including wavy, parallel ridges in the forefoot area and straight, parallel ridges in the heel area (D1,031,231 Patent, FIG. 8). The top surface is shown as a smooth, unadorned contour (D1,031,231 Patent, FIG. 1).
• Technical Importance: The claimed design provides a specific aesthetic appearance for a consumer product, which can be a significant factor in purchasing decisions in the competitive footwear accessories market (Compl. ¶18-19).

Key Claims at a Glance

• The patent contains a single claim: "The ornamental design for the insole, as shown and described." (D1,031,231 Patent, col. 1).
• The scope of this claim is defined by the solid lines in the patent's drawings (D1,031,231 Patent, FIGs. 1-8).

III. The Accused Instrumentality

Product Identification

• The "Endoto Arch Support Insoles for Toddlers," identified by Amazon Standard Identification Numbers (ASINs) B0D3LWDH4F and B0D3LWNDBX (Compl. ¶17).

Functionality and Market Context

• The products are described as shoe accessories sold by Plaintiff Endoto on the Amazon marketplace (Compl. ¶15). The complaint positions the Amazon marketplace as Plaintiff's "primary sales channel into the United States," making the product's listing essential for competition (Compl. ¶18). The complaint asserts the delisting of these products due to Defendant's infringement complaints causes significant harm, including lost sales and diminished product ranking (Compl. ¶19).

IV. Analysis of Non-Infringement Allegations

The complaint seeks a declaratory judgment of non-infringement, arguing that its products are not "substantially similar" to the patented design (Compl. ¶43). It provides side-by-side visual comparisons to support its allegations of invalidity, which also serve as evidence for its non-infringement claims. The table below summarizes the visual distinctions an observer might note, based on the complaint's provided images.

The complaint includes a side-by-side visual comparison between the claimed design and an allegedly anticipatory prior art reference. (Compl. p. 7, "Claimed Design" v. "Ailaka Reference"). This same comparison implicitly supports Plaintiff's non-infringement argument by highlighting differences.

• Identified Points of Contention: The core of the dispute is a direct visual comparison. The central legal test will be that of the "ordinary observer."
  • Scope Questions: A primary question is whether the overall visual impression of the Accused Products is "substantially the same" as the design claimed in the '231 Patent. Plaintiff's position is that the designs are "plainly distinct" (Compl. ¶43).
  • Technical Questions: The analysis will not turn on technical operation but on a comparison of ornamental features. A key question is whether the visual differences between the patented design and the accused products are significant enough that an ordinary observer, familiar with the prior art, would not be deceived into purchasing one thinking it was the other. The complaint's primary focus, however, is on invalidity, alleging that the "Ailaka Reference" (a product allegedly sold by the Defendant's affiliate) is identical to the patented design and predates it by over three years (Compl. ¶30, 36).

V. Key Claim Terms for Construction

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

• The Term: The scope of "the ornamental design for the insole, as shown and described."
• Context and Importance: The entire infringement and validity analysis depends on the visual scope of the patent. The court's interpretation of what constitutes the overall "ornamental design" will be dispositive. Practitioners will focus on comparing the patented drawings to the accused product and the cited prior art to determine if they are substantially similar in overall appearance.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party could argue that the overall visual impression is what matters, focusing on the general contours and placement of design regions, rather than the precise number or curvature of ridges. The patent claims the design "as shown and described," which encompasses all eight views (D1,031,231 Patent, col. 1).
  • Evidence for a Narrower Interpretation: A party could argue that the specific details, such as the exact pattern, shape, and arrangement of the ridges on the bottom surface and the specific curves of the profile, are critical limiting elements of the claimed design (D1,031,231 Patent, FIGs. 7, 8). Any deviation in these details could be argued to create a different overall visual impression.

VI. Other Allegations

• Invalidity and Unenforceability: The complaint's primary thrust is its request for a declaration that the '231 Patent is invalid and unenforceable. It alleges the patent is anticipated under 35 U.S.C. § 102 by multiple prior art references, including:
  • Two "Ailaka" product listings on Amazon, which allegedly show the same design and were first available in 2019. The complaint alleges these references are attributable to the Defendant (Compl. ¶30-31, 36-37).
  • A Chinese Design Patent to "Weifang" filed in 2019 (Compl. ¶32, 39).
• Inequitable Conduct: The complaint alleges that the Defendant, as the inventor, had an affirmative duty to disclose the "Ailaka References" to the USPTO during prosecution. The alleged failure to do so is asserted to constitute "fraud and/or inequitable conduct," rendering the patent unenforceable (Compl. ¶38).

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

1. A critical question of validity: Is the D'231 patent anticipated by the cited prior art? The complaint's visual evidence suggests a high degree of similarity between the patented design and the "Ailaka Reference," which allegedly predates the patent's filing date by more than three years. The outcome may depend on authenticating the "first available" date of the prior art and its connection to the Defendant.

2. A potential issue of inequitable conduct: Did the patentee, Jianfeng Du, know about the materiality of the "Ailaka References" and deliberately withhold them from the USPTO with an intent to deceive? If Plaintiff can prove this, the patent could be rendered unenforceable regardless of the infringement analysis.

3. A dispositive question of visual similarity: Assuming the patent is valid, would an ordinary observer, giving such attention as a purchaser usually gives, find the design of the Plaintiff's "Endoto" insoles to be substantially the same as the design claimed in the D'231 patent? The case will likely turn on a direct visual comparison of the respective products in the context of the prior art.