DCT
1:25-cv-00094
Shenzhen Xiang Wang Technology Co Ltd v. Vikingstrength LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Shenzhen Xiang Wang Technology Co., Ltd. (People's Republic of China)
- Defendant: Vikingstrength, LLC (Norway)
- Plaintiff’s Counsel: Dinsmore & Shohl LLP; Glacier Law LLP
- Case Identification: 1:25-cv-00094, E.D. Va., 01/20/2025
- Venue Allegations: Venue is alleged to be proper under 35 U.S.C. § 293, which provides for jurisdiction and venue over foreign patent owners who do not have a designated agent in the United States.
- Core Dispute: Plaintiff seeks a declaratory judgment that its wrist roller exercise devices do not infringe Defendant’s design patent and that the patent is invalid.
- Technical Context: The technology at issue is the ornamental design of wrist roller exercise equipment, a device used in strength training to develop forearm and grip strength.
- Key Procedural History: This declaratory judgment action was initiated by the accused infringer, Shenzhen Xiang Wang Technology, after Defendant Vikingstrength filed a patent infringement complaint with Amazon. This action resulted in the de-listing of Plaintiff's products from the e-commerce platform.
Case Timeline
| Date | Event |
|---|---|
| 2021-05-03 | '668 Patent Priority/Filing Date |
| 2024-11-26 | '668 Patent Issue Date |
| 2024-11-29 | Plaintiff received cease and desist letter |
| 2024-12-05 | Plaintiff received notice of product de-listing from Amazon |
| 2025-01-20 | Complaint for Declaratory Judgment Filed |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Design Patent No. D1,052,668, “WRIST ROLLER,” issued November 26, 2024.
The Invention Explained
- Problem Addressed: Design patents protect the ornamental appearance of an article of manufacture rather than a technical problem. The filing of the patent application implies a desire to protect a new, original, and ornamental design for a wrist roller device.
- The Patented Solution: The patent claims the specific ornamental design for a wrist roller as depicted in its figures ('668 Patent, CLAIM; FIG. 1-7). The claimed design consists of the solid-line portions of the drawings, which show two elongated, slightly concave handles separated by a central spool section that is bounded by two circular flanges. The patent explicitly states that elements shown in broken lines, such as a strap and portions of its attachment point, "form no part of the claimed design" ('668 Patent, col. 3:63-65).
- Technical Importance: The complaint alleges that core features of the device, such as the handles, flanges, and the central cylinder for winding a rope, are "standard functional requirements for this type of product" (Compl. ¶21). The patented design provides a specific aesthetic expression for these otherwise functional components.
Key Claims at a Glance
- The single claim asserted is for: "The ornamental design for a wrist roller as shown and described" ('668 Patent, CLAIM).
- As a design patent, the claim is defined by the visual characteristics depicted in the drawings. Key ornamental features shown in solid lines include:
- The overall configuration of two handles separated by a central flanged spool.
- The profile of the handles, which appear to have a slight concave slope (Compl. ¶28).
- The flat-ended appearance of the handles ('668 Patent, FIG. 6).
- The specific proportions and relative dimensions of the handles, flanges, and spool.
- A narrow vertical slot in the center of the spool for rope integration ('668 Patent, FIG. 4).
III. The Accused Instrumentality
- Product Identification: Plaintiff’s "Wrist Roller" products sold on Amazon.com under various ASINs, including B0D7397J6M (Compl. ¶3, ¶5).
- Functionality and Market Context:
- The accused product is an exercise device used for forearm strength training, consisting of two handles, a central spool, and a strap for attaching weights (Compl. ¶3). A promotional image shows the accused product with dimension callouts and a weight attached to the strap (Compl. p. 3).
- Plaintiff alleges that its products were sold through a "valid and existing contract with Amazon" and that their de-listing has caused "significant financial loss" and "detrimental impact on Plaintiff's ability to conduct business" (Compl. ¶7, ¶33, ¶50).
IV. Analysis of Infringement Allegations
As this is a complaint for declaratory judgment of non-infringement, the following table summarizes the Plaintiff's arguments for why its product is different from the patented design, based on the ordinary observer test. The complaint presents a side-by-side visual comparison to support these asserted differences (Compl. p. 8).
'668 Patent Non-Infringement Allegations
| Feature of the Claimed Design (from '668 Patent) | Alleged Non-Infringing Feature (Plaintiff's Product) | Complaint Citation | Patent Citation |
|---|---|---|---|
| A flat-ended design on the handles. | A "domed" design having a spherical shape at the ends of the handles. | ¶26 | '668 Patent, col. 3:60 |
| Handle handles that slope inward with a concave shape. | Straight handles without a concave slope. | ¶28 | '668 Patent, col. 3:57 |
| An opening for a rope or cable located in the center of the spool and occupying "only a small portion between the two flanges." | An opening that "spans the entire area between the two flanges." | ¶27 | '668 Patent, col. 3:58 |
- Identified Points of Contention:
- Scope Questions: A primary dispute will concern the scope of the patent claim after accounting for functionality. Plaintiff argues that functional elements—the handles, flanges, and central winding portion—must be excluded from the infringement analysis, thereby narrowing the patent's scope to "only the narrow ornamental features (if any)" (Compl. ¶21-22). The court's treatment of this functionality argument will be critical.
- Visual Questions: The case will turn on the "ordinary observer" test. The central question is whether an ordinary observer, in light of the prior art, would find the overall visual appearance of the accused product to be substantially the same as the patented design. Plaintiff highlights three specific visual distinctions to argue they are not (Compl. p. 8). The complaint also presents several prior art designs to contextualize the comparison, arguing these references "laid the foundation for this type of product" (Compl. ¶14, ¶25).
V. Key Claim Terms for Construction
In design patent cases, formal claim construction is less common than in utility patent cases. However, the scope of the claim is paramount. The key dispute will likely center on the legal doctrine of functionality.
- The "Term": The scope of the "ornamental design" versus its underlying functional aspects.
- Context and Importance: The resolution of what is ornamental versus what is functional is central to both infringement and validity. Plaintiff explicitly argues that the "two side handles, the two central flanges, and the cylindrical portion in the middle for winding the rope" are functional and must be filtered out of the infringement comparison (Compl. ¶21). If the court agrees, the infringement analysis would focus only on any remaining, purely aesthetic details, making a finding of non-infringement potentially more likely.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation (less functionality): The patentee (Defendant) may argue that while a wrist roller has a function, the specific shapes, proportions, and visual details of its design (e.g., the specific concave curve of the handle, the precise flange thickness) are aesthetic choices and therefore ornamental. The patent itself does not contain any language admitting that these features are functional.
- Evidence for a Narrower Interpretation (more functionality): Plaintiff points to the general nature of the product, stating these features "are standard functional requirements" and "represent a basic or generic concept that is inherently functional" (Compl. ¶21). The existence of prior art with similar overall configurations, which Plaintiff provides in a comparative chart, may be used to argue that the basic form is dictated by function, leaving little room for ornamental protection (Compl. ¶14, p. 6).
VI. Other Allegations
- Indirect Infringement: Not applicable, as this is a declaratory judgment action for non-infringement.
- Willful Infringement: Plaintiff does not allege willfulness against itself. However, it seeks findings that the case is "exceptional" under 35 U.S.C. § 285 and requests doubled or trebled damages for Defendant's "improper acts" in relation to its state law claims of tortious interference (Prayer for Relief ¶4, ¶8). The basis for these requests is the allegation that Defendant knowingly made "materially false allegations of patent infringement" to Amazon to harm Plaintiff's business (Compl. ¶35).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of functionality: To what extent are the features of the '668 patent design—such as the handles, flanges, and central spool—dictated by their utilitarian purpose? The court's decision on which elements are functional and must be disregarded will define the scope of the patent for the infringement analysis.
- A key evidentiary question will be the application of the ordinary observer test: Considering the visual differences asserted by the Plaintiff (domed vs. flat ends, straight vs. concave handles, and the rope opening) and the context provided by the prior art, would an ordinary observer be deceived into believing Plaintiff's product is the same as the patented design?
- A parallel question for the court will be one of validity: Is the design claimed in the '668 Patent nonobvious under 35 U.S.C. § 103 when compared to the prior art designs cited in the complaint, or is it merely an obvious combination of known design features?