DCT

1:25-cv-00801

Shenzhen Jianke Technology Co Ltd v. Earthables Ltd

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:25-cv-00801, E.D. Va., 05/08/2025
  • Venue Allegations: Venue is asserted based on the defendant being a foreign entity, with harm allegedly occurring in Virginia through the distribution of products via Amazon fulfillment centers located in the state.
  • Core Dispute: Plaintiffs seek a declaratory judgment that their desktop privacy dividers do not infringe Defendant's design patent for a "study carrel," and further allege the patent is invalid and was enforced in bad faith.
  • Technical Context: The dispute concerns the ornamental design of simple, foldable, three-panel privacy screens used on desks, a common accessory in educational and office settings.
  • Key Procedural History: The complaint highlights the prosecution history of the patent-in-suit, noting that the patent examiner initially rejected the application based on a 2020 prior art reference. The inventor allegedly overcame this rejection by submitting an affidavit claiming the reference was for an "obsolete" product and that the patented design was not released until the third quarter of 2023. Plaintiffs allege their own products were on sale prior to the patent's filing date, rendering the patent invalid.

Case Timeline

Date Event
2020-02-09 "Earthables reference" allegedly published on Amazon
2023-04-04 Plaintiff's "Privacy Shields" product first available on Amazon
2023-04-19 "Storage Study Carrel" (alleged prior art) first available on Amazon
2023-07-01 Start of period inventor claimed for first release of patented design
2023-12-13 D'093 Patent filing date (earliest priority)
2025-02-11 D'093 Patent issue date
2025-02-19 First alleged takedown of Plaintiff's products from Amazon
2025-05-08 Complaint for Declaratory Judgment filed

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

U.S. Design Patent No. D1,061,093 S - "Study carrel"

  • Patent Identification: U.S. Design Patent No. D1,061,093 S, titled "Study carrel," issued February 11, 2025 (the "D’093 Patent").

The Invention Explained

  • Problem Addressed: Design patents protect ornamental appearance rather than solving a technical problem. The D'093 Patent seeks to protect a new, original, and ornamental design for a study carrel, an article used to provide privacy and reduce distractions on a desktop (D’093 Patent, Title; Compl. ¶14).
  • The Patented Solution: The patent claims the specific ornamental design for a three-panel, foldable desktop divider as depicted in its five figures (D’093 Patent, Figs. 1.1-1.5). The design features a large central panel flanked by two smaller side panels that fold inward, with specific proportions and a flat, unadorned surface texture shown via surface shading (D’093 Patent, Figs. 1.1, 1.4). The figures illustrate the design from the front, back, top, right side, and in a folded perspective view (D’093 Patent, p. 3).
  • Technical Importance: The commercial context for such designs involves providing low-cost, portable solutions for creating individual workspaces in shared environments like classrooms and open-plan offices (Compl. ¶¶ 14, 16, 25).

Key Claims at a Glance

  • Design patents contain a single claim. The asserted claim is: "The ornamental design for study carrel as shown and described." (D’093 Patent, Claim; Compl. ¶29).
  • The scope of the claim is defined by the solid lines in the patent's drawings (D’093 Patent, Figs. 1.1-1.5).

III. The Accused Instrumentality

  • Product Identification: The "Plaintiff Products," identified as "desktop dividers" and "Privacy Shields," sold on Amazon.com under various Amazon Standard Identification Numbers (ASINs) (Compl. ¶¶ 14, 18, 20).
  • Functionality and Market Context: The Plaintiff Products are three-panel, foldable privacy dividers for desks, marketed for use in settings like classrooms (Compl. ¶¶ 14, 19). The complaint alleges that these products are "nearly identical" to another product, the "Storage Study Carrel," which Plaintiffs contend is prior art to the D'093 Patent (Compl. ¶22). The complaint includes an image showing one of the Plaintiff Products in an unfolded, upright configuration and in a folded state. (Compl. ¶19). A separate set of images shows the asserted prior art "Storage Study Carrel" in various configurations, including in use on a desk with a laptop. (Compl. ¶22, p. 6).

IV. Analysis of Infringement Allegations

The complaint does not present its non-infringement allegations in a claim-chart format. Instead, it advances the legal theory that Plaintiffs’ products cannot infringe the ’093 Patent under the "ordinary observer" test. This test asks whether an ordinary observer, familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented design.

The core of Plaintiffs' non-infringement argument is that their products are "nearly identical to the prior art Storage Study Carrel" (Compl. ¶45). They allege that any design features their products share with the D'093 Patent are also present in the prior art (Compl. ¶46). Therefore, they argue, an ordinary observer familiar with the prior art would not confuse the Plaintiff Products with the patented design, because the novel features of the patented design (if any) are absent from the accused products (Compl. ¶38). To support this, the complaint provides a side-by-side visual comparison of the D'093 Patent drawings and photos of the alleged prior art. (Compl. ¶54, pp. 13-14).

  • Identified Points of Contention:
    • Scope Questions: A primary issue is the scope of the D'093 Patent's design protection in light of the alleged prior art. The central question for the court will be whether the patented design is substantially the same as the prior art "Storage Study Carrel." If it is, the patent's scope may be too narrow to cover the Plaintiff Products.
    • Technical Questions: The complaint raises a question about the clarity of the patent's disclosure, alleging that Figure 1.5 is "too blurry and unclear to determine the scope of the claim with reasonable certainty," which suggests a potential challenge to the patent's validity on grounds of indefiniteness (Compl. ¶30). The factual basis of the inventor's affidavit, which distinguished the patented design from a 2020 Amazon listing by calling the latter an "obsolete study carrel product," will likely be a key area of factual dispute (Compl. ¶27).

V. Key Claim Terms for Construction

In design patent litigation, the "claim" is understood through the drawings. The central interpretive challenge is not the definition of a word, but the scope of the overall visual impression conveyed by the figures.

  • The Term: "the ornamental design for study carrel as shown and described"
  • Context and Importance: The entire dispute hinges on the scope of this claimed design. Its visual boundaries, when compared against the prior art and the accused products, will determine the outcomes of both invalidity and infringement. Practitioners may focus on this "term" because the plaintiff has directly challenged the clarity of the drawings that define it and has argued that the design is visually indistinguishable from prior art.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A party arguing for broader scope would emphasize the overall visual gestalt created by the combination of all five drawing views (front, back, top, side, and folded perspective) (D’093 Patent, Figs. 1.1-1.5). This interpretation would focus on the general proportions and three-panel configuration as the dominant visual features.
    • Evidence for a Narrower Interpretation: The complaint provides evidence for a narrower interpretation by arguing the design is "substantially the same" as, and even "virtually identical" to, alleged prior art (Compl. ¶¶ 33, 37). This suggests the scope of any novelty is exceptionally narrow. Furthermore, the complaint alleges that Figure 1.5, showing a perspective view, is "too blurry and unclear," which could be used to argue that the scope is indefinite and thus unenforceable (Compl. ¶30).

VI. Other Allegations

  • Indirect Infringement: The complaint seeks a declaratory judgment of non-contribution and non-inducement regarding the D'093 Patent (Compl. ¶48). However, as a complaint for declaratory judgment, it does not plead specific facts related to these allegations, but rather seeks to preemptively negate them.
  • Willful Infringement: This action does not allege willfulness by an infringer. Instead, Plaintiffs allege bad faith enforcement by the Defendant/Patentee. The complaint claims Defendant made "false allegations of patent infringement" to Amazon "despite knowing that the D093 Patent was invalid and/or not infringed" by Plaintiffs' products due to the existence of prior art (Compl. ¶¶ 59, 81). These allegations form the basis for Plaintiffs' claims of unfair competition and tortious interference (Compl. Counts III-VI).

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

  • A central question will be one of validity based on prior art: Will the court determine that the "Storage Study Carrel" or Plaintiffs' own "Privacy Shields" constitute invalidating prior art under 35 U.S.C. § 102 or § 103? The resolution will depend on substantiating the alleged on-sale dates of these products and a visual comparison to the patented design.
  • A key procedural and evidentiary issue will be the integrity of the patent’s prosecution history: The case may turn on whether the inventor’s affidavit, filed to overcome a prior art rejection by asserting the patented design was not sold until late 2023, was accurate or constitutes inequitable conduct or fraud on the USPTO.
  • The final core issue will be the application of the ordinary observer test: Assuming the patent is valid, is the patented design’s overall ornamental appearance, when viewed in light of the prior art, substantially the same as the design of the accused Plaintiff Products? This analysis will determine infringement.