DCT
2:25-cv-00038
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: 2:25-cv-00038, E.D. Va., 01/20/2025
- Venue Allegations: Plaintiff alleges venue is proper because Defendant is a foreign entity that owns a U.S. patent and has not designated an agent for service in the U.S., and because Defendant's actions have caused financial harm within the district.
- Core Dispute: Plaintiff seeks a declaratory judgment that its "Wrist Roller" exercise products do not infringe Defendant's design patent and that the patent is invalid, following Defendant's infringement complaint to Amazon which resulted in the de-listing of Plaintiff's products.
- Technical Context: The dispute concerns the ornamental design of wrist roller exercise devices, a category of equipment used for developing forearm and grip strength.
- Key Procedural History: The action was precipitated by a cease and desist letter sent by Defendant to Plaintiff, followed by an infringement complaint filed by Defendant with Amazon. This complaint led Amazon to de-list Plaintiff's products, prompting Plaintiff to file this declaratory judgment action in federal court.
Case Timeline
| Date | Event |
|---|---|
| 2021-05-03 | D1,052,668 Patent Filing (Priority) Date |
| 2024-11-26 | D1,052,668 Patent Issue Date |
| 2024-11-29 | Plaintiff receives cease and desist letter |
| 2024-12-05 | Plaintiff receives notice of Amazon de-listing |
| 2025-01-20 | Complaint for Declaratory Judgment Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D1,052,668 - "WRIST ROLLER"
- Patent Identification: U.S. Design Patent No. D1,052,668, "WRIST ROLLER," issued November 26, 2024.
The Invention Explained
- Problem Addressed: As a design patent, the ’668 Patent does not articulate a technical problem it seeks to solve; rather, it protects the novel, non-functional, ornamental appearance of the article of manufacture shown in its drawings ('668 Patent, Claim).
- The Patented Solution: The patent claims the specific ornamental design for a wrist roller. The protected design, as depicted in the solid lines of the figures, consists of two slightly tapered cylindrical handles separated by a central section containing two parallel flanges. This central section features a narrow vertical slot for a rope or cable, and the ends of the handles are flat with rounded edges ('668 Patent, Figs. 1-7). The broken lines in the figures depict environmental structure and form no part of the claimed design ('668 Patent, DESCRIPTION).
- Technical Importance: The patent protects the aesthetic appearance of the wrist roller device, which may serve to distinguish it from competing products in the marketplace, rather than protecting any functional or operational improvement (Compl. ¶21).
Key Claims at a Glance
- The single claim of a design patent covers the entire visual appearance of the object.
- Claim 1: "The ornamental design for a wrist roller as shown and described." ('668 Patent, CLAIM).
III. The Accused Instrumentality
Product Identification
- Plaintiff’s "Wrist Roller" products sold on Amazon.com (Compl. ¶3).
Functionality and Market Context
- The accused products are exercise devices consisting of a central roller with handles, designed for users to wind a weighted rope to strengthen their wrists and forearms (Compl. ¶3, ¶21). The complaint alleges these products were sold on Amazon until Defendant's infringement complaint caused them to be de-listed, leading to significant financial loss and a potential "total shut down of Plaintiff's business" (Compl. ¶4, ¶7). The complaint includes a marketing image of the product in use with a kettlebell and weight plates attached. (Compl. ¶3, p. 3).
IV. Analysis of Infringement Allegations
This is a declaratory judgment action where the Plaintiff argues for non-infringement. The following table summarizes the Plaintiff's arguments distinguishing its product from the patented design. The infringement test for a design patent is whether an "ordinary observer," familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented design.
| Asserted Distinguishing Feature of Plaintiff's Product | Corresponding Feature of Patented Design | Complaint Citation | Patent Citation |
|---|---|---|---|
| "Domed" or spherical shape on the ends of the handles | Flat-ended handle design with rounded edges | ¶26 | Fig. 6 |
| An opening for the rope that spans the entire area between the two flanges | A narrow, vertical slot located in the center of the area between the two flanges | ¶27 | Fig. 4 |
| Straight, non-tapered handle shape | Handles that slope inward with a slight concave taper | ¶28 | Fig. 2 |
Identified Points of Contention
- Functionality: The complaint argues that core features of the device—"the two side handles, the two central flanges, and the cylindrical portion in the middle for winding the rope"—are dictated by function and must be excluded from the infringement analysis (Compl. ¶21). A central dispute may be how much of the overall design is considered functional and thus unprotectable.
- Visual Comparison: The complaint presents a side-by-side visual comparison to emphasize the differences between the products. (Compl. p. 8, "Difference No. 1," "Difference No. 2," "Difference No. 3"). The plaintiff argues that these "noticeable differences" would prevent an ordinary observer from confusing the two designs (Compl. ¶29).
- Role of Prior Art: The complaint asserts that the non-infringement comparison must be conducted "through the lens of prior art" (Compl. ¶23). It provides a table of four prior art design patents to establish a crowded field, which could suggest that small differences between designs are significant to the ordinary observer (Compl. ¶14, p. 6).
V. Key Claim Terms for Construction
In design patent cases, formal claim construction is uncommon. The dispute centers on the scope of the claimed design as a whole, particularly the line between ornamental and functional features.
- The Term: "ornamental design"
- Context and Importance: The core of the non-infringement and invalidity case rests on what aspects of the '668 Patent's figures are purely "ornamental" versus being dictated by the function of a wrist roller. Practitioners may focus on this issue because if significant portions of the design are deemed functional, the scope of the patent's protection would be narrowed to only the remaining, truly ornamental details, making a finding of infringement less likely.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation (More Ornamental): A party seeking a broader scope would argue that the specific combination and arrangement of all features shown in solid lines—the taper of the handles, the proportions of the flanges, the shape of the ends, and the dimensions of the slot—create a unitary visual impression that is ornamental as a whole, even if individual elements have a function.
- Evidence for a Narrower Interpretation (More Functional): The complaint provides arguments for a narrower scope, alleging that the presence of handles, flanges, and a central rope-winding portion are "standard functional requirements for this type of product" and "inherently functional" (Compl. ¶21). Under this view, only minor features, such as the precise surface finish or subtle curvatures not dictated by function, would be protectable.
VI. Other Allegations
Invalidity
- The complaint includes a count for a declaratory judgment of invalidity, alleging that the '668 Patent is obvious under 35 U.S.C. § 103 in light of prior art (Compl. ¶13). It provides a chart with images from four U.S. design patents (D451,564; D264,237; D428,946; D268,436) as representative examples, arguing they "laid the foundation for this type of product" (Compl. ¶14, ¶25).
Tortious Interference
- The complaint alleges Tortious Interference with Contractual Relations (Count III) and Prospective Economic Advantage (Count IV). The basis for these claims is the allegation that Defendant knowingly made "materially false allegations of patent infringement" to Amazon to have Plaintiff's listings removed and "eliminate Plaintiff's lawful competition" (Compl. ¶35, ¶45).
VII. Analyst’s Conclusion: Key Questions for the Case
- Scope and Functionality: A threshold issue for the court will be to determine the scope of the '668 patent's protection by separating its ornamental features from its functional elements. The degree to which the handles, flanges, and central cylinder are deemed functional will be critical in defining the scope of the design for both infringement and validity analyses.
- Infringement under the Ordinary Observer Test: The central infringement question will be whether, after filtering out functional aspects and viewing the designs in the context of the cited prior art, an ordinary observer would be deceived by the similarity between Plaintiff's product and the patented design. This will turn on the perceived significance of the differences alleged by the Plaintiff, such as the handle-end shape and rope-opening design.
- Obviousness of the Design: A key validity question is whether the claimed design would have been obvious to a designer of ordinary skill in the art. This will require comparing the overall visual impression of the '668 patent's design to the prior art to determine if it is merely a trivial variation of existing designs.