DCT

3:25-cv-00357

Shenzhen Jianke Technology Co Ltd v. Earthables Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:25-cv-00801, E.D. Va., 05/08/2025
  • Venue Allegations: Venue is alleged to be proper because Defendant does business in Virginia, and a substantial part of the harm (related to product distribution and delistings via Amazon) occurred in the district, which contains multiple Amazon fulfillment centers.
  • Core Dispute: Plaintiffs, who are Amazon sellers, seek a declaratory judgment that their desktop divider products do not infringe and that Defendant’s design patent is invalid, while also alleging federal unfair competition and other business torts based on Defendant's use of the patent to have Plaintiffs' products removed from Amazon.
  • Technical Context: The dispute concerns the ornamental design of simple, foldable plastic dividers, known as "study carrels," used to create private spaces on desks in settings like classrooms or offices.
  • Key Procedural History: The complaint highlights the prosecution history of the patent-in-suit, noting that the USPTO examiner initially rejected the application based on a prior art reference. The inventor allegedly overcame this rejection by filing an affidavit declaring that the product embodying the patented design was first released in the third quarter of 2023, distinguishing it from an earlier, obsolete product associated with the same online listing.

Case Timeline

Date Event
2020-02-09 "Earthables reference" prior art allegedly published
2023-04-04 Plaintiffs' "Privacy Shields" product first available on Amazon
2023-04-19 "Storage Study Carrel" prior art first available on Amazon
2023-12-13 D1,061,093 Patent Priority / Filing Date
2024-10-23 Inventor filed affidavit during prosecution to overcome prior art
2025-02-11 D1,061,093 Patent Issue Date
2025-02-19 First of Plaintiffs' products delisted from Amazon
2025-05-08 Complaint Filing Date

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

U.S. Design Patent No. D1,061,093 S1 - “Study carrel”

The patent-in-suit is U.S. Design Patent No. D1,061,093 S1, issued February 11, 2025 (the “’093 Patent”).

The Invention Explained

  • Problem Addressed: Design patents do not articulate a technical problem in the same manner as utility patents. The implicit goal is to provide a new, original, and ornamental design for an article of manufacture, in this case, a "study carrel" (’093 Patent, Title).
  • The Patented Solution: The patent claims the specific ornamental appearance of a foldable, three-panel desk divider as depicted in its figures (’093 Patent, Figs. 1.1-1.5). The design features a central panel flanked by two foldable side wings, with what appear to be specific proportions, straight edges, and rounded corners. The claim covers the visual impression of the object in both its deployed (Fig. 1.1) and folded (Fig. 1.5) states (’093 Patent, Description).
  • Technical Importance: The complaint alleges that such products are sold in a competitive online marketplace where visual appearance is a key driver of consumer choice (Compl. ¶¶ 14-17).

Key Claims at a Glance

  • As is standard for a design patent, there is a single claim: "The ornamental design for study carrel as shown and described" (’093 Patent, Claim).
  • The scope of this claim is defined by the visual representations in the five drawing sheets, which depict the design from the front, back, top, right, and in a folded perspective view (’093 Patent, Figs. 1.1-1.5).

III. The Accused Instrumentality

Product Identification

The products at issue are Plaintiffs' "Plaintiff Products," identified by a list of Amazon Standard Identification Numbers (ASINs) and exemplified by products referred to as "Privacy Shields" and the "Storage Study Carrel" (Compl. ¶¶ 18-19). The complaint provides an image of one of the "Plaintiff Products," showing a three-panel foldable divider (Compl. ¶19).

Functionality and Market Context

The products function as portable privacy dividers for desks, intended for use in classrooms and other environments (Compl. ¶¶ 14, 16, 20). Plaintiffs allege they are significant commercial products, sold exclusively through their Amazon storefronts, and that their removal from the platform has caused substantial financial harm (Compl. ¶¶ 15, 17, 39-40). The complaint includes a table detailing the ASINs for nine product listings and their respective removal dates from Amazon following Defendant's infringement complaint (Compl. ¶18).

IV. Analysis of Infringement Allegations

This is a declaratory judgment action where Plaintiffs allege non-infringement. Their central theory is that their products are "virtually identical" to prior art that predates the ’093 Patent, and therefore cannot infringe a valid patent claim (Compl. ¶¶ 37-38, 45). The complaint directly compares images of the patented design with photos of what it identifies as the prior art "Storage Study Carrel" to support this argument (Compl. p. 13).

Claim Element (from the Single Design Claim) Plaintiffs' Allegations of Non-Infringement Complaint Citation Patent Citation
The ornamental design for study carrel as shown and described. Plaintiffs allege their products do not infringe because an ordinary observer, comparing the Plaintiff Products to the patented design, would not be deceived. It is argued that any resemblance is due to features shared with the prior art "Storage Study Carrel," which is allegedly "nearly identical" to the Plaintiff Products. ¶¶ 32-33, 45-46 Figs. 1.1-1.5

Identified Points of Contention

  • Scope Questions: The primary dispute revolves around the "ordinary observer" test for design patent infringement. A central question for the court will be: would an ordinary observer, familiar with the prior art (specifically, the "Storage Study Carrel"), be deceived into purchasing one of the Plaintiff Products believing it to be the patented design? Plaintiffs allege that any such confusion is impossible because their products embody the prior art design, not the patented one (Compl. ¶54).
  • Technical Questions: A factual question is whether the visual appearance of the Plaintiff Products is, as alleged, "virtually identical" to the prior art "Storage Study Carrel" (Compl. ¶37). The complaint supports this with a side-by-side visual comparison of the D'093 Patent claim drawings and images of the prior art product (Compl. p. 13-14). Another question is whether Figure 1.5 of the ’093 Patent is, as alleged, "too blurry and unclear" to allow for a determination of the design's scope with reasonable certainty (Compl. ¶30).

V. Key Claim Terms for Construction

In design patent litigation, claim construction focuses on the overall visual appearance of the design as shown in the drawings, rather than on specific text.

  • The Term: The "overall ornamental design" for the study carrel.
  • Context and Importance: The scope of the claimed design is the crux of both the infringement and validity disputes. The analysis will depend on what visual features an ordinary observer would perceive as constituting the novel design, particularly when viewed in light of the allegedly similar prior art.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A patentee would typically argue that the claim covers the overall aesthetic combination of the panels, their proportions, and their configuration, and should not be limited to minute details. The patent's title "Study carrel" suggests the design applies to this general category of article (’093 Patent, Title).
    • Evidence for a Narrower Interpretation: Plaintiffs argue the claim's scope must be limited by the prior art, meaning only features that distinguish the design from the "Storage Study Carrel" and "Earthables" references are protectable (Compl. ¶¶ 38, 46). Further, Plaintiffs allege that the design is indefinite because "Figure 1.5 of the D093 Patent is too blurry and unclear to determine the scope of the claim with reasonable certainty," which may be used to argue for a narrower, or even invalid, interpretation of the design's scope (Compl. ¶30).

VI. Other Allegations

Indirect Infringement

Plaintiffs seek a declaratory judgment that they have not contributed to or induced infringement of the ’093 Patent, though no specific facts related to these forms of infringement are detailed beyond the general dispute over the products (Compl. ¶48).

Willful Infringement

This case presents the reverse of a typical willfulness allegation. Here, the Plaintiffs allege that the Defendant-patentee acted in "bad faith" by "falsely" representing to Amazon that the Plaintiffs' products infringed the ’093 Patent, allegedly with knowledge of the patent's invalidity or non-infringement due to the prior art (Compl. ¶¶ 59, 65). These allegations form the basis for Plaintiffs' claims of Unfair Competition under the Lanham Act and other business torts.

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

  • A core issue will be one of patent validity: Is the ’093 Patent's design anticipated or rendered obvious by the "Storage Study Carrel" and "Earthables" prior art references? The court's analysis will likely focus on the public availability dates of these references relative to the patent's effective filing date and the statements made in the inventor's affidavit during prosecution.
  • A second, intertwined issue will be one of infringement scope versus prior art: Assuming the patent is valid, how does the existence of the "Storage Study Carrel" prior art limit the scope of the claimed design under the ordinary observer test? The case may turn on whether the Plaintiff Products are perceived as embodying the prior art or the novel features of the patented design.
  • A final key question will be one of improper enforcement: Did the Defendant engage in unfair competition by asserting its patent rights to Amazon with knowledge that the patent was invalid or not infringed? The outcome of this question will depend heavily on the resolution of the validity and infringement issues.