DCT

2:24-cv-01823

Dangyang Zhicheng Network Co Ltd v. Guo

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:24-cv-01823, N.D. Ill., 09/13/2024
  • Venue Allegations: Plaintiffs allege venue is proper because the Defendant, a foreign resident, filed a patent infringement complaint with Amazon that caused Plaintiffs' product listings to be removed, affecting sales and activities within Illinois.
  • Core Dispute: In this declaratory judgment action, Plaintiffs seek a declaration that their solar-powered toy robot products do not infringe Defendant's design patent and that the patent is invalid based on pre-existing prior art.
  • Technical Context: The dispute concerns ornamental designs for multi-configuration, solar-powered educational robot kits, a product category within the global toy market.
  • Key Procedural History: The action was precipitated by an infringement complaint the Defendant filed with Amazon, which resulted in the de-listing of Plaintiffs’ products. The Plaintiffs' core assertion is that the patent-in-suit is invalid because functionally and aesthetically identical designs were publicly available and on sale years before the patent's filing date.

Case Timeline

Date Event
2013-09-03 Alleged prior art YouTube video published (HearthSong)
2019-09-24 Alleged prior art YouTube video published (Just For You)
2019-10-02 Alleged prior art YouTube video published (MR. Easy Maker)
2020-01-13 '534 Patent Priority Date (Filing Date)
2020-07-28 '534 Patent Issue Date
2024-08-21 Plaintiffs receive notice of infringement from Amazon
2024-09-13 Plaintiffs file Amended Complaint for Declaratory Judgment

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

U.S. Design Patent No. D891,534 - "SOLAR-POWERED TOY ROBOT," issued July 28, 2020

The Invention Explained

Problem Addressed: Design patents do not solve technical problems but instead protect the novel, ornamental appearance of an article of manufacture. The patent seeks to protect a specific aesthetic design for a toy robot.

The Patented Solution: The patent claims the ornamental design for a solar-powered toy robot, the scope of which is defined by the solid lines in its eight figures ('534 Patent, Figs. 1-8). The design features a four-wheeled chassis with prominent, exposed gears along the sides, arched frame members, and a head-like assembly on top that includes a solar panel ('534 Patent, Fig. 1). The patent explicitly disclaims elements shown in broken lines, stating they "form no part of the claimed design" ('534 Patent, DESCRIPTION).

Technical Importance: The design provides a distinct visual appearance for a product in the competitive educational toy market.

Key Claims at a Glance

  • The patent asserts a single claim, as is standard for design patents: "The ornamental design for a solar-powered toy robot, as shown and described." ('534 Patent, CLAIM).
  • The essential elements are the visual characteristics of the robot's design as a whole, including:
    • The overall configuration of a four-wheeled buggy-style robot.
    • The specific appearance of the side-mounted, exposed gear train.
    • The shape of the arched side frame components.
    • The appearance of the top-mounted "head" unit containing a solar panel.

III. The Accused Instrumentality

Product Identification

Plaintiffs' "children's Solar Power Robots Toy," sold on Amazon through the "TimeLove" and "Only Sheep" storefronts (Compl. ¶12).

Functionality and Market Context

The products are described as robot kits that can be transformed into different formations (Compl. ¶14). The infringement allegations made by the Defendant to Amazon specifically target the product when assembled into a "Buggy-Bot" formation (Compl. ¶14). The complaint notes that these were "top selling product[s]" for the Plaintiffs prior to being delisted by Amazon as a result of the Defendant's infringement report (Compl. ¶4). The complaint does not contain a photograph or drawing of the Plaintiffs' product in the accused "Buggy-Bot" formation.

IV. Analysis of Infringement Allegations

The complaint does not contain a formal claim chart. Instead, it summarizes the Defendant's infringement allegations, which were made in a notice to Amazon. The Defendant asserted that Plaintiffs' robot kits, specifically in their "Buggy-Bot" formation, have a design that is "almost or exactly IDENTICAL to the patented design" and that "striking similarities... can be observed by ordinary observers" (Compl. ¶14). This language directly invokes the legal standard for design patent infringement established in Egyptian Goddess, Inc. v. Swisa, Inc.

The complaint's primary visual evidence is not aimed at comparing the accused product to the patent, but at comparing the patented design to alleged prior art. For instance, the complaint presents a perspective view from the '534 Patent (Compl. p. 5, "perspective view of the '534 Patent is shown as below:") and juxtaposes it with screenshots from YouTube videos alleged to be prior art, such as one from 2013 (Compl. p. 6, "14-in-1 Educational Robot SKU#729389 - HearthSong"). The core of the Plaintiffs' case, as pleaded, is not non-infringement but invalidity.

Identified Points of Contention

  • Validity Question: The central dispute is whether the '534 Patent is invalid under 35 U.S.C. §§ 102 or 103. The complaint alleges that designs identical to the patented one were "in public use, on sale or otherwise available to the public" years before the patent's 2020 filing date, citing YouTube videos from 2013 and 2019 as evidence (Compl. ¶17-20). A key question for the court will be whether these videos constitute invalidating prior art.
  • Infringement Question: Assuming the patent is found valid, the infringement analysis will hinge on the "ordinary observer" test. The question will be whether an ordinary observer, familiar with the prior art, would be deceived into thinking the Plaintiffs' "Buggy-Bot" product is the same as the patented design. Analysis of this issue is precluded at this stage, as the complaint provides no visual representation of the Plaintiffs' accused product.

V. Key Claim Terms for Construction

  • The Term: "The ornamental design for a solar-powered toy robot"
  • Context and Importance: In design patent litigation, claim construction does not involve defining textual terms but rather determining the scope of the claimed design as a whole, primarily by reference to the patent's drawings. Practitioners may focus on identifying the specific visual features, as depicted in the solid-line drawings, that constitute the patented design and distinguish it from the prior art.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim is for the overall ornamental design, not any single feature in isolation. A party could argue that the "overall visual impression" is what is protected, allowing for minor variations in individual components so long as the overall look is the same.
    • Evidence for a Narrower Interpretation: The patent's explicit statement that "The broken lines depict portions of the solar-powered toy robot that form no part of the claimed design" serves to limit the claim's scope to only those features shown in solid lines ('534 Patent, DESCRIPTION). Furthermore, the existence of prior art, such as that alleged in the complaint, may narrow the scope of patentable design features to only those aspects that are novel and non-obvious over what came before.

VI. Other Allegations

The complaint does not allege patent infringement; it is a declaratory judgment action filed by the accused infringer. Instead of infringement counts, the complaint includes state-law tort claims against the patent holder.

Tortious Interference

Plaintiffs bring claims for Tortious Interference with Contractual Relations (Count III) and Prospective Economic Advantage (Count IV) (Compl. ¶32, ¶41). The complaint alleges that the Defendant knew of Plaintiffs' contractual and business relationship with Amazon and intentionally interfered by filing a "malicious and spurious" and "fraudulent" patent infringement complaint (Compl. ¶36, ¶43, ¶46). The alleged purpose was to have Plaintiffs' listings removed to "eliminate Plaintiffs' lawful competition" (Compl. ¶36).

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

  1. Validity: The dispositive issue appears to be patent validity. Is the '534 Patent invalid as anticipated (§102) or rendered obvious (§103) by the prior art cited in the complaint, particularly the YouTube videos from 2013 and 2019 that allegedly depict an identical design well before the patent's 2020 filing date?
  2. Enforcement Conduct: Independent of the patent's validity, a key question is whether the Defendant's enforcement action through Amazon's reporting system was improper. Did filing the infringement complaint, which Plaintiffs characterize as "fraudulent," constitute tortious interference with Plaintiffs' business relationships under the applicable state law?
  3. Infringement: If the patent survives the validity challenge, the secondary question will be one of infringement. Would an ordinary observer, taking into account the prior art, find the overall design of Plaintiffs' "Buggy-Bot" to be substantially the same as the design claimed in the '534 Patent? A visual comparison between the accused product and the patent figures will be necessary to resolve this.