DCT
2:25-cv-00196
Dongguan Jiashi Display Products Co Ltd v. Shaopeng Guo
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Dongguan Jiashi Display Products Co., Ltd., and Hangzhou Jupai Network Technology Co., Ltd. (People's Republic of China)
- Defendant: Shaopeng Guo (People's Republic of China)
- Plaintiff’s Counsel: Glacier Law LLP
- Case Identification: 1:24-cv-12342, N.D. Ill., 12/01/2024
- Venue Allegations: Plaintiffs allege venue is proper because the Defendant targets business activities toward consumers in the United States, including Illinois, through an interactive e-commerce Amazon store, offers shipping to Illinois, accepts U.S. currency, and has allegedly sold products to residents of Illinois.
- Core Dispute: Plaintiffs seek a declaratory judgment that their "Vacuum Stand Products" do not infringe Defendant’s design patent for a vacuum cleaner stand, and further argue that the patent is invalid and unenforceable due to extensive prior art and alleged inequitable conduct.
- Technical Context: The technology at issue is the ornamental design of freestanding stands used to store and organize cordless vacuum cleaners and their accessories, a product category with a competitive market on e-commerce platforms.
- Key Procedural History: The dispute arises from infringement reports the Defendant allegedly filed with Amazon, which resulted in the removal of the Plaintiffs' product listings. Plaintiffs now seek judicial relief, alleging the patent-in-suit is invalid over multiple prior art references and is unenforceable because the Defendant allegedly withheld this material prior art from the U.S. Patent and Trademark Office during prosecution.
Case Timeline
| Date | Event |
|---|---|
| 2019-01-10 | Alleged prior art CN Patent 305292065 filed |
| 2019-08-06 | Alleged prior art CN Patent 305292065 issued |
| 2021-11-21 | Alleged prior art "PureMounts" product available on Amazon |
| 2022-01-13 | Date of "PureMounts" product review screenshot alleged as prior art |
| 2023-05-24 | Alleged prior art CN Patent 219720565 filed |
| 2023-05-24 | Alleged prior art CN Patent 308269461 filed |
| 2023-09-22 | Alleged prior art CN Patent 219720565 issued |
| 2023-10-04 | Alleged prior art "Foho" product available on Amazon |
| 2023-10-11 | Date of "Foho" product review screenshot alleged as prior art |
| 2023-10-17 | Alleged prior art CN Patent 308269461 issued |
| 2023-12-08 | Alleged prior art "MOOPHY" product available on Amazon |
| 2023-12-11 | '487 Patent application filed (Priority Date) |
| 2024-04-09 | '487 Patent issued |
| 2024-11-06 | Amazon removes Plaintiffs' product listings based on Defendant's complaint |
| 2024-12-01 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Design Patent No. D1,021,487, "Vacuum Cleaner Stand," issued on April 9, 2024.
The Invention Explained
- Problem Addressed: As a design patent, the '487 Patent does not articulate a technical problem. Instead, it protects a specific ornamental appearance for an article of manufacture, in this case, a vacuum cleaner stand ('487 Patent, Claim).
- The Patented Solution: The patent claims the specific ornamental design for a vacuum cleaner stand as depicted in its figures ('487 Patent, Claim). The design's overall visual impression is characterized by a flat, rectangular base with rounded corners supporting a single, tall, and slender vertical post. The post features a series of downward-angled prongs on its sides for holding accessories, a vertically-oriented concave oval cutout on its front face, and a pattern of small circular holes near the top ('487 Patent, FIGs. 1, 2, 4).
- Technical Importance: The claimed design provides a specific aesthetic for organizing cordless vacuum products, a consumer goods category where visual appearance and product differentiation are key market drivers (Compl. ¶¶11, 14).
Key Claims at a Glance
- The complaint asserts non-infringement and invalidity with respect to the patent’s single claim (Compl. ¶¶2, 49).
- The single claim covers "The ornamental design for a vacuum cleaner stand, as shown and described" ('487 Patent, Claim). The essential visual elements that constitute this design are a holistic combination of:
- A flat, rectangular base with rounded corners.
- A single, tall vertical support post.
- A series of angled prongs projecting from the post's sides.
- A concave oval cutout on the post's front face.
- Small circular holes near the top of the post.
- Decorative lines and square shapes on the base.
III. The Accused Instrumentality
Product Identification
- The accused products are Plaintiffs’ "Vacuum Stand Products" sold on Amazon under the brand names "Haturi Selected" and "JUPAI-A Selected" (Compl. ¶¶3, 4, 11).
Functionality and Market Context
- The products are freestanding stands designed to hold and organize cordless vacuum cleaners and their associated tools (Compl. ¶11). The complaint provides a photograph of one such product, showing a metal stand with a flat base, a vertical post, and an opening for cable management (Compl. p. 14).
- Plaintiffs allege that the Amazon marketplace is their "primary sales channel into the United States" and that the removal of their listings due to Defendant's infringement reports has caused "immediate and irreparable harm" (Compl. ¶14). A photograph included in the complaint shows the accused product, which features a vertical post on a flat base with a prominent oval-shaped element. (Compl. p. 14).
IV. Analysis of Infringement Allegations
As this is a declaratory judgment action, the analysis focuses on the Plaintiffs' allegations of non-infringement. The complaint argues that an "ordinary observer" would not be confused between the patented design and the accused products, citing specific visual differences (Compl. ¶49). These differences are presented in a comparative chart.
Claim Chart Summary
| Alleged Feature of Patented Design ('487 Patent) | Alleged Distinguishing Feature of Accused Product | Complaint Citation |
|---|---|---|
| "Two straight lines on each side of the base" | The accused product has "No straight lines" on its base. | ¶49; p. 14 |
| A "Concave oval" cutout on the vertical post. | The accused product has a "Raised oval" element, not a concave one. | ¶49; p. 14 |
| "Four square decorations" on the bottom of the base. | The accused product has "No square decoration" on its base. | ¶49; p. 15 |
Identified Points of Contention
- The core issue for infringement is the "ordinary observer" test: whether an ordinary purchaser, familiar with the prior art, would be deceived into purchasing Plaintiffs' product believing it to be the Defendant's patented design. The complaint directly argues against such deception (Compl. ¶49).
- Scope Questions: A central question is whether the visual differences highlighted by Plaintiffs—particularly the distinction between a "concave" and a "raised" oval feature—are substantial enough to create a different overall visual impression, especially when viewed in the context of the crowded field of prior art alleged in the complaint (Compl. ¶¶26-36, p. 14).
- Technical Questions: The complaint provides a comparative image chart alleging key visual distinctions between the designs. (Compl. pp. 14-15). A key evidentiary question will be whether the accused product's "raised oval" is visually and ornamentally distinct from the patented design's "concave oval" from the perspective of an ordinary observer. A close-up photograph in the complaint highlights this alleged distinction between the patented design's recessed feature and the accused product's protruding one. (Compl. p. 14).
V. Key Claim Terms for Construction
In design patent cases, there are typically no claim terms to construe. Instead, the court construes the scope of the claimed design as a whole, which is heavily informed by the cited prior art. The key issue is the scope of protection afforded to the design.
- The Issue: The overall scope of the '487 Patent's design in light of the alleged prior art.
- Context and Importance: The complaint puts forth numerous prior art references, including Chinese patents and products sold on Amazon years before the '487 Patent's filing date (Compl. ¶¶26-36). Practitioners may focus on this issue because if the court finds this prior art to be closely related to the patented design, the scope of the '487 Patent's protection will be narrowly construed and limited to its precise details. Such a narrow construction would strengthen the Plaintiffs' non-infringement arguments.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation (Defendant's potential position): A party seeking a broader scope would argue that the specific combination of the base, post, angled prongs, and oval cutout creates a unique and distinct overall visual impression not found in any single prior art reference.
- Evidence for a Narrower Interpretation (Plaintiff's position): The complaint provides extensive evidence to support a narrow construction, alleging that prior art designs are "identical or at least substantially similar" (Compl. ¶¶27, 29). The complaint includes a side-by-side comparison of the '487 Patent's FIG. 1 and a figure from Chinese Patent No. 219720565, suggesting a high degree of visual similarity. (Compl. p. 6). Additionally, a screenshot from an Amazon review dated January 13, 2022, shows a "PureMounts" product that Plaintiffs allege is substantially similar to the claimed design and constitutes invalidating prior art. (Compl. p. 10, ¶32).
VI. Other Allegations
- Unenforceability / Inequitable Conduct: The complaint includes a count for a declaratory judgment of unenforceability (Compl. Count II). It specifically alleges that the Defendant was aware of the material prior art before filing the patent application but "withhold the material information" from the PTO, which, if proven, would constitute inequitable conduct and render the patent unenforceable (Compl. ¶45).
- Unfair Competition: Plaintiffs bring a claim for unfair competition under Illinois common law (Compl. Count IV). The basis for this claim is the allegation that the Defendant fraudulently obtained the '487 Patent through inequitable conduct and then used it as a "tool to harm legitimate sellers like the Plaintiffs" by filing baseless infringement reports with Amazon (Compl. ¶¶53-54).
VII. Analyst’s Conclusion: Key Questions for the Case
This declaratory judgment action appears to center on three critical questions for the court:
- A primary question will be one of validity: Is the ornamental design claimed in the '487 Patent anticipated or rendered obvious by the extensive prior art—including foreign patents and products previously sold on Amazon—that Plaintiffs have identified in the complaint?
- A second core issue is one of enforceability: Did the patentee engage in inequitable conduct by allegedly withholding known, material prior art from the patent office during prosecution, which could render the patent unenforceable regardless of its validity?
- Finally, if the patent is deemed both valid and enforceable, the case will turn on a question of infringement scope: Are the specific visual differences between the patented design and the accused products, such as a "concave" versus a "raised" oval feature, significant enough to create a distinct overall visual impression in the eyes of an ordinary observer familiar with the prior art?