1:24-cv-02948
N.D. Ill.Feb 28, 2025Background
- Shenzhen Jisu Technology Co., LTD sued various defendants, alleging they sold foldable handheld fans infringing its design patent, U.S. Patent No. D886,982.
- The Court initially issued a preliminary injunction against multiple defendants, including Zhouty, who actively opposed the motion.
- After the injunction, Zhouty obtained a new design patent (U.S. Patent No. D1,046,104) covering the accused product and argued this patent’s existence precluded infringement.
- Plaintiff added new defendants allegedly affiliated with Zhouty and sought a temporary restraining order (TRO) and contempt sanctions for purported evasion of the original injunction.
- The new defendants (including the manufacturer of the side-folding fans) argued that their product’s design, now covered by the ’104 patent, did not infringe Jisu’s ’982 patent.
- The Court reexamined the facts in light of overlapping, duly issued patents for both sides' designs and the presumption of patent validity.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the new defendants infringe ’982 | New defendants sell the same accused product as | The ’104 design patent was issued to the manufacturer, | Plaintiff failed to show a likelihood of success on |
| patent | Zhouty and should be enjoined as infringers | signifying novelty and non-infringement of Plaintiff’s design | infringement claim; TRO denied; injunction dissolved |
| Effect of defendant’s new design patent | Issuance of the ’104 patent does not preclude | The ’104 patent is presumptively valid, and both patents | Plaintiff must show the ’104 patent is invalid to prevail. |
| on infringement claim | infringement of Plaintiff’s ’982 patent | cannot be valid if the alleged product infringes Plaintiff’s patent | Plaintiff made no such showing. |
| Whether sanctions are warranted for alleged | Zhouty should be sanctioned for evading the | Zhouty claims no association with some new defendants and denies | Contempt/sanctions motion denied as moot |
| evasion of injunction | preliminary injunction | wrongdoing | |
| Standard for injunctive relief | Plaintiff entitled to TRO based on alleged | No likelihood of success on the merits or irreparable harm shown; | TRO denied |
| infringement and immediate harm | public interest and equities do not warrant emergency relief |
Key Cases Cited
- OddzOn Prod., Inc. v. Just Toys, Inc., 122 F.3d 1396 (Fed. Cir. 1997) (standard for design patent infringement is the overall visual impression)
- Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233 (Fed. Cir. 2009) (same test for design patent infringement and anticipation/validity)
- Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir. 2008) (anticipation standard for patents)
- Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372 (Fed. Cir. 2009) (proof required to show likelihood of patent invalidity at preliminary injunction stage)
- Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7 (2008) (standard for preliminary injunctions)