Shenzhen Jisu Technology v. Entities Identified in Annex A
Panel: Prost, Hughes, Stoll
The Federal Circuit affirmed the district court's denial of a temporary restraining order against newly added defendants and dissolution of a previously issued preliminary injunction against defendant Zhouty in a design patent case involving U.S. Design Patent No. D886,982 claiming a foldable fan design. Plaintiff Shenzhen Jisu Technology asserted its '982 patent against multiple e-commerce vendors in a Schedule A case, initially obtaining a preliminary injunction against Zhouty after the district court found the accused product's overall ornamental visual impression "quite similar" to the claimed design. After the USPTO issued U.S. Design Patent No. D1,046,104 to a third party—listing the '982 patent as prior art and claiming a foldable fan design purportedly practiced by defendants' accused products—the district court dissolved the preliminary injunction and denied further injunctive relief, concluding that the '104 patent's issuance over the '982 patent undermined the likelihood Shenzhen would succeed on infringement under the ordinary observer test. The Federal Circuit held that the district court did not abuse its discretion in reassessing likelihood of success on the merits in light of the subsequently issued '104 patent, rejecting Shenzhen's arguments that collateral estoppel barred reconsideration and that the district court conflated patentability and infringement standards.
The decision matters for its application of design patent infringement principles in the preliminary injunction context, specifically the court's treatment of a later-issued design patent as probative evidence weighing against likelihood of confusion under the ordinary observer test. The majority endorsed the district court's reasoning that because the tests for anticipation and infringement are identical for design patents, the issuance of the '104 patent over the '982 patent—carrying with it the statutory presumption of validity under 35 U.S.C. § 282(a), including presumed novelty—suggested an ordinary observer would not find the accused products substantially similar to the '982 patent's claimed design. The court emphasized this was not a general rule requiring patentees to disprove validity of later patents to establish infringement, but rather a permissible inference in the preliminary injunction likelihood-of-success analysis where accused products purportedly practiced a later-issued, presumptively valid patent claiming a design over the asserted patent. Judge Stoll dissented, though the opinion does not detail her reasoning.