Case: 1:21-cv-01344 Document #: 53 Filed: 07/23/21 Page 1 of 11 PageID #:618

THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION

JUNJIE PENG,
Plaintiff,
v. Civil Action No. 1:21-cv-01344

THE PARTNERSHIPS and Hon. Robert M. Dow, Jr.

UNINCOPORATED ASSOCIATIONS
IDENTIFIED ON SCHEDULE “A”
JURY TRIAL DEMANDED
Defendants.

PLAINTIFF’S REPLY IN RESPONSE TO DEFENDANTS’ OPPOSITION TO ENTRY

OF A PRELIMINARY INJUNCTION

Plaintiff Junjie Peng (“Plaintiff”) submits this Reply to Defendants Techplus Direct,

Winonly Direct, HanPure Inc., and SP Health’s (“Defendants”) Response in Opposition to

Plaintiff’s Motion for Preliminary Injunction (Dkt. No. 50) (the “Response”).

I. INTRODUCTION

Defendants’ Response fails to raise any substantial questions regarding either the validity

of the asserted U.S. Patent No. D870,062 (the “’062 Patent”) or Plaintiff’s likelihood of succeeding

on the merits of his claim. To the contrary, the “alleged” invalidity evidence relied upon by

Defendants emphasizes the necessity of a preliminary injunction order in this case.

In challenging the validity of the ’062 Patent, Defendants cite its own offers for sale that

were allegedly made public a few months before the effective filing date of the patent. However,

Defendants’ sales are not prior art under the patent law as they were predated by Plaintiff’s own

disclosure by at least two weeks. The fact that Defendants quickly started their own copycat

version of infringing products right after Plaintiff’s first public sale highlights the necessity and

urgency that this Court should grant Plaintiff’s Motion for Preliminary Injunction.

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Defendants’ Response offers no credible challenge to the fact that Plaintiff will likely

succeed on the merits of his claim against Defendants for infringement of the ’062 Patent. The

‘062 Patent is valid and non-obvious in the absence of real prior art. Defendants’ sale of the

accused products have constituted and continue to infringe the ‘062 Patent because an ordinary

observer would be deceived into thinking that the Defendants’ products are the same as that

protected by the ‘062 Patent, and, contrary to Defendants’ argument, their infringing products

included novel elements of the ‘062 Patent.

Moreover, Defendants’ continuing infringement throughout the pendency of this litigation

would cause Plaintiff irreparable harm, as evidenced by the substantial harm suffered by Plaintiff’s

business and his persistent efforts to protect his interests in the ‘062 Patent.

Finally, potential harm to Plaintiff as a valid patent owner includes not only financial

damages, but also reputation considerations at stake, which far outweigh Defendants’ risk of harm

from being enjoined from infringing on the ‘062 Patent. Moreover, public policy weighs in favor

of protecting the ‘062 Patent through injunctive relief.

II. STATEMENT OF FACTS

On March 27, 2019, Plaintiff, under the Lavince store brand, started offering for sale on

Amazon.com wireless sports headbands. Decl. of Stevenson Moore, attached hereto as Exhibit A;

see also Exhibit A-1. Subsequently, as early as April 13, 2019, Defendants began offering for

sale their infringing wireless sports headbands. Dkt. No. 4-3. Initially, infringement on the ‘062

patent was de minimis, with only seven instances of infringement occurring over the first three

quarters of 2020. However, the instances of infringement began to rise, with five instances

occurring in the final quarter of 2020 alone. Id. In light of the sharp increase in infringement,

Plaintiff turned to the Amazon.com infringement reporting system. Ex. A at ¶ 5. On December

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17, 2020, Plaintiff reported two infringements and saw some success; one of his claims was

rejected, but the other was removed from Amazon.com. Id. at ¶¶ 6-7. Consequently, on December

29, 2020, Plaintiff reported several additional instances of infringement. Id. at ¶ 7. This time,

however, Amazon merely referred the infringements to the infringing sellers without providing

Plaintiff any additional information. Id. at ¶¶ 8-9. Subsequently, on March 12, 2021, Plaintiff

moved for an ex parte TRO, which was granted on March 29, 2021, enjoining Defendants from

“manufacturing, importing, distributing, offering for sale, or selling” the infringing products. Dkt.

No. 21. Once the TRO expired on April 26, 2021, Defendants immediately restarted their

infringing acts. Dkt. No. 43 at 2. On June 9, 2021, Plaintiff filed this Second Request for

Preliminary Injunction. Dkt. No. 42.

III. ARGUMENT

Issuance of a preliminary injunction is both warranted and necessary in this case. “A

plaintiff seeking a preliminary injunction must establish that he is likely to succeed on the merits,

that he is likely to suffer irreparable harm in the absence of preliminary relief, that the balance of

equities tips in his favor, and that an injunction is in the public interest.” Winter v. Nat. Res. Def.

Council, Inc., 555 U.S. 7, 20 (2008). Here, Plaintiff can establish that he is likely to succeed on

the merits of his patent infringement claim, that he will suffer irreparable harm in absence of a

preliminary injunction, that the irreparable harm he will suffer through outweighs any potential

harm to the Defendants, and that issuance of injunctive relief will serve the public interest.

A. Plaintiff is Likely to Succeed on the Merits of his Patent Infringement Claim.

Defendants have failed to raise any “substantial question” regarding either the validity of

the ‘062 Patent or Plaintiff’s likelihood of succeeding on the merits of his claim. Sciele Pharma,

Inc. v. Lupin, Ltd., 684 F.3d 1253, 1259 (Fed. Cir. 2012), Tinnus Enters., LLC v. Telebrands Corp.,

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846 F.3d 1190, 1202 (Fed. Cir. 2017) (holding an accused infringer objecting Plaintiff’s request

for preliminary injunctive relief should “demonstrate[e] a substantial question of validity or

infringement,”) (emphasis added).

i. Plaintiff’s Patent is Valid Because Defendants’ Products Do Not Constitute

Prior art, Rendering the ‘062 Patent Non-obvious.

As an initial matter, patents “enjoy[] the same presumption of validity during preliminary

injunction proceedings as at other stages of litigation.” Titan Tire Corp. v. Case New Holland, Inc.,

566 F.3d 1372, 1377 (Fed. Cir. 2009) (citing Canon Comput. Sys., Inc. v. Nu-Kote Int’l, Inc., 134

F.3d 1085, 1088 (Fed. Cir. 1998)). Thus, if an “alleged infringer responds to the preliminary

injunction motion by launching an attack on the validity of the patent, the burden is on the

challenger to come forward with evidence of invalidity, just as it would be at trial.” Id. Regarding

prior art, “[a] person shall be entitled to a patent unless the claimed invention was . . . in public

use, on sale, or otherwise available to the public before the effective filing date of the claimed

invention.” 35 U.S.C. § 102(a)(1). However, the same section provides that “[a] disclosure made

1 year or less before the effective filing date of a claimed invention shall not be prior art to the

claimed invention . . . if . . . the subject matter disclosed had, before such disclosure, been publicly

disclosed by the inventor.” Id. § 102(b)(1)(B). “To establish that an asserted reference is prior art

under § 102(b), the patent challenger must prove . . . that it predates the critical date.” ATEN Int’l

Co., Ltd. v. Uniclass Tech. Co., Ltd., 932 F.3d 1364, 1368 (Fed. Cir. 2019).

The ‘062 Patent enjoys a presumption of validity, but Defendants’ Response incorrectly

asserts that it is invalid because Defendants’ infringing sales constituted prior art. Resp. at 6.

Specifically, Defendants point to the “first available” dates indicated for infringing products listed

on Amazon.com by defendants Winonly Direct and Qifutech, April 13, 2019, and July 6, 2019,

respectively. Id. However, Defendants ignore Plaintiff’s public disclosure of his invention as

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early as March 27, 2019—prior to all other public disclosures. Compare Ex. A-1 with Resp. at 5-

6 (showing Plaintiff’s product disclosed March 27, 2019, prior to Defendants’ products on April

1, 2019, April 13, 2019, and July 6, 2019). Therefore, although Plaintiff’s effective filing date for

the ‘062 Patent was July 8, 2019, the Defendants’ public disclosures of the infringing products fall

within the exception articulated under § 102(b)(1)(B) and thus do not constitute prior art because

(1) the earliest such disclosure predated Plaintiff’s effective filing date by only three months—

well within the one-year window articulated in the statute, and (2) Plaintiff—the inventor—had

already disclosed his design publicly by making it available for sale on Amazon.com. Since the

‘062 Patent is presumptively valid, and since Defendants’ disclosures do not constitute prior art,

the Patent’s design is sufficiently non-obvious such that Plaintiff’s claim will more likely than not

withstand Defendants’ challenges to its validity.

ii. Defendants’ Products Infringe the ‘062 Patent

Plaintiff is likely to succeed in establishing Defendants’ infringement of the ‘062 Patent.

In preliminary injunction proceedings, the plaintiff need only show “that success in establishing

infringement is more likely than not.” Trebro Mfg., Inc. v. Firefly Equip., LLC, 748 F.3d 1159,

1166 (Fed. Cir. 2014). Courts no longer, as Defendants incorrectly assert in their Response, employ

the “point of novelty” test in analyzing claims of design patent infringement, but instead, “the

‘ordinary observer’ test should be the sole test for determining whether a design patent has been

infringed.” Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 678 (Fed. Cir. 2008). Specifically,

“an infringement analysis involves the two-step process of ‘construing the claims and comparing

the properly construed claims to the accused product.’” Tinnus Enters., LLC, 846 F.3d at 1202.

Moreover, “if the accused infringer elects to rely on the comparison prior art as part of its defense

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against the claim of infringement, the burden of production of that prior art is on the accused

infringer.” Egyptian Goddess, Inc., 543 F.3d at 678.

Defendants’ side by side comparison shows that, under the ordinary observer test as set

forth in Egyptian Goddess, Defendants’ products are substantially the same.

Resp. at 4. They have the same shape, the same square shaped plate with rounded edges placed

on the front center of the headband, having a circle in the top left corner, with a line underlining

the circle and extending laterally across the square shaped plate, and with three circles equally

spaced along the bottom of the square shaped plate. Defendants’ products are identical to the ’062

Patented design and more than substantially similar enough to confuse an ordinary observer.

The crux of Defendants’ argument relies on the existence of prior art referenced by the

patent examiner. Resp. at 5-7. However, Defendants’ argument carries no water. Here, as

articulated supra in Part III.A.i., the alleged prior art citied by the examiners is not prior art as it

does not predate Plaintiff’s own disclosure of his product on Amazon.com on March 27, 2019.

See Ex. A-1. Thus, Defendants’ infringing products contained novel elements of Plaintiff’s ‘062

Patent.

B. Defendants’ Continued Infringement is Causing Irreparable Harm to Plaintiff

Defendants incorrectly contend that “plaintiffs are not entitled to a ‘rebuttable

presumption’ of irreparable harm.” To the contrary, “[i]n patent cases, a movant who establishes

a reasonable likelihood of success on the merits is entitled to a rebuttable presumption of

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irreparable harm.” Garvey Corp. v. Barry-Wehmiller Design Grp., Inc., 365 F. Supp. 2d 893, 895

(N.D. Ill. 2005). As shown supra in Part III.A., Plaintiff has demonstrated that he is likely to

succeed in establishing both the ‘062 Patent’s validity and Defendants’ infringement such that he

will likely prevail on the merits at trial. Thus, Plaintiff is entitled to a rebuttable presumption of

irreparable harm.

Defendants’ sole basis on which they seek to rebut this presumption is that the length of

time between Defendants’ infringements and Plaintiff’s pursuit of a preliminary injunction was

sufficiently lengthy to indicate an absence of irreparable harm. Resp. at 8. “When considering

whether the patentee will suffer irreparable harm if a preliminary injunction to halt further

infringement is denied, a period of delay before the patentee brought his motion is only one factor

in the context of the totality of the circumstances.” Henkel Corp. v. Coral, Inc., 754 F. Supp. 1280,

1322 (N.D. Ill. 1990). Although a patentee’s delay in pursuing injunctive relief can, in some

instances, undermine his alleged irreparable harm, “only a considerably lengthy delay in filing for

an injunction in combination with other facts indicating a lack of harm might warrant a conclusion

that the patentee has not established a likelihood of irreparable harm.” Id.: see also High Tech

Med. Instrumentation, Inc. v. New Image Indus., Inc., 49 F.3d 1551, 1557 (Fed. Cir. 1995)

(recognizing that a seventeen-month delay “may not have been enough, standing alone, to

demonstrate the absence of irreparable harm”). In fact, “the majority of infringement cases where

preliminary injunctive relief has been denied involve delays of more than one year.” Henkel Corp.,

754 F. Supp. at 1322 (quoting Whistler Corp. v. Dynascan Corp., 9 U.S.P.Q.2d 2087, 2088 (N.D.

Ill. 1988)).

First, Defendants erroneously allege “extreme delay” in Plaintiff’s efforts to seek

injunctive relief. Specifically, they point to time elapsed between late December of 2020 and June

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of 2021. Resp. at 8. The alleged “extreme delay” is simply false. Plaintiff has been diligently in

protecting his patent rights all along. He initially turned to Amazon’s Report Infringement system

and submitted a few infringement reports, thereby seeking to have infringing products removed

from the site. Ex. A at ¶ 5. After seeing initial success through Amazon’s system in its removal

of at least one infringing on December 17, 2020, Plaintiff submitted several additional

infringement reports. Id. at ¶ 7. However, other than one claim on December 29, 2020, Amazon

failed to remove any of the infringing products. Ex. A at ¶¶ 6-9.

Frustrated with the Amazon Report Infringement system’s failure to dispel his concerns by

removing the infringing products as it had done before, Plaintiff, on March 12, 2021, filed for a

TRO enjoining Defendants from infringing on the ‘062 Patent. Dkt. No. 7. This court granted the

TRO on March 29, 2021. Dkt. No. 13. Shortly thereafter, on April 6, 2021, Plaintiff filed a

Motion for TRO Extension, which this court granted on April 12, 2021. Dkt. No. 21. Only eight

days later, Plaintiff filed his Motion for a Preliminary Injunction on April 20, 2021. Dkt. No. 25.

The alleged one month and a half delay in filing the second motion for preliminary

injunction is purely procedural. Plaintiff opted to carve these four defendants out of the preliminary

order during the April 26, 2021, hearing on the first motion for preliminary injunction. See Dkt.

31. Plaintiff was instructed by the chamber that he may propose a briefing schedule at the June 9,

2021, hearing (pursuant to the April 30 emails between Ms. Hoesly and all counsels of record).

Plaintiff followed the instruction, requested a briefing schedule and filed the present Motion on

June 9, 2021. See Dkts. 40 and 42.

Plaintiff’s substantial measures to protect his patent from infringement through multiple

outlets contradict the Defendants’ assertion that there has been an “unjustified lengthy delay.”

Thus, Defendants’ have failed to show that Plaintiff will not suffer irreparable harm. Rather,

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Plaintiff’s persistent efforts to protect his interests demonstrate that, in absence of the issuance of

a preliminary injunction, he will suffer irreparable harm.

C. The Defendants’ Prior and Potential Harm Does Not Outweigh the Plaintiff’s
Potential Harm in Absence of a Preliminary Injunction, and Entry of the Injunction
Serves the Public’s Interest in Patent Protection

Defendants allege past harm in the form of lost revenue and potential irreparable harm of

being shut down by entry of a preliminary injunction. Resp. at 9. “[I]t should go without saying

that one who infringes upon a patent cannot be heard to complain about the financial consequences

of . . . ending its infringing conduct.” Abbott Lab’ys v. Sandoz, Inc., 500 F. Supp. 807, 845 (N.D.

Ill. 2007). However, even instances where a court’s grant of a preliminary injunction will “cause

substantial hardship” to a defendant, a plaintiff’s potential financial loss may still tip the balance

of harms in the plaintiff’s favor. Techtronic Indus. Co., Ltd. v. Chevron Holdings, Ltd., 395 F.

Supp. 2d 720, 737 (N.D. Ill. 2005) (weighing the balance of harms in favor of plaintiff where

defendant had already manufactured tens of thousands of the allegedly infringing devices and

would also incur damage to its reputation among its buyers). Even circumstances under which the

infringer might be put out of business, although considered in the court’s assessment, “do[] not

control the balance of hardships” analysis. Aria Diagnostics, Inc. v. Sequenom, Inc., 726 F.3d

1296, 1305 (Fed. Cir. 2013). Additionally, “in the typical patent case, there is a public interest in

enforcing the protections secured by valid patents. . . . [because] the protection of valid patents

encourages innovation and thus furthers that interest.” Techtronic Indus. Co., Ltd., 395 F. Supp.

2d at 737 (holding that public interest weighed in favor of granting patentee’s motion for a

preliminary injunction).

Defendants’ assertion that they would be financially harmed so as to be put out of business

does not tip the balance of equities in their favor. Indeed, the ‘062 Patent is a valid patent, and

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Plaintiff is its sole owner. Dtk. No. 7-2 at ¶¶ 3-4. Defendants’ complaints of hardship by being

enjoined from infringing the ’062 Patent pale in comparison to the Plaintiff’s potential harm

through not only lost profits, but also consumer confusion and dissolution of his reputation. Id. at

¶15-19. Additionally, as with all valid patents, the public interest favors protection of the ‘062

Patent, as doing so will continue to encourage innovation by enhancing the public’s confidence in

enforcement of ownership in patents. Thus, both the balance of equities and the public interest

support this court’s issuance of a preliminary injunction in this case.

IV. CONCLUSION

In view of the foregoing, Plaintiff respectfully requests that this Court enter the preliminary

injunction against Defendants.

DATED July 23, 2021. Respectfully submitted,

By: /s/ Timothy T. Wang

David R. Bennett
DIRECTION IP LAW
P.O. Box 14184
Chicago, Illinois 60614
Tel: (312) 291-1667
dbennett@directionip.com

Of Counsel:
Timothy T. Wang
Texas Bar No. 24067927
twang@nilawfirm.com
NI, WANG & MASSAND, PLLC
8140 Walnut Hill Ln., Ste. 500
Dallas, TX 75231
Tel: (972) 331-4600
Fax: (972) 314-0900
Counsel for Plaintiff Junjie Peng

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CERTIFICATE OF SERVICE

I hereby certify that on the 23rd day of July, 2021, I electronically filed the foregoing
document with the clerk of the court for the U.S. District Court, Northern District of Illinois,
Eastern Division, using the electronic case filing system of the court. The electronic case filing
system sent a “Notice of Electronic Filing” to the attorneys of record who have consented in
writing to accept this Notice as service of this document by electronic means.

/s/ Timothy T. Wang

Timothy T. Wang

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EXHIBIT A
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IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION

JUNJIE PENG,

Plaintiff,
Civil Action No. 1:21-cv-01344
v.
JURY TRIAL DEMANDED
THE PARTNERSHIPS AND
UNINCORPORATED ASSOCIATIONS Judge: Robert M. Dow, Jr.
IDENTIFIED ON SCHEDULE “A”,

Defendants.

DECLARATION OF STEVENSON MOORE

I, Stevenson Moore hereby declare, and state as follows:

1. I am an attorney with the law firm Ni, Wang & Massand, PLLC. I am over the age

of eighteen and make this declaration from personal knowledge, unless otherwise indicated below.

I make this declaration in support of Plaintiff’s Reply Memorandum in Response to Defendants’

Opposition to Entry of a Preliminary Injunction.

2. I represent Plaintiff Junjie Peng (“Plaintiff”) in the above-styled case.

3. On March 27, 2019, Plaintiff offered for sale on Amazon.com his wireless sports

headband. Attached hereto as Exhibit A-1 is a true and correct copy of screenshot printouts

showing the Plaintiff’s active internet store and reflecting that Plaintiff’s product was available on

Amazon.com as early as March 27, 2019.

4. On July 8, 2019, Plaintiff filed an application for a patent on his wireless sports

headband.

5. In or about December of 2020, on behalf of Plaintiff, I filed two claims of patent

infringement with the Amazon Report Infringement system.

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6. Initially, Amazon was responsive, removing at least one of the products infringing

on the ‘062 Patent.

7. Afterward, on December 29, 2020, on behalf of Plaintiff, I filed several further

claims of patent infringement with the Amazon Report Infringement system.

8. Rather than removing the infringing products from its website, Amazon instead

referred Plaintiff’s complaints to the respective infringing sellers.

9. Amazon did not provide Plaintiff with a resolution of the claimed infringements at

that time, nor did it provide any further information.

I declare under penalty of perjury of the laws of the United States of America that the

foregoing is true and correct.

Executed on the 23rd day of July, in Dallas, Texas.

_/s/ Stevenson Moore

Stevenson Moore