Design Patent Dismissed: Zhaoyou Chen v. Schedule A Defendants in Mobile AC Kit Case

Case Overview

The Parties

Plaintiff’s Counsel: Mark C. Johnson and Sarah Louise Boone of Renner, Otto, Boisselle & Sklar, LLP (Cleveland, OH).

Defense Counsel: Gottesman Legal PLLC (New York, NY) ultimately received the TRO bond on behalf of 12 defendants.

The Patent at Issue

The asserted patent, USD941,982S (Application No. US29/773295), is a **design patent** protecting the ornamental appearance, not functional features, of a mobile air conditioning kit. Design patents grant holders 15 years of protection over a product’s distinctive visual characteristics.

The Accused Products

The defendants were alleged to have sold, offered for sale, or imported mobile air conditioning kits whose designs were substantially similar to the protected ornamental design — the operative infringement standard for design patents under Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008).

Litigation Timeline & Procedural History

The case ran 302 days from filing to closure — a relatively short lifespan for patent litigation, though consistent with Schedule A cases that frequently resolve (or collapse) quickly. Chief Judge Sara L. Ellis of the Illinois Northern District Court presided.

The filing of a TRO (Temporary Restraining Order) at case inception — with a $10,000 bond — reflects the standard Schedule A playbook: secure asset freezes and platform takedowns rapidly before defendants can dissipate inventory or revenue.

The Verdict & Legal Analysis

Outcome

The case closed with two distinct adverse outcomes for the plaintiff:

1. The preliminary injunction was vacated as to 12 named defendants by court order dated January 8, 2025.
2. The plaintiff’s complaint was dismissed with prejudice for want of prosecution on March 27, 2025.
3. The $10,000 TRO bond was ordered released to Gottesman Legal PLLC, counsel for the 12 defendants — a financial penalty effectively borne by the plaintiff for the failed enforcement action.

Verdict Cause Analysis

Dismissal for want of prosecution occurs when a plaintiff fails to actively pursue their case — missing deadlines, failing to respond to court orders, or ceasing meaningful participation in the litigation. It is a significant procedural sanction and, when entered with prejudice as here, permanently bars the plaintiff from re-filing the same claims.

The sequence is telling: the court first vacated the preliminary injunction as to 12 defendants in January 2025 — suggesting those defendants successfully challenged the injunctive relief. Following that reversal, the plaintiff apparently ceased prosecution, leading to the March 2025 dismissal.

The bond release to defense counsel further signals that the court found the defendants entitled to compensation for wrongful or unsupported injunctive relief — a consequence patent asserters must weigh carefully before seeking emergency TRO relief.

Legal Significance

This outcome highlights critical vulnerabilities in the Schedule A litigation model as applied to design patents:

• Design patent “ordinary observer” test: Courts applying Egyptian Goddess require that an ordinary observer, familiar with prior art, would be deceived into believing the accused design is the same as the patented design. When defendants sell highly commoditized products with minor design variations, meeting this threshold is harder than plaintiffs often anticipate.
• Preliminary injunction standard: Plaintiffs must demonstrate likelihood of success on the merits, irreparable harm, balance of equities, and public interest. The vacatur of the injunction for 12 defendants suggests the plaintiff failed at least one prong — likely likelihood of success — which foreshadowed the case’s collapse.
• Bond exposure: Courts take TRO bonds seriously. The mandatory release of $10,000 to defense counsel sets a concrete example of the financial risk plaintiffs assume when seeking emergency relief that is later reversed.

Strategic Takeaways

For Patent Holders and Litigators:

• Secure robust pre-filing claim charts mapping accused product designs to patent figures before seeking TROs.
• Anticipate organized defense resistance in Schedule A cases; well-resourced defendant coalitions can and do defeat preliminary injunctions.
• Failure to prosecute after an injunction is vacated compounds reputational and financial damage — have a litigation continuation plan before filing.

For Accused Infringers and Defense Counsel:

• Challenging the preliminary injunction standard early — particularly likelihood of success on design patent infringement merits — can destabilize the plaintiff’s entire case.
• Collective defense coordination (as demonstrated by Gottesman Legal PLLC representing 12 defendants) is an effective cost-sharing and strategic alignment model.

For R&D and Product Teams:

• Design-around strategies for ornamental design patents should focus on varying non-functional visual elements sufficiently to defeat the ordinary observer test.
• Conduct Freedom to Operate (FTO) analysis covering design patents — not just utility patents — before launching consumer products on e-commerce platforms.

Industry & Competitive Implications

The mobile air conditioning kit market — spanning portable evaporative coolers, window-unit accessories, and ductless mini-split components — has become a hotbed of e-commerce competition and, correspondingly, design patent enforcement activity. Individual inventors and small companies frequently obtain design patents to protect product aesthetics and then assert them against the wave of overseas sellers flooding Amazon and similar platforms.

However, this case exemplifies the growing backlash effect: defendants are increasingly organized, legally represented, and capable of defeating injunctive relief that once went largely unchallenged. As courts in the Northern District of Illinois and elsewhere scrutinize Schedule A complaints more carefully, plaintiffs face higher bars for maintaining TROs and preliminary injunctions.

For companies operating in competitive consumer goods categories, this case reflects a broader trend: design patent enforcement is not self-executing. Asserters must commit to sustained litigation, and strategic withdrawal after injunction vacatur carries concrete costs.

Licensing programs built on credible, well-prosecuted design patent portfolios — rather than single-patent enforcement campaigns — may offer more durable IP monetization strategies in this space.