Toy Building Block Patent Case Dismissed for Failure to Serve

Introduction & Case Overview

Introduction

A design patent infringement action filed in the Illinois Northern District Court ended not with a ruling on the merits, but with a procedural termination that patent litigators should study carefully. In Jiaren Zhu et al. v. The Partnerships and Unincorporated Associations Identified on Schedule “A” (Case No. 1:24-cv-05028), the plaintiff’s claims involving two design patents covering a tape forming a toy building block base were dismissed after counsel repeatedly failed to file proof of service on the unnamed defendants.

Presided over by Chief Judge Jeffrey I. Cummings, the case lasted 221 days — from filing on June 17, 2024, to termination on January 24, 2025 — without ever reaching substantive patent analysis. The dismissal under Federal Rule of Civil Procedure 4(m) offers a cautionary procedural lesson for IP attorneys prosecuting “Schedule A” mass infringement actions, a litigation model increasingly popular in e-commerce IP enforcement. For patent holders, in-house counsel, and R&D teams monitoring toy design patent infringement trends, this case underscores how procedural missteps can neutralize even well-constructed IP assertions.

The Parties

The Patents at Issue

This case involved two U.S. design patents covering the ornamental appearance of a product:

• • US D813,317 — (Application No. 29/599,042) Design for a tape forming a toy building block base.
• • US D1,020,230 — (Application No. 29/913,407) Design for a tape forming a toy building block base.

Both are design patents — meaning they protect the ornamental appearance of a product, not its functional mechanics. Design patents in this space can carry significant commercial value given the volume of third-party accessories sold through platforms like Amazon, AliExpress, and eBay.

The Accused Product

The allegedly infringing product — tape forming a toy building block base — falls within a growing niche of toy accessory products. These flexible adhesive-backed tapes allow users to adhere LEGO-compatible stud bases to surfaces, enabling modular play anywhere. The ornamental design of such products, when protected by design patents, creates enforceable IP rights against visually similar competing products, regardless of functional equivalence.

Litigation Timeline & Procedural History

The case was filed in the Illinois Northern District Court, a preferred venue for Schedule A IP enforcement actions due to its established procedural familiarity with e-commerce infringement cases and its track record of granting temporary restraining orders (TROs) against anonymous defendants.

Despite receiving two extensions of the service deadline — a notable accommodation from the Court — plaintiff’s counsel still failed to file proof of service. Chief Judge Jeffrey I. Cummings, presiding over the matter, ultimately exercised the court’s authority under Rule 4(m) to terminate the action. The 221-day duration reflects protracted inaction rather than substantive litigation complexity.

The Verdict & Legal Analysis

Outcome

The case was dismissed without prejudice under Federal Rule of Civil Procedure 4(m), which mandates that a defendant must be served within 90 days of filing unless the plaintiff demonstrates good cause for the delay. The Court’s minute entry, entered by Judge Cummings, confirmed that all pending deadlines and hearings were stricken and the civil case terminated. No damages were awarded. No injunctive relief was granted. The patents’ validity and infringement were never adjudicated.

Rule 4(m) Analysis: Why This Matters

Rule 4(m) dismissals are deceptively simple procedurally but carry strategic weight. In Schedule A litigation — where defendants are often anonymous marketplace sellers identified only after platform subpoenas — obtaining and executing service can be genuinely complex. Plaintiffs must:

• Secure a TRO or early discovery order to identify defendants
• Obtain identifying information from platforms (Amazon, Alibaba, etc.)
• Effect valid service under Rule 4’s requirements or applicable international service conventions

Failure at any stage can leave the complaint legally orphaned. Here, the Court’s two extensions suggest counsel encountered real difficulties, but the failure to either complete service or communicate cause to the Court proved fatal. The Rule 4(m) dismissal is typically without prejudice, preserving the plaintiff’s theoretical right to refile — though statutes of limitations, costs, and strategic momentum are real practical barriers.

Strategic Turning Points

The critical inflection point was the December 27, 2024 Order [17], which issued an explicit warning: failure to file proof of service would result in Rule 4(m) dismissal. This type of explicit judicial warning functions as a hard deadline with no further tolerance for delay. Counsel’s failure to respond — whether through completed service, a motion to extend with good cause shown, or a voluntary dismissal to preserve optionality — reflects a gap in case management that practitioners should note.

Legal Significance

Because the case was dismissed on procedural grounds, no substantive holdings were issued regarding:

• The validity of USD813,317 or USD1,020,230
• Infringement by any specific product design
• Claim scope of either asserted design patent

This means the case creates no precedent for the merits of toy building block design patent claims. The patents themselves remain in force and may be asserted in future proceedings.