Case: 1:23-cv-15270 Document #: 23 Filed: 11/24/23 Page 1 of 7 PageID #:194

UNITED STATES DISTRICT COURT

)
PATENT ONE LLC, )
)
Plaintiff, ) Civil Action No. 1:23-cv-15270
v. )
) Presiding Judge: Hon. Sara L. Ellis
THE INDIVIDUALS, ) Magistrate Judge: Hon. Beth W. Jantz
CORPORATIONS, LIMITED )
LIABILITY COMPANIES, )
PARTNERSHIPS, AND ) JURY TRIAL DEMANDED
UNINCORPORATED ASSOCIATIONS )
IDENTIFIED ON SCHEDULE A TO )
THE COMPLAINT, )
)
Defendants. )

MEMORANDUM IN SUPPORT OF PLAINTIFF’S

Plaintiff, by and through their undersigned counsel, hereby submits this Memorandum in

support of her Motion for Entry of a Preliminary Injunction. For the reasons set forth herein,

Plaintiff respectfully urges that the Court should grant this Motion and the injunctive relief sought.

INTRODUCTION

Plaintiff is requesting entry of a preliminary injunction based on her action for design

patent infringement. As alleged in Plaintiff’s Complaint, Defendants are engaged in the

unauthorized manufacture, use, sale, offering for sale, and importation into the United States of

unlicensed products (the “Infringing Products”) that embody a design that infringes Plaintiff’s U.S.

Patent No. D949,612 S (the “Asserted Patent” or the “‘612 patent”) (attached as Exhibit 1,

respectively, to the Declaration of Michelle Yu (the “Yu Declaration”; Dkt. 9-1) submitted in

support of Plaintiff’s Ex Parte Motion for Entry of Temporary Restraining Order and Expedited
 Case: 1:23-cv-15270 Document #: 23 Filed: 11/24/23 Page 2 of 7 PageID #:195

Discovery; Dkt. 8) through various fully interactive, commercial internet stores operating under at

least the Online Marketplace Account identified in Exhibit 2 to the Ex Parte Motion for Entry of

Temporary Restraining Order and Expedited Discovery (Dkt. 9-3). As discussed further herein,

Plaintiff has had an opportunity to take third-party discovery from on-line retail platforms

Amazon, eBay, Wish, and Walmart, who operate in active concert or participation with

Defendants. It is critical that Defendants and those in active concert or participation with

Defendants continue to be subject to the terms previously set forth in the TRO requiring cessation

of the infringing activity and restraining of the payment account(s). This is imperative to prevent

any attempt on the part of Defendants to circumvent Plaintiff’s enforcement efforts by transferring

funds out of the accounts.

STATEMENT OF FACTS

I. Jurisdiction.

This Court has original subject matter jurisdiction over the claims in this action pursuant

to the provisions of the Patent Act, 35 U.S.C. § 100, et seq. and 28 U.S.C. §§ 1338(a) and 1331.

This Court may properly exercise personal jurisdiction over Defendants because Defendants

directly target business activities toward consumers in the United States, including Illinois, through

at least the fully interactive internet store identified in Exhibit 2 to the Ex Parte Motion for Entry

of Temporary Restraining Order and Expedited Discovery (Dkt. 9-3). Specifically, Defendants

have targeted sales to Illinois residents by setting up and operating e-commerce stores that target

U.S. consumers using one or more seller aliases through which Illinois residents can purchase

Infringing Products. (Id.) See, e.g., Christian Dior Couture, S.A. v. Lei Liu et al., 2015 U.S. Dist.

LEXIS 158225, at *6 (N.D. Ill. Nov. 17, 2015) (personal jurisdiction proper over defendant

offering to sell alleged infringing product to United States residents, including Illinois; no actual
 Case: 1:23-cv-15270 Document #: 23 Filed: 11/24/23 Page 3 of 7 PageID #:196

sale required); see also Monster Energy Co. v. Zheng Peng, Case No. 17-cv-414, 2017 WL

47732769, at *7 (N.D. Ill. Oct. 23, 2017). Defendants are engaging in interstate commerce,

committing tortious acts in Illinois, and have wrongfully caused Plaintiff substantial injury in the

State of Illinois. Venue is proper pursuant to 28 U.S.C. § 1391.

II. Plaintiff’s Product and Design Patent.

Plaintiff markets and sells uniquely designed single panel of adjustable organizing cubes

(“Plaintiff’s Products”). (Dkt. 9-1 ¶ 8). Plaintiff has generated millions of dollars in revenue from

sales of its products through on-line retail chains such as Amazon, eBay, Wish, Walmart, and

others. (Id. ¶ 6).

Plaintiff holds a U.S. design patent that claims the design embodied by Plaintiff’s Products

(“Plaintiff’s Patented Designs”). (Dkt. 9-1 ¶ 2; id. Ex. 1).

III. Defendants’ Unlawful Activities.

The marketplace success of Plaintiff’s Products has resulted in significant counterfeiting

of Plaintiff’s Patented Designs. (Dkt. 9-1 ¶ 6). Plaintiff has, therefore, instituted a worldwide

program to investigate suspicious on-line marketplace listings. (Id. ¶ 9). Defendants facilitate sales

of the Infringing Products by designing their on-line storefronts so that they appear to unknowing

consumers to be authorized online retailers, outlet stores, or wholesalers. Defendants’ online

storefronts appear sophisticated and accept payment in U.S. dollars via credit cards, Amazon Pay,

Western Union, and/or PayPal. Defendants often include on their on-line storefronts content and

images that make it very difficult for consumers to distinguish such stores from an authorized

retailer.

Defendants have infringed, and continue to infringe, the Asserted Patents. Information

regarding Defendants and their infringing activity is set forth in Schedule A to Plaintiff’s
 Case: 1:23-cv-15270 Document #: 23 Filed: 11/24/23 Page 4 of 7 PageID #:197

Complaint (Dkt. 5-1) and also in Exhibit 2 to the Ex Parte Motion for Entry of Temporary

Restraining Order and Expedited Discovery (Dkt. 9-3). Such information includes Defendants’

On-line Seller Names, URLs for the Defendants’ On-line stores, URLs for Defendants’ specific

infringing products sold through Amazon, eBay, Wish, and Walmart, and images of Defendants’

Infringing Products.

ARGUMENT

I. A Preliminary Injunction Extending the Relief Already Granted in the TRO Is

Plaintiff requests that this Court convert the TRO previously entered in this action to a

preliminary injunction to prevent further unlawful conduct by Defendants. Courts regularly

convert TROs to preliminary injunctions where the circumstances justify it. See, e.g., Anti-Aging

Techs., LLC v. The Partnerships & Unincorporated Assocs. Identified in Sch. “A,” 1:20-cv-06597,

Dkt. 44-45 (N.D. Ill. Nov. 6, 2020); Epic Tech, LLC v. Paradise Internet Café, LLC, No. 3:15-

cv-00530-J-34JRK, 2015 WL 2342990, at *3 (M.D. Fla. May 14, 2015).

A. This Court Has Already Found that the Requirements for a Preliminary
Injunction Have Been Satisfied.

The standard for granting a TRO and the standard for granting a preliminary injunction are

identical in this Circuit. See, e.g. Charter Nat’l Bank & Trust v. Charter One Fin., Inc., No. 1:01-

cv-00905, 2001 WL 527404, *1 (N.D. Ill. May 15, 2001) (citations omitted). The requirements,

therefore, for entry of a preliminary injunction extending the TRO have been satisfied here. A

TRO or preliminary injunction may be issued upon a showing that the following criteria have been

satisfied: (1) there is a reasonable likelihood that Plaintiff will succeed on the merits; (2) Plaintiff

will suffer irreparable injury if the order is not granted because there is no adequate remedy at law;

(3) the balance of hardships tips in Plaintiff’s favor; and (4) the public interest will not be disserved
 Case: 1:23-cv-15270 Document #: 23 Filed: 11/24/23 Page 5 of 7 PageID #:198

by the injunction. Spinmaster, Ltd. v. Overbreak LLC, 404 F. Supp. 2d 1097, 1102 (N.D. Ill. 2005).

By virtue of this Court’s entry of the TRO, the Court has already found that the above requirements

have been satisfied.

B. The Equitable Relief Previously Granted Remains Appropriate.

Plaintiff requests conversion of the TRO to a preliminary injunction so that Defendants’

U.S.-based payment accounts remain restrained during the pendency of this action. Since entry of

the TRO, through expedited third-party discovery ordered by the Court, Plaintiff has obtained

information concerning Defendants’ infringing activity. Such information includes, inter alia, the

email addresses used by Defendants to create and maintain the accounts with online retail

platforms Amazon, eBay, Wish, and Walmart, through which Defendants’ infringement has

occurred and which receive the revenue realized by Defendants from the infringing sales, and

account balance information for Defendants’ payment accounts.

In the absence of a preliminary injunction, Defendants may attempt to transfer assets from

accounts with U.S.-based financial institutions to offshore accounts. It is critical, therefore, that

Defendants’ assets remain restrained throughout the entirety of this action while Plaintiff’s design

patent infringement claim is adjudicated. Plaintiff’s damages, which are both monetary in nature

as well as of a nature not amenable to monetary quantification (e.g., loss of exclusivity), far exceed

the sums contained in Defendants’ restrained payment account. As such, an Order by this Court

requiring that Defendants’ financial accounts remain restrained during the pendency of this action

is necessary and appropriate. The Patent Act expressly contemplates granting of injunctive relief

in appropriate cases. See 35 U.S.C. § 283.

Defendants’ unauthorized and infringing use of Plaintiff’s Patented Designs has irreparably

harmed Plaintiff, and continues to irreparably harm Plaintiff, through, inter alia, loss of
 Case: 1:23-cv-15270 Document #: 23 Filed: 11/24/23 Page 6 of 7 PageID #:199

exclusivity, and loss of future sales. (Dkt. 9-1 ¶ 11). The extent of the harm to Plaintiff in the form

of loss of exclusivity under the patent laws and loss of revenue from sales of Plaintiff’s Products

is irreparable and incalculable. (Id.) Such harm, therefore, warrants an immediate halt to

Defendants’ infringing activities through injunctive relief. (Id. ¶ 14); Bulgari, S.P.A. v. P’ships

and Unincorporated Ass’ns. Identified on Schedule “A,” Civil Action No. 1:14-cv-4189, 2014

U.S. Dist. Lexis 107218, at 20-*21 (N.D. Ill. Jul. 18, 2014) (converting TRO to Preliminary

Injunction based on finding that loss of exclusivity and loss of future sales would cause Plaintiff

irreparable harm). Plaintiff will suffer immediate and irreparable injury, loss, and damage if a

preliminary injunction is not issued by Federal Rule of Civil Procedure 65(b)(1).

CONCLUSION

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

Preliminary Injunction.

Date: November 24, 2023 Respectfully submitted,

By: /s/ Shengmao Mu

Counsel for Plaintiff

CERTIFICATE OF SERVICE

I hereby certify that on November 24, 2023, I electronically filed the foregoing with the

Court using the CM/ECF system. I have electronically published the foregoing on a website, the

url of which was provided to all Defendants.

/s/ Shengmao Mu
Shengmao (Sam) Mu