Shenzhen Jisu Technology Co. v. Annex A Defendants — Later Design Patent Undercuts Preliminary Injunction

Background

Shenzhen asserted a design patent covering a folding fan against numerous online sellers and initially obtained preliminary relief. After a later design patent issued and defendants represented that their products practiced that later design, the district court denied relief to newly added defendants and dissolved an existing injunction.

The Court’s Holding

The Federal Circuit affirmed. Collateral estoppel does not constrain a judge from revisiting an interlocutory ruling in the same continuing case. On the patent issue, the majority held that the district court could consider issuance of the later, presumptively valid design patent when estimating Shenzhen’s likelihood of proving infringement, because anticipation and infringement use the same substantial-similarity inquiry for design patents. The court stressed that a later patent does not create a categorical noninfringement rule and Shenzhen may still prove infringement on the merits. Judge Stoll dissented from this part, reasoning that the district court should have performed the required three-way comparison among the patented design, accused product, and prior art.

Key Takeaways

A later-issued design patent can be relevant evidence at the preliminary-injunction stage when the accused product is coextensive with that design. It is not an automatic safe harbor. Design-patent owners still should present the product-by-product ordinary-observer and prior-art comparison.

Why It Matters

The ruling gives courts a practical, though limited, way to weigh later patent issuance in fast-moving online-counterfeit cases. The dissent highlights the risk that this shortcut may displace the full infringement framework.