By Brian Craig, J.D.
The accused infringer failed to present clear and convincing evidence that the founder of the Chinese manufacturer should be named as inventor of the pillow.
In a patent and trademark dispute between two competing retailers of pillows that approached the same Chinese manufacturer for a pillow with head support, the federal district court in Brookyln, New York has resolved issues related to patent inventorship, the on-sale bar, obviousness, and indefiniteness. In granting summary judgment on inventorship, the court concluded that pillow retailer DigitalPrints USA Corp. doing business as Cheer Collection failed to present clear and convincing evidence that the founder of the Chinese manufacturer should be named as the inventor of the design patents for a pillow rather than an employee of the patent assignee Hit Notion LLC. (Hit Notion LLC v. Digitalprints USA Corp., No. 1:24-cv-07986-BMC (E.D.N.Y. Jun. 11, 2026)).
Hit Notion LLC is a retailer of pillows. In March 2017, the CEO of Hit Notion LLC approached the founder of a Chinese pillow manufacturer, MJ Textile, about the design for a pillow. That same month, DigitalPrints USA Corp. doing business as Cheer Collection (“Cheer Collection”), another pillow retailer, also requested a pillow from the Chinese manufacturer. In October 2017, Hit Notion applied for and obtained a design patent for a pillow that ultimately matured into U.S. Design Patent D875,432, which claims an ornamental design for a pillow. Hit Notion also owns U.S. Design Patent D949,600. An employee of Hit Notion is the only named inventor in both patents, and Hit Notion is listed as the assignee. Unbeknownst to either retailer, the Chinese manufacturer ended up supplying both retailers with the same pillow. However, only Hit Notion patented its pillow. After Cheer Collection sold its pillow online and allegedly advertised a pillow bearing Hit Notion’s trademark, Hit Notion filed an action in 2024 against Cheer Collection alleging patent infringement, trademark infringement, and unfair competition. The parties filed motions for summary judgment on issues of patent inventorship, the on-sale bar, obviousness, and indefiniteness. Cheer Collection also moved for summary judgment on the trademark infringement and unfair competition claims.
Inventorship. The court first granted summary judgment in favor of Hit Notion on inventorship. Hit Notion claims full inventorship of the pillow, and Cheer Collection alleges that the founder of the Chinese pillow manufacturer invented the pillow. The named inventors are presumed correct, and the party seeking correction of inventorship must show, by clear and convincing evidence, that a joint inventor should have been listed. Here, the court found undisputable evidence that both retailers approached the Chinese pillow manufacturer with a request for a pillow. It is defendant’s burden to show, by clear and convincing evidence, that it is “highly probable” that the founder of the Chinese pillow manufacturer invented the pillow. Cheer Collection failed to meet that high burden. Thus, the court rejected the inventorship defense.
On-sale bar. The court also ruled that Cheer Connection’s defense based on the on-sale bar fails. A patent is invalid if the claimed invention was on sale, or otherwise available to the public before the effective filing date of the claimed invention. Having concluded that Cheer Connection failed to show the president of the Chinese pillow manufacturer should be a named inventor, Cheer Connection cannot claim the on-sale bar defense on the basis that the Chinese company sold the pillow prior to Hit Notion’s patent application because the Chinese pillow manufacturer had obtained the pillow from Hit Notion, and the sale was made less than one year before Hit Notion filed its patent. Therefore, the court granted summary judgment in favor of the patent owner on the issue of on-sale bar.
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