4:22-cv-00033
P S Products Inc v. DP Co
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: P.S. Products, Inc. and Billy Pennington, Individually (Arkansas)
- Defendant: D.P. and Company, Inc. d/b/a www.dpciwholesale.com (Florida)
- Plaintiff’s Counsel: Stewart Law Firm
- Case Identification: 4:22-cv-00033, E.D. Ark., 01/18/2022
- Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Arkansas because the actions giving rise to the complaint occurred in Little Rock and because Defendant maintains substantial and systematic business contacts with customers in Arkansas.
- Core Dispute: Plaintiff alleges that Defendant’s sale of certain stun guns infringes three of its U.S. design patents.
- Technical Context: The dispute concerns the ornamental appearance of personal self-defense products, specifically handheld stun guns configured with a "brass knuckle" style grip.
- Key Procedural History: The complaint notes that the inventor of the patents-in-suit, Billy Pennington, has granted a perpetual exclusive license to co-plaintiff P.S. Products, Inc. to manufacture and sell products embodying the patents. U.S. Patent No. D576,246 is a continuation-in-part of the application that matured into U.S. Patent No. D561,294.
Case Timeline
| Date | Event |
|---|---|
| 2006-07-14 | Priority Date for U.S. Patent Nos. D561,294 & D576,246 |
| 2008-02-05 | Issue Date for U.S. Patent No. D561,294 S |
| 2008-09-02 | Issue Date for U.S. Patent No. D576,246 S |
| 2012-06-04 | Priority Date for U.S. Patent No. D680,188 S |
| 2013-04-16 | Issue Date for U.S. Patent No. D680,188 S |
| 2021-12-20 | Alleged start date of Defendant's sales of the accused products |
| 2022-01-18 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D561,294, “Stun Gun,” issued February 5, 2008
The Invention Explained
- Problem Addressed: As a design patent, the '294 Patent does not articulate a technical problem. Instead, it presents a novel ornamental design for a stun gun. The complaint alleges that "[n]o goods of this design existed prior to the Plaintiffs' designs and patents" (Compl. ¶18).
- The Patented Solution: The patent protects the unique visual appearance of a stun gun, characterized by a housing that incorporates an ergonomic grip resembling brass knuckles with four distinct finger holes (Compl. ¶14; '294 Patent, Fig. 1). The design's key ornamental features include the overall scalloped top contour and the specific shape of the palm rest and finger apertures, as shown in the patent's isometric view ('294 Patent, Fig. 6).
- Technical Importance: The complaint alleges the commercial significance of the design, stating that the "Blast Knuckle Stun Gun" which embodies the patent is Plaintiff's "most sought after and sold product" and accounts for most of its revenue (Compl. ¶¶20-21).
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is: "The ornamental design for a stun gun, as shown and described" ('294 Patent, col. 2:1-3).
- The claim covers the entire visual appearance of the article as depicted in solid lines in the patent's drawings.
U.S. Design Patent No. D576,246, “Stun Gun,” issued September 2, 2008
The Invention Explained
- Problem Addressed: Similar to the '294 Patent, the '246 Patent introduces a new ornamental design for a stun gun rather than solving a technical problem (Compl. ¶18).
- The Patented Solution: The '246 Patent, a continuation-in-part of the application for the '294 Patent, claims a related but distinct ornamental design for a stun gun ('246 Patent, (63)). This design also features a knuckle-style grip but presents a more angular and faceted overall appearance compared to the '294 Patent's smoother curves. The perspective views illustrate these different contours and surface transitions (Compl. ¶15; '246 Patent, Fig. 1, 7).
- Technical Importance: The complaint groups this patent with the others as embodying the commercially successful "Blast Knuckle" product line (Compl. ¶20).
Key Claims at a Glance
- The patent asserts a single claim: "The ornamental design for a stun gun, as shown and described" ('246 Patent, col. 2:2-4).
- The scope of this claim is defined by the visual appearance of the stun gun shown in the patent's drawings.
Multi-Patent Capsule
- Patent Identification: U.S. Design Patent No. D680,188 S, “Long-spiked Electrode for Stun Device,” issued April 16, 2013.
- Technology Synopsis: This patent protects the ornamental design for an electrode component intended for a stun device (Compl. ¶13). The claimed design, as shown in the complaint's Figure 3, consists of the specific visual appearance of the spiked electrodes and their arrangement on a base, with the surrounding device structure shown in broken lines and forming no part of the claim (Compl. ¶16; '188 Patent, Fig. 1).
- Asserted Claims: The single design claim for a long-spiked electrode as shown and described ('188 Patent, col. 2:2-4).
- Accused Features: The complaint makes a general allegation that the "Accused Devices" infringe the '188 patent but does not specify which particular products or components are alleged to embody this separate electrode design (Compl. ¶53).
III. The Accused Instrumentality
Product Identification
The complaint identifies the "Accused Devices" as a series of stun guns offered for sale and sold by Defendant DPCI on its website, www.dpciwholesale.com (Compl. ¶¶34-35). Specific product model names include "brass-knuckle-full-grip-stun-gun-flashlight-black-11801" and "three-finger-full-grip-easy-activation-stun-gun-with-flashlight-black-oth518bk" (Compl. ¶35a, 35c).
Functionality and Market Context
The complaint describes the accused products as "stun guns" and alleges they are "illegal copies" and "counterfeit versions" of Plaintiff's patented "BLAST KNUCKLESTM" products (Compl. ¶¶6, 27). The complaint provides a figure from the '294 patent, which depicts the ornamental design for a stun gun with four finger holes (Compl. ¶14, Fig. 1). It is alleged that the accused products are "significantly cheaper than PSP's product," suggesting they compete on price in the same market (Compl. ¶50).
IV. Analysis of Infringement Allegations
The complaint does not contain a formal claim chart. The infringement theory for a design patent rests on a comparison of the claimed design with the accused product from the perspective of an "ordinary observer." The complaint supports its allegations by juxtaposing figures from the patents-in-suit with URLs for the accused products (Compl. ¶¶14-16, 35). The complaint provides a visual from the '246 patent, which shows a perspective view of the more angular stun gun design (Compl. ¶15, Fig. 2).
D561,294 S Infringement Allegations
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a stun gun, as shown and described. | The overall ornamental appearance of Defendant's accused stun guns, which are alleged to be "illegal copies" that embody the patented design, including the knuckle-style grip, finger apertures, and overall housing shape. | ¶¶27, 36, 53 | '294 Patent, Figs. 1-6 |
D576,246 S Infringement Allegations
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a stun gun, as shown and described. | The overall ornamental appearance of certain of the Accused Devices, which are alleged to have a substantially similar visual impression to the more angular, faceted design depicted in the figures of the '246 patent. | ¶¶53, 58 | '246 Patent, Figs. 1-8 |
Identified Points of Contention
- Scope Questions: In design patent cases, the central question is whether an ordinary observer, familiar with the prior art, would be deceived into purchasing the accused device believing it to be the patented one. The dispute will likely focus on a direct visual comparison between the patent drawings and the physical accused products.
- Technical Questions: A potential issue is the extent to which any differences between the patented designs and the accused products are substantial enough to be noticed by an ordinary observer. The court will need to determine if the accused products have the "same visual impression" as the patented designs, considering the designs as a whole.
V. Key Claim Terms for Construction
Formal claim construction of written terms is not central to design patent litigation. The "claim" is understood to be the design itself, as depicted in the drawings. The analysis focuses on the overall visual appearance rather than the definition of specific words.
The Term
The scope of the claim as defined by the drawings.
Context and Importance
The critical analysis will not be of a term, but of the visual scope of the patents. The court will assess the overall visual effect of the solid lines in the patent figures. For the '188 patent specifically, practitioners may focus on the distinction between the claimed features (solid lines) and the unclaimed environment (broken lines), as this distinction defines the precise scope of the protected design for the electrode component ('188 Patent, Fig. 1).
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The test for design patent infringement focuses on the overall design, not on minor differences. Plaintiff may argue that the general configuration and "visual gestalt" of the accused products are the same as the patented designs, rendering any small variations immaterial.
- Evidence for a Narrower Interpretation: Defendant may argue that specific differences in curves, angles, proportions, or surface ornamentation between its products and the patent drawings are significant enough to create a different overall visual impression for the ordinary observer. The scope is limited to the specific ornamental designs shown and cannot be broadened to cover all "knuckle-style" stun guns.
VI. Other Allegations
Indirect Infringement
The complaint includes a count for induced infringement, alleging that DPCI, with knowledge of Plaintiff's patent rights, "has continued to allow the Accused Devices to be exposed for sale, offered for sale, and sold on its website" (Compl. ¶¶57-59). The complaint further alleges that Defendant "profits from its website, as induced sellers must pay a fee to sell items" (Compl. ¶43).
Willful Infringement
Willfulness is alleged based on Defendant's "willful, in disregard of, and with indifference to, the rights of PSP" (Compl. ¶55). The factual basis appears to stem from the allegation that the Defendant is selling "illegal copies" and "counterfeit versions" of Plaintiff's patented products, which may suggest intentional copying (Compl. ¶¶6, 27). The complaint alleges general knowledge of the patent rights but does not specify how or when Defendant acquired this knowledge (Compl. ¶59).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of visual comparison: Applying the "ordinary observer" test, is the overall ornamental design of the accused stun guns substantially the same as the designs claimed in the '294 and '246 patents? The outcome will depend on a direct comparison of the products and the patent drawings.
- A key question for damages will be willfulness: Can the Plaintiff provide sufficient evidence to demonstrate that the Defendant had pre-suit knowledge of the specific patents-in-suit and acted with objective recklessness, or are the allegations of selling "counterfeit versions" alone sufficient to support a finding of willful infringement?
- A third question will concern the infringement of the component patent: What evidence will be presented to show that any of the accused products incorporate the specific, separate ornamental design for the "Long-spiked Electrode" claimed in the '188 patent, an allegation not detailed with the same specificity as the claims against the overall stun gun designs?