DCT
2:15-cv-00561
Origami Owl LLC v. Patel
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Origami Owl, LLC (Delaware)
- Defendant: Neil Patel (New Jersey)
- Plaintiff’s Counsel: Fennemore Craig, P.C.
- Case Identification: 2:15-cv-00561, D. Ariz., 03/27/2015
- Venue Allegations: Venue is alleged to be proper in the District of Arizona because the Defendant sold infringing goods in the district, registered a domain name with a registrar located in Scottsdale, Arizona, and allegedly caused targeted harm to the Plaintiff, whose principal place of business is in Arizona.
- Core Dispute: Plaintiff alleges that Defendant’s sale of heart-shaped lockets infringes its design patent, in addition to asserting claims for trademark and copyright infringement.
- Technical Context: The dispute centers on the ornamental design of customizable jewelry, specifically "floating lockets" designed to hold small, interchangeable charms.
- Key Procedural History: The complaint alleges that the Defendant is a former independent designer for the Plaintiff, a relationship that was terminated in September 2014. Plaintiff also alleges it sent multiple "takedown notices" to third-party hosting services regarding Defendant's alleged trademark and copyright infringement prior to filing this suit.
Case Timeline
| Date | Event |
|---|---|
| 2013-12-19 | D711,278 Patent Priority Date (Filing Date) |
| 2014-03-01 | Defendant's relationship as independent designer allegedly begins |
| 2014-08-19 | U.S. Patent No. D711,278 Issues |
| 2014-09-30 | Defendant's relationship as independent designer allegedly terminates |
| 2014-10-10 | Defendant allegedly registers domain OrigamiOwlOutlets.com |
| 2014-11-15 | Defendant allegedly registers domain OrigamiOutlets.com |
| 2014-12-12 | Defendant allegedly registers domain IDealDirectSalesCo.com |
| 2015-02-25 | Defendant allegedly registers domain charmsoutlets.com |
| 2015-03-27 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. D711,278 - “Heart-shaped locket”
The patent-in-suit is U.S. Patent No. D711,278, issued August 19, 2014 (the "’278 Patent").
The Invention Explained
- Problem Addressed: Design patents do not solve technical problems but rather protect the novel, non-functional, ornamental appearance of an article of manufacture. The ’278 Patent seeks to protect a specific aesthetic design for a jewelry locket.
- The Patented Solution: The patent claims "the ornamental design for a heart-shaped locket, as shown and described" (’278 Patent, Claim). The core visual elements of this design, depicted in the patent's figures, include the overall heart shape, a decorative border with repeating gem-like or scalloped facets, a transparent front face, and a bail for hanging from a chain located in the cleft of the heart (D'278 Patent, FIG. 2). The patent explicitly disclaims any subject matter shown in broken lines, focusing the claim on the visible solid-line features (’278 Patent, Description).
- Technical Importance: The complaint alleges that Plaintiff's products, which embody its intellectual property, have garnered "widespread media acclaim" and cultivated a "loyal consumer base," suggesting the commercial importance of its unique product aesthetics in the personalizable jewelry market (Compl. ¶¶1, 15).
Key Claims at a Glance
- As a design patent, the ’278 Patent contains a single claim: "The ornamental design for a heart-shaped locket, as shown and described."
- The essential visual elements of this single claim are:
- The overall heart shape of the locket body.
- A decorative, faceted, or gem-set border around the perimeter of the heart shape.
- A transparent front face.
- A bail for attachment positioned at the top center of the locket.
III. The Accused Instrumentality
Product Identification
The accused products are "heart-shaped lockets" offered for sale by the Defendant on websites such as OrigamiOwlOutlets.com (Compl. ¶48).
Functionality and Market Context
The complaint characterizes the accused products as jewelry items that are "substantially similar or identical to O2's copyrighted and patented designs" (Compl. ¶18). It is alleged that the Defendant, a former independent designer for the Plaintiff, is a "direct competitor" who sells these lockets, sometimes at wholesale, to divert sales from the Plaintiff (Compl. ¶¶16, 17, 42). The complaint provides a side-by-side comparison depicting the accused locket next to a figure from the ’278 Patent (Compl. p. 8). This visual, described as "Defendant's image of the accused device from origamiowloutlets.com," shows a heart-shaped locket with a faceted border that appears to be visually indistinguishable from the patented design (Compl. p. 8).
IV. Analysis of Infringement Allegations
For design patents, infringement is determined by the "ordinary observer" test, rather than a limitation-by-limitation analysis of text. The following table maps the key visual features of the patented design to the allegations in the complaint.
| Claim Element (from the D'278 Patent as "shown and described") | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a heart-shaped locket | Defendant is alleged to have offered to sell "heart-shaped lockets that are covered by the design patent." | ¶48 | FIG. 2 |
| A heart shape with a decorative, faceted border and a transparent face | The complaint provides an image of the accused locket which displays a heart shape, a faceted border, and a transparent face that are visually almost identical to the patented design. | p. 8 | FIG. 2 |
| A bail for attachment at the top of the heart | The image of the accused locket shows a bail in the same position and of a similar shape as that depicted in the patent figures. | p. 8 | FIG. 2 |
Identified Points of Contention
- Scope Questions: The central issue in design patent infringement is whether an ordinary observer, familiar with the prior art, would be deceived into purchasing the accused product believing it is the patented design. The primary question for the court will be a factual comparison of the physical accused products to the design claimed in the ’278 Patent.
- Technical Questions: The dispute does not raise technical questions in the utility patent sense, but rather visual ones. A key question will be: "Are there any visual differences between the accused lockets and the patented design that would be sufficient for an ordinary observer to distinguish the two?" The complaint's photographic evidence suggests a high degree of visual similarity (Compl. p. 8).
V. Key Claim Terms for Construction
In design patent litigation, the claim is understood to be the design as shown in the patent drawings, and formal claim construction of text is typically not performed. The central analysis is a comparison of the accused design to the patented design from the perspective of an ordinary observer. Accordingly, there are no specific terms from the single claim ("The ornamental design for a heart-shaped locket, as shown and described") that are likely to require formal construction.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendant "induced and encouraged third parties to resell charms infringing the... design patent" (Compl. ¶38). This is further supported by the allegation that Defendant sells at wholesale to customers who then sell at retail, which may form the basis for an inducement claim (Compl. ¶17).
- Willful Infringement: The complaint alleges willfulness, pointing to the Defendant's status as a "former independent designer for Origami Owl" as evidence of knowledge of Plaintiff's intellectual property (Compl. ¶16). It further alleges that the infringing conduct has continued "despite receipt of notice of O2's intellectual property rights," suggesting post-notice willfulness (Compl. ¶40). The prayer for relief explicitly seeks a finding of willful infringement and corresponding remedies (Compl. p. 16, ¶A).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual identity: Is the ornamental design of the Defendant's accused locket "substantially the same" as the design claimed in the ’278 patent? The outcome will depend on a factual comparison by the finder of fact (the jury) under the "ordinary observer" standard, with the complaint's side-by-side visual comparison presenting a strong initial case for infringement.
- A second key question will be willfulness and intent: Given the Defendant’s alleged prior business relationship with the Plaintiff, did the infringement, if any, rise to the level of willfulness? The answer will determine Plaintiff's entitlement to enhanced damages or an award of the Defendant's total profits, which are significant remedies in design patent cases.
- Finally, a broader question is one of holistic conduct: How will the extensive allegations of trademark counterfeiting, copyright infringement, and breach of contract influence the jury's view of the patent claim? Evidence of a broader pattern of alleged copying and trading on Plaintiff's goodwill may impact the jury’s assessment of the Defendant's intent and credibility regarding the design patent infringement count.