DCT
2:24-cv-00058
LunaMarie LLC v. Remy Roo LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: LunaMarie LLC (Arizona)
- Defendant: Remy and Roo, LLC (Utah)
- Plaintiff’s Counsel: Orangewood Law Group, PLC
- Case Identification: 2:24-cv-00058, D. Ariz., 01/10/2024
- Venue Allegations: Plaintiff LunaMarie asserts venue is proper in the District of Arizona because Defendant Remy and Roo directed patent enforcement activities into the state, including sending a demand letter to LunaMarie’s place of business in Arizona.
- Core Dispute: Plaintiff seeks a declaratory judgment that its pet bandanas do not infringe Defendant’s design patent for an animal bandana, and further asks the court to declare Defendant's patent invalid.
- Technical Context: The dispute centers on the ornamental design of pet bandanas, a consumer product in the pet accessories market.
- Key Procedural History: The complaint details a significant prosecution history for the patent-in-suit. The patent application was subject to multiple obviousness rejections based on various prior art references. The patent was ultimately allowed after the applicant distinguished the design based on specific features, particularly its "rounded ends," which the examiner found, in combination with the overall shape, created a "patentably distinct" design. This prosecution history forms a core part of the plaintiff's invalidity and non-infringement arguments.
Case Timeline
| Date | Event |
|---|---|
| 2017-05-01 | Alleged earliest date of prior art sales by "Charlotte's Pet" |
| 2018-05-27 | Alleged prior art YouTube video posted |
| 2018-11-09 | Publication date of KeaBabies prior art reference |
| 2019-05-04 | Publication date of Remy prior art reference |
| 2020-07-07 | ’009 Patent application filing date (Priority Date) |
| 2022-07-21 | USPTO issues first non-final rejection |
| 2022-10-13 | Applicant submits amendment and response |
| 2022-11-08 | USPTO issues second non-final rejection |
| 2023-02-06 | Applicant submits response to second rejection |
| 2023-03-28 | USPTO issues final rejection |
| 2023-06-26 | Applicant submits Pre-Appeal Brief |
| 2023-08-16 | USPTO issues Notice of Allowance |
| 2023-09-26 | U.S. Design Patent D1,000,009 issues |
| 2023-11-28 | Defendant sends demand letter to Plaintiff |
| 2024-01-10 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D1,000,009 - "BANDANA FOR AN ANIMAL"
- Patent Identification: U.S. Design Patent No. D1,000,009, "BANDANA FOR AN ANIMAL," issued September 26, 2023 (’009 Patent).
The Invention Explained
- Problem Addressed: As a design patent, the patent does not explicitly state a technical problem it solves. The invention is purely ornamental and concerns the aesthetic appearance of a bandana for an animal (’009 Patent, Claim).
- The Patented Solution: The ’009 Patent claims the specific visual appearance of an animal bandana as depicted in its eight figures. Key ornamental features include a main triangular body with a pointed bottom, a curved upper edge designed to follow a neckline, and two tie-straps that terminate in distinctly rounded ends (’009 Patent, Figs. 1-2). The design also claims, via broken lines, visible stitching along the entire perimeter and a small rectangular stitched feature near the point of the bandana (’009 Patent, Description; Compl. ¶35). FIG. 8 illustrates the appearance of the bandana in a "tied configuration" (’009 Patent, Fig. 8).
- Technical Importance: The design provides a specific, unique aesthetic for a common pet accessory, seeking to distinguish itself from other bandanas in the marketplace.
Key Claims at a Glance
- As is standard for a design patent, there is a single claim for "The ornamental design for a bandana for an animal, as shown and described" (’009 Patent, Claim). This single claim incorporates the visual design shown across all figures. The core visual elements are:
- The overall shape, comprising a curved top edge and a triangular bottom section.
- Two tie-straps with rounded ends.
- Stitching depicted along the perimeter and as a rectangular feature.
- The appearance of the design when tied.
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are pet bandanas manufactured and sold by the plaintiff, LunaMarie LLC (Compl. ¶93).
Functionality and Market Context
- The complaint presents LunaMarie’s products as pet bandanas. A key feature highlighted for the non-infringement argument is that LunaMarie’s bandanas possess tie-straps with "ends that are squared-off, not rounded" (Compl. ¶96). The complaint includes a screenshot from LunaMarie's website showing four different patterned bandanas, each tied into a bow. This screenshot depicts the general shape and tied appearance of the accused products (Compl. ¶93).
IV. Analysis of Infringement Allegations
This is a declaratory judgment action where the plaintiff, LunaMarie, alleges non-infringement. The table summarizes LunaMarie's arguments for why its products do not infringe the claim of the ’009 Patent. The analysis for a design patent rests on the "ordinary observer" test, assessing whether an ordinary observer would find the two designs substantially the same.
| Claim Element (from ’009 Patent) | Alleged Non-Infringing Feature of LunaMarie's Product | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a bandana for an animal, as shown and described. | The overall design is not substantially the same because LunaMarie's bandanas have ends that are squared-off, not rounded. This difference is material because "rounded features" were the basis for allowance over prior art. | ¶¶94-96 | Figs. 1-3, 8 |
| The ornamental design for a bandana for an animal, as shown and described. | Similarities in overall shape are dictated by function (e.g., the curved neckline and long ties are for fit and adjustability) and are therefore not protectable elements of a design patent. | ¶¶97-100 | Figs. 1-3 |
- Identified Points of Contention:
- Scope Questions: The complaint raises a significant question of prosecution history estoppel. It alleges that because Remy and Roo distinguished its design from prior art by emphasizing its "rounded ends," it may be precluded from now claiming that a design with "squared-off" ends is an infringement (Compl. ¶¶94-95).
- Technical Questions: A central question is whether the "squared-off" ends of the LunaMarie bandanas are a sufficient design difference to avoid infringement in the eyes of an ordinary observer, particularly when the examiner explicitly relied on the "rounded features" of the ’009 Patent for allowance (Compl. ¶65, 95).
- Invalidity Questions: The complaint raises multiple invalidity challenges.
- Obviousness (35 U.S.C. § 103): Does the combination of prior art references cited during prosecution, such as Story (for the general shape) and Gazaway (for strap modifications), render the final claimed design obvious? The complaint provides a visual from a rejection showing this combination theory (Compl. ¶41).
- Indefiniteness (35 U.S.C. § 112): Does the apparent difference in arm length between the untied view (FIG. 2) and the tied view (FIG. 8) create ambiguity that renders the patent indefinite? The complaint reproduces both figures to illustrate this alleged disparity (Compl. ¶84).
- Functionality (35 U.S.C. § 171): Is the claimed design dictated by its function, as LunaMarie alleges? The complaint points to Remy and Roo's own marketing, which states the "curved design" is to "mimic your dogs natural neck-line" and the "two long ends" are for making the bandana "adjustable," as evidence of functionality (Compl. ¶¶69, 71, 87-88).
V. Key Claim Terms for Construction
In design patents, the "claim" is the visual drawing, but features highlighted during prosecution can be critical for determining scope.
- The Term: "rounded features" / "rounded ends"
- Context and Importance: This feature is central to both the non-infringement and validity disputes. The complaint alleges the USPTO examiner allowed the patent specifically because "the combination of the shape with the rounded features" was "patentably distinct" from prior art that had squared-off ends (Compl. ¶65, 95). Practitioners may focus on this term because it appears to be a clear point of surrender during prosecution, potentially limiting the patent's scope to designs that include this exact feature.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party seeking a broader scope might argue that the "ordinary observer" test considers the overall visual impression, and that the difference between rounded and squared-off ends is a minor detail that does not change the gestalt of the design.
- Evidence for a Narrower Interpretation: The complaint provides strong intrinsic evidence for a narrow interpretation. The Notice of Allowance explicitly states that the "rounded features" were key to overcoming the rejection (Compl. ¶65). This statement from the examiner, prompted by the applicant's arguments distinguishing prior art, suggests that the "rounded ends" are a material limitation of the claim, not an incidental detail.
VI. Other Allegations
The complaint does not contain allegations of indirect or willful infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
- Prosecution History Estoppel and Infringement: Will the patentee's repeated arguments to the USPTO distinguishing its design from prior art based on its "rounded ends" prevent it from now asserting that a competing product with "squared-off" ends is infringing? This question pits the "ordinary observer" test against the legal doctrine of prosecution history estoppel.
- The Functionality Doctrine in Design Patents: Can LunaMarie prove that the primary ornamental features of the ’009 Patent—the curved neckline and long, tie-able ends—are dictated by function? The patentee's own marketing materials, which tout the functional benefits of these features, will likely be key evidence in this inquiry, which could invalidate the patent or severely limit its enforceable scope.
- Validity Based on Indefiniteness: Does the visual representation of the bandana's arms in the "tied" view (FIG. 8) appear so inconsistent with their representation in the "untied" view (FIG. 2) that it fails to provide a person of ordinary skill with reasonable certainty about the scope of the claimed design, rendering the patent invalid under 35 U.S.C. § 112?