2:10-cv-00492
Encore Holdings Ltd v. Infiniti Media Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Encore Holdings Ltd. (Bahamas) and Viva USA Inc. (California)
- Defendant: Infiniti Media, Inc. (California)
- Plaintiff’s Counsel: Townsend and Townsend and Crew LLP
- Case Identification: 2:10-cv-00492, C.D. Cal., 01/22/2010
- Venue Allegations: Venue is asserted as proper in the Central District of California because the Defendant is a California corporation that does business and has allegedly committed acts of patent infringement within the district.
- Core Dispute: Plaintiffs allege that Defendant’s optical media cases infringe a design patent covering the ornamental "spoked wheel" design of the disc-holding portion of the case.
- Technical Context: The dispute concerns the ornamental design of packaging for commodity optical media (CDs/DVDs), a market where distinctive visual appearance can be a key product differentiator.
- Key Procedural History: The complaint alleges that the Defendant had notice of the patent-in-suit and its relevance to the accused products as of November 6, 2009, three days after the patent issued. The asserted patent is a continuation of a prior application.
Case Timeline
| Date | Event |
|---|---|
| 2008-02-20 | Priority Date for U.S. Design Patent No. D603,202 |
| 2009-11-03 | U.S. Design Patent No. D603,202 Issues |
| 2009-11-06 | Alleged date of Defendant's notice of the '202 Patent |
| 2010-01-22 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D603,202 - "Optical Media Disc Case"
- Patent Identification: U.S. Design Patent No. D603,202, "Optical Media Disc Case," issued November 3, 2009.
The Invention Explained
- Problem Addressed: The patent does not describe a technical problem but instead provides a novel ornamental design for a functional item. In the market for standardized products like optical media cases, a unique aesthetic can serve to distinguish one manufacturer's product from another (Compl. ¶1, 25).
- The Patented Solution: The patent claims the specific ornamental design for an optical media disc case, which is defined by the visual characteristics shown in solid lines in the patent's figures ('202 Patent, CLAIM; FIG. 3-5). The core of the design is a disc-holding hub resembling a wheel with six thick, trapezoidal spokes radiating from a complex central hub to a segmented outer ring. The outer rectangular portion of the case is depicted in broken lines, indicating it is for illustrative environmental purposes and not part of the claimed design ('202 Patent, DESCRIPTION).
- Technical Importance: The design's importance is not technical but commercial, aiming to provide a distinctive "spoked wheel design" that is recognizable to consumers and associated with the Plaintiffs' "ECO-Box" product line (Compl. ¶25).
Key Claims at a Glance
- The single claim asserted is for "The ornamental design for an optical media disc case, as shown and described" ('202 Patent, CLAIM).
- The essential visual elements of this design, shown in solid lines in the figures, include:
- A central, multi-layered hub assembly for securing a disc.
- Six spokes radiating outward from the central hub.
- A segmented outer ring to which the spokes connect, which provides underlying support for the edge of a disc.
III. The Accused Instrumentality
Product Identification
The accused products are "optical media disc cases" sold and offered for sale by Defendant Infiniti Media, Inc. (Compl. ¶7).
Functionality and Market Context
The complaint alleges these cases incorporate a "spoked wheel design" for holding optical media discs like DVDs and CDs (Compl. ¶7). A photograph included in the complaint shows the interior of an accused case, depicting a central hub and spoke structure for securing a disc. The complaint asserts these are sold by Infiniti, a distributor of cases for optical media (Compl. ¶2-3, 7). The photograph of the accused product shows a case with a black plastic molding featuring a central hub and six radiating spokes (Compl. p. 3).
IV. Analysis of Infringement Allegations
The infringement analysis for a design patent turns on the "ordinary observer" test, which asks whether an ordinary observer, familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented design. The complaint alleges infringement by presenting the patented design and a photograph of the accused product.
D'202 Patent Infringement Allegations
| Key Feature of the Claimed Design (from '202 Patent Figures) | Corresponding Feature of Accused Product (as depicted in Complaint) | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall visual impression of a "spoked wheel design" for holding an optical disc. | The accused product is alleged to incorporate a "spoked wheel design." The provided photograph shows a design with a similar overall visual effect. | ¶7 | FIG. 3, 4 |
| A central hub from which spokes radiate outward. | The accused product features a central hub structure. | ¶7; p. 3 | FIG. 3, 4 |
| A set of six spokes extending from the central hub to a segmented outer circle. | The accused product features six spokes extending from its central hub. | ¶7; p. 3 | FIG. 3, 4 |
Identified Points of Contention
- Scope Questions: The primary scope question is defined by the patent itself: the claim covers only the ornamental features shown in solid lines (the hub and spoke assembly), not the functional, rectangular case shown in broken lines ('202 Patent, DESCRIPTION). The analysis will focus exclusively on the similarity of the hub-and-spoke designs.
- Technical Questions: While this is a design case, the comparison will involve a granular visual analysis. A key question for the fact-finder will be whether the specific shapes, proportions, and surface details of the accused product's hub and spokes are substantially the same as those depicted in the '202 Patent's figures. The complaint provides a clear photograph of the accused product, which will allow for a direct visual comparison against the patent's drawings (Compl. p. 3).
V. Key Claim Terms for Construction
In design patent cases, the "claim" is understood to be the design itself as depicted in the drawings, and traditional claim construction of words is rare. The central issue is the scope of the design protection.
- The Term: "The ornamental design... as shown and described"
- Context and Importance: The scope of what is "shown" is the most critical issue. The court's interpretation of what an ordinary observer would perceive as the patented design, and its comparison to the accused product, will determine infringement. Practitioners will focus on the visual details and overall impression created by the solid lines in the patent figures.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent's title, "Optical Media Disc Case," and the environmental context could be argued to inform the overall impression of the design as it applies to such a case. The complaint emphasizes the general concept of a "distinctive, spoked wheel design" (Compl. ¶5), suggesting Plaintiffs may focus on the overall concept rather than minute details.
- Evidence for a Narrower Interpretation: The patent contains an explicit disclaimer: "The broken line showing of the disc case is included for the purpose of illustrating environment and forms no part of the claimed design" ('202 Patent, DESCRIPTION). This statement strictly limits the claimed design to the hub-and-spoke assembly shown in solid lines. Any infringement analysis must focus only on those elements, and a court will likely construe the claim as being limited to the specific ornamental features depicted in the solid-line drawings of Figures 1-5.
VI. Other Allegations
- Willful Infringement: The complaint alleges that Defendant Infiniti had notice of the '202 Patent and "its application to the infringing products since at least November 6, 2009" (Compl. ¶8). This allegation of actual, post-issuance notice forms the basis for the claim of willful, deliberate, and conscious disregard of Plaintiffs' patent rights.
VII. Analyst’s Conclusion: Key Questions for the Case
A central issue will be one of visual comparison under the ordinary observer test: Would an ordinary observer, giving such attention as a purchaser usually gives, be deceived by the similarity between the accused Infiniti case and the patented design, leading them to purchase one supposing it to be the other?
A key evidentiary question will be one of design scope and detail: Does the accused product's design appropriate the novel ornamental features of the '202 Patent, or are there sufficient visual differences in the shape, proportion, and configuration of the spokes and central hub to distinguish it from the patented design in the eyes of an ordinary observer? The side-by-side comparison enabled by the complaint's exhibits will be central to this determination (Compl. p. 2, 3).