DCT
2:15-cv-01961
Mobile Hi Tech Wheels v. DFD Wheels
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Mobile Hi-Tech Wheels (California)
- Defendant: DFD Wheels (Texas)
- Plaintiff’s Counsel: Christie, Parker & Hale, LLP
- Case Identification: 2:15-cv-01961, C.D. Cal., 03/17/2015
- Venue Allegations: Venue is alleged to be proper in the Central District of California on the basis that the defendant is a corporation subject to the court's personal jurisdiction.
- Core Dispute: Plaintiff alleges that Defendant’s custom automobile wheels infringe two design patents covering the ornamental appearance of a wheel face and a discrete spoke segment.
- Technical Context: The case concerns the ornamental design of custom aftermarket automobile wheels, a market where aesthetic differentiation is a primary driver of brand value and consumer purchasing decisions.
- Key Procedural History: The complaint alleges that Plaintiff sent a pre-suit demand letter to Defendant, which was returned unopened and marked as "REFUSED DELIVERY," an event that may be relevant to the complaint's allegation of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2012-10-29 | Priority Date for '963 and '002 Patents |
| 2013-07-30 | U.S. Patent No. D686,963 Issued |
| 2013-09-03 | U.S. Patent No. D689,002 Issued |
| 2014-12-08 | Plaintiff sends demand letter to Defendant |
| 2015-03-17 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D686,963 - Vehicle-Wheel Front Face, issued July 30, 2013
The Invention Explained
- Problem Addressed: Design patents exist to protect the novel, non-functional, and ornamental appearance of an article of manufacture. The implicit problem addressed is the creation of a new and visually distinct design for a vehicle wheel to differentiate it in a competitive marketplace (Compl. ¶5).
- The Patented Solution: The patent claims the specific ornamental design for the entire front face of a vehicle wheel ('963 Patent, Claim). The claimed design, shown in solid lines, features a series of robust, bifurcated spokes that extend from a central hub area towards the rim, creating large, trapezoidal openings between them ('963 Patent, Fig. 2). The patent's description explicitly states that the broken lines showing the side of the wheel, round elements on the rim's lip, and the central hub's bolt holes and center cap "form no part of the claimed design," thereby defining them as unclaimed environment ('963 Patent, Description).
- Technical Importance: In the custom wheel industry, a unique and aesthetically appealing overall wheel face design is a key element of product identity and marketability (Compl. ¶5).
Key Claims at a Glance
- The single claim asserted covers "The ornamental design for vehicle-wheel front face, as shown and described" ('963 Patent, Claim).
U.S. Design Patent No. D689,002 - Spoke Segment of a Vehicle Wheel, issued September 3, 2013
The Invention Explained
- Problem Addressed: As with the '963 Patent, the objective is to secure intellectual property rights for a novel ornamental design feature of a vehicle wheel.
- The Patented Solution: This patent claims the ornamental design for only a "spoke segment of a vehicle wheel," rather than the entire wheel face ('002 Patent, Claim). The claimed design, depicted in solid lines, is an individual spoke unit. The drawings use dash-dot lines to illustrate the boundary of the claimed design segment and broken lines to show the surrounding, unclaimed wheel environment ('002 Patent, Description, Fig. 2). This patenting strategy focuses protection on the repeating decorative unit itself.
- Technical Importance: Securing a design patent on a modular element like a single spoke, rather than the entire arrangement, may allow for broader protection against products that incorporate the core design feature, even if they have a different spoke count, rim style, or other un-claimed features.
Key Claims at a Glance
- The single claim asserted covers "The ornamental design for spoke segment of a vehicle wheel, as shown and described" ('002 Patent, Claim).
III. The Accused Instrumentality
- Product Identification: The accused instrumentalities are "vehicle wheels" that Defendant DFD has offered for sale and sold in the United States (Compl. ¶9, ¶14). The complaint alleges these wheels "embody the patented MAVERICK designs" (Compl. ¶9).
- Functionality and Market Context: The complaint alleges the accused wheels are sold through automobile dealers and retail distributors and are in direct competition with Plaintiff's products (Compl. ¶5, ¶20). The complaint includes a screenshot, allegedly from a vendor's website, showing the accused DFD wheel. This screenshot depicts a multi-spoke custom automobile wheel with distinct aesthetic features (Compl. ¶9, Ex. E).
IV. Analysis of Infringement Allegations
The complaint does not contain a detailed claim chart. The infringement theory is based on the overall visual similarity between the patented designs and the accused wheels.
The complaint provides a screenshot from a vendor website that allegedly shows the infringing DFD wheel (Compl. ¶9, Ex. E).
'963 Patent Infringement Allegations
| Claim Element (from Claim 1) | Alleged Infringing Functionality (as interpreted from Compl. Ex. E) | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a vehicle-wheel front face as shown and described. | The accused wheel incorporates a front face design that is alleged to be substantially the same in overall visual appearance as the design claimed in the patent figures. | ¶14 | '963 Patent, Figs. 1-2 |
'002 Patent Infringement Allegations
| Claim Element (from Claim 1) | Alleged Infringing Functionality (as interpreted from Compl. Ex. E) | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a spoke segment of a vehicle wheel as shown and described. | Each spoke on the accused wheel incorporates an ornamental design that is alleged to be substantially the same as the claimed "spoke segment" design. | ¶14 | '002 Patent, Figs. 1-2 |
- Identified Points of Contention:
- Visual Similarity: The central question for both patents is factual: would an "ordinary observer," giving the attention a typical purchaser would, be deceived into thinking the accused DFD wheel is the same as, or is the Plaintiff's MAVERICK wheel, due to a substantial similarity in design?
- Scope Questions: A potential point of contention is how the disclaimed elements (shown in broken lines in the patents) of the accused product affect the overall visual impression. The infringement analysis should properly focus only on the claimed solid-line portions of the designs, but a defendant may argue that differences in the unclaimed portions create a distinct overall appearance that avoids infringement.
V. Key Claim Terms for Construction
In design patent litigation, the "claim" is understood to be the visual design itself as depicted in the drawings. Formal claim construction is less common than in utility patent cases, but disputes can arise over the scope of the design.
- The Term: "as shown and described"
- Context and Importance: This phrase links the single claim of each patent to the drawings and the brief description. The core of any dispute will not be about the words themselves, but about the visual scope they define. Practitioners may focus on this term because the interpretation of what is "shown" (solid lines) versus what is merely environmental context ("described" as unclaimed via broken lines) is determinative for the scope of the infringement comparison.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The '002 Patent claims only a "spoke segment" ('002 Patent, Title, Claim). Plaintiff may argue this scope is broad enough to read on any wheel that incorporates a substantially similar spoke, regardless of other design aspects like the rim or center cap.
- Evidence for a Narrower Interpretation: Both patents explicitly disclaim certain features by showing them in broken lines ('963 Patent, Description; '002 Patent, Description). A defendant could argue that while these features are not part of the claim, their specific implementation in the accused product contributes to an overall visual impression that is different from the patented design, which may be relevant to the "ordinary observer" test.
VI. Other Allegations
- Indirect Infringement: The complaint includes a conclusory allegation that Defendant's acts constitute inducement of infringement for both the '963 and '002 Patents (Compl. ¶15). It does not, however, plead specific facts detailing how Defendant allegedly encouraged or instructed third parties (e.g., distributors or customers) to infringe.
- Willful Infringement: The complaint alleges that Defendant's infringement was willful (Compl. ¶17). This allegation is supported by the factual assertion that Plaintiff sent a notice letter to Defendant on December 8, 2014, which was subsequently returned unopened and marked "THE RECEIVER [DFD WHEELS] REFUSED DELIVERY" (Compl. ¶12).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual comparison: would an ordinary observer, when considering the prior art, find the designs of the accused DFD wheels to be substantially the same as the ornamental designs claimed in the '963 and '002 patents?
- A key evidentiary question will be one of intent: does the allegation that Defendant refused delivery of a pre-suit notice letter constitute sufficient evidence of pre-suit knowledge or willful blindness to support a finding of willful infringement and potential for enhanced damages?
- The case may also raise a question of design scope: how will the analysis of overall visual appearance account for the portions of the designs explicitly disclaimed in the patent drawings (i.e., the elements shown in broken lines)?