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: Lewis Roca Rothgerber Christie LLP
• Case Identification: 2:16-cv-03036, C.D. Cal., 05/03/2016
• Venue Allegations: Venue is alleged to be proper because the Defendant is a corporation subject to personal jurisdiction within the Central District of California.
• Core Dispute: Plaintiff alleges that Defendant’s vehicle wheels infringe two design patents covering the ornamental design of a wheel face and a specific wheel spoke segment.
• Technical Context: The dispute is in the automotive aftermarket industry, specifically concerning the ornamental design of custom wheels, where aesthetic distinctiveness is a primary driver of consumer choice.
• Key Procedural History: The complaint states that on December 8, 2014, Plaintiff’s counsel sent a demand letter to Defendant regarding the alleged infringement, which was returned unopened and marked "THE RECEIVER [DFD Wheels] REFUSED DELIVERY." This event may be relevant to the allegation of willful infringement.

Case Timeline

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 protect ornamental designs rather than solving technical problems. This patent addresses the need for a novel and non-obvious ornamental design for the front face of an automobile wheel (Compl. ¶6).
• The Patented Solution: The patent claims the specific ornamental design for a vehicle wheel’s front face, as depicted in the patent’s figures ('963 Patent, Claim, Figs. 1-2). The description clarifies that portions of the drawings rendered in broken lines—including the side of the wheel, round elements on the rim, and the central hub area—illustrate the environment but "form no part of the claimed design" ('963 Patent, Description). The protected design consists only of the features shown in solid lines.
• Technical Importance: The complaint identifies this design as corresponding to Plaintiff's "MAVERICK" wheel, suggesting it is a distinct and commercially marketed product design (Compl. ¶6).

Key Claims at a Glance

• Design patents contain a single claim. The asserted claim is for "The ornamental design for vehicle-wheel front face, as shown and described" ('963 Patent, Claim).
• The scope of the claim is defined by the visual appearance of the elements depicted in solid lines in the patent's drawings, primarily Figures 1 and 2. This includes a multi-spoke configuration where each spoke has distinctive angular and recessed surfaces.

U.S. Design Patent No. D689,002, "Spoke Segment of a Vehicle Wheel," issued September 3, 2013

The Invention Explained

• Problem Addressed: This patent seeks to protect a "novel design for a spoke of the MAVERICK wheel," isolating a key component of the overall wheel design for separate protection (Compl. ¶7).
• The Patented Solution: The patent claims the ornamental design for a single "spoke segment of a vehicle wheel" ('002 Patent, Claim). The patent drawings and description precisely define the claimed subject matter. Broken lines depict the surrounding wheel environment, while dash-dot lines explicitly mark the "boundary of the claimed design," which itself is shown in solid lines ('002 Patent, Description, Figs. 1-2). This creates a narrow claim focused exclusively on the appearance of one spoke.
• Technical Importance: The claimed spoke design is a component of the same "MAVERICK" wheel referenced in connection with the ’963 Patent, indicating its contribution to the overall aesthetic of that product line (Compl. ¶7).

Key Claims at a Glance

• The single asserted claim is for "The ornamental design for spoke segment of a vehicle wheel, as shown and described" ('002 Patent, Claim).
• The claim's scope is limited to the visual appearance of the single spoke segment shown in solid lines, as bounded by the dash-dot lines in the patent’s drawings.

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).

Functionality and Market Context

The complaint alleges that Defendant's wheels "embody the patented MAVERICK designs" (Compl. ¶9). To support this, the complaint provides a screenshot from a vendor's website depicting an accused wheel. Exhibit E provides a screenshot from a vendor website showing the accused DFD wheel, which Plaintiff alleges embodies its patented designs (Compl. ¶9). The complaint further alleges that Defendant's wheels are sold in direct competition with Plaintiff's wheels, sometimes through the same retailers (Compl. ¶20).

IV. Analysis of Infringement Allegations

The complaint alleges that Defendant's vehicle wheels infringe the claims of the '963 and '002 Patents but does not provide a claim chart or a detailed breakdown of the infringement theory (Compl. ¶14). The infringement test for a design patent is whether, in the eye of an ordinary observer, the accused design is substantially the same as the claimed design, such that the observer would be induced to purchase one believing it to be the other. The analysis will depend on a visual comparison between the accused DFD wheels, as shown in evidence like Exhibit E, and the designs claimed in the patents.

• Identified Points of Contention:
  • '963 Patent (Wheel Face): A central question is whether an ordinary observer, viewing the accused DFD wheel as a whole, would find its ornamental appearance substantially the same as the overall design claimed in the '963 Patent, after disregarding the unclaimed environmental features shown in broken lines (such as the center cap and rim elements).
  • '002 Patent (Spoke Segment): The inquiry for this patent is narrower and more focused. The question is whether the specific spoke design of the accused DFD wheel is substantially the same as the isolated spoke segment claimed in the '002 Patent, as defined by the solid and dash-dot lines in its drawings. It is possible for a court to find infringement of one patent but not the other, depending on the degree of similarity of the overall design versus the specific component.

V. Key Claim Terms for Construction

In design patent litigation, claim construction focuses on the visual scope of the claimed design as depicted in the drawings, rather than on textual terms. The central issue is defining what visual features are covered by the claim.

• The Term: "the ornamental design...as shown and described"
• Context and Importance: The outcome of the case hinges on the interpretation of the visual scope of the patents' claims. The distinction between claimed features (solid lines), unclaimed environment (broken lines), and claim boundaries (dash-dot lines) will be dispositive for the infringement analysis. Practitioners may focus on this distinction because the infringement test requires comparing only the protected aspects of the design.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: For the '963 Patent, the title "Vehicle-Wheel Front Face" and the depiction of the entire face suggest that the claim protects the overall visual impression created by the combination of all solid-line features, not just isolated elements ('963 Patent, Title).
  • Evidence for a Narrower Interpretation: Both patents contain explicit limitations. The '963 Patent's description states that the broken lines showing the "side of the wheel, the round elements on the lip of the rim, and the bolt holes and center cap" are not part of the claimed design ('963 Patent, Description). The '002 Patent is even more specific, using dash-dot lines to "illustrat[e] the boundary of the claimed design," thereby expressly limiting protection to the visual features of the single spoke segment ('002 Patent, Description). Any infringement analysis must exclude these disclaimed portions from consideration.

VI. Other Allegations

• Indirect Infringement: The complaint makes a conclusory allegation of inducement to infringe but does not plead specific facts explaining how Defendant allegedly induced others, such as distributors or end-users, to infringe (Compl. ¶15).
• Willful Infringement: The complaint alleges that Defendant’s infringement was willful (Compl. ¶17). This allegation is factually supported by the claim that Plaintiff sent a cease-and-desist letter to Defendant on December 8, 2014, which was returned unopened after being "REFUSED DELIVERY" by the recipient (Compl. ¶12, Ex. G). This event could be argued to establish knowledge or deliberate indifference.

VII. Analyst’s Conclusion: Key Questions for the Case

• A core issue will be one of visual comparison: Applying the "ordinary observer" test, are the accused DFD wheels "substantially the same" as the ornamental designs claimed in the '963 and '002 patents, after the unclaimed environmental elements (shown in broken lines) are properly filtered out of the analysis?
• A key evidentiary question will concern willfulness: Does the evidence surrounding the December 2014 demand letter, particularly its alleged refusal by Defendant, support a finding of pre-suit knowledge or deliberate indifference sufficient to sustain a claim for willful infringement?
• A final question relates to the dual-patent strategy: Can Plaintiff prove infringement of both the broad, overall wheel face design of the '963 Patent and the narrow, specific spoke segment design of the '002 Patent? The separate infringement analyses for the whole design and its component part may yield different outcomes.