Mega Distribution Int L Inc v. Barter Brothers LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Mega Distribution Int'l, Inc. (California)
  • Defendant: Barter Brothers, LLC (Kentucky)
  • Plaintiff’s Counsel: Wagner, Anderson & Bright, LLP
• Case Identification: 2:16-cv-03141, C.D. Cal., 05/06/2016
• Venue Allegations: Venue is asserted based on allegations that Defendant's acts of patent infringement, including sales and offers for sale, occurred at least in part within the Central District of California.
• Core Dispute: Plaintiff alleges that Defendant’s "Universal LED Visor Lights" infringe a design patent for a "Mirrored Light Bar Set For Emergency Vehicles."
• Technical Context: The dispute is in the field of emergency vehicle lighting, specifically visor-mounted light bars, where the ornamental appearance of a product can be a significant market differentiator.
• Key Procedural History: The complaint does not mention any prior litigation, inter partes review proceedings, or licensing history related to the patent-in-suit.

Case Timeline

II. Technology and Patent(s)-in-Suit Analysis

U.S. Design Patent No. D614,986 - "Mirrored Light Bar Set For Emergency Vehicles," issued May 4, 2010

The Invention Explained

• Problem Addressed: Design patents protect ornamental appearance rather than solving a technical problem. The implicit goal is to create a new, original, and ornamental design for an article of manufacture, in this case, a light bar set for emergency vehicles ('986 Patent, Title).
• The Patented Solution: The patent claims the specific visual appearance of a light bar set composed of two mirror-image units ('986 Patent, FIG. 1). The overall design is characterized by an elongated housing with a distinct wedge-shaped side profile that tapers from top to bottom, and a front face featuring multiple, horizontally-aligned, recessed rectangular light modules ('986 Patent, FIG. 6, FIG. 8). The claimed design is explicitly limited to the solid-line portions of the drawings, disclaiming the mounting hardware and vehicle environment shown in broken lines ('986 Patent, Description). The perspective view in Figure 1 of the patent illustrates the overall configuration of the two-piece set (Compl. ¶6, Ex. A).
• Technical Importance: The design creates a distinct visual identity for a visor-mounted light bar, which may serve to differentiate the product from competitors in the marketplace.

Key Claims at a Glance

• The '986 Patent contains a single claim for "The ornamental design for a mirrored light bar set for emergency vehicles, as shown and described" ('986 Patent, Claim).
• The scope of this claim is defined by the visual characteristics depicted in the patent's drawings, including:
  • The overall appearance of a set of two mirror-image light bar units.
  • An elongated housing with a specific tapered, wedge-like side profile.
  • A front face with a series of recessed, rectangular light modules.
  • The specific proportions and surface configurations shown in Figures 1-9.
  • The design explicitly excludes the mounting hardware shown in broken lines.

III. The Accused Instrumentality

Product Identification

• The accused products are "Lights Bars, specifically model: Universal LED Visor Lights Caution Emergency 32W Security" (Compl. ¶7).

Functionality and Market Context

• The complaint alleges that these are light bars that Defendant sells and offers for sale (Compl. ¶7). The product name suggests they are LED-based lights intended for mounting on a vehicle's visor for emergency or security purposes. The complaint does not provide further details on the product's technical operation, market position, or commercial importance beyond the allegation of infringement (Compl. ¶¶ 7-8).

IV. Analysis of Infringement Allegations

The complaint asserts that the overall visual appearance of the accused light bars infringes the single claim of the '986 Patent (Compl. ¶7). For design patents, infringement is determined by 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 states that "Images and a spreadsheet of Defendant's infringing product are attached hereto as Exhibit B" to support its infringement claim (Compl. ¶7). However, as this exhibit was not included with the publicly filed complaint, a direct visual comparison based on the pleading itself is not possible. The infringement theory is therefore based on the conclusory allegation that the accused products are covered by the single claim of the '986 patent (Compl. ¶7).

• Identified Points of Contention:
  • Visual Similarity: The central question for the court will be whether the overall visual impression of the accused "Universal LED Visor Lights" is "substantially the same" as the design claimed in the '986 Patent. This analysis will depend on visual evidence of the accused product.
  • Scope of Comparison: The comparison must be between the accused product and the patented design as a whole, filtering out the unclaimed mounting hardware shown in broken lines in the patent's drawings ('986 Patent, Description). The focus will be on the similarity of the ornamental, non-functional aspects of the designs.

V. Key Claim Terms for Construction

In design patent litigation, "claim construction" focuses on defining the scope of the claimed design as a whole, as depicted in the drawings, rather than construing specific text-based terms.

• The "Claim": The overall ornamental design shown in Figures 1-9 of the '986 Patent.
• Context and Importance: The determination of the scope of the claimed design is foundational to the infringement analysis. The court will assess the overall visual impression created by the design, which will serve as the benchmark against which the accused product is compared.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party could argue that the core of the design is its general configuration—a mirrored pair of wedge-shaped housings with multiple horizontal light elements—and that minor variations in surface contours or proportions do not alter the overall visual impression.
  • Evidence for a Narrower Interpretation: A party could argue that the specific angles of the taper, the precise dimensions and spacing of the light module recesses, and the exact curvature of the housing are all integral to the claimed design. The patent's explicit disclaimer of the mounting hardware ('986 Patent, Description) serves to narrow the claim's scope by excluding those elements from the infringement analysis.

VI. Other Allegations

• Indirect Infringement: The complaint makes no allegations of induced or contributory infringement; it is based solely on direct infringement through selling and offering for sale (Compl. ¶7).
• Willful Infringement: The complaint does not use the term "willful" or plead any specific facts suggesting that Defendant had pre- or post-suit knowledge of the patent or its alleged infringement (Compl. ¶¶ 1-9). It seeks damages under 35 U.S.C. §§ 284 and 289, the latter of which provides for recovery of an infringer's total profit for design patent infringement (Compl. ¶¶ 2, 9).

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

1. The Core Visual Question: Is the overall ornamental design of Defendant's "Universal LED Visor Lights" substantially the same as the design claimed in the '986 patent from the perspective of an ordinary observer, and does the complaint's (un-provided) Exhibit B or other forthcoming evidence support this allegation?
2. The Role of Prior Art: While not addressed in the complaint, a key issue will be the context provided by prior art designs for emergency light bars. The scope of protection afforded to the '986 patent's design, and the significance of any differences between it and the accused product, will be evaluated in light of how novel the patented design was at the time of invention.
3. Damages Theory: Should infringement be found, a central question will be the calculation of damages, particularly whether Plaintiff will pursue its entitlement to Defendant's total profits from the infringing sales under 35 U.S.C. § 289, a remedy specific to design patents.