Boostnatics LLC v. I Max Trading Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Boostnatics, LLC (Texas)
  • Defendant: I - Max Trading Inc. (California)
  • Plaintiff’s Counsel: Symbus Law Group, LLC
• Case Identification: 2:17-cv-03562, C.D. Cal., 05/11/2017
• Venue Allegations: Venue is alleged to be proper in the Central District of California because Defendant is a California corporation that regularly conducts business in the state and the action arises in part from activities in Los Angeles County.
• Core Dispute: Plaintiff alleges that Defendant’s "Turbo Keychains" infringe two U.S. design patents covering the ornamental appearance of a keychain device.
• Technical Context: The dispute is in the market for automotive-themed novelty consumer products, specifically keychains designed to resemble automotive turbochargers.
• Key Procedural History: The complaint alleges that Plaintiff provided Defendant with actual notice of infringement via letters dated January 13, 2016, more than a year before filing the lawsuit. It also notes that the '763 Patent was assigned from the original assignee, Boost Keychains, to the Plaintiff, Boostnatics, LLC.

Case Timeline

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

U.S. Design Patent No. D722,763 - "KEYCHAIN DEVICE," issued February 24, 2015

The Invention Explained

• Problem Addressed: As a design patent, the patent does not describe a technical problem or functional solution. Instead, it claims rights to a novel ornamental design for an article of manufacture (D722,763 Patent, CLAIM section).
• The Patented Solution: The patent claims the ornamental design for a keychain device that resembles a miniature automotive turbocharger. Key visual features depicted in the drawings include a main housing with a circular, snail-shell-like shape, a prominent side-mounted cylindrical component, and an attachment lug for a key ring ('763 Patent, Figs. 1, 4). The broken lines showing a key ring and chain are identified as environmental structure and do not form part of the claimed design ('763 Patent, DESCRIPTION section).
• Technical Importance: The design provides a specific, novel aesthetic for a keychain, leveraging the visual motifs of high-performance automotive components to appeal to car enthusiasts (Compl. ¶1).

Key Claims at a Glance

• The patent asserts a single claim for "The ornamental design for a keychain device, as shown and described" ('763 Patent, CLAIM section).
• The scope of a design patent claim is defined by its drawings. The protected elements are the visual features of the keychain device depicted in solid lines across the patent's eight figures.

U.S. Design Patent No. D751,283 - "KEYCHAIN DEVICE," issued March 15, 2016

The Invention Explained

• Problem Addressed: The patent claims a new, original, and ornamental design for a keychain device (D751,283 Patent, CLAIM section).
• The Patented Solution: The '283 Patent claims a closely related ornamental design for a keychain device, also resembling a miniature turbocharger. The overall configuration is substantially similar to that of the '763 Patent, featuring a main circular housing, a side component, and an attachment point ('283 Patent, Figs. 1, 4). The design appears to show minor variations in the features of the "turbine" face and proportions compared to the '763 patent. The key ring and chain are again shown in broken lines and are not part of the claimed design ('283 Patent, DESCRIPTION section).
• Technical Importance: This patent protects a design variation on the same automotive-themed keychain concept, expanding the plaintiff's design rights in this product category (Compl. ¶11).

Key Claims at a Glance

• The patent asserts a single claim for "The ornamental design for a keychain device, as shown and described" ('283 Patent, CLAIM section).
• The protected design is defined by the visual features shown in solid lines in the patent's figures.

III. The Accused Instrumentality

Product Identification

Defendant’s “Turbo Keychains” (Compl. ¶12).

Functionality and Market Context

• The accused products are described as "novelty item devices that attach to keychains" with an automotive theme (Compl. ¶¶3, 12).
• Defendant is alleged to be an "Internet-based vendor" that markets and sells its "Turbo Keychains" throughout the United States via online sales channels, including eBay and Amazon.com (Compl. ¶¶3, 13).
• The complaint alleges that photographs comparing the accused product with the Plaintiff's keychain device, attached as Exhibit C, show that "The parties' products are virtually identical" (Compl. ¶17).

IV. Analysis of Infringement Allegations

The complaint alleges that the Defendant's "Turbo Keychains" infringe the design patents by embodying a design that is substantially the same as the patented designs. The analysis for design patent infringement turns on the "ordinary observer" test, which asks whether an ordinary observer would find the two designs to be substantially the same. The complaint does not contain a detailed element-by-element comparison, but rather a holistic allegation of near-identity.

'763 Patent & '283 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: The primary question for the court will be whether, in the eye of an ordinary observer, the accused "Turbo Keychain" is substantially the same as the designs claimed in the '763 and '283 patents. The analysis will involve comparing the overall visual impression of the accused product with the patented designs, not a component-by-component analysis.
  • Technical Questions: A factual question is whether any differences in appearance between the accused product and the patent drawings are significant enough to be noticed by an ordinary observer, or if they are minor variations that do not alter the overall visual impression. The complaint's allegation that the products are "virtually identical" suggests Plaintiff's view that any such differences are legally insignificant (Compl. ¶17).

V. Key Claim Terms for Construction

The single claim in each design patent-in-suit is "The ornamental design for a keychain device, as shown and described." Claim construction for design patents is typically limited to determining the scope of the claimed design as a whole, as depicted in the drawings, rather than construing individual text-based terms. Therefore, a traditional claim construction analysis of specific terms is not applicable.

VI. Other Allegations

• Indirect Infringement: The complaint makes a conclusory allegation of induced infringement under 35 U.S.C. § 271(b) and/or (c) (Compl. ¶16). It does not, however, plead specific facts detailing how Defendant allegedly encourages or aids others to directly infringe.
• Willful Infringement: The complaint alleges willfulness on two grounds. First, it alleges Defendant had pre-suit knowledge of the patents and infringement via actual notice letters sent on January 13, 2016 (Compl. ¶20). Second, it alleges on information and belief that Defendant’s "Turbo Keychains" were not independently developed but were "created with knowledge of Boostnatic's keychain devices" (Compl. ¶18).

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

• A core issue will be a factual determination under the "ordinary observer" test: Does the overall ornamental appearance of the accused "Turbo Keychain" appropriate the novelty of the designs in the '763 and '283 patents, such that an ordinary observer would be deceived into purchasing the accused product believing it to be the patented one? The allegation that the products are "virtually identical" will be central to this inquiry.
• A key evidentiary question will be one of intent and knowledge: Does the evidence, including the alleged pre-suit notice letter and the claim of non-independent development, support a finding that Defendant’s alleged infringement was willful? This determination will be critical to the potential for enhanced damages.