DCT
2:17-cv-06710
Eagle Eyes Traffic Industry USA Holding v. DNA Motor Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Eagle Eyes Traffic Industry USA Holding LLC (Nevada)
- Defendant: DNA MOTOR Inc. (California)
- Plaintiff’s Counsel: Inhouse Co. Law Firm
- Case Identification: 2:17-cv-06710, C.D. Cal., 09/12/2017
- Venue Allegations: Venue is asserted based on Defendant conducting substantial business and selling the accused products within the Central District of California, and the resulting harm to the Plaintiff in the district.
- Core Dispute: Plaintiff alleges that Defendant’s aftermarket automotive headlights and their component light bars infringe the ornamental designs protected by three U.S. design patents.
- Technical Context: The dispute is in the automotive aftermarket parts industry, where the aesthetic and ornamental appearance of components like headlights is a key driver of consumer choice.
- Key Procedural History: The complaint is the initial pleading in this matter. No prior litigation, administrative proceedings, or licensing history between the parties is mentioned.
Case Timeline
| Date | Event |
|---|---|
| 2012-03-29 | U.S. Design Patent D706,967 Application Filing Date |
| 2012-12-04 | U.S. Design Patent D690,040 Priority Date (Taiwan) |
| 2012-12-27 | U.S. Design Patent D689,223 Priority Date (Taiwan) |
| 2013-09-03 | U.S. Design Patent D689,223 Issued |
| 2013-09-17 | U.S. Design Patent D690,040 Issued |
| 2014-06-10 | U.S. Design Patent D706,967 Issued |
| 2017-09-12 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D689,223 - "Exterior Surface Configuration of a Vehicular Headlight" (Issued Sep. 3, 2013)
The Invention Explained
- Problem Addressed: Design patents protect ornamental appearance rather than functional solutions. The patent does not describe a technical problem but instead claims a novel aesthetic design for a vehicle headlight.
- The Patented Solution: The patent claims the specific ornamental design for the internal configuration of a headlight assembly ('223 Patent, Claim). The claimed design, shown in solid lines, features a vertical arrangement of two primary lamp bezels, with the upper one being larger than the lower one, wrapped by two C-shaped "U-Bar" elements ('223 Patent, FIGS. 1-2). The overall exterior housing of the headlight is shown in broken lines, indicating it is not part of the claimed design ('223 Patent, FIGS. 1-4).
- Technical Importance: The complaint does not provide sufficient detail for analysis of the design's specific technical or market importance beyond its asserted value as proprietary intellectual property.
Key Claims at a Glance
- The patent contains a single claim for "the ornamental design for an exterior surface configuration of a vehicular headlight, as shown and described" (Compl. ¶15; ’223 Patent, Claim). The scope of this claim is defined by the features depicted in solid lines in the patent's drawings.
U.S. Design Patent No. D690,040 - "Exterior Surface Configuration of a Vehicular Headlight" (Issued Sep. 17, 2013)
The Invention Explained
- Problem Addressed: As with the '223 Patent, this design patent is directed to the ornamental appearance of a product rather than a functional problem.
- The Patented Solution: The patent claims the specific ornamental design for the internal layout of a vehicle headlight ('040 Patent, Claim). Key features shown in solid lines include two stacked, roughly square-shaped lamp assemblies and an arrangement of smaller lights or reflectors positioned between them ('040 Patent, FIGS. 1-2). As with the '223 Patent, the overall housing is depicted in broken lines and is not part of the claimed design ('040 Patent, FIGS. 1-4).
- Technical Importance: The complaint does not provide sufficient detail for analysis of the design's specific technical or market importance.
Key Claims at a Glance
- The patent contains a single claim for "the ornamental design for an exterior surface configuration of a vehicular headlight, as shown and described" (Compl. ¶27; ’040 Patent, Claim). The scope is defined by the solid-line drawings.
Multi-Patent Capsule
- Patent Identification: U.S. Design Patent No. D706,967, "Light Guide Bar For Vehicle Lamp," Issued Jun. 10, 2014 (Compl. ¶13).
- Technology Synopsis: This patent protects the ornamental design for a standalone C-shaped or U-shaped light guide bar, a component used within vehicle lamps to provide accent lighting or function as a daytime running light (Compl. ¶38; '967 Patent, FIGS. 1-7). The claim covers the shape and surface ornamentation of the bar itself.
- Asserted Claims: The single claim for the ornamental design as shown and described ('967 Patent, Claim).
- Accused Features: The "Light Guide Bar" component incorporated into Defendant's "F-150 3D Halo Projector Headlights" and "GMC Sierra U-Bar Halo Projector" products (Compl. ¶42-43).
III. The Accused Instrumentality
- Product Identification: The accused products are Defendant's aftermarket "projection headlights," specifically identified as the "F-150 3D Halo Projector Headlights" and the "GMC Sierra U-Bar Halo Projector Headlights" (Compl. ¶8, ¶17, ¶28). The "U-Bar Light Guide Bar" component within these headlights is also accused of infringing the '967 Patent (Compl. ¶39).
- Functionality and Market Context: The accused products are aftermarket headlights designed to replace original equipment manufacturer (OEM) headlights on Ford F-150 and GMC Sierra trucks (Compl. ¶17, ¶28). The complaint alleges these products are sold to consumers through online retailers like Amazon.com and distributors such as speed-daddy.com (Compl. ¶5, ¶9). The core of the infringement allegation is that the ornamental appearance of these headlights and their components was "copied" from and is "the same or substantially the same" as Plaintiff's patented designs (Compl. ¶17, ¶18, ¶28, ¶29).
IV. Analysis of Infringement Allegations
The complaint alleges infringement under the "ordinary observer" test, asserting that a potential purchaser would be deceived by the similarity between the patented designs and the accused products (Compl. ¶18, ¶21).
'223 Patent Infringement Allegations
The complaint provides a side-by-side visual comparison of the patented design and a photograph of the accused "F-150 3D Halo Projector Headlight" with annotated features (Compl. ¶17, p. 5).
| Key Feature of Patented Design (Claim 1) | Corresponding Feature in Accused Product | Complaint Citation | Patent Citation |
|---|---|---|---|
| Overall arrangement of two primary lamp bezels in a vertical orientation, wrapped by two C-shaped light bars. | The accused product is alleged to have the same or substantially the same overall arrangement of projectors and reflectors, also wrapped by two C-shaped "U BAR" elements. | ¶17-18 | FIG. 2 |
| Distinctive shape and placement of the upper and lower lamp assemblies and surrounding light guides. | The complaint alleges the accused product copies the placement of the "Reflector" and "Projector" and the shape of the "U BAR." | ¶17 | FIG. 2 |
'040 Patent Infringement Allegations
The complaint includes a side-by-side comparison of a patent figure and a photograph of the accused "GMC Sierra U-Bar Halo Projector Headlight" (Compl. ¶28, p. 8).
| Key Feature of Patented Design (Claim 1) | Corresponding Feature in Accused Product | Complaint Citation | Patent Citation |
|---|---|---|---|
| Overall internal configuration featuring two stacked, roughly square-shaped lamp assemblies. | The accused product is alleged to feature two stacked, square-shaped projector lamp assemblies in a configuration that is the same or substantially the same as the patented design. | ¶28-29 | FIG. 2 |
| Specific arrangement of smaller internal elements, including reflectors and side markers, within the assembly. | The accused product allegedly incorporates a side marker and internal layout that gives a substantially similar overall visual impression to the patented design. | ¶28-29 | FIG. 2 |
- Identified Points of Contention:
- Scope Questions: A central question will be the proper application of the ordinary observer test. The analysis must focus only on the elements shown in solid lines in the patent drawings (the internal components), not the overall headlight housing shown in broken lines. The court will need to determine if an ordinary observer would find the claimed designs and the accused products substantially similar when disregarding the unclaimed housings.
- Technical Questions: For the '223 patent, the complaint's own visual evidence annotates a feature on the accused product as being "different from D689,223" (Compl. ¶17, p. 5). This raises the question of whether this difference is minor enough to be overlooked by an ordinary observer assessing the overall design, or if it is significant enough to defeat the claim of substantial similarity.
V. Key Claim Terms for Construction
In design patent litigation, the "claim" is defined by the drawings, making the construction of specific terms less central than in utility patent cases. However, the scope of what the drawings cover is a critical issue.
- The Term: "The ornamental design... as shown and described"
- Context and Importance: The scope of this "claim" is defined by the use of solid and broken lines in the patent drawings. For both the '223 and '040 patents, the internal lamp assemblies and light bars are shown in solid lines, while the outer headlight housings are shown in broken lines. Practitioners may focus on this distinction because it strictly limits the claimed design to the internal configuration. The infringement analysis must compare the accused product's internal layout to the solid-line drawings, not its overall shape to the complete patent figures.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue that while the housing is unclaimed, the claimed internal elements are so significant that they dominate the overall visual impression of the product, making any product with a similar internal layout infringing, regardless of the housing shape.
- Evidence for a Narrower Interpretation: The explicit use of broken lines for the housing ('223 Patent, FIGS. 1-4; '040 Patent, FIGS. 1-4) provides strong intrinsic evidence to limit the claim's scope. A party could argue that infringement requires substantial similarity in the specific arrangement and appearance of only the solid-line features, and that any visual impact from the unclaimed housing must be disregarded.
VI. Other Allegations
- Indirect Infringement: The complaint does not plead a separate count for indirect infringement. It does allege that Defendant "intentionally sells, ships or otherwise delivers the accused products... with knowledge that are designed to and do practice the infringing features" (Compl. ¶23, ¶34, ¶45). These allegations primarily support direct infringement but could form a basis for future arguments regarding inducement.
- Willful Infringement: The complaint alleges that Defendant has had knowledge of infringement for all three patents "since at least the filing of this complaint" (Compl. ¶16, ¶26, ¶37). This allegation, if proven, could support a claim for post-filing willful infringement but does not assert pre-suit knowledge.
VII. Analyst’s Conclusion: Key Questions for the Case
This case will likely center on the application of the "ordinary observer" test to the specific facts of each asserted design patent. The key open questions for the court appear to be:
- A core issue will be one of claim scope and visual comparison: For each patent, would an ordinary observer, properly focusing only on the internal headlight features shown in solid lines in the drawings, be deceived into believing the accused product is the same as the patented design?
- A key evidentiary question will be the materiality of design differences: Specifically for the '223 patent, how will the court weigh the visual effect of the acknowledged difference in the lower lamp assembly against the alleged similarities in the overall internal arrangement when determining if the designs are "substantially the same"?
- A third question concerns the standalone component claim: In analyzing infringement of the '967 patent, which claims the "Light Guide Bar" alone, to what extent does the appearance of that bar as incorporated into the larger accused headlight assembly factor into the ordinary observer analysis?