DCT
2:17-cv-06790
Paint Zoom LLC v. Groupon Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Paint Zoom, LLC (Delaware)
- Defendant: Groupon, Inc. (Delaware); Global Phoenix Computer Technologies Solutions, Inc. (New York)
- Plaintiff’s Counsel: Insight, PLC; Heninger Garrison Davis, LLC
- Case Identification: 2:17-cv-06790, C.D. Cal., 09/14/2017
- Venue Allegations: Venue is alleged in the Central District of California based on Defendants' business contacts, purposeful availment, and the location where the causes of action arise.
- Core Dispute: Plaintiff, an exclusive licensee, alleges that paint sprayers sold by Groupon and supplied by Global Phoenix infringe a design patent covering the ornamental appearance of Plaintiff's "Paint Zoom" product.
- Technical Context: The dispute concerns the ornamental design of consumer-grade, portable electric paint spray systems used for home improvement.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendants with notice of infringement on multiple occasions beginning in February 2015 (for Global Phoenix) and October 2015 (for Groupon), but that infringing sales continued. These allegations form the basis for a claim of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2010-04-12 | '387 Patent Priority Date |
| 2010-10-12 | '387 Patent Application Date |
| 2011-06-07 | '387 Patent Issue Date |
| 2014-12-01 | Plaintiff learns of counterfeit sales on Amazon (approx.) |
| 2015-02-20 | Plaintiff sends cease and desist letter to Global Phoenix |
| 2015-10-01 | Plaintiff obtains accused product from Groupon (approx.) |
| 2017-08-01 | Plaintiff makes final documented purchase from Groupon (approx.) |
| 2017-09-14 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Design Patent No. D639,387, "Paint spray system," issued June 7, 2011.
- The Invention Explained:
- Problem Addressed: Design patents do not claim to solve a functional problem; rather, they protect a new, original, and ornamental design for an article of manufacture ('387 Patent, Claim).
- The Patented Solution: The patent protects the unique ornamental appearance of a paint spray system. The design consists of a shoulder-slung motor unit with a distinct ribbed housing and carrying strap, connected by a flexible corrugated hose to a handheld pistol-grip spray gun with a cylindrical, screw-on paint reservoir below it ('387 Patent, FIG. 1). The scope of protection is defined by the visual features shown in the patent's seven figures ('387 Patent, p. 1, DESCRIPTION).
- Technical Importance: The complaint alleges the product embodying the patented design was "extremely successful, generating sales of hundreds of thousands of units representing tens of millions of dollars" (Compl. ¶12).
- Key Claims at a Glance:
- Design patents contain a single claim. The claim covers "The ornamental design for a paint spray system, as shown and described" ('387 Patent, Claim).
- The scope of the claim is defined by the solid-line drawings in Figures 1-7 of the patent.
III. The Accused Instrumentality
- Product Identification: The complaint identifies the accused products as the "iMounTEK" paint sprayer and other counterfeit "Paint Zoom" products (Compl. ¶¶8, 28). The complaint includes a screenshot from Groupon's website showing the product advertised as a "3-Way Professional Electric Paint Sprayer with Adjustable Dial" (Compl. p. 8).
- Functionality and Market Context: The accused product is an electric paint sprayer system sold by Defendant Groupon and allegedly supplied by Defendant Global Phoenix (Compl. ¶¶7, 8, 21). The complaint alleges that the accused product's design is "the same" as the patented design, with the name changed to "iMounTEK" (Compl. ¶21). It further alleges that over 10,000 units of the accused product were sold via Groupon's website (Compl. p. 8).
IV. Analysis of Infringement Allegations
The complaint alleges that the accused products are "so similar as to be nearly identical" to the patented design, such that an "ordinary observer" would be deceived (Compl. ¶28). The infringement test for a design patent is whether, in the eye of an ordinary observer, the resemblance between the patented design and the accused design is such as to induce him to purchase one supposing it to be the other. The complaint provides a photo of the accused product purchased from Groupon, allowing for a visual comparison to the patent's drawings (Compl. p. 10).
- D639,387 Infringement Allegations
| Claim Element (from the single claim, as shown in Figs. 1-7) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design of a paint spray system comprising a motor unit, hose, and spray gun | The accused product is alleged to copy the overall design covered by the '387 patent. | ¶28 | '387 Patent, FIG. 1 |
| A shoulder-slung paint machine/motor unit with a carrying belt | The accused product incorporates a shoulder-slung motor unit with a nearly identical shape, vent pattern, and strap. | ¶28; p. 10 | '387 Patent, FIG. 1 |
| A flexible hose pipe connecting the motor to the gun | The accused product uses a flexible, corrugated hose of similar appearance and proportion to connect its two main components. | ¶28; p. 10 | '387 Patent, FIG. 1 |
| A handheld paint spray gun with an attached paint container/reservoir | The accused product's spray gun and reservoir are alleged to be "nearly identical" in shape and configuration to the patented design. | ¶28; p. 10 | '387 Patent, FIG. 1 |
- Identified Points of Contention:
- Scope Questions: The primary question is whether the overall visual impression of the accused "iMounTEK" sprayer is "substantially the same" as the patented design. A potential dispute may arise over the visual effect of the "iMounTEK" brand name, which appears on the accused product but not in the patent drawings (Compl. p. 10). A defendant may argue this branding creates a different overall appearance, while the plaintiff may argue it is an insubstantial difference.
- Technical Questions: The case does not present technical questions of operation, but rather a direct visual comparison. The central evidentiary question will be whether the specific shapes, proportions, and arrangement of features of the accused product are close enough to the patent drawings to confuse an ordinary observer. The complaint's side-by-side presentation of the patented design and a photograph of the accused product is intended to highlight their similarity (Compl. pp. 9-10).
V. Key Claim Terms for Construction
Claim construction is rare in design patent cases, as the drawings themselves are the claim. However, the parties may dispute the scope of the claimed design as a whole.
- The Term: "ornamental design for a paint spray system, as shown and described"
- Context and Importance: The entire infringement analysis depends on the scope of the visual impression protected by the patent. The dispute will not be over the meaning of words, but over the visual comparison of the accused product to the patent's drawings. Practitioners may focus on whether minor differences between the products, or the addition of branding on the accused product, are sufficient to escape infringement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim covers the overall visual impression created by the combination of the motor unit, hose, and gun as depicted in the figures. An argument for broader scope would focus on the near-identity of the overall shape, configuration, and proportions, suggesting that minor surface details or branding do not alter the substantially similar "total concept" of the design.
- Evidence for a Narrower Interpretation: The protection is limited to the specific ornamental design as shown in the solid lines of the drawings ('387 Patent, Figs. 1-7). A defendant could argue that any deviation, such as the prominent "iMounTEK" logo on the accused product's motor housing and spray gun (Compl. p. 10), creates a different overall visual appearance and thus avoids infringement.
VI. Other Allegations
- Indirect Infringement: The complaint's prayer for relief seeks to enjoin inducing and contributing to infringement (Compl. p. 17). However, the factual allegations focus on direct infringement by Defendants through their own making, selling, and importing of the accused products (Compl. ¶28).
- Willful Infringement: The complaint makes specific allegations to support willfulness. It asserts that both Global Phoenix and Groupon received multiple, explicit pre-suit notifications of their alleged infringement of the '387 patent, beginning in February 2015 for Global Phoenix and October 2015 for Groupon (Compl. ¶¶19, 22-24). The complaint alleges that despite these notices, Defendants continued to sell the infringing products, which may support a finding of willfulness and a claim for enhanced damages (Compl. ¶32).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual comparison: In the eyes of an ordinary observer, is the ornamental design of the accused "iMounTEK" sprayer substantially the same as the design claimed in the '387 patent? The side-by-side images provided in the complaint suggest a high degree of similarity, which will be the central focus of the infringement analysis (Compl. pp. 9-10).
- A second key question will be the legal effect of branding: Does the addition of the "iMounTEK" logo on the accused product create a distinct overall visual impression that avoids infringement, or will the court find it to be an insubstantial modification that fails to overcome the similarity in the products' underlying shapes and configurations?
- Finally, a critical question for damages will be willfulness: Given the complaint’s detailed timeline of pre-suit notice and alleged continued sales, the court will need to determine whether the alleged infringement was willful, which could expose Defendants to a threefold increase in damages.