DCT
2:17-cv-07036
E Mishan Sons Inc v. PMG Group Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: E. Mishan & Sons, Inc. (New York)
- Defendant: PGM GROUP, INC. (California), Paul A. Valadez (individual), and Wanli Gong (individual)
- Plaintiff’s Counsel: Gerard Fox Law; Notaro Míchalos & Zaccaria PC
- Case Identification: 2:17-cv-07036, C.D. Cal., 09/22/2017
- Venue Allegations: Venue is alleged to be proper in the Central District of California because Defendant PGM Group, Inc. resides and transacts business in the district, and individual Defendants Valdez and Gong are alleged to reside in the district. The complaint further alleges that the infringing acts giving rise to the claims occurred within the judicial district.
- Core Dispute: Plaintiff alleges that Defendant’s automotive assistance handle, collapsible lantern, and tactical flashlight products infringe three of its patents, in addition to infringing various trademarks, trade dress, and copyrights.
- Technical Context: The dispute involves several categories of mass-market consumer goods, primarily portable lighting devices and automotive safety and accessibility tools.
- Key Procedural History: The complaint does not mention any prior litigation between the parties, Inter Partes Review (IPR) proceedings involving the patents-in-suit, or any prior licensing history.
Case Timeline
| Date | Event |
|---|---|
| 1998-05-01 | Priority Date for U.S. Patent No. 6,030,094 |
| 2000-02-29 | Issue Date for U.S. Patent No. 6030094 |
| 2004-10-13 | Priority Date for U.S. Patent No. 7,434,955 |
| 2008-10-14 | Issue Date for U.S. Patent No. 7434955 |
| 2015-02-19 | Priority Date for U.S. Patent No. D743,324 |
| 2015-06-16 | Issue Date for Plaintiff's '546 Trademark Registration |
| 2015-06-30 | Issue Date for Plaintiff's Personal Pedi Packaging Copyright |
| 2015-11-17 | Issue Date for U.S. Patent No. D743,324 |
| 2016-03-22 | Issue Date for Plaintiff's '669 Trademark Registration |
| 2016-08-11 | Issue Date for Plaintiff's Car Cane & Taclight Copyrights |
| 2017-09-05 | Date of Defendant's Webpage Captures |
| 2017-09-14 | Issue Date for Plaintiff's Gotham Steel Copyright |
| 2017-09-22 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D743,324 - "Car Handle," issued November 17, 2015
The Invention Explained
- Problem Addressed: The complaint describes the commercial embodiment of the design as an "automotive assistance device for helping persons to enter and exit an automobile" (Compl. ¶14).
- The Patented Solution: As a design patent, the 'D324 Patent does not claim a functional solution but rather protects the unique, ornamental appearance of the car handle device as depicted in its figures (D'324 Patent, FIG. 1-7). The design features a handle grip, a shank for insertion into a vehicle's door latch striker, and an integrated hooked portion.
- Technical Importance: The patent protects the specific visual appearance of a product in the automotive accessibility aid market.
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is for "The ornamental design for a car handle, as shown and described" (D'324 Patent, Claim).
U.S. Patent No. 6,030,094 - "Collapsible Lantern with Automatic Shut-Off Feature," issued February 29, 2000
The Invention Explained
- Problem Addressed: The patent background describes electrically powered collapsible lanterns and notes that if such a lantern is collapsed while still turned on, the battery will continue to drain, which is undesirable ('094 Patent, col. 2:38-41).
- The Patented Solution: The patent describes a collapsible lantern where the light source is housed in a telescoping portion that moves relative to the base containing the batteries. A switch is configured to automatically interrupt the electrical connection between the power source and the light source when the telescoping portion is moved into its fully collapsed position, thereby conserving battery life ('094 Patent, Abstract; col. 2:31-37). Figures 1 and 2 illustrate the lantern in its extended (on) and collapsed (off) states, respectively ('094 Patent, FIG. 1-2).
- Technical Importance: This automatic shut-off mechanism provides a "low-cost and easy to manufacture" way to prevent inadvertent battery depletion in portable electric lanterns, enhancing their reliability ('094 Patent, col. 2:41-43).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶¶ 55, 60).
- The essential elements of Claim 1 are:
- A collapsible lantern comprising:
- a base adapted to house a power source;
- a telescoping portion movable, relative to said base, between an extended position and a collapsed position, said telescoping portion including a light source;
- a switch electrically connected between the power source and said light source;
- wherein said switch interrupts the electrical connection between the power source and said light source when said telescoping portion is in the collapsed position.
- The complaint does not explicitly reserve the right to assert dependent claims for the '094 Patent.
U.S. Patent No. 7,434,955 - "Flashlight system," issued October 14, 2008
Technology Synopsis
The '955 Patent addresses the need for user-friendly multi-mode flashlights by disclosing a system with a single push-button switch. This switch allows a user to step through various operational modes, such as a continuous illumination mode and a second, discontinuous illumination mode (e.g., a flashing S.O.S. signal), with successive "unitary" depressions of the button, enabling one-handed operation ('955 Patent, Abstract; col. 2:3-12).
Asserted Claims
The complaint asserts independent claim 17 ('955 Patent, col. 6:15-25; Compl. ¶70).
Accused Features
The accused "ETERNAL Flashlight" is alleged to have a "single finger operated push button switch" that "steps the flashlight through all modes of operation comprising a first mode of visually continuous illumination and a second mode of discontinuous illumination" (Compl. ¶77).
III. The Accused Instrumentality
- Product Identification: The accused instrumentalities are the "ETERNAL 3-in-1 Portable Auto Handle" (accused of infringing the 'D324 Patent), the "ETERNAL 3-Way Powered Solar LED Lantern" (accused of infringing the '094 Patent), and the "ETERNAL Tactical Light" (accused of infringing the '955 Patent) (Compl. ¶¶ 23, 57, 75).
- Functionality and Market Context:
- The complaint alleges that the "ETERNAL Auto Handle" is a "duplicate" of Plaintiff’s CAR CANE product, but with the addition of a "small, functional black tip" on the metal striker piece intended for breaking a car window in an emergency (Compl. ¶29). A photograph of the accused handle is provided as Exhibit 5 to the complaint (Compl. ¶27).
- The "ETERNAL Lantern" is described as a collapsible lantern that comprises a base for batteries, a telescoping portion with LEDs, and a switch that interrupts the power connection when the lantern is collapsed (Compl. ¶59).
- The "ETERNAL Flashlight" is described as a tactical flashlight with a single push-button switch that allows a user to cycle through different modes, including continuous and discontinuous illumination (Compl. ¶77). The packaging for the accused flashlight, which includes a picture of the product, is provided as Exhibit 9 (Compl. ¶75).
- All three accused products are alleged to be marketed and sold in direct competition with the Plaintiff's corresponding products (Compl. ¶¶ 26, 58, 76).
IV. Analysis of Infringement Allegations
D743,324 Infringement Allegations
The complaint alleges that the accused "ETERNAL Auto Handle" infringes the sole claim of the 'D324 design patent. The legal test for design patent infringement is whether, in the eye of an ordinary observer, the resemblance between the accused design and the patented design is such as to deceive such an observer into purchasing one supposing it to be the other (Compl. ¶30). The complaint contends that the accused product is "substantially the same as the patented design" (Compl. ¶30). The complaint provides a photograph of the accused product as Exhibit 5, allowing for a visual comparison to the patent's figures (Compl. ¶27).
'094 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a base adapted to house a power source; | The ETERNAL Lantern is a collapsible lantern comprising a base adapted to house a power source (batteries). | ¶59 | col. 2:6-22 |
| a telescoping portion movable, relative to said base, between an extended position and a collapsed position, said telescoping portion including a light source; | a telescoping portion movable, relative to said base, between an extended position and a collapsed position, said telescoping portion including a light source (LEDs). | ¶59 | col. 2:31-37 |
| a switch electrically connected between the power source and said light source; | a switch electrically connected between the power source and said light source. | ¶59 | col. 3:21-26 |
| wherein said switch interrupts the electrical connection between the power source and said light source when said telescoping portion is in the collapsed position. | wherein said switch interrupts the electrical connection between the power source and said light source when said telescoping portion is in the collapsed position. | ¶59 | col. 3:45-53 |
- Identified Points of Contention:
- 'D324 Patent (Design): A primary question for the court will be whether the addition of a "small, functional black tip" for breaking a window on the accused handle creates a visually distinct ornamental appearance from the patented design in the eye of an ordinary observer, or if the overall aesthetic remains "substantially the same" (Compl. ¶¶29-30).
- '094 Patent (Utility): The complaint’s allegations for the '094 patent track the claim language verbatim, particularly for the final "wherein" clause that describes the automatic shut-off function (Compl. ¶59). This raises a technical and evidentiary question: what proof will be offered that the accused lantern's "switch" is not merely a manual power button but is a mechanism that automatically interrupts the circuit as a direct result of the lantern being moved into the collapsed state, as required by the claim?
V. Key Claim Terms for Construction
For the '094 Patent:
- The Term: "switch"
- Context and Importance: The definition of "switch" is central to the infringement analysis for the '094 Patent, as the term is functionally defined by the final "wherein" clause of claim 1. Practitioners may focus on this term because the case could turn on whether the accused product's mechanism for turning off the light constitutes the claimed "switch." A narrow construction tied to the patent's specific embodiment could provide a path for the defendant to argue non-infringement if their product uses a different type of mechanism.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself is broad, requiring only "a switch" that performs the function of interrupting the electrical connection when the lantern is collapsed ('094 Patent, col. 4:23-29). It does not recite any specific structure for the switch.
- Evidence for a Narrower Interpretation: The specification discloses a particular embodiment in detail, where the switch (61) consists of conductive rods (46) with insulating sleeves (60) that physically slide to disengage from metal spring contacts (66) ('094 Patent, col. 3:45-53). A party could argue that this detailed disclosure implicitly limits the term "switch" to this type of mechanical, automatic shut-off assembly.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that the individual defendants, Paul Valadez and Wanli Gong, as corporate officers of PGM Group, Inc., actively induced infringement of all three asserted patents. This is based on allegations that they "knowingly, willfully, and actively induced, planned, promoted, caused, directed, controlled, assisted with, and benefited from PGM's acts of infringement" (Compl. ¶¶ 158, 194, 233).
- Willful Infringement: The complaint alleges that infringement of all three patents was willful, stating that "Defendants had actual knowledge of Emson's rights" in the patents or that it was "so obvious that Defendants should have known" their actions constituted infringement (Compl. ¶¶ 159, 195, 234). The factual basis for this alleged knowledge is not specified beyond these conclusory allegations.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual distinction versus similarity: for the D'324 design patent, can the addition of a functional element (the window-breaking tip) to the accused car handle create a sufficiently different ornamental appearance to defeat a claim of infringement in the eyes of an ordinary observer, or is the overall aesthetic impression substantially the same as the patented design?
- A key evidentiary question will be one of functional operation: for the '094 patent, does the accused "ETERNAL Lantern" contain a "switch" that functions automatically to sever the power connection as a direct consequence of the lantern being physically collapsed, as required by claim 1, or is the power interruption achieved by a different, non-infringing mechanism?
- The dispute over the '955 patent will likely center on claim scope and operation: does the accused flashlight’s user interface meet the specific requirements of claim 17, namely that mode changes occur via a "unitary depression" of a single button and that the available modes include both a "visually continuous" and a "discontinuous" illumination?