DCT

2:17-cv-09096

Long Xiang Shen v. A Color Tree Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:17-cv-09096, U.S. District Court for the Central District of California (C.D. Cal.), 12/20/2017
  • Venue Allegations: Venue is alleged to be proper because Defendants reside in the judicial district, have a regular place of business in the district, and have committed the alleged acts of infringement within the district.
  • Core Dispute: Plaintiffs allege that windscreen products manufactured and sold by Defendants, a competing company allegedly formed by Plaintiffs' former employees, infringe a design patent covering the ornamental appearance of a windscreen.
  • Technical Context: The dispute is in the market for fence and windscreen products, which provide privacy, wind protection, and aesthetic enhancement for fencing in residential and commercial settings.
  • Key Procedural History: The complaint does not mention prior litigation or administrative proceedings involving the patent-in-suit. However, it provides a detailed factual background alleging that the individual defendants are former employees or agents of the Plaintiffs who misappropriated confidential information and trade secrets to launch a directly competing business, Defendant A Color Tree Inc. These allegations form the basis for the claims of willful infringement.

Case Timeline

Date Event
2014-06-06 U.S. Design Patent No. D748,818 Priority Date (Application Filing)
c. 2014 Plaintiff Shen alleges hiring of individual defendants
c. 2015 Plaintiff Shen alleges discovery of fraudulent invoices
2016-02-02 U.S. Design Patent No. D748,818 Issues
c. May 2016 "2016 Meeting" between individual defendants allegedly occurs
2017-01 Defendant A Color Tree Inc. is allegedly incorporated
2017-12-20 Complaint Filed

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

U.S. Design Patent No. D748,818 - "WINDSCREEN"

  • Patent Identification: U.S. Design Patent No. D748,818 ("the '818 Patent"), "WINDSCREEN," issued February 2, 2016. (Compl. ¶17).

The Invention Explained

  • Problem Addressed: As a design patent, the '818 Patent does not address a technical or functional problem. Instead, it protects the novel, non-functional, ornamental appearance of the article of manufacture—a windscreen. (Compl. ¶17; '818 Patent, CLAIM).
  • The Patented Solution: The patent claims the specific ornamental design for a windscreen as depicted in its figures. ('818 Patent, CLAIM). The design consists of the overall visual impression created by a rectangular panel of woven or mesh material, enclosed by a solid, contrasting border or hem, with circular grommets spaced evenly along the perimeter within the border. ('818 Patent, Fig. 1). The patent's description explicitly notes that broken lines in the drawings are for illustrative purposes and do not form part of the claimed design, a common practice to disclaim specific, non-essential features like stitching patterns. ('818 Patent, DESCRIPTION).
  • Technical Importance: The claimed design provides a distinct aesthetic for fence screen products in what the complaint characterizes as a competitive industry where "fashionable and attractive" designs are valued. (Compl. ¶¶21, 26).

Key Claims at a Glance

  • The single claim of the '818 Patent is for: "The ornamental design for a windscreen, as shown and described." ('818 Patent, CLAIM).
  • The core ornamental features comprising the claimed design are:
    • The overall rectangular configuration of the windscreen.
    • The surface ornamentation of the central field, depicted as a woven texture.
    • The continuous, solid border surrounding the central field.
    • The series of circular grommets arranged within the border along the periphery of the windscreen.

III. The Accused Instrumentality

Product Identification

  • The complaint identifies the accused products as "imitation windscreen products" that are made, used, sold, offered for sale, and/or imported by Defendants. (Compl. ¶34). The complaint does not specify particular product names or model numbers.

Functionality and Market Context

  • The complaint alleges the accused products "embody or use the inventions claimed in the '818 Patent," suggesting they are visually similar or identical to the patented design. (Compl. ¶34). These products are alleged to be sold in the United States, placing them in direct competition with Plaintiffs' own fence screen products. (Compl. ¶¶21, 34). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint does not contain a claim chart or a detailed, element-by-element comparison. Instead, it makes a general allegation that Defendants' "imitation windscreen products... embody or use the inventions claimed in the '818 Patent." (Compl. ¶34). The legal test for design patent infringement is whether an ordinary observer, familiar with the prior art, would be deceived into believing the accused design is the same as the patented design. The core of the infringement allegation is that Defendants' products are visually indistinguishable from the design protected by the '818 Patent.

  • Identified Points of Contention:
    • Visual Similarity: The central factual dispute will be a visual comparison between the accused windscreen products and the design claimed in the '818 Patent's figures. The question for the court will be whether the designs are "substantially the same" from the perspective of an ordinary observer.
    • Scope of Protection: A potential point of contention may involve the scope of the claimed design in light of prior art in the windscreen field. The degree of similarity required for a finding of infringement may depend on how different the patented design is from pre-existing designs.

V. Key Claim Terms for Construction

In design patent litigation, claim construction focuses on the visual representations in the patent drawings rather than on textual definitions. The "claim" is understood to be the design as a whole, depicted in the drawings.

  • The Term: The scope of "the ornamental design for a windscreen, as shown and described." ('818 Patent, CLAIM).
  • Context and Importance: The construction of the claim—that is, determining which visual features are protected and which are not—is fundamental to the infringement analysis. Practitioners may focus on the patent's use of solid versus broken lines to define the boundaries of the claimed design.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A party may argue that the claim should be construed broadly to cover the overall visual impression of a grommeted, bordered windscreen, asserting that minor variations should not avoid infringement.
    • Evidence for a Narrower Interpretation: A party may point to the patent's explicit disclaimer: "The broken lines are for illustrative purposes only and form no part of the claimed design." ('818 Patent, DESCRIPTION). This statement expressly removes any specific stitching pattern shown on the border from the scope of the claimed design, limiting protection to the features shown in solid lines, such as the shape, the specific woven pattern of the main panel, the border, and the grommets.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges induced infringement under 35 U.S.C. § 271(b) and contributory infringement under § 271(c). (Compl. ¶¶49-50). The factual basis alleged is that Defendants knowingly induced others to infringe and sold a product knowing it was "especially made or especially adapted for practicing the invention" and not a staple article of commerce. (Compl. ¶¶49-50).
  • Willful Infringement: Willfulness is alleged based on Defendants' purported pre-suit knowledge of the '818 Patent. (Compl. ¶¶37, 51). The complaint asserts this knowledge arises from the individual defendants' prior employment with Plaintiffs, during which they allegedly had access to Plaintiffs' designs and business information. (Compl. ¶¶23, 25, 27, 37).

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

  1. A core issue will be one of visual identity: Applying the "ordinary observer" test, are the accused windscreen products sold by A Color Tree Inc. substantially the same in their overall ornamental appearance as the specific design depicted in the figures of the '818 Patent?
  2. A key question for damages will be culpability and intent: Will the complaint's detailed allegations regarding the defendants' status as former employees who allegedly started a competing venture be sufficient to prove that any infringement was willful, thereby exposing Defendants to potential enhanced damages and attorney's fees?
  3. An underlying issue will be the scope of the design claim in context: How will the prior art of windscreen designs inform the scope of the '818 Patent's protection and influence the court's application of the "ordinary observer" test?