DCT
2:18-cv-02243
Tripled Experience Ltd v. Gem Cam Tech Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Tripled Experience Ltd. (Israel)
- Defendant: Gem Cam Technologies Ltd. (Israel)
- Plaintiff’s Counsel: ROSEN TECHNOLOGY LAW P.C.
- Case Identification: 2:18-cv-02243, C.D. Cal., 03/19/2018
- Venue Allegations: Venue is asserted on the basis that Defendant, a foreign corporation, transacts business and has committed acts of infringement in the district, placing products into the stream of commerce with the knowledge they will be sold in California.
- Core Dispute: Plaintiff alleges that Defendant’s gemstone imaging system infringes a design patent covering the ornamental appearance of an apparatus for capturing images of gemstones with a smartphone.
- Technical Context: The technology field is portable, smartphone-based photographic equipment specifically designed to enable users to capture high-quality, detailed images of diamonds and other gemstones.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with actual notice of the asserted patent and its alleged infringement via a letter dated December 31, 2017, prior to filing the lawsuit.
Case Timeline
| Date | Event |
|---|---|
| 2015-03-16 | '323 Patent Priority Date (Application Filing Date) |
| 2017-08-22 | U.S. Patent No. D795,323 Issues |
| 2017-12-31 | Plaintiff allegedly notifies Defendant of infringement by letter |
| 2018-03-19 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D795,323 - Apparatus for Capturing Images of Gemstones
- Issued: August 22, 2017
The Invention Explained
- Problem Addressed: The complaint asserts a market need for a "compact, innovative, first-of-its-kind apparatus" to facilitate "simple, accurate, inexpensive smartphone-based photography of diamonds and gemstones" for non-professional users (Compl. ¶¶9, 13).
- The Patented Solution: The patent protects the specific ornamental design of the apparatus, not its functional or utilitarian features (’323 Patent, Claim, col. 2:5-7). The claimed design, illustrated in the patent's figures, consists of a two-part assembly: a housing with a circular aperture for a lens and a connected clamp-like structure with curved arms, presumably for holding a smartphone (’323 Patent, Figs. 1, 12). The patent explicitly disclaims elements shown in broken lines, which include the smartphone itself and internal components, meaning these are not part of the protected design (’323 Patent, DESCRIPTION, col. 2:23-27).
- Technical Importance: The complaint characterizes the patented design as an "innovative design of the gemstone image-capture apparatus" (Compl. ¶11).
Key Claims at a Glance
- The patent contains a single claim for "the ornamental design for an apparatus for capturing images of gemstones, as shown and described" (’323 Patent, Claim, col. 2:5-7).
- The scope of this claim is defined by the visual appearance of the article as depicted in the solid lines of the patent's drawings. Key ornamental features include:
- The overall two-part configuration of a main housing and a connected clamp.
- The specific rectangular shape of the main housing combined with a prominent, offset circular aperture.
- The shape and proportion of the clamp structure, featuring two opposing curved arms.
- The visual relationship and connection points between the housing and clamp components.
III. The Accused Instrumentality
Product Identification
The "Infringing Products" are Defendant’s "diamond and gemstone imaging products" (Compl. ¶6).
Functionality and Market Context
The accused products are described as an "imaging system for loose diamonds and gemstones capturing high quality 360° videos and photos that you can immediately share with buyers" (Compl. ¶12). Plaintiff alleges that these products compete directly with its own "TripleD Photo Kits" and are sold through major jewelry supply distributors, such as Stuller USA (Compl. ¶¶14-15). The complaint also alleges that sales of the accused hardware facilitate sales of an associated mobile application, which competes with Plaintiff's own "TripleD Application" (Compl. ¶16).
IV. Analysis of Infringement Allegations
The complaint’s infringement theory rests on the "ordinary observer" test for design patents, alleging that the accused product's design is substantially the same as the patented design. This is primarily supported by side-by-side visual comparisons. The complaint presents a photograph of the accused product, which shows its overall two-part configuration, alongside Figure 1 of the patent (Compl. p. 5). Another comparison shows a top-down view of the accused product's clamp structure next to the patent's Figure 5, alleging similarity in the curved arms (Compl. p. 6).
'323 Patent Infringement Allegations
| Patented Design Feature (from Figures of ’323 Patent) | Alleged Infringing Feature (from Complaint's Depiction) | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall perspective view of the two-part assembly. | The accused product is alleged to have a nearly identical overall two-part assembly, consisting of a main housing and a clamp. | ¶13; p. 5 | ’323 Patent, Fig. 1 |
| The top-down view showing the shape of the clamp structure with two opposing arms. | The accused product’s clamp is alleged to have the same general shape and configuration as shown in the patent’s top-down view. | ¶13; p. 6 | ’323 Patent, Fig. 5 |
| The front view of the main housing, showing a rectangular body with a circular aperture. | The accused product's main housing is depicted as having a similar rectangular body and a central circular aperture. | ¶13; p. 6 | ’323 Patent, Fig. 6 |
| The upper back side view showing the device in a folded or articulated position. | A photograph of the accused product in an articulated position is alleged to resemble the configuration shown in the patent's drawing. | ¶13; p. 7 | ’323 Patent, Fig. 11 |
- Identified Points of Contention:
- Overall Similarity vs. Specific Differences: The infringement analysis will focus on whether an ordinary observer would find the two designs substantially similar as a whole. A potential point of contention may be the geometric, triangular-patterned surface texture visible on the accused product's clamp component in the complaint's photographs (Compl. p. 5). The court may need to consider whether this texture, which is not present in the patent's drawings of smooth surfaces, is a significant enough difference to alter the overall visual impression.
- Impact of Prior Art: While not detailed in the complaint, the scope of the patented design will be viewed in light of the prior art. The court’s analysis of substantial similarity may be influenced by how crowded the field of such devices was at the time of the invention.
V. Key Claim Terms for Construction
In design patent cases, construction focuses on the scope of the claimed design as a whole rather than on specific textual terms. The central issue is the overall visual impression created by the design.
- The "Term": The "ornamental design ... as shown and described."
- Context and Importance: The entire infringement analysis depends on the interpretation of the design's scope. The court will compare the overall visual appearance of the design claimed in the '323 patent with that of the accused product. Practitioners may focus on which specific features are considered ornamental and which are dictated by function, as only the ornamental aspects are protected.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party may argue that the claim covers the overall shape, configuration, and proportions of the two-part assembly as depicted in solid lines in Figures 1-11, and that minor variations in surface texture are immaterial to the overall patented design. The core ornamental concept could be framed as the combination of the specific block-like housing with the curved clamp structure.
- Evidence for a Narrower Interpretation: A party may argue that the consistently smooth surfaces shown across all figures are a deliberate and limiting feature of the claimed design. The explicit disclaimer of all elements shown in broken lines—including the smartphone itself—narrows the scope to only the ornamental features of the holder/apparatus (’323 Patent, DESCRIPTION, col. 2:23-27).
VI. Other Allegations
- Indirect Infringement: The complaint makes general allegations of contributory and induced infringement under 35 U.S.C. § 271(b) and (c) (Compl. ¶23). The factual basis provided is that Defendant's sales of the accused device facilitate sales of its associated mobile application, thereby depriving Plaintiff of sales for its own application (Compl. ¶16).
- Willful Infringement: Willfulness is alleged based on Defendant’s purported knowledge of the ’323 patent and its infringing conduct (Compl. ¶20, 28). The complaint asserts Defendant knew or should have known of the patent "at least since the date of the patent's issuance" and had actual notice "at the latest... as of December 31, 2017" via a letter from Plaintiff. The complaint alleges Defendant has refused to cease its infringing activities despite this notice (Compl. ¶¶17-19).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of overall visual similarity: in the eye of an ordinary observer, is the accused Gem Cam device's design substantially the same as the ornamental design claimed in the '323 Patent, or do differences in features like surface ornamentation create a distinct visual impression?
- A related evidentiary question will concern the materiality of design differences: what legal weight will be given to the geometric surface pattern on the accused product, which is absent from the smooth surfaces depicted in the patent drawings, when assessing the design as a whole?
- Should infringement be established, a key question for damages will be willfulness: does the allegation that Defendant continued its sales after receiving a notice letter on December 31, 2017, support a finding of egregious conduct sufficient to warrant enhanced damages under 35 U.S.C. § 284?