DCT
2:18-cv-05187
Pretty Star Store LLC v. Yuanmin Chen
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Pretty Star Store, LLC d.b.a DecoBros (California)
- Defendant: Yuanmin Chen (California or People's Republic of China)
- Plaintiff’s Counsel: WANG IP LAW GROUP, Group
- Case Identification: 2:18-cv-05187, C.D. Cal., 06/12/2018
- Venue Allegations: Venue is asserted on the basis that Defendant has committed acts of infringement within the judicial district by offering for sale and selling accused products in California.
- Core Dispute: Plaintiff alleges that Defendant’s line of home storage organizers infringes two design patents covering a stackable drawer and a rolling cart.
- Technical Context: The dispute is in the consumer housewares market, specifically focusing on the ornamental design of modular and mobile storage solutions sold through online retail platforms.
- Key Procedural History: The ’904 Patent was assigned from the inventor, Tsung-Yu Tsai, to the Plaintiff, Pretty Star Store, LLC, on October 7, 2014. The complaint does not mention any prior litigation or administrative proceedings involving the asserted patents.
Case Timeline
| Date | Event |
|---|---|
| 2014-07-23 | '904 Patent Application Filed (Priority Date) |
| 2014-07-28 | ’914 Patent Application Filed (Priority Date) |
| 2014-10-07 | '904 Patent Assigned to Plaintiff |
| 2015-02-03 | U.S. Patent No. D721,904 Issues |
| 2015-07-21 | U.S. Patent No. D734,914 Issues |
| 2017-09-01 | Alleged Discovery of '904 Infringement ("On or around September of 2017") |
| 2017-10-01 | Alleged Discovery of '914 Infringement ("On or around October of 2017") |
| 2018-06-12 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D721,904 - "Stackable Cabinet Basket Drawer," Issued February 3, 2015
The Invention Explained
- Problem Addressed: Design patents protect ornamental appearance, not functional utility. The patent does not articulate a technical problem but instead claims a new, original, and ornamental design for an article of manufacture (Compl. ¶10; ’904 Patent, Claim).
- The Patented Solution: The patent discloses the ornamental design for a "stackable cabinet basket drawer" (’904 Patent, Claim). The design features a rectangular frame supporting a single, slidable wire basket. The basket has a distinct dipped handle-area on its front face and vertical wire construction. The patent figures illustrate the drawer both retracted (FIG. 3) and extended (FIG. 2), as well as its intended stackable nature where one unit sits atop an identical, lower unit (FIG. 1).
- Technical Importance: The design represents a specific aesthetic expression for modular, under-cabinet storage solutions, a competitive segment in the consumer housewares market (Compl. ¶14).
Key Claims at a Glance
- Design patents have a single claim. The asserted claim is for: "The ornamental design for a stackable cabinet basket drawer, as shown and described" (’904 Patent, Claim).
- The scope of this claim is defined by the visual representations in Figures 1-9 of the patent. The key ornamental features include:
- The overall configuration of a rectangular frame with a sliding basket.
- The specific proportions and wire-grid pattern of the basket and top shelf.
- The shape of the basket, including the curved, indented portion on the front panel.
- The appearance of the support legs and sliding mechanism.
U.S. Design Patent No. D734,914 - "Portion of a Rolling Cart," Issued July 21, 2015
The Invention Explained
- Problem Addressed: As with the '904 patent, the '914 patent protects an ornamental design rather than a functional solution (Compl. ¶12; ’914 Patent, Claim).
- The Patented Solution: The patent claims the ornamental design for a "portion of a rolling cart" (’914 Patent, Claim). The figures use both solid and broken lines. The solid lines, which represent the claimed design, depict two mesh-walled baskets with a distinctive undulating, or wavy, top edge on their longer sides. The broken lines depict the cart's frame, wheels, and a potential middle basket, indicating these elements are for illustrative environmental context only and are not part of the claimed design (’914 Patent, DESCRIPTION).
- Technical Importance: This patent protects the specific aesthetic appearance of the storage baskets themselves, allowing the design to be applied to rolling carts of various configurations while protecting the core ornamental feature (Compl. ¶31).
Key Claims at a Glance
- The single asserted claim is for: "The ornamental design for a portion of a rolling cart, as shown and described" (’914 Patent, Claim).
- The scope of the claim is limited to the features shown in solid lines in Figures 1-7. The key ornamental features are:
- The design of the rectangular baskets.
- The mesh pattern on the basket walls.
- The specific undulating, wave-like contour of the upper rim on the front and back sides of the baskets.
III. The Accused Instrumentality
Product Identification
- The complaint identifies the "NEX 1-Tier Basket" and "NEX 2-Tier Basket" as infringing the '904 Patent (Compl. ¶21). The "NEX 3 Tier Mesh Utility Cart" is identified as infringing the '914 Patent (Compl. ¶35). These are collectively termed the "Infringing Products" (Compl. ¶¶23, 35).
Functionality and Market Context
- The accused NEX products are home organization and storage units sold on online platforms like Amazon.com (Compl. ¶21). The "NEX 1-Tier" and "2-Tier" products are described as under-sink cabinet organizers with sliding baskets (Compl. ¶¶19, 22). The complaint provides a screenshot of the Defendant's online product listing for the "NEX 2-Tier Basket" (Compl. ¶24, p. 7). The "NEX 3 Tier Mesh Utility Cart" is a rolling storage cart with three baskets and four casters, intended for use in kitchens, laundry rooms, or offices (Compl. ¶36).
IV. Analysis of Infringement Allegations
The standard for design patent infringement is whether an "ordinary observer," familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented design. The complaint alleges the accused products are "substantially the same" as the patented designs (Compl. ¶¶21, 35).
'904 Patent Infringement Allegations
The complaint provides a side-by-side visual comparison of figures from the '904 Patent and photographs of the accused NEX products (Compl. ¶26, p. 8).
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a stackable cabinet basket drawer, as shown and described. | The accused NEX products are alleged to feature a nearly identical overall visual appearance, including a rectangular frame, a sliding wire basket, and a similar handle design on the basket's front. | ¶¶21, 26, 27 | ’904 Patent, Claim; FIGS. 1-9 |
- Identified Points of Contention:
- Scope Questions: The primary question is whether the visual differences between the patented design and the accused products are significant enough to prevent an ordinary observer from finding them substantially similar.
- Technical Questions: While the complaint alleges the designs are the "same concept" (Compl. ¶25), the court will focus on a comparison of the specific ornamental features. Practitioners may examine whether minor differences in the wire gauge, grid density, or the precise curvature of the handle are sufficient to distinguish the designs.
'914 Patent Infringement Allegations
The complaint provides a side-by-side visual comparison of a figure from the '914 Patent and a photograph of the accused "NEX 3 Tier Mesh Utility Cart" (Compl. ¶39, p. 14).
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a portion of a rolling cart, as shown and described. | The accused NEX cart's baskets are alleged to possess the same ornamental features as the claimed design, specifically the mesh construction and the undulating top edge. | ¶¶35, 39, 40 | ’914 Patent, Claim; FIGS. 1-7 |
- Identified Points of Contention:
- Scope Questions: A central issue will be the interpretation of a claim for a "portion" of an article. Because the patent's broken lines disclaim the cart's frame and wheels, the infringement analysis may focus solely on a comparison of the baskets. The question is whether the accused baskets, viewed in isolation, are substantially similar to the claimed basket design.
- Technical Questions: The court will need to compare the specific visual details of the baskets. Practitioners may scrutinize the mesh pattern, the number and depth of the "waves" on the top rim, and the overall proportions to argue for or against a finding of substantial similarity.
V. Key Claim Terms for Construction
In design patent cases, claim construction focuses on the scope of the design as a whole, depicted in the drawings, rather than on textual definitions.
- The Term: "portion of a rolling cart" (’914 Patent)
- Context and Importance: This term's construction is critical for defining the scope of the infringement analysis for the '914 Patent. The infringement test must be applied to the claimed "portion" (the baskets), not the entire accused rolling cart. Practitioners may focus on this term because it limits the comparison to the specific features shown in solid lines, potentially excluding differences in the unclaimed frame or wheels from the analysis.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue that the "portion" should be viewed in the context of the overall cart, as an ordinary observer would see the product as a complete unit.
- Evidence for a Narrower Interpretation: The patent specification explicitly states that "The broken lines shown in the figures are included for the purpose of illustrating other portions of the rolling cart and form no part of the claimed design" (’914 Patent, DESCRIPTION). This provides strong evidence that the scope is strictly limited to the baskets depicted in solid lines.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement and contributory infringement under 35 U.S.C. § 271(b) and (c) (Compl. ¶55). The factual basis for inducement includes allegations that Defendant provides product manuals that "exactly replicate" or are "almost identical" to Plaintiff's manuals, thereby instructing customers on how to assemble and use the infringing products (Compl. ¶¶28, 41). The complaint includes a side-by-side comparison of the assembly diagrams from the parties' respective manuals (Compl. ¶¶28, 41).
- Willful Infringement: Willfulness is alleged based on "information and belief" of pre-suit knowledge of Plaintiff's rights (Compl. ¶47) and that the infringement was "intentional, deliberate, and willful" (Compl. ¶56). The complaint supports this by pointing to the alleged "substantially similar" product designs, "slight changes in narrative and wording" for product descriptions, and the copying of Plaintiff's product manuals as evidence of a "clear intention to confuse customers" (Compl. ¶¶25, 28, 38, 41).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual comparison under the ordinary observer test: Are the ornamental designs of the accused NEX organizers, when viewed as a whole, substantially the same as the designs claimed in the '904 and '914 patents, or are the visual differences sufficient to avoid a likelihood of deception?
- A key legal question will be the scope of the '914 Patent's claim: How will the court apply the infringement test to a design for a "portion" of a product? The analysis will likely turn on whether the comparison is properly limited to the basket design shown in solid lines, excluding the unclaimed cart frame and wheels.
- A central evidentiary question will concern willfulness and intent: Beyond visual similarity, what evidence will Plaintiff provide to demonstrate that Defendant had pre-suit knowledge of the patents and deliberately copied the designs, as alleged by the replication of product manuals and marketing materials?