2:18-cv-05664
Kuen Hwa Traffic Industrial Co v. DNA Motor Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Kuen Hwa Traffic Industrial Co., LTD. (Taiwan)
- Defendant: DNA Motor, Inc. (California)
- Plaintiff’s Counsel: Inhouse Co. Law Firm
- Case Identification: 2:18-cv-05664, C.D. Cal., 06/27/2018
- Venue Allegations: Plaintiff alleges venue is proper in the Central District of California because Defendant is a California corporation with a principal place of business in the district and conducts substantial business, including the sale of the accused products, within the district.
- Core Dispute: Plaintiff alleges that Defendant’s aftermarket projector-style headlights for certain Toyota Tacoma models infringe a design patent covering the ornamental appearance of a vehicle headlight.
- Technical Context: The case concerns the automotive aftermarket parts industry, where aesthetic design is a key differentiator for products like custom headlights.
- Key Procedural History: The complaint alleges that Plaintiff notified Defendant of the asserted patent and the alleged infringement via letters on May 7, 2018, and May 10, 2018, approximately seven weeks before filing the complaint. These notices form the basis for the willfulness allegation.
Case Timeline
| Date | Event |
|---|---|
| 2016-04-20 | U.S. Design Patent No. D791,987 Application (Priority) Date |
| 2017-07-11 | U.S. Design Patent No. D791,987 Issues |
| 2018-05-07 | Plaintiff notifies Defendant of alleged infringement |
| 2018-05-10 | Plaintiff again notifies Defendant of alleged infringement |
| 2018-06-27 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D791,987 - "Vehicle headlight," issued July 11, 2017 (’987 Patent)
The Invention Explained
- Problem Addressed: Design patents do not address a technical problem in the manner of a utility patent. Instead, they protect a new, original, and ornamental design for an article of manufacture (’987 Patent, Claim). The implicit goal is to provide a unique aesthetic appearance for a vehicle headlight, distinguishing it from other designs in the market.
- The Patented Solution: The patent claims the specific ornamental design of a vehicle headlight as depicted in its five figures (’987 Patent, Figs. 1-5). The design is characterized by a specific outer housing shape and a complex internal arrangement of bezels and a central projector-style lamp housing. The patent uses broken lines to illustrate portions of the headlight that are not part of the claimed design, such as the rear of the housing and certain internal structures, thereby defining the precise scope of the protected ornamental features (’987 Patent, DESCRIPTION).
- Technical Importance: In the automotive aftermarket, unique headlight designs allow vehicle owners to customize their vehicles and can be a significant product differentiator for parts manufacturers (Compl. ¶15).
Key Claims at a Glance
- The ’987 Patent contains a single claim for "The ornamental design for a vehicle headlight, as shown and described" (’987 Patent, Claim).
- The essential elements of the design are the visual characteristics shown in solid lines in the drawings, including:
- The overall peripheral shape of the headlight assembly.
- The specific geometry and arrangement of the interior bezels and shrouds.
- The configuration of the primary projector lens housing within the larger assembly.
III. The Accused Instrumentality
Product Identification
The accused products are Defendant’s "2012-2015 Toyota Tacoma projector style headlight featuring a LED halo ring" (Compl. ¶15).
Functionality and Market Context
The complaint alleges these are aftermarket headlights sold by Defendant on platforms like Amazon.com and Ebay.com for installation on specific Toyota Tacoma truck models (Compl. ¶¶ 5, 15; Ex. A, p. 2). The complaint provides a photograph of the accused product from an Amazon product listing, showing a pair of black-housed headlights with a circular "halo" light element (Compl. p. 5). The complaint alleges these products are "the same or substantially the same" as the patented design (Compl. ¶16).
IV. Analysis of Infringement Allegations
The complaint does not contain a traditional claim chart exhibit, but it presents a side-by-side visual comparison of the patented design and the accused product, which functions as the core of its infringement theory (Compl. p. 5). The side-by-side image presents the patent's FIG. 1 next to a photograph of the accused product (Compl. p. 5). The central allegation is that the designs are "so similar as to be nearly identical such that an ordinary observer, giving such attention as a purchaser usually gives, would be so deceived by the substantial similarity" (Compl. ¶16).
’987 Patent Infringement Allegations
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a vehicle headlight, as shown and described. | The complaint alleges the overall ornamental design of Defendant’s "2012-2015 Toyota Tacoma projector style headlight" is "the same or substantially the same" as the design claimed in the '987 Patent. The infringement theory rests on the visual similarity of the overall shape and internal component arrangement. | ¶¶ 15, 16, 19 | Claim 1; Figs. 1-5; DESCRIPTION |
Identified Points of Contention
- Scope Questions: The primary legal question in a design patent case is whether, in the eye of an ordinary observer, the accused design is substantially the same as the claimed design. The analysis will turn on a visual comparison. A point of contention may be the effect of features present in the accused product but not explicitly shown in the patent drawings, such as the "LED halo ring" (Compl. ¶15) and the black color of the housing shown in the product photograph (Compl. p. 5).
- Technical Questions: A factual question for the court will be how an ordinary observer perceives the two designs. The inquiry will focus on whether the alleged similarities in the overall shape and internal geometry outweigh any potential differences a consumer might notice, thereby creating a likelihood of confusion.
V. Key Claim Terms for Construction
In design patent litigation, there are typically no claim "terms" to construe in the same way as in utility patent cases. The "claim" is understood to be the design itself as shown in the figures. The analysis therefore centers on the scope of the claimed design as a whole.
- The "Term": The ornamental design for a vehicle headlight.
- Context and Importance: The entire infringement analysis depends on the visual scope of the design claimed in the ’987 Patent's drawings and comparing it to the Defendant's product.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party arguing for a broader interpretation may assert that the overall visual impression of the two designs is nearly identical, and that any minor differences are trivial and do not alter the fundamental aesthetic. The use of broken lines to disclaim functional or non-essential parts could be argued to broaden the scope of the design to cover variations in those unclaimed areas (’987 Patent, DESCRIPTION).
- Evidence for a Narrower Interpretation: A party arguing for a narrower interpretation may focus on any discernible differences between the patent drawings and the accused product, no matter how small. They may argue that the patent only protects the exact configuration shown in solid lines and that features of the accused product, such as the specific texture, color, or the presence of the LED "halo" ring, distinguish it from the claimed design.
VI. Other Allegations
- Indirect Infringement: The complaint does not contain a formal count for indirect infringement. However, it alleges that Defendant "intentionally sells, ships or otherwise delivers the accused products... with knowledge that are designed to and do practice the infringing features of the '987 Patent," which contains elements that could potentially support such a claim (Compl. ¶21).
- Willful Infringement: The complaint includes a specific count for willful infringement (Compl. ¶¶ 23-26). The allegation is based on alleged pre-suit knowledge of the ’987 Patent. The complaint pleads that Plaintiff sent Defendant notice letters with a copy of the patent on or about May 7 and May 10, 2018, and that Defendant continued its allegedly infringing conduct thereafter (Compl. ¶¶ 10, 26; Ex. A).
VII. Analyst’s Conclusion: Key Questions for the Case
A core issue will be one of visual comparison: Applying the "ordinary observer" test, is the accused headlight design "substantially the same" as the ornamental design claimed in the ’987 Patent? This will involve a fact-intensive comparison where the overall impression, rather than a dissection of minor details, is paramount.
A second key question will be one of intent: Does the evidence of the pre-suit notice letters sent in May 2018 (Compl., Ex. A) suffice to establish that any subsequent infringement by the Defendant was "willful and deliberate"? The existence of these letters provides a clear factual basis for the allegation, shifting the likely focus to whether Defendant's conduct after receiving notice was objectively reckless.