DCT
2:18-cv-05845
Lanard Toys Ltd v. Five Below Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Lanard Toys Limited (Hong Kong)
- Defendant: Five Below, Inc. (Pennsylvania); RMS International (USA) Inc. (Florida)
- Plaintiff’s Counsel: Gordon & Rees LLP
- Case Identification: 2:18-cv-05845, C.D. Cal., 08/13/2018
- Venue Allegations: Plaintiff alleges venue is proper because Defendants have committed acts of infringement, maintain regular and established places of business in the district, and have placed the accused products into the stream of commerce with the knowledge they would be sold in California.
- Core Dispute: Plaintiff alleges that Defendants’ "Chalk Smash" toy product infringes two U.S. design patents covering the ornamental appearance of Plaintiff's "Chalk Bomb!" toy.
- Technical Context: The technology at issue is the ornamental design of children's toys, specifically a throwable, powdered chalk-filled pouch designed to resemble a cartoon-style bomb or grenade.
- Key Procedural History: The complaint alleges a history of litigation between Plaintiff and Defendant RMS over similar products, including a prior product named "Chalk Attack" and another also named "Chalk Bomb." Plaintiff suggests the current accused product is a redesign of previously accused products, which may be relevant to the court's willfulness analysis.
Case Timeline
| Date | Event |
|---|---|
| 2014 | Lanard sends cease-and-desist letter to RMS on an unrelated product. |
| 2015-11-07 | Lanard first publishes its "Chalk Bomb!" product. |
| 2016-02-11 | Earliest priority date for '596 and '220 Patents. |
| 2017-12-05 | U.S. Design Patent No. D804,596 issues. |
| 2018-04-10 | U.S. Design Patent No. D815,220 issues. |
| 2018-08-13 | Complaint filed. |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D804,596, “Toy Throwing Ball” (Dec. 5, 2017)
The Invention Explained
- Problem Addressed: Design patents protect ornamental appearance rather than solving a technical problem. The patent protects the unique visual look of a toy (Compl. ¶ 14).
- The Patented Solution: The patent claims the specific ornamental design for a "toy throwing ball" (D'596 Patent, Claim). The design, as illustrated in the patent's figures, consists of a soft, rounded, pouch-like body with gathered fabric at its base, a cinched, pleated neck, and a distinct, curved, cord-like element resembling a "fuse" protruding from the top (D'596 Patent, Figs. 1-7). The complaint contextualizes this as a toy styled like a hand grenade, filled with powdered chalk that creates a mark when thrown (Compl. ¶¶ 9, 12).
- Technical Importance: The design aims to create a distinctive and recognizable product appearance within the toy market (Compl. ¶ 17).
Key Claims at a Glance
- The single claim is for "The ornamental design for a toy throwing ball, as shown and described" (D'596 Patent, Claim).
- The essential visual elements of the claimed design, shown in solid lines, are:
- A generally spherical, soft-looking pouch body.
- A gathered and cinched top closure.
- A single, curved, cord-like "fuse" element extending from the top.
U.S. Design Patent No. D815,220, “Toy Throwing Ball” (Apr. 10, 2018)
The Invention Explained
- Problem Addressed: This patent, a divisional of the application that led to the '596 Patent, also protects the ornamental appearance of a toy (Compl. ¶ 18; D'220 Patent, Related U.S. Application Data).
- The Patented Solution: The patent claims a similar ornamental design for a "toy throwing ball," but with a critical distinction from its parent '596 Patent (D'220 Patent, Claim). While the pouch and cinched top are shown in solid lines and are part of the claimed design, the "fuse" element is depicted in broken lines (D'220 Patent, Figs. 1-7). The patent specification explicitly states, "The broken lines represent the portions of the toy throwing ball that form no part of the claimed design" (D'220 Patent, Description). This effectively disclaims the fuse from the scope of the protected design.
- Technical Importance: By disclaiming the "fuse," this patent protects the ornamental design of the pouch itself, irrespective of whether it has a fuse or any other feature protruding from the top (D'220 Patent, Description).
Key Claims at a Glance
- The single claim is for "The ornamental design for a toy throwing ball, as shown and described" (D'220 Patent, Claim).
- The essential visual elements of the claimed design, shown in solid lines, are:
- A generally spherical, soft-looking pouch body.
- A gathered and cinched top closure.
- The fuse element is explicitly excluded from the claimed design.
III. The Accused Instrumentality
Product Identification
- The "Chalk Smash" toy (Compl. ¶ 17).
Functionality and Market Context
- The accused product is described as a toy sold in packs of four, consisting of fabric bags in various colors filled with corresponding colored chalk powder (Compl. ¶¶ 21, 23). A side-by-side comparison provided in the complaint shows the accused "Chalk Smash" product next to Plaintiff's "CHALK BOMB!" product, illustrating similarities in packaging trade dress and overall concept (Compl. p. 8). The complaint alleges that Defendants market, advertise, and sell these products, which are "identical or substantially similar" to Plaintiff's patented designs (Compl. ¶ 28). The complaint provides a photographic comparison showing the accused product alongside drawings from the asserted patents (Compl. p. 10, Exhibit G).
IV. Analysis of Infringement Allegations
For design patents, infringement is assessed from the perspective of an "ordinary observer." The test is whether the accused design is substantially the same as the claimed design, such that an ordinary observer would be deceived into purchasing the accused product, believing it to be the patented one.
D'596 Patent Infringement Allegations
| Patented Design Feature (from Figures) | Corresponding Feature in Accused Product | Complaint Citation | Patent Citation |
|---|---|---|---|
| A generally spherical, soft pouch body | The "Chalk Smash" product has a spherical, soft pouch body made of fabric. | ¶27; p. 10, Ex. G | Figs. 1-7 |
| A gathered and cinched top closure | The "Chalk Smash" product has a gathered top, which appears to be bunched and tied. | ¶27; p. 10, Ex. G | Figs. 1-7 |
| A single, curved "fuse" element | The complaint alleges that the overall design is substantially similar, though the accused product appears to have a bunched fabric top rather than a distinct cord-like fuse. | ¶27; p. 10, Ex. G | Figs. 1-7 |
D'220 Patent Infringement Allegations
| Patented Design Feature (from Figures) | Corresponding Feature in Accused Product | Complaint Citation | Patent Citation |
|---|---|---|---|
| A generally spherical, soft pouch body | The "Chalk Smash" product has a spherical, soft pouch body made of fabric. | ¶27; p. 10, Ex. G | Figs. 1-7 |
| A gathered and cinched top closure | The "Chalk Smash" product has a gathered top, which appears to be bunched and tied. | ¶27; p. 10, Ex. G | Figs.1-7 |
Identified Points of Contention
- Scope Questions: The central infringement question will be the application of the ordinary observer test. A key distinction arises between the two patents. The '596 Patent claims a design that includes the fuse. The accused product, as shown in the complaint's visual evidence, appears to lack this specific feature (Compl. p. 10, Exhibit G). This raises the question of whether the overall visual impression of the accused product is substantially similar to the '596 design despite this difference.
- Technical Questions: For the '220 Patent, which disclaims the fuse, the analysis is more direct. The comparison focuses only on the shape of the pouch and its cinched top. The complaint alleges that after prior litigation, Defendant RMS removed the "fuse" in a redesign that "still infringes" (Compl. ¶ 26). This allegation suggests the '220 Patent was prosecuted specifically to cover a version of the design without the fuse, raising the question of whether the "Chalk Smash" product's pouch design is substantially the same as the pouch design claimed in the '220 Patent.
V. Key Claim Terms for Construction
In design patent cases, the "claim" is the visual design itself, and construction focuses on interpreting the drawings. The most critical element for interpretation here is the meaning of solid versus broken lines.
- The Term: The scope of the claimed design as defined by solid and broken lines.
- Context and Importance: Practitioners may focus on this distinction because it directly defines the scope of what is protected and creates the primary difference between the two asserted patents. The interpretation of what is included in, versus excluded from, each patent's claim will be dispositive for the infringement analysis.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation (favoring the '220 Patent): The '220 Patent's specification provides explicit instruction for a broader interpretation of the pouch design by stating, "The broken lines represent the portions of the toy throwing ball that form no part of the claimed design" (D'220 Patent, Description). This is an unambiguous disclaimer of the "fuse," broadening the patent's scope to cover products with or without that feature.
- Evidence for a Narrower Interpretation (constraining the '596 Patent): The '596 Patent depicts all features—the pouch, cinched top, and fuse—in solid lines (D'596 Patent, Figs. 1-7). This indicates that all of these elements together form the single, claimed ornamental design. The absence of any broken lines could support a narrower construction where the specific fuse element is a required feature of any infringing design.
VI. Other Allegations
- Indirect Infringement: The complaint does not plead specific facts to support a claim for indirect infringement. The allegations focus on direct infringement under 35 U.S.C. § 271 through Defendants' acts of using, selling, offering to sell, and importing the accused "Chalk Smash" product (Compl. ¶ 57).
- Willful Infringement: The complaint alleges that Defendants' infringement was willful, knowing, and malicious (Compl. ¶ 59). This allegation is supported by references to prior litigation between Lanard and Defendant RMS concerning similar "Chalk Bomb" and "Chalk Attack" products, which may serve as evidence of pre-suit knowledge of Lanard's intellectual property in this product category (Compl. ¶ 26).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of design scope and the ordinary observer test: For the '596 Patent, can the overall visual impression of the accused product, which appears to lack a distinct cord-like "fuse," be found substantially similar to the patented design that explicitly includes one?
- A second key issue arises from the prosecution strategy: Did the '220 Patent, by disclaiming the "fuse" in broken lines, successfully capture the specific design of the accused "Chalk Smash" product? The court's analysis will likely focus on whether the pouch and top closure of the accused product are substantially similar to those claimed elements in the '220 Patent.
- Finally, a central question for damages will be willfulness: Does the alleged history of litigation between the parties over similar products demonstrate that Defendants had pre-suit knowledge of the patents or the associated intellectual property, supporting a finding of willful infringement?