DCT
2:18-cv-07495
Na Im Mustafa v. Christopher Morris
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Na’im Mustafa, d/b/a The Nono Bracket, and The Nono Bracket Company, LLC (California)
- Defendant: Christopher Morris (California)
- Plaintiff’s Counsel: Rozsa Law Group LC
- Case Identification: 2:18-cv-07495, C.D. Cal., 08/27/2018
- Venue Allegations: Venue is alleged to be proper as the Defendant resides in the judicial district, is subject to personal jurisdiction, and the underlying controversy arises from activities within the district.
- Core Dispute: Plaintiff, a seller of curtain rod brackets, seeks a declaratory judgment that its products do not infringe Defendant's patent and that the patent is invalid, following infringement notices sent by the Defendant to Plaintiff and its retail partners.
- Technical Context: The technology concerns retrofittable hardware brackets that allow users to hang articles, such as curtains, on pre-installed window blind supports without damaging walls or existing fixtures.
- Key Procedural History: Defendant sent Plaintiff a cease and desist letter alleging infringement of the '865 Patent. After Plaintiff’s counsel responded with detailed non-infringement arguments, Defendant allegedly sent infringement notices to Plaintiff's primary retailers, Amazon and Walmart. The complaint alleges that Plaintiff's first sale of the accused product predates the patent's filing date, raising a potential on-sale bar invalidity challenge.
Case Timeline
| Date | Event |
|---|---|
| 2016-09-06 | Plaintiff's first sale of accused "Nono Brackets" |
| 2016-09-19 | '865 Patent application filed (priority date) |
| 2018-06-05 | U.S. Patent 9,986,865 issues |
| 2018-06-20 | Defendant sends cease and desist letter to Plaintiff |
| 2018-07-12 | Plaintiff's counsel responds to Defendant's letter |
| 2018-07-26 | Defendant sends infringement notices to Amazon and Walmart |
| 2018-08-27 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,986,865 - "Retrofittable System and Apparatus for Hanging Articles on Pre-Installed Supports"
- Patent Identification: U.S. Patent No. 9,986,865, "Retrofittable System and Apparatus for Hanging Articles on Pre-Installed Supports", issued June 5, 2018.
The Invention Explained
- Problem Addressed: The patent addresses the challenge faced by individuals, particularly in rental housing, who wish to personalize their living space by hanging curtains but are prohibited from modifying or removing pre-installed window treatments (like vertical or horizontal blinds) or drilling holes in walls (’865 Patent, col. 1:40-54). Existing solutions are described as deficient because they may require permanent alteration, are incompatible with common blind types, or do not allow curtains to slide open and closed (’865 Patent, col. 2:1-28).
- The Patented Solution: The invention is a device that attaches to a pre-installed support, such as the headrail of a window blind, without requiring alteration of the support. The device generally comprises a "body portion" that mechanically anchors to the support and a "linking member" (e.g., a hook or clip) that extends from the body to hold an article like a curtain rod (’865 Patent, Abstract; col. 2:48-59). This allows curtains to be hung in front of existing blinds.
- Technical Importance: The described technology offers a non-damaging and reversible method for mounting new window dressings over existing ones, a solution targeted at a common limitation in rental agreements (’865 Patent, col. 2:24-28).
Key Claims at a Glance
- The complaint seeks a declaratory judgment of non-infringement of the patent generally, with a focus on independent claims 1 and 7 (Compl. ¶¶ 22, 23, 37-38).
- Independent Claim 1 requires, among other elements:
- A body portion that defines "at least one body portion hollow, the hollow having only one opening"
- A mechanical means for anchoring, specified as "at least one clip"
- A linking member with an "extension" configured to "extend into the at least one body portion hollow"
- Independent Claim 7 requires, among other elements:
- A body portion comprising a "central portion" that defines a "central portion channel" having "at least two openings"
- A mechanical means for anchoring that is "configured to pass through the at least one central portion channel" to secure the device to a support
- The complaint alleges non-infringement of dependent claims 2-6 and 8-14 by extension of its arguments against the independent claims (Compl. ¶¶ 22-23).
III. The Accused Instrumentality
Product Identification
- The accused products are the "Nono Brackets" (Compl. ¶1).
Functionality and Market Context
- The complaint describes the Nono Brackets as "outside or inside mounted blinds curtain rod bracket attachments" designed to be sold directly to consumers (Compl. ¶1). The complaint references printouts from online retail websites, attached as Exhibit 1, which show the accused 'Nono Brackets' available for purchase (Compl. ¶2).
- The products are alleged to be sold on major e-commerce platforms including Amazon.com and Walmart.com, as well as the plaintiff's own website (Compl. ¶2). The complaint asserts the brackets are "popular" (Compl. ¶1).
IV. Analysis of Infringement Allegations
As this is a complaint for declaratory judgment, the following tables summarize the plaintiff's asserted grounds for non-infringement.
'865 Patent Infringement Allegations (based on Plaintiff's denials for Claim 1)
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality (Plaintiff's Position) | Complaint Citation | Patent Citation |
|---|---|---|---|
| a) at least one body portion, wherein the at least one body portion defines at least one body portion hollow, the hollow having only one opening | The Nono Brackets allegedly do not have a "body" and lack any structure that meets the definition of a "body portion hollow" with a single opening. | ¶22 | col. 7:60-62 |
| c) ... ii) an extension disposed along the linking member rear side, wherein the extension is configured to extend into the at least one body portion hollow | As the Nono Brackets allegedly lack a "body portion hollow," they consequently lack a linking member with an extension configured to extend into such a hollow. | ¶22 | col. 8:3-6 |
'865 Patent Infringement Allegations (based on Plaintiff's denials for Claim 7)
| Claim Element (from Independent Claim 7) | Alleged Non-Infringing Functionality (Plaintiff's Position) | Complaint Citation | Patent Citation |
|---|---|---|---|
| a) at least one central portion, wherein the at least one central portion defines at least one central portion channel, and wherein the at least one central portion channel has at least two openings | The Nono Brackets allegedly do not have a structure that constitutes a "central portion channel" with at least two openings. | ¶23, ¶38 | col. 10:3-7 |
| at least one mechanical means for anchoring, wherein the at least one mechanical means for anchoring is configured to pass through the at least one central portion channel and secure the device... | The Nono Brackets allegedly do not contain a mechanical means for anchoring that is configured to pass through a central portion channel to secure the device. | ¶23, ¶38 | col. 10:11-15 |
Identified Points of Contention
- Structural Questions: A primary dispute concerns whether the physical structure of the Nono Bracket corresponds to the claimed elements. The complaint raises factual questions about whether the accused product contains a "body portion hollow" (Claim 1) or a "central portion channel" with a pass-through anchoring means (Claim 7).
- Scope Questions: The resolution of the structural questions will depend on the scope of the claim terms. For example, the case raises the question of how broadly the term "hollow" can be interpreted—does it require a distinct, enclosed cavity for mating parts as shown in the patent's figures, or could it read on a more general recess or feature of the Nono Bracket?
V. Key Claim Terms for Construction
The Term: "at least one body portion hollow, the hollow having only one opening" (Claim 1)
Context and Importance: Plaintiff's non-infringement argument for claims 1-6 is premised on the assertion that its Nono Brackets completely lack this feature (Compl. ¶22). The construction of this term is therefore central to the infringement analysis for this set of claims.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests flexibility in the body's form, stating it is "not necessary that each facet of the body 10 be flat, edged, or otherwise discrete" and that it may "comprise rounded features that blend into one another" (’865 Patent, col. 4:63-col. 5:1). A party could argue this supports a less rigid definition of "hollow."
- Evidence for a Narrower Interpretation: The specification links this element to a specific function. It states, "the body 10 may comprise a cavity 21 or hollow sized to mateably receive an insert 22 or other complementary portion formed in the linking member 20" (’865 Patent, col. 6:2-5). This language, particularly in conjunction with Figure 1, suggests the "hollow" is a specific receptacle for joining a separate linking member, not just any concave feature.
The Term: "central portion channel" (Claim 7)
Context and Importance: Plaintiff's non-infringement defense against claims 7-14 hinges on the absence of this feature in its Nono Brackets (Compl. ¶23, ¶38). Its construction is therefore critical.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term "channel" is not explicitly defined in the patent, potentially leaving room for it to be construed as any groove, slot, or passage in the device.
- Evidence for a Narrower Interpretation: The specification and figures provide a specific context. Figures 6 and 7 depict "channel 18" as a distinct, continuous passage running from the top to the bottom of the device body, designed to receive a "rugged strap 19" (e.g., a zip-tie) that acts as the anchoring means (’865 Patent, col. 5:49-54). Claim 7 further requires the channel to have "at least two openings," which supports this pass-through design for a strap.
VI. Other Allegations
- Indirect Infringement: As a declaratory judgment plaintiff, the complaint asserts non-infringement and thus denies it has engaged in any indirect or contributory infringement (Compl. ¶37). It does not provide factual allegations that would form the basis of a counterclaim for indirect infringement by the Defendant.
- Willful Infringement: The complaint does not contain an allegation of willful infringement by the Plaintiff. Instead, it alleges that the Defendant's actions of sending infringement notices to Plaintiff's customers were taken in "bad faith" (Compl. ¶¶ 5, 50). This allegation is based on the Defendant having been provided with detailed non-infringement arguments by Plaintiff's counsel prior to contacting the customers (Compl. ¶¶ 5, 21).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of patent validity: did the plaintiff’s alleged first sale of its "Nono Brackets" on September 6, 2016—thirteen days prior to the patent's September 19, 2016 filing date—constitute a public use or on-sale activity sufficient to invalidate the '865 Patent under 35 U.S.C. § 102?
- A second core issue will be one of claim construction and structural infringement: does the physical form of the plaintiff’s "Nono Bracket" possess the specific structures recited in the patent’s independent claims? Resolution will depend on whether the court construes terms like "body portion hollow" (Claim 1) and "central portion channel" (Claim 7) narrowly, based on the specific embodiments shown in the patent's figures, or more broadly.