DCT
2:19-cv-04519
DMF Inc v. AMP Plus Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: DMF, Inc. (California)
- Defendant: AMP Plus, Inc. d/b/a ELCO Lighting and ELCO Lighting Inc. (California)
- Plaintiff’s Counsel: Davidson Law Group, ALC; Ergoniq LLC
- Case Identification: 2:19-cv-04519, C.D. Cal., 05/28/2019
- Venue Allegations: Venue is alleged to be proper as Defendant resides in, maintains a regular and established place of business in, and has committed acts of alleged infringement within the Central District of California.
- Core Dispute: Plaintiff alleges that the ornamental design of Defendant’s LED lighting modules infringes two of Plaintiff's design patents.
- Technical Context: The case concerns modular LED downlights, a common and competitive segment of the residential and commercial lighting market.
- Key Procedural History: The complaint details a notable patent prosecution history, alleging that Defendant obtained its own design patent (U.S. Patent No. D820,494) by copying Plaintiff's pre-existing product. It further alleges that the U.S. Patent and Trademark Office initially rejected one of Plaintiff's patent applications based on Defendant’s patent, a rejection that was later withdrawn after Plaintiff established an earlier priority date for its design.
Case Timeline
| Date | Event |
|---|---|
| 2014-02-18 | U.S. Patent No. D847,415 Priority Date |
| by 2014-12-31 | Plaintiff DMF begins marketing and selling its DRD2 LED Module products |
| 2016-05-27 | U.S. Patent No. D847,414 Priority Date |
| 2017-02-17 | Defendant ELCO files its design patent application (later U.S. Patent No. D820,494) |
| 2019-04-30 | U.S. Patent No. D847414 Issued |
| 2019-04-30 | U.S. Patent No. D847415 Issued |
| 2019-05-28 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D847,414, Lighting Module, Issued April 30, 2019
The Invention Explained
- Problem Addressed: Design patents protect ornamental appearance rather than functional solutions. The patent does not describe a technical problem but instead presents a novel, non-obvious ornamental design for a lighting module (D’414 Patent, Claim).
- The Patented Solution: The patent claims the specific aesthetic and ornamental appearance of a lighting module. The claimed design, shown in solid lines, consists of a cylindrical body featuring a dense array of vertical heat-sink fins, a notched base, and a smooth, circular front bezel (D’414 Patent, Figs. 1-2). Features shown in broken lines, such as the electrical connector, screws, and internal lens components, are explicitly disclaimed and do not form part of the patented design (D’414 Patent, Description).
- Technical Importance: The complaint alleges that Plaintiff's products embodying this design are recognized for their "forward-thinking industrial designs" and are selected for "prestigious new constructions" (Compl. ¶10).
Key Claims at a Glance
- Design patents have a single claim. The asserted claim is: "The ornamental design for a lighting module, as shown and described." (D’414 Patent, Claim).
- The scope of this claim is defined by the visual features depicted in solid lines in the patent's drawings, which primarily include:
- A cylindrical housing with radially extending vertical fins.
- A circular bezel at the front of the housing.
- A notched base structure.
U.S. Design Patent No. D847,415, Unified Casting Lighting Module, Issued April 30, 2019
The Invention Explained
- Problem Addressed: This patent presents a novel, non-obvious ornamental design for a lighting module assembly, focusing on the interface between the module and its housing (D’415 Patent, Claim).
- The Patented Solution: The patent claims the ornamental design for what it titles a "unified casting light module" (D’415 Patent, Title). The claimed design, depicted in solid lines, includes a circular bezel combined with a mounting frame or trim piece. The distinctive features of the frame include two opposed, circular recessed openings and curved linear features on the face of the frame (D’415 Patent, Figs. 1-2). The finned module body and its electrical components are shown in broken lines, indicating they are for illustrative context and not part of this specific claimed design (D’415 Patent, Description).
- Technical Importance: This design pertains to the appearance of a modular lighting system, which the complaint positions as a key innovation for Plaintiff (Compl. ¶¶10, 12).
Key Claims at a Glance
- The asserted claim is: "The ornamental design for a unified casting light module, as shown and described." (D’415 Patent, Claim).
- The scope of the claim is defined by the visual features depicted in solid lines in the drawings, which primarily include:
- A circular front bezel.
- A mounting frame (casting) featuring two diametrically opposed circular recesses.
- Curved, linear surface features surrounding the central aperture.
III. The Accused Instrumentality
- Product Identification: Defendant ELCO’s "E.L.L. LED Module" (in "Version A" and "Version B") and associated "Flexa™ Trims" and housings (Compl. ¶¶17, 18).
- Functionality and Market Context: The accused E.L.L. System is a modular LED lighting product line advertised for commercial and residential use (Compl. ¶¶18-19). The complaint alleges that after observing the market success of Plaintiff's DRD2 Module, ELCO "decided to make imitation modules and sell them under the name ELL Module" (Compl. ¶17). An ELCO advertisement shows the accused E.L.L. LED Module and its compatible "Flexa" trims, which use a "Twist-&-Lock System" for installation (Compl. ¶18, p. 7). This advertisement, included in the complaint, depicts the accused module with various trim options. (Compl. ¶18, p. 7).
IV. Analysis of Infringement Allegations
The standard for design patent infringement is whether an "ordinary observer, giving such attention as a purchaser usually gives, would be deceived into believing that the accused product is the same as the patented design." The complaint alleges that both Version A and Version B of the ELCO ELL Modules meet this standard (Compl. ¶¶35, 40).
D'414 Patent Infringement Allegations
The complaint alleges that the ornamental design of the accused ELCO ELL Modules is substantially the same as the design claimed in the D’414 Patent (Compl. ¶35). The complaint provides an image of the accused module offered for sale by an online distributor (Compl. ¶34, p. 18).
| Claim Element (Ornamental Feature from D'414 Patent) | Alleged Infringing Feature (from ELCO ELL Module) | Complaint Citation | Patent Citation |
|---|---|---|---|
| A cylindrical body with an array of vertical, radially-extending heat sink fins. | The accused module has a black, cylindrical body with an array of vertical, radially-extending heat sink fins. | ¶¶32-34, p.17-18 | D’414 Patent, Figs. 1-2 |
| A circular, smooth-faced front bezel attached to the cylindrical body. | The accused module has a circular, smooth-faced front bezel attached to the finned cylindrical body. | ¶¶32-34, p.17-18 | D’414 Patent, Figs. 1-2 |
| A base with recessed and protruding edges (notches). | The accused module's base has a similar configuration of recessed and protruding edges for mounting. | ¶35 | D’414 Patent, Fig. 1 |
- Identified Points of Contention:
- Scope Questions: The central question will be whether the overall visual impression of the accused ELCO module is "substantially the same" as the patented design. The analysis will focus on the combination of the finned body and the bezel.
- Technical Questions: A factual question for the jury will be whether minor differences in the number, spacing, or profile of the fins, or the precise curvature of the bezel, are sufficient to differentiate the designs in the mind of an ordinary observer.
D'415 Patent Infringement Allegations
The complaint alleges that the accused ELCO ELL Modules, when used with their compatible housings and trims, are substantially the same as the design claimed in the D’415 Patent (Compl. ¶40).
| Claim Element (Ornamental Feature from D'415 Patent) | Alleged Infringing Feature (from ELCO ELL System) | Complaint Citation | Patent Citation |
|---|---|---|---|
| A mounting frame or casting with two opposed circular recessed features. | An ELCO advertisement shows the accused system uses "Twist-&-Lock" trims that create the overall appearance of a mounting frame. The complaint's prosecution history narrative refers to "two circular openings surrounded by a curved linear feature" as a key element of similarity. | ¶¶18, 27, 40 | D’415 Patent, Fig. 2 |
| Curved, linear surface features on the face of the frame. | The accused system's trims and housings create a similar visual effect of curved features around the central aperture. | ¶¶18, 27, 40 | D’415 Patent, Fig. 2 |
| A circular front bezel integrated with the mounting frame. | The accused module's bezel integrates with the Twist-&-Lock trims to form the complete visual appearance. | ¶18, p. 7 | D’415 Patent, Fig. 1 |
- Identified Points of Contention:
- Scope Questions: A key question will be whether the "article of manufacture" to which the D'415 design is applied is the trim/housing component alone or the combination of the module and the trim. The infringement analysis for the D'415 patent depends on the appearance of the full ELCO system, not just the module.
- Evidentiary Questions: A point of contention may be what evidence Plaintiff can introduce to show the appearance of the fully assembled accused system, as the complaint primarily shows the module itself or marketing materials. The complaint includes a side-by-side comparison of drawings from the patent prosecution history, which it alleges demonstrates the similarity between the designs. (Compl. ¶27, p. 14).
V. Key Claim Terms for Construction
In design patent litigation, the claim is understood to be the design as shown in the drawings, and traditional claim construction of words is rare. The scope of the design is defined by the solid lines in the patent figures, while broken lines illustrate environment and are not part of the claim.
- The Term: "Lighting Module" (from D'414 Patent title) and "Unified Casting Lighting Module" (from D'415 Patent title).
- Context and Importance: While these terms are not typically construed, their wording helps define the "article of manufacture" to which the design is applied. This is critical for determining infringement and, importantly, for calculating damages, especially the disgorgement of an infringer's total profits under 35 U.S.C. § 289.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The parties may argue the "article of manufacture" is the entire lighting fixture sold to a customer, potentially increasing the profit base for damages.
- Evidence for a Narrower Interpretation: The figures themselves, with their specific use of solid and broken lines, provide the clearest and most limiting definition of what is claimed. For the D'414 patent, this is the module itself, and for the D'415 patent, it is the casting and bezel assembly.
VI. Other Allegations
- Indirect Infringement: The complaint does not contain explicit counts for indirect infringement (inducement or contributory infringement). It focuses on direct infringement under 35 U.S.C. § 271(a) and § 289 (Compl. ¶¶37, 42).
- Willful Infringement: The complaint does not use the word "willful," but it alleges facts that may support such a claim. It alleges that ELCO developed its product by "copying DMF's DRD2 Module" after seeing its success (Compl. ¶¶17, 26). It also alleges that ELCO continued to offer the accused products for sale after the issuance of the patents-in-suit (Compl. ¶17). These allegations of pre-suit copying and post-suit knowledge could form the basis for a willfulness argument.
VII. Analyst’s Conclusion: Key Questions for the Case
- The Ordinary Observer Test: The central issue will be a factual one of visual comparison: is the overall ornamental appearance of ELCO's accused ELL Modules "substantially the same" as the specific designs claimed in the D'414 and D'415 patents, such that an ordinary observer would be deceived?
- The Impact of Prosecution History: A critical legal and evidentiary question will be the weight given to the prosecution history, where Plaintiff alleges that ELCO copied its design to obtain its own patent and that a USPTO examiner found the designs to be substantially the same. This history may be highly influential in the "ordinary observer" analysis.
- The Scope of Damages: Should infringement be found, a key dispute will likely concern the remedy under 35 U.S.C. § 289, which entitles a patentee to the infringer's "total profit" from the "article of manufacture." The parties will likely contest the definition of the relevant "article"—is it the low-cost module/casting alone, or the entire, higher-priced lighting assembly sold to the end customer?