2:19-cv-04627
Chengdu Furinkazan Automobile Service Co Ltd v. Moti 5 Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Chengdu Furinkazan Automobile Service Co. Ltd. (China)
- Defendant: Moti 5, Inc. (New York / California)
- Plaintiff’s Counsel: INHOUSECO. LAW FIRM
- Case Identification: 2:19-cv-04627, C.D. Cal., 05/28/2019
- Venue Allegations: Venue is alleged to be proper in the Central District of California based on Defendant’s principal place of business being located in the district, and its conducting substantial business, including selling the accused products, within the district.
- Core Dispute: Plaintiff alleges that Defendant’s aftermarket automobile grille infringes a design patent for an "Automobile Face."
- Technical Context: The dispute concerns the aftermarket automotive parts industry, where unique, ornamental designs for vehicle components provide a basis for product differentiation.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with actual notice of the patent and alleged infringement via an Amazon.com infringement report on January 17, 2019, which forms the basis of the willfulness claim.
Case Timeline
| Date | Event |
|---|---|
| 2015-07-07 | D800,226 Patent Priority Date |
| 2017-10-17 | D800,226 Patent Issue Date |
| 2019-01-17 | Plaintiff's infringement notice sent to Defendant via Amazon.com |
| 2019-05-28 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D800,226 - "Automobile Face", issued October 17, 2017
The Invention Explained
- Problem Addressed: In the automotive aftermarket, there is a commercial need for new and unique ornamental designs for vehicle components that allow consumers to customize a vehicle's appearance and differentiate it from the stock factory look (Compl. ¶7).
- The Patented Solution: The patent protects the specific ornamental design for an "automobile face," or grille, as depicted in its seven figures ('226 Patent, Claim). The design's overall visual impression is characterized by an aggressive, stylized "brow" that overhangs the headlight openings, combined with a central grille of vertical slots, creating a distinct aesthetic ('226 Patent, Figs. 1, 7).
- Technical Importance: The design's importance is aesthetic, providing a novel and non-obvious appearance for an automobile grille that distinguishes it from prior designs in the marketplace.
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for an automobile face, as shown and described" ('226 Patent, Claim).
- The core ornamental features that constitute the claimed design include:
- An integrated, overhanging brow structure that creates a "scowling" effect over the two primary headlight apertures.
- A specific three-dimensional contouring of the brow, including sharp creases and recessed surfaces.
- A central grille portion containing seven vertical slots.
- The particular shape, proportion, and arrangement of these elements relative to each other, creating a holistic visual appearance.
III. The Accused Instrumentality
Product Identification
The accused product is the "AM American Modified branded 2007-2018 Jeep Wrangler compatible automobile face" (Compl. ¶14).
Functionality and Market Context
The accused product is an aftermarket automobile grille sold by Defendant Moti 5, Inc. through online channels, including Amazon.com and its own website (Compl. ¶¶ 6, 8). It is marketed as a replacement part compatible with Jeep Wrangler vehicles from model years 2007-2018, allowing owners to alter the vehicle's front-end appearance (Compl. ¶14). The complaint presents a side-by-side visual comparison showing the patented design next to a photograph of the accused product taken from its Amazon product listing (Compl. ¶14). This image shows the accused product is a physical, black plastic grille with features that Plaintiff alleges are infringing (Compl. p. 4).
IV. Analysis of Infringement Allegations
The standard for infringement of a design patent is whether, in the eye of an ordinary observer, the resemblance between the patented design and the accused product is such as to deceive the observer, inducing them to purchase one supposing it to be the other (Compl. ¶18).
D800,226 Patent Infringement Allegations
| Claim Element (Key Ornamental Features from the D'226 Patent) | Alleged Infringing Functionality (as shown in Complaint's visual evidence) | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design for an automobile face, as shown and described. | The complaint alleges the accused product's design is "substantially the same" as the patented design. | ¶15 | '226 Patent, Claim |
| An integrated, overhanging "brow" feature above the headlight apertures creating an "angry" or "scowling" appearance. | The accused product incorporates an overhanging brow feature above its headlight apertures that creates a similar scowling appearance. | ¶14, p. 4 | '226 Patent, Fig. 1 |
| The specific three-dimensional shaping and angularity of the brow structure. | The photograph of the accused product depicts a three-dimensional brow structure with similar angularity and contours. | ¶14, p. 4 | '226 Patent, Fig. 7 |
| A central grille portion containing seven vertical slots. | The accused product is shown with a central grille portion that also contains seven vertical slots. | ¶14, p. 4 | '226 Patent, Fig. 1 |
Identified Points of Contention
- Overall Visual Impression: The central question will be whether the accused grille and the patented design create the same overall visual impression to an ordinary observer. A defense may focus on any perceived differences in proportion, surface curvature, or the specific shape of the slots to argue that the overall impressions are distinct.
- Scope Questions: The complaint directly alleges that Defendant "copied the design" (Compl. ¶14). The case may therefore focus on the degree of similarity and whether any differences are sufficient to avoid a finding that an ordinary observer would be deceived.
V. Key Claim Terms for Construction
The complaint does not provide a basis for claim construction analysis, which is not typically a central issue in design patent litigation where the claim is defined by the drawings rather than textual limitations. The infringement analysis will focus on a comparison of the overall visual appearance of the accused product to the design claimed in the patent's figures.
VI. Other Allegations
Indirect Infringement
The complaint does not contain allegations of indirect infringement (inducement or contributory infringement). The infringement cause of action is based on direct infringement under 35 U.S.C. § 271(a) (Compl. ¶17).
Willful Infringement
The complaint pleads willful infringement as a separate cause of action (Compl. ¶¶ 22-25). The allegation is predicated on the assertion that Defendant had actual knowledge of the '226 Patent since at least January 17, 2019, due to an infringement report Plaintiff filed through Amazon.com (Compl. ¶¶ 13, 24). Plaintiff alleges that Defendant's continued infringement after receiving this notice was and is "willful and deliberate" (Compl. ¶25).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual comparison: Applying the "ordinary observer" test, are the accused AM American Modified grille and the design claimed in the '226 Patent substantially the same, such that an ordinary purchaser would be deceived by the similarity? The court's analysis will depend heavily on a side-by-side comparison of the accused product and the patent's drawings.
- A key factual question will be the effect of pre-suit notice: Did the January 2019 Amazon infringement report provide Defendant with the requisite knowledge of its alleged infringement, and was its subsequent conduct sufficiently egregious to meet the standard for willful infringement, potentially warranting enhanced damages?