DCT
2:19-cv-06982
Gold Crest LLC v. Project Light
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Gold Crest, LLC (California)
- Defendant: Project Light, LLC (Ohio)
- Plaintiff’s Counsel: Tsircou Intellectual Property Law PC
- Case Identification: 2:19-cv-06982, C.D. Cal., 08/12/2019
- Venue Allegations: Venue is based on Defendant allegedly advertising, offering for sale, selling, and distributing infringing products within the Central District of California.
- Core Dispute: Plaintiff alleges that Defendant’s desk lamps infringe two design patents covering the ornamental appearance of a light assembly.
- Technical Context: The dispute is in the home and commercial lighting market, concerning the proprietary ornamental design of modern-style desk lamps.
- Key Procedural History: The complaint alleges Plaintiff first notified Defendant of its infringing activity in August 2017. After initial settlement discussions ceased, Plaintiff sent a second cease and desist letter in March 2019 before filing this suit. These allegations may form the basis for a claim of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2015-09-08 | Priority Date for '512 and '735 Patents |
| 2016-10-18 | U.S. Design Patent No. D769,512 Issued |
| 2017-05-23 | U.S. Design Patent No. D787,735 Issued |
| 2017 | Accused product displayed at "HD Expo" |
| 2017-08-22 | Defendant responds to initial infringement notice |
| 2019-03 | Second cease and desist letter sent |
| 2019-08-12 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D769,512 - "Light Assembly"
- Patent Identification: U.S. Design Patent No. D769,512, "Light Assembly," issued October 18, 2016.
The Invention Explained
- Problem Addressed: As a design patent, the '512 Patent does not articulate a technical problem; its purpose is to protect the novel, non-functional, ornamental appearance of the article shown (Compl. ¶11; '512 Patent, CLAIM).
- The Patented Solution: The patent claims the specific ornamental design for a "light assembly" as depicted in its figures ('512 Patent, CLAIM). The claimed design consists of a thin, rectangular light head extending from a ribbon-like arm that features a distinct, angular fold-back curve before connecting to a solid, trapezoidal base ('512 Patent, Fig. 1, Fig. 4).
- Technical Importance: The complaint alleges that the distinctive nature of this design has earned "valuable and residual goodwill and reputation for Gold Crest" (Compl. ¶11).
Key Claims at a Glance
- The patent asserts a single claim for "the ornamental design for a light assembly, as shown and described" ('512 Patent, col. 1:47-49). The scope of this claim is defined by the visual appearance of the lamp shown in solid lines in Figures 1 through 7.
U.S. Design Patent No. D787,735 - "Light Assembly"
- Patent Identification: U.S. Design Patent No. D787,735, "Light Assembly," issued May 23, 2017.
The Invention Explained
- Problem Addressed: The '735 Patent protects an alternative ornamental appearance for a light assembly (Compl. ¶11; '735 Patent, CLAIM).
- The Patented Solution: This patent, a division of the application leading to the '512 Patent, also claims an ornamental design for a "light assembly" ('735 Patent, Related U.S. Application Data). The design features a similar thin light head, but the supporting arm has a smoother, more continuous C-shaped curve compared to the angular curve of the '512 Patent ('735 Patent, Fig. 3). Critically, the base of the lamp is depicted in dashed lines, indicating that it is environmental structure and not part of the claimed design ('735 Patent, DESCRIPTION, col. 1:66-68; Figs. 1-4).
- Technical Importance: The complaint groups this design with the '512 Patent design, alleging both are distinctive and have generated significant goodwill (Compl. ¶11).
Key Claims at a Glance
- The patent asserts a single claim for "the ornamental design for a light assembly, as shown and described" ('735 Patent, col. 1:57-59). The claim covers the visual appearance of the light head and the curved arm only.
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are desk lamps sold by Defendant, including a product identified as "D63" on its website, www.projectlightinc.com (Compl. ¶¶17, 18).
Functionality and Market Context
- The complaint alleges Defendant advertised, offered for sale, and sold the accused lamps at industry events like the 2017 "HD Expo" in Las Vegas and online (Compl. ¶13, ¶18).
- The complaint provides a side-by-side visual comparison of the patented designs and a photograph of the accused product, a black desk lamp with a curved arm (Compl. p. 4, ¶14). A separate comparison shows the patented designs against a white version of the accused lamp, model "D63," from Defendant's website (Compl. p. 6, ¶18).
IV. Analysis of Infringement Allegations
The standard for design patent infringement is whether an "ordinary observer," familiar with the prior art, would be deceived into believing the accused design is the same as the patented design.
D769,512 Infringement Allegations
| Claim Element (from the '512 Patent Design) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design for a light assembly, as shown and described. | The complaint alleges the overall visual appearance of the accused lamp is substantially the same as the '512 design, such that an ordinary observer would be deceived. | ¶21, ¶26 | '512 Patent, col. 1:47-49 |
| A thin, ribbon-like arm with an angular, folded-back curve connecting a light head to a base. | The accused lamp is depicted with a curved arm that the complaint's visual comparison suggests is confusingly similar to the patented design's arm. | ¶14 | '512 Patent, col. 1:50-52 |
| A solid, trapezoidal base. | The accused lamp is shown with a square or rectangular base, which the complaint presents as part of the infringing overall design. | ¶14 | '512 Patent, col. 1:50-52 |
- Identified Points of Contention:
- Scope Questions: The infringement analysis will turn on whether the overall visual impression of the accused lamp is "substantially the same" as the patented design (Compl. ¶21). A potential point of dispute is the precise shape of the arm; the court may need to determine if the accused lamp's arm possesses the same distinct, angular "fold-back" character as the '512 design or if it has a more generic, smooth curve.
- Technical Questions: A key evidentiary question will be whether the visual differences between the accused lamp's base and the patented trapezoidal base are significant enough to create a different overall visual impression for the ordinary observer.
D787,735 Infringement Allegations
| Claim Element (from the '735 Patent Design) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design for a light assembly, excluding the base, as shown and described. | The complaint alleges that the design of the accused lamp's head and arm embodies the patented '735 design. | ¶21, ¶37 | '735 Patent, col. 1:57-59 |
| A thin, ribbon-like arm with a smooth, continuous curve. | The accused lamp is depicted with a smoothly curved arm, which the complaint's side-by-side comparison alleges is substantially similar to the '735 design. The comparison is shown in a photograph from the "HD Expo". | ¶15 | '735 Patent, col. 1:61-63 |
- Identified Points of Contention:
- Scope Questions: Since the '735 Patent's claim does not include the base, the infringement analysis will disregard the base of the accused product and focus solely on the similarity of the light head and arm. This raises the question of whether the accused head and arm, viewed in isolation, are substantially similar to the '735 design.
- Technical Questions: The central factual question will be the degree of similarity between the specific curvature of the arm in the '735 Patent's figures and the curve of the arm on the accused lamps.
V. Key Claim Terms for Construction
Claim construction for design patents is generally not performed in the same manner as for utility patents, as the claim consists of the drawings themselves. The scope of the claim is defined by the visual appearance of the design as shown in the patent's figures. Therefore, an analysis of specific "claim terms" is not applicable.
VI. Other Allegations
Indirect Infringement
- The complaint includes allegations of induced infringement for both the '512 and '735 Patents (Compl. ¶28, ¶38). The allegations state that Defendant induced infringement by "making, using, selling, offering for sale and/or importing products," but do not plead specific additional facts detailing how Defendant actively encouraged a third party's infringement.
Willful Infringement
- The complaint alleges that Defendant's infringement has been willful. The basis for this allegation is Defendant's alleged pre-suit knowledge of the patents, dating back to at least August 2017, and its continued alleged infringement after receiving notice and participating in unsuccessful settlement negotiations (Compl. ¶¶16, 17, 24, 27).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of visual comparison: will an ordinary observer, analyzing the patented designs and the accused lamps side-by-side, find them "substantially the same"? The outcome may depend on nuanced differences in the curvature of the lamps' arms and the overall proportions of the designs.
- A key legal and factual question will be the impact of claim scope: how will the '735 Patent's disclaimer of the lamp base, compared to the '512 Patent's inclusion of the base, affect the infringement analysis for each patent, especially if the base of the accused product differs from the '512 design? This could potentially lead to a finding of infringement on one patent but not the other.
- The case will likely feature a significant dispute over intent: based on the alleged history of communication and notice dating back to 2017, a court will have to determine whether Defendant's alleged infringement was willful, which would expose Defendant to the risk of enhanced damages.