DCT
2:19-cv-07347
Shandong Honghui Food Machinery Co Ltd v. Wouldn T It Be Nice LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Shandong Honghui Food Machinery Co., LTD dba Seven Style (China)
- Defendant: Wouldn't It Be Nice LLC (Michigan)
- Plaintiff’s Counsel: Wang IP Law Group, P.C.
- Case Identification: 2:19-cv-07347, C.D. Cal., 08/23/2019
- Venue Allegations: Plaintiff alleges venue is proper because a substantial part of the events giving rise to the claim occurred in the district and Defendant conducts business throughout the U.S., including sales to California residents via the internet.
- Core Dispute: Plaintiff seeks a declaratory judgment that its velvet hair scrunchies do not infringe Defendant's design patent for a scrunchie with a distinct "petal-like" appearance.
- Technical Context: The case involves the ornamental design of hair accessories, a market segment where unique visual appearance can be a significant commercial differentiator.
- Key Procedural History: The complaint states that the dispute arose after Defendant filed an intellectual property infringement complaint with Amazon.com against Plaintiff, which resulted in the removal of Plaintiff's product listing. This action by the patent holder created the "actual controversy" necessary for the accused infringer to file this suit for declaratory judgment.
Case Timeline
| Date | Event |
|---|---|
| 2019-01-10 | ’833 Patent Application Filing Date (Priority Date) |
| 2019-06-18 | ’833 Patent Issue Date |
| 2019-06-25 | Plaintiff receives email from Amazon.com about product removal |
| 2019-08-23 | Complaint for Declaratory Judgment Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D851,833 - "SCRUNCHIE"
The Invention Explained
- Problem Addressed: The implicit goal of a design patent is to protect a new, original, and ornamental design for an article of manufacture, distinguishing it from prior art designs (’833 Patent, Title, Claim). In this case, the article is a hair scrunchie.
- The Patented Solution: The patent claims the specific ornamental appearance of a scrunchie. The design is characterized by a series of prominent, rounded, and symmetrically arranged lobes that create a distinct scalloped or "petal-like" silhouette when viewed from the top or bottom (’833 Patent, Figs. 2-3). The side profile views show a consistent, structured gathering of the fabric (’833 Patent, Figs. 4-5).
- Technical Importance: In the market for fashion accessories, a unique and recognizable ornamental design provides a basis for product differentiation and may contribute to brand identity (’833 Patent, Claim).
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is: "The ornamental design for a scrunchie, as shown and described." (’833 Patent, Claim).
- The scope of this claim is defined by the visual appearance of the scrunchie depicted in the patent's five figures.
III. The Accused Instrumentality
Product Identification
- "Scrunchies Velvet Elastic Hair Bands" ("Alleged Product") manufactured and sold by Plaintiff Seven Style on e-commerce platforms such as Amazon.com (Compl. ¶10, 27).
Functionality and Market Context
- The product is a velvet hair scrunchie. The complaint alleges that, unlike the patented design, the Alleged Product has an "unfixed shape" that is "hard to form into a petal-like" configuration and is similar to a "regular hair scrunchie" (Compl. ¶12). A visual comparison was attached to the complaint as Exhibit C, which is described as comparing the patented design to a "regular scrunchie" (Compl. ¶12). The complaint further alleges that the "connection lines" on the Alleged Product are "located randomly," in contrast to the patented design (Compl. ¶13).
IV. Analysis of Infringement Allegations
As this is a complaint for declaratory judgment of non-infringement, the following table summarizes the Plaintiff's arguments for why its product is not infringing. The infringement test for a design patent is whether an "ordinary observer," familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented design.
D'833 Patent Non-Infringement Allegations
| Claimed Design Feature (from D'833 Patent) | Alleged Non-Infringing Feature of Plaintiff's Product | Complaint Citation | Patent Citation |
|---|---|---|---|
| A distinct and stable "petal-like shape" comprising symmetrical, rounded lobes. | The product has an "unfixed shape" and is "hard to form into a petal-like shape," instead resembling a "regular hair scrunchie." | ¶12 | Figs. 2-3 |
| A consistent structure with a connection line implied to be in the middle between the top and bottom portions. | The product's "connection lines" are "located randomly" and have a "higher likelihood of being biased to the top portion or bottom portion." | ¶13 | Figs. 4-5 |
- Identified Points of Contention:
- Scope Questions: The central issue is one of visual comparison. Does the overall ornamental appearance of the Alleged Product create the same visual impression as the design claimed in the ’833 Patent? The Plaintiff's position is that its product's "unfixed" and "regular" shape is visually distinct from the stable, "petal-like" patented design (Compl. ¶12).
- Technical Questions: A key factual question will be the actual appearance of the Plaintiff's product as offered for sale and in use. Does evidence (e.g., product samples, marketing photos) show a product that lacks the distinctive "petal-like" shape, or does it assume an appearance substantially similar to the patented design under normal conditions? The Plaintiff's description of its own product's "randomly" located connection lines raises a question of how this manufacturing detail affects the product's overall appearance to an ordinary observer (Compl. ¶13).
V. Key Claim Terms for Construction
In design patent cases, claim construction consists of describing the claimed design in words to assist the fact-finder. The "claim" is the design itself, as shown in the drawings.
- The Term: "The ornamental design for a scrunchie, as shown and described."
- Context and Importance: The entire dispute hinges on the scope of the visual impression protected by the patent. Practitioners may focus on articulating the specific visual features that distinguish the patented design from a conventional scrunchie, as this distinction is at the heart of the Plaintiff's non-infringement argument.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue that the claim covers any scrunchie design that creates a general "petal-like" or scalloped-edge impression, even if the number or exact shape of the lobes varies slightly from the drawings.
- Evidence for a Narrower Interpretation: A party could argue the claim is limited to the specific design shown, emphasizing the particular number, rounded shape, and symmetrical arrangement of the lobes as depicted in Figures 2 and 3 of the ’833 Patent, and the structured side profile of Figures 4 and 5. The Plaintiff’s argument that its product resembles a "regular scrunchie" suggests it will advocate for a narrow construction that does not cover conventional designs (Compl. ¶12).
VI. Other Allegations
- Indirect Infringement: The complaint seeks a declaration of non-infringement "directly or indirectly" (Compl. ¶16), but it does not allege specific facts related to inducement or contributory infringement, which is typical for a declaratory judgment plaintiff.
- Willful Infringement: This is not alleged by the Plaintiff. The complaint does, however, request that the court deem the case "exceptional" under 35 U.S.C. §285, which would entitle the Plaintiff to an award of attorneys' fees (Compl., Prayer for Relief ¶2).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual comparison: Applying the "ordinary observer" test, is the overall ornamental appearance of the Plaintiff's "Scrunchies Velvet Elastic Hair Bands" substantially the same as the specific "petal-like" design claimed in the ’833 patent, or is it visually distinguishable as a "regular scrunchie"?
- A key evidentiary question will be one of product form: Does the evidence, including product samples and marketing materials, support the Plaintiff's assertion that its product has an "unfixed shape" that is different from the patented design, or does the product as sold and used create a visual impression that is confusingly similar to the patented design?
- A final question concerns the role of prior art: The comparison will be made in the context of the prior art. The degree of similarity between the patented design and prior art scrunchies will inform how closely the accused product must resemble the patented design to be found infringing. The Plaintiff's reliance on the "regular scrunchie" comparison signals that prior art will be central to the non-infringement analysis.