DCT
2:19-cv-08073
YSN Imports Inc v. Mathews Outdoor Products LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: YSN IMPORTS, INC. dba Flame King (Nevada)
- Defendant: Mathews Outdoor Products LLC (Louisiana)
- Plaintiff’s Counsel: Freeman, Freeman & Smiley, LLP
- Case Identification: 2:19-cv-08073, C.D. Cal., 09/18/2019
- Venue Allegations: Venue is based on Defendant's alleged distribution of goods covered by the patent-in-suit within the Central District of California and the sending of threatening letters into the district.
- Core Dispute: This is a declaratory judgment action in which Plaintiff seeks a declaration that its modified firestarter product does not infringe Defendant’s design patent, and that the patent is invalid and unenforceable.
- Technical Context: The dispute concerns the ornamental design of propane-fueled firestarters, a common accessory for barbecue grills and fireplaces.
- Key Procedural History: The action was precipitated by Defendant's assertions and threats to sue Plaintiff for patent infringement. Plaintiff responded with a letter detailing its non-infringement and invalidity positions before filing this suit to resolve the controversy.
Case Timeline
| Date | Event |
|---|---|
| 2015-04-03 | Publication date of Weber Q200/Q220 Burner Tube prior art |
| 2015-05-11 | Publication date of Centro Curved Burner prior art |
| 2015-09-06 | Publication date of Weber Q100 Burner Kit prior art |
| 2016-12-29 | Priority Date for U.S. Design Patent No. D851,763 |
| 2019-06-18 | Issue Date for U.S. Design Patent No. D851,763 |
| 2019-09-18 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D851,763 - "Fire Starter Lance"
- Patent Identification: U.S. Design Patent No. D851,763, "Fire Starter Lance," issued June 18, 2019 (’763 Patent).
The Invention Explained
- Problem Addressed: Design patents do not solve a technical problem in the manner of utility patents; rather, they protect a novel, original, and ornamental design for an article of manufacture (Compl. ¶¶ 8, 17). The purpose is to provide a unique aesthetic appearance for a fire starter lance.
- The Patented Solution: The ’763 Patent claims the specific ornamental design of a fire starter lance. The design consists of a long, straight tube connected to an asymmetrically looped burner head at one end and a connector fitting at the other (’763 Patent, Figs. 1-12). The claimed design is defined by the solid lines in the patent figures; the connector fittings, shown in broken lines, are explicitly disclaimed and form no part of the patented design (’763 Patent, Description).
- Technical Importance: The complaint alleges that the general configuration of a gas tube burner with a straight portion and a looped end portion is a common and functional design found in "numerous prior art gas tube burners" (Compl. Ex. 2, p. 17). The patent's contribution is therefore limited to its specific ornamental appearance.
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is: "The ornamental design for a fire starter lance, as shown and described." (’763 Patent, Claim). This claim protects the overall visual appearance of the fire starter lance depicted in the patent's drawings.
III. The Accused Instrumentality
Product Identification
- The "YSN Modified Firestarter" (Compl. ¶10).
Functionality and Market Context
- The YSN Modified Firestarter is a propane-fueled firestarter designed for barbecue and grill-related use (Compl. ¶¶ 6, 10). A photograph of the product shows a long tube with a looped burner head. (Compl. ¶10, p. 3). The complaint states that Plaintiff "intends to release the YSN Modified Firestarter into the marketplace imminently" (Compl. ¶11).
- Plaintiff alleges it conceived of the modified design in response to infringement threats from Defendant concerning a prior design, with the intent to avoid the ’763 patent (Compl. ¶10).
IV. Analysis of Infringement Allegations
This is a declaratory judgment action for non-infringement. The table below summarizes Plaintiff's arguments for why its product does not infringe the ’763 patent, based on the "ordinary observer" test.
’763 Patent Non-Infringement Allegations
| Claim Element (from Claim 1) | Plaintiff's Allegations of Non-Infringing Design | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a fire starter lance, as shown and described. | Plaintiff alleges the overall designs are not substantially the same and an ordinary observer, familiar with the prior art, would not be deceived. A key difference highlighted is that the looped end portion of the YSN Modified Firestarter is "laterally symmetrical with respect to the linearly-straight portion," whereas the patented design is asymmetrical. | Compl. Ex. 2, p. 21 | ’763 Patent, Figs. 1, 2, 7, 8 |
| The ornamental design for a fire starter lance, as shown and described. | Plaintiff contends that when viewed in light of the "extremely close" prior art, the differences between the accused product and the patented design "stand out inescapably" and are "significant." | Compl. Ex. 2, p. 21 | ’763 Patent, Figs. 1, 2, 7, 8 |
Identified Points of Contention
- Scope Questions: The central infringement question is whether, in the eyes of an ordinary observer, the YSN product's symmetrical loop creates an overall visual appearance that is substantially different from the patented design's asymmetrical loop, particularly in the context of the cited prior art.
- Technical Questions: A key factual question for the infringement analysis will be how the presence of numerous similar prior art designs influences the perception of an ordinary observer. Plaintiff explicitly argues that where a patented design is close to the prior art, "small differences between the accused design and the claimed design are likely to be important." (Compl. Ex. 2, p. 20).
- The complaint includes a side-by-side comparison of a Weber grill burner prior art design and the patented design, arguing they are "nearly identical." (Compl. ¶17, p. 5). This image is offered as evidence that the scope of protection afforded by the ’763 patent is narrow.
V. Key Claim Terms for Construction
In design patent cases, the "claim" is the visual design itself, so traditional claim construction of terms is not the primary focus. Instead, the analysis centers on the scope of the design as depicted in the drawings.
- The Term: "the ornamental design... as shown and described"
- Context and Importance: The scope of the patented design is defined by what is shown in solid lines in the patent figures. Practitioners will focus on this because the patent explicitly disclaims the connector fittings shown in broken lines, stating they "form no part of the claimed design" (’763 Patent, Description). This limits the protected design to the shape and configuration of the tube and burner head only.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party arguing for broader scope might contend that the overall impression is that of an elongated tube with a bent, looped burner head, and that minor variations in the loop's symmetry do not change this fundamental impression.
- Evidence for a Narrower Interpretation: The patent consistently depicts a burner head loop that is distinctly asymmetrical, with one side of the loop being longer and more angular than the other (’763 Patent, Figs. 1, 2, 7, 8). Plaintiff’s argument for non-infringement relies on this specific visual feature, contending that any interpretation of the design must include this asymmetry, which its product lacks (Compl. Ex. 2, p. 21).
VI. Other Allegations
Invalidity
- The complaint includes a second claim for relief seeking a declaratory judgment that the ’763 patent is invalid under 35 U.S.C. §§ 102 (anticipation) and/or 103 (obviousness) (Compl. ¶17).
- The complaint alleges the patented design is anticipated or rendered obvious by numerous prior art gas tube burners, providing photographic examples and publication dates for several, such as the "Weber Q100 Gas Grill Tube Burner Kit" and the "Centro Curved Burner" (Compl. ¶17; Compl. Ex. 2, p. 18). Plaintiff's counsel explicitly noted in a pre-suit letter that these references "appear not to have been disclosed to the USPTO" during prosecution (Compl. Ex. 2, p. 17, fn. 1).
- A table included in the complaint compares five different prior art burners to the patented design, highlighting shared characteristics such as a tubular body, a linearly-straight portion, and an asymmetric looped end portion. (Compl. Ex. 2, p. 18).
Exceptional Case
- Plaintiff requests a finding that this is an exceptional case under 35 U.S.C. § 285, which would entitle it to attorneys' fees (Compl. ¶21.e). The basis for this appears to be the allegation that Defendant procured and asserted a patent that is invalid over "numerous close prior art references... some of the most relevant of which were not disclosed by you in connection with the filing and prosecution of the Asserted Patent" (Compl. Ex. 2, p. 23).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of validity: Given the crowded field of prior art for gas tube burners presented in the complaint, a central question is whether the specific ornamental design of the ’763 patent is novel and non-obvious, or if it is anticipated or rendered obvious by pre-existing designs like the Weber and Centro burners.
- A key infringement question will be the scope of comparison: The case will turn on the application of the "ordinary observer" test. The court must determine whether the distinction between the patented design’s asymmetrical loop and the accused product’s symmetrical loop is a "small difference" that an ordinary observer would deem important, especially when the patented design itself is alleged to be very close to the prior art.
- A secondary issue will be one of conduct: Should the patent be found invalid, the court may examine whether the patentee’s failure to disclose the prior art cited in the complaint during prosecution rises to the level of inequitable conduct or otherwise supports a finding that this is an exceptional case justifying an award of attorneys' fees.