DCT
2:20-cv-02233
Ad N Art Inc v. Amazon.com Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Ad-N-Art Inc. (Canada)
- Defendant: Amazon.com, Inc. (Delaware)
- Plaintiff’s Counsel: One LLP
- Case Identification: 2:20-cv-02233, C.D. Cal., 03/06/2020
- Venue Allegations: Plaintiff alleges venue is proper based on Defendant having committed acts of infringement and maintaining a regular and established place of business within the Central District of California, including a distribution center and multiple Amazon Hub Locker locations.
- Core Dispute: Plaintiff alleges that Defendant’s sale and advertisement of various insulating beverage containers ("koozies") infringe a U.S. design patent covering the ornamental appearance of such a product.
- Technical Context: The dispute concerns the market for beverageware, specifically multi-part, insulated containers designed to hold and cool standard-sized beverage bottles and cans.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with actual notice of infringement on multiple occasions, beginning on October 30, 2019. It further alleges that after Defendant stated it could not act on the report, Plaintiff sent a second demand letter on February 10, 2020, which included a draft complaint.
Case Timeline
| Date | Event |
|---|---|
| 2016-01-03 | 'D992 Patent Priority Date (Filing Date) |
| 2018-03-20 | 'D992 Patent Issue Date |
| 2019-10-30 | Plaintiff's first alleged notice of infringement to Defendant |
| 2020-01-19 | Defendant's alleged response to Plaintiff's notice |
| 2020-02-10 | Plaintiff's second alleged demand letter to Defendant |
| 2020-03-06 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Design Patent No. D812,992, "Insulating Container for Beverage Container," issued March 20, 2018.
The Invention Explained
- Problem Addressed: As a design patent, the 'D992 patent does not describe a technical problem or functional solution. Its purpose is to protect the novel, non-obvious, and ornamental appearance of the article of manufacture shown in its drawings ('D992 Patent, Claim).
- The Patented Solution: The patent claims the specific ornamental design for a beverage insulator. Key visual features depicted in the solid lines of the drawings include a multi-part assembly with a cylindrical base, a tapering upper section that mimics the shape of a traditional long-neck beer bottle, and a separate top cap piece ('D992 Patent, Fig. 1, Fig. 2). The design's overall silhouette, proportions, and the visual relationship between its constituent parts form the claimed invention. The patent's figures also illustrate its intended use with a bottle and can, though the bottle and can themselves are depicted in broken lines and disclaimed as part of the environment ('D992 Patent, Description, col. 1:60-67).
- Technical Importance: The complaint alleges that the patented design is "innovative and distinctive," has been a "great success," and that its specific "silhouette, aesthetics, colors, and presentation have immediately become uniquely associated with Ad-N-Art as its source" (Compl. ¶7).
Key Claims at a Glance
- The patent asserts a single claim: "The ornamental design for an insulating container for a beverage container, as shown and described" ('D992 Patent, col. 1:50-52).
III. The Accused Instrumentality
Product Identification
- The complaint identifies the "Accused Products" as a collection of insulating beverage holders sold on Amazon.com, including the "Green Maui Beer Bottle Insulator Holder," "Bottl Beer Bottle Insulator Can Cooler," and "LionRox Chillax12 Beer Bottle and Can Insulator Cooler" (Compl. ¶16-17).
Functionality and Market Context
- The Accused Products are stainless steel, multi-part insulating "koozies" designed to hold beverage bottles and cans (Compl. ¶6, ¶12, ¶17).
- Plaintiff alleges that Defendant advertises the Accused Products directly to consumers searching for Plaintiff's own ASOBU®-branded product, which embodies the patented design (Compl. ¶18). The complaint includes a screenshot from an Amazon product page showing several of the Accused Products displayed under the heading "Sponsored products related to this item" (Compl. p. 6). This image shows several accused products, including the LionRox and Green Maui models, advertised on the page for Plaintiff's product (Compl. p. 6).
IV. Analysis of Infringement Allegations
The central test for design patent infringement is whether an "ordinary observer," giving such attention as a purchaser usually gives, would be deceived into purchasing the accused product believing it to be the patented design. The complaint alleges that the Accused Products are "substantially similar" to the patented design under this standard (Compl. ¶24).
'D992 Patent Infringement Allegations
| Claim Element (from the Single Claim) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for an insulating container for a beverage container, as shown and described. | The Accused Products are alleged to embody a substantially similar overall visual appearance, including a multi-part construction with a cylindrical base, a tapering upper body that follows the contours of a long-neck bottle, and a distinct top piece. The complaint provides side-by-side photographic comparisons to illustrate the alleged similarity in shape, proportion, and overall aesthetic impression. | ¶18, ¶24 | col. 1:50-52 |
Identified Points of Contention
- Scope Questions: The primary question for the court will be whether, from the perspective of an ordinary observer, the overall visual impression of the Accused Products is substantially the same as the 'D992 patent's claimed design. The analysis will focus on the design as a whole, rather than on a comparison of minor, isolated features.
- Technical Questions: While this is a design case, a potential point of contention may arise if Defendant argues that similarities between the designs are dictated purely by the function of holding a standard beverage bottle. The court would then need to determine if the similarities are ornamental or merely functional. The complaint's side-by-side visual comparisons, such as the one juxtaposing the patent's "fig.1" with three accused products, will be central to this analysis (Compl. p. 6). Additional images show the accused products disassembled, highlighting the similarity of their component parts to the patented design (Compl. pp. 7-8).
V. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement against Amazon, asserting that Amazon provides the platform and online tools for third-party sellers to make, use, and sell the Accused Products (Compl. ¶32). The claim is predicated on allegations that Amazon specifically intends for its sellers to infringe, had knowledge of the 'D992 patent since at least February 10, 2020, and benefits financially from the infringing sales (Compl. ¶32-33).
- Willful Infringement: The complaint alleges that Defendant's infringement was and is "deliberate, willful, [and] intentional" (Compl. ¶25). The basis for this allegation is Defendant's alleged "full knowledge of the existence of the 'D992 patent," stemming from multiple actual notices Plaintiff allegedly provided, with the first notice dating to October 30, 2019 (Compl. ¶22, ¶26).
VI. 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 design of the various Accused Products substantially the same as the design claimed in the 'D992 patent, or are the visual differences sufficient to avoid infringement?
- A second central question concerns platform liability: Can Plaintiff establish that Amazon, beyond merely operating a neutral marketplace, took affirmative acts with the specific intent to encourage third-party sellers to infringe the 'D992 patent, as required to prove induced infringement?
- Finally, a key evidentiary question will be one of willfulness: Given the repeated pre-suit notices alleged in the complaint, did Defendant's continued activities related to the Accused Products constitute willful infringement, potentially exposing it to enhanced damages and attorney's fees?