2:20-cv-07611
Kiraco LLC v. ANOIR Charrak
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Kiraco, LLC (California)
- Defendant: Anoir Charrak, an individual doing business as OUKA (Texas)
- Plaintiff’s Counsel: One LLP
- Case Identification: 2:20-cv-07611, C.D. Cal., 08/21/2020
- Venue Allegations: Venue is asserted based on claims arising within the Central District of California, where the alleged injury occurred, and based on Defendant's alleged sales of infringing products to customers in Los Angeles, California.
- Core Dispute: Plaintiff alleges that Defendant’s sale of counterfeit hookah bowls infringes Plaintiff's design patent and registered trademark for its APPLEONTOP brand hookah bowl.
- Technical Context: The dispute is in the consumer products sector, specifically concerning the ornamental design of accessories for hookahs (water pipes).
- Key Procedural History: The complaint does not mention any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patent-in-suit. The case presents concurrent claims for patent infringement, trademark infringement, and trademark counterfeiting.
Case Timeline
| Date | Event |
|---|---|
| 2012-12-19 | '366 Patent Priority Date (Application Filing) |
| 2015-04-07 | U.S. Patent No. D726,366 Issued |
| 2020-08-21 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D726,366, "HOOKAH PIPE HEAD" (issued Apr. 7, 2015)
The Invention Explained
- Problem Addressed: The complaint characterizes the patented product as a "fresh take on the traditional hookah bowl" (Compl. ¶7). Design patents protect ornamental appearance rather than function, so the "problem" is one of aesthetics and product differentiation.
- The Patented Solution: The patent claims the specific ornamental design for a hookah pipe head as depicted in its figures ('366 Patent, Claim). Key visual features shown in the solid lines of the drawings include a two-part construction with a ribbed, rounded lower body and a wider, smooth-lipped upper bowl from which a small, leaf-shaped handle protrudes ('366 Patent, Figs. 1-2, 5-6). The complaint highlights the product's "unique, ornamental shape and distinctive leaf-handle" as being central to its design (Compl. ¶7).
- Technical Importance: The complaint alleges that the patented design is "instantly recognizable on the market" (Compl. ¶7).
Key Claims at a Glance
- As a design patent, there is a single claim: "The ornamental design for the hookah pipe head, as shown and described." (’366 Patent, Claim).
- The essential ornamental elements protected by the claim are the visual features shown in the patent's drawings, including:
- The overall form factor of the two-part head.
- The pattern of horizontal ridges or grooves on the lower body.
- The specific shape and placement of the small, leaf-like handle.
III. The Accused Instrumentality
Product Identification
The accused products are hookah bowls allegedly sold by Defendant through the eBay shop "Ouka," including one product ordered by Plaintiff that was listed as "Apple On Top BLACK Hookah Shisha Bowl for Hookahs Head" (Compl. ¶13).
Functionality and Market Context
The complaint alleges the accused products are "counterfeit and nearly identical" to Plaintiff's authentic "APPLEONTOP Bowl" (Compl. ¶12). Functionally, they are hookah bowls used for smoking. The complaint asserts they are "illegitimate" and "inferior" products sold to mislead consumers and trade on Plaintiff's goodwill (Compl. ¶7, ¶20). The complaint includes a copy of an invoice as Exhibit C, which documents the sale of the accused product (Compl. ¶12).
IV. Analysis of Infringement Allegations
The complaint does not contain a claim chart. The infringement theory is based on the "ordinary observer" test for design patents, which asks whether an ordinary observer would be deceived into purchasing the accused product believing it to be the patented design.
The complaint's patent infringement count alleges that Defendant has been "making, using, selling, distributing and/or offering for sale the infringing products" (Compl. ¶55). The factual basis for this is the assertion that the accused product "appears almost identical to the authentic APPLEONTOP Bowl," which embodies the patented design (Compl. ¶9, ¶13). This allegation of near-identicality directly maps to the legal standard for design patent infringement. The complaint does not provide a side-by-side visual comparison of the accused product and the patent's figures.
Identified Points of Contention
- Visual Comparison: The central issue will be a direct visual comparison of the accused product with the drawings in the '366 Patent. The court will have to determine if any differences between the two designs are substantial enough to prevent an ordinary observer from being deceived.
- Evidentiary Questions: The complaint's allegation that the accused product is "almost identical" is a factual claim that will require evidentiary support, presumably through photographs or physical samples of the accused product, which are not included in the complaint itself.
V. Key Claim Terms for Construction
Claim construction is not typically a central issue in design patent litigation, as the claim's scope is defined by the drawings rather than by textual limitations. The claim is for "The ornamental design... as shown and described" ('366 Patent, Claim), and interpretation focuses on the visual appearance depicted in the figures. The patent's description clarifies that "The broken lines in the drawings illustrate portions of the hookah pipe head and form no part of the claimed design" ('366 Patent, Description). This is a standard disclaimer of subject matter and is unlikely to be a point of dispute.
VI. Other Allegations
Indirect Infringement
The complaint alleges that Defendants encouraged "others to import counterfeit goods" and "for purpose of resale" (Compl. ¶15, ¶16). While the formal patent infringement count (Count Six) pleads direct infringement, these allegations may be used to support a theory of induced infringement.
Willful Infringement
The complaint explicitly alleges that "The infringement of the '366 Patent by Defendants was willful in that Defendants infringed intentionally and knowingly in addition to their acts of counterfeiting" (Compl. ¶58). This allegation links the knowledge required for willfulness to the alleged counterfeiting activity, seeking enhanced damages as a remedy (Compl. ¶58; Prayer for Relief ¶4.b).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central question will be one of visual identity: does the ornamental design of the accused hookah bowl appear substantially the same as the design claimed in the '366 Patent, such that it would deceive an ordinary observer familiar with the prior art into purchasing the accused product, believing it to be the patented one?
- A key issue for damages will be proving willfulness: can Plaintiff provide sufficient evidence that Defendant's alleged patent infringement was "intentional and knowing," as alleged, to support a claim for enhanced damages under 35 U.S.C. § 284? The outcome may depend on how intertwined the evidence of patent infringement is with the evidence of alleged trademark counterfeiting.