DCT
2:22-cv-06129
Figs Inc v. MY Open Heart LLC
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Figs, Inc. (Delaware)
- Defendant: MY Open Heart LLC (California)
- Plaintiff’s Counsel: Ritholz Levy Fields LLP; Gioconda Law Group PLLC
- Case Identification: 2:22-cv-06129, C.D. Cal., 08/29/2022
- Venue Allegations: Venue is alleged to be proper as Defendant is a California company that resides and has a regular and established place of business in the district.
- Core Dispute: Plaintiff alleges that Defendant’s medical scrub apparel infringes nine design patents covering the ornamental designs for various scrub tops and pants.
- Technical Context: The dispute concerns the design of medical apparel, a market Plaintiff claims to have disrupted by introducing fashion-forward, technically advanced, and purposefully designed garments.
- Key Procedural History: The complaint alleges that on July 1, 2021, Plaintiff provided Defendant with written correspondence constituting actual notice of its intellectual property rights, a fact that may be relevant to the allegations of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2019-08-30 | Priority Date for all nine Patents-in-Suit |
| 2020-10-28 | Defendant [MY Open Heart LLC](https://ai-lab.exparte.com/party/my-open-heart-llc) formed |
| 2021-07-01 | Plaintiff allegedly provides Defendant with actual notice of IP rights |
| 2022-03-29 | U.S. Patent No. D946,867 S issues |
| 2022-04-12 | U.S. Patent No. D948,170 S issues |
| 2022-04-26 | U.S. Patent No. D949,517 S issues |
| 2022-04-26 | U.S. Patent No. D949,518 S issues |
| 2022-04-26 | U.S. Patent No. D949,516 S issues |
| 2022-05-03 | U.S. Patent No. D950,196 S issues |
| 2022-05-17 | U.S. Patent No. D951,594 S issues |
| 2022-05-17 | U.S. Patent No. D950,890 S issues |
| 2022-07-12 | U.S. Patent No. D957,092 S issues |
| 2022-08-29 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. D946,867 S - “SCRUB TOP”
The Invention Explained
- Problem Addressed: The complaint asserts that conventional healthcare apparel was historically "ill fitting, uncomfortable, baggy, boxy, and lacking in design" (Compl. ¶4).
- The Patented Solution: The ’867 Patent protects the ornamental design for a scrub top, not its functional features. The claimed design consists of the specific visual appearance of the top, which includes an oversized, sleeveless silhouette, a mandarin-style collar with a V-shaped center placket, pockets integrated vertically along the side seams, and a curved "shirttail" hem (’867 Patent, FIG. 1).
- Technical Importance: Plaintiff alleges that introducing garments with purposeful and unique designs represented a "major disruption to the existing industry" for medical apparel (Compl. ¶37).
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a scrub top, as shown and described" (’867 Patent, Claim).
- The core ornamental elements defining this design include:
- The overall sleeveless, oversized silhouette.
- The combination of a mandarin collar and a covered front placket.
- The visual appearance of vertically oriented side hand pockets.
- The curved shape of the bottom hem.
U.S. Patent No. D951,594 S - “SCRUB PANTS”
The Invention Explained
- Problem Addressed: As with the ’867 Patent, the complaint alleges a market need for better-designed medical apparel beyond the "substandard apparel options" previously available (Compl. ¶35).
- The Patented Solution: The ’594 Patent protects the ornamental design for a pair of scrub pants. The key visual features of the claimed design are the combination of a shirred waistband with a visible drawcord tunnel, a specific arrangement of front hand pockets, multiple cargo pockets on the side of each leg (one with a horizontal zipper), two rear patch pockets, and vertical vents at the bottom of the pant legs (’594 Patent, FIGS. 1-2).
- Technical Importance: The complaint frames the introduction of distinctive apparel designs as part of a strategy to "de-commoditized a previously commoditized product" (Compl. ¶40).
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for scrub pants, as shown and described" (’594 Patent, Claim).
- The core ornamental elements defining this design include:
- The shirred waistband construction.
- The particular shape, dimension, and placement of the front, back, and cargo pockets.
- The inclusion of side vents at the bottom side seam.
U.S. Patent No. D948,170 S - “SCRUB TOP”
- Technology Synopsis: This patent protects the ornamental design of a short-sleeved, V-neck scrub top. The design’s key visual elements include the "kissing" V-neck construction, welt drop pockets on the front torso, a forward shoulder seam, and back dart construction (’170 Patent, FIGS. 1-2).
- Asserted Claims: The single claim for the ornamental design for a scrub top as shown and described.
- Accused Features: The "3 Pocket Scrub Top" sold by Defendant is accused of infringing this patent (Compl. ¶58).
U.S. Patent No. D950,196 S - “SCRUB TOP”
- Technology Synopsis: This patent protects the ornamental design of a short-sleeved scrub top featuring an overlapping V-neck. Other key visual features include a double patch pocket on the chest with notched corners and forward shoulder stitching (’196 Patent, FIG. 1).
- Asserted Claims: The single claim for the ornamental design for a scrub top as shown and described.
- Accused Features: The "2 Pocket Scrub Top" sold by Defendant is accused of infringing this patent (Compl. ¶58).
U.S. Patent No. D950,890 S - “SCRUB PANTS”
- Technology Synopsis: This patent protects the ornamental design of scrub pants featuring a "yoga" style waistband. The design also includes curved trouser-style hand pockets, a double cargo pocket on the right leg, a curved back yoke, and a slit at the bottom side seam (’890 Patent, FIG. 1).
- Asserted Claims: The single claim for the ornamental design for scrub pants as shown and described.
- Accused Features: The "4 Pocket Cargo Scrub Pant" sold by Defendant is accused of infringing this patent (Compl. ¶58).
U.S. Patent No. D949,517 S - “SCRUB TOP”
- Technology Synopsis: This patent protects the ornamental design of a short-sleeved scrub top with a "kissing" V-neck construction. The design is characterized by shadow-stitch side pocket bags, a chest pocket with notched corners, and forward side welt pockets (’517 Patent, FIG. 1).
- Asserted Claims: The single claim for the ornamental design for a scrub top as shown and described.
- Accused Features: The "3 Pocket Scrub Top" sold by Defendant is accused of infringing this patent (Compl. ¶58).
U.S. Patent No. D949,518 S - “SCRUB PANTS”
- Technology Synopsis: This patent protects the ornamental design of jogger-style scrub pants. Key visual features include a self-waistband, slash hand pockets, back welt pockets, seam details on the back of the leg, and ribbed cuffs at the ankle (’518 Patent, FIG. 1).
- Asserted Claims: The single claim for the ornamental design for scrub pants as shown and described.
- Accused Features: The "5 Pocket Jogger Scrub Pants" sold by Defendant is accused of infringing this patent (Compl. ¶58).
U.S. Patent No. D949,516 S - “SCRUB PANTS”
- Technology Synopsis: This patent protects the ornamental design of basic scrub pants with a yoga-style waistband. The design is distinguished by its lack of a side seam, a specific back patch pocket construction with double-needle topstitching, and a drawstring closure (’516 Patent, FIGS. 1-2).
- Asserted Claims: The single claim for the ornamental design for scrub pants as shown and described.
- Accused Features: The "2 Pocket Scrub Pant" sold by Defendant is accused of infringing this patent (Compl. ¶58).
U.S. Patent No. D957,092 S - “SCRUB PANTS”
- Technology Synopsis: This patent protects the ornamental design for cargo scrub pants. The design's visual characteristics include a yoga-style waistband with an interior drawcord, double cargo pockets on the wearer's left leg and a single pocket on the right, knee seam paneling, and two back welt pockets (’092 Patent, FIG. 1).
- Asserted Claims: The single claim for the ornamental design for scrub pants as shown and described.
- Accused Features: The "5 Pocket Jogger Scrub Pants" sold by Defendant is accused of infringing this patent (Compl. ¶58).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are multiple styles of medical scrub tops and pants sold by Defendant under product names including "Mandarin Collar Scrub Top," "10 Pocket Scrub Pant," "3 Pocket Scrub Top," "2 Pocket Scrub Top," "4 Pocket Cargo Scrub Pant," "5 Pocket Jogger Scrub Pants," and "2 Pocket Scrub Pant" (Compl. ¶58).
Functionality and Market Context
The complaint alleges that Defendant sells its products online directly to consumers nationwide (Compl. ¶¶42, 44). Plaintiff alleges Defendant sought to "leverage FIGS' success and recognition" by intentionally creating products that "closely resemble FIGS' patented and/or distinctive product designs" (Compl. ¶46). The complaint further alleges that Defendant’s products are of a "lower quality and price point" compared to Plaintiff's products (Compl. ¶49).
IV. Analysis of Infringement Allegations
The complaint provides side-by-side visual comparisons to support its infringement allegations. For the ’867 patent, the complaint presents a diagram comparing Plaintiff's "RAFAELA" product to the accused "Mandarin Collar Scrub Top" (Compl. ¶61). A similar comparative diagram is provided for the ’594 Patent, comparing Plaintiff's "YOLA" product to the accused "10 Pocket Scrub Pant" (Compl. ¶69).
D946,867 S Infringement Allegations
| Claim Element (from Patented Design) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| Oversized, sleeveless silhouette with double needle topstitch on shoulder seam and 1/4" binding on armhole | The accused product is alleged to have the "exact" same silhouette, topstitching, and armhole binding. | ¶61 | DESCRIPTION, FIGS. 1, 3-4 |
| Center front covered placket detail and construction | The accused product is alleged to have the "exact same" center front placket detail and construction. | ¶61 | DESCRIPTION, FIG. 1 |
| Side hand pocket entry at side seam with topstitch shape and welt pocket entry | The accused product is alleged to have the "exact" pocket entry at the side seam and a "similar" topstitch and welt pocket entry. | ¶61 | DESCRIPTION, FIGS. 1, 3-4 |
| Shirttail hem shape | The accused product is alleged to have the "exact" shirttail hem shape. | ¶61 | DESCRIPTION, FIG. 1 |
D951,594 S Infringement Allegations
| Claim Element (from Patented Design) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| Shirred waistband construction w/ drawcord tunnel | The accused product is alleged to have the "exact" shirred waistband construction with a drawcord tunnel. | ¶69 | DESCRIPTION, FIG. 1 |
| Hand pockets, coin pocket shape, dimension and placement | The accused product is alleged to have "exact" hand pockets and coin pocket in shape, dimension, and placement. | ¶69 | DESCRIPTION, FIG. 1 |
| Cargo pockets shape, dimension and placement with pen sleeves and scissor sleeves | The accused product is alleged to have "exact" cargo pockets in shape, dimension, and placement, including pen and scissor sleeves. | ¶69 | DESCRIPTION, FIGS. 1-4 |
| Back pocket construction, shape, dimension and placement | The accused product is alleged to have "exact" back pocket construction, shape, dimension, and placement. | ¶69 | DESCRIPTION, FIG. 2 |
| Side vent construction at bottom side seam | The accused product is alleged to have the "exact" side vent construction at the bottom side seam. | ¶69 | DESCRIPTION, FIGS. 1-4 |
- Identified Points of Contention:
- Scope Questions: The primary question in a design patent case is whether, in the eye of an ordinary observer, the two designs are substantially the same. The analysis will focus on whether the overall visual impression of the accused products is confusingly similar to the patented designs, considering any minor differences between them.
- Technical Questions: A potential point of contention may be the distinction between ornamental and functional design elements. The court may need to consider whether the similarities between the products are dictated by the functional requirements of medical scrubs (e.g., the need for pockets, durable seams) or by the specific aesthetic, non-functional choices that constitute the patented ornamental designs.
V. Key Claim Terms for Construction
In design patent litigation, the claim is the design itself as depicted in the drawings, so traditional construction of textual terms is not the central issue. The analysis instead focuses on the scope of the claimed ornamental design as a whole.
- The "Term": The overall ornamental design as shown in the solid lines of the patent figures.
- Context and Importance: The interpretation of the patented design's overall visual appearance is critical for applying the "ordinary observer" test for infringement. The court's perception of which features are ornamental and which are merely functional will determine the scope of the patent's protection and whether the accused products are "substantially the same."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Plaintiff may argue that the patent protects the overall aesthetic impression created by the combination of elements, suggesting that minor variations in the accused product do not alter the substantially similar appearance to an ordinary observer.
- Evidence for a Narrower Interpretation: Defendant may argue that the patent is limited to the exact design shown, including the specific proportions, curvatures, and placement of every element. The patent figures use broken lines to disclaim certain subject matter (e.g., the areas inside pockets), thereby narrowing the claimed design to only what is shown in solid lines (’867 Patent, DESCRIPTION). The patent's explicit inclusion of dashed lines to show a stitching pattern, however, indicates this stitching is part of the claimed design, a detail that could be used to argue for a specific interpretation of the design's scope.
VI. Other Allegations
- Willful Infringement: The complaint alleges that Defendant's infringement "has been and continues to be willful and deliberate" for all nine patents-in-suit (e.g., Compl. ¶¶65, 73, 81). The basis for this allegation appears to be pre-suit knowledge, founded on the claim that Defendant was given "actual notice of certain of FIGS' intellectual property rights by written correspondence" on or about July 1, 2021 (Compl. ¶50).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual similarity: will the court, applying the "ordinary observer" test, find that the overall ornamental appearance of the accused scrubs is substantially the same as the designs claimed in the nine asserted patents, such that a potential purchaser would be confused?
- A key legal question will be the distinction between ornamental and functional features: to what extent are the similarities between the products attributable to purely functional requirements of medical apparel versus the specific, non-functional aesthetic choices protected by the design patents?
- A central issue for damages will be willfulness: did the Defendant have pre-suit knowledge of Plaintiff's patents as alleged, and does its subsequent conduct rise to the level of willful infringement, potentially exposing it to enhanced damages?