DCT
2:22-cv-08037
Lifetime Brands Inc v. Zoetop Business Co Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Lifetime Brands, Inc. (Delaware)
- Defendant: Zoetop Business Co., Limited d/b/a SHEIN (Hong Kong); Shein Distribution Corporation (Delaware); Fashion Marketing and Merchandising Group, Inc. (California)
- Plaintiff’s Counsel: Nixon Peabody LLP
- Case Identification: 2:22-cv-08037, C.D. Cal., 11/03/2022
- Venue Allegations: Venue is alleged to be proper based on Defendants' domicile in the district, the occurrence of a substantial part of the events giving rise to the claims within the district, injury to the Plaintiff within the district, and the commission of infringing acts in the district.
- Core Dispute: Plaintiff alleges that Defendants’ novelty bag clips infringe two of its design patents covering the ornamental appearance of bag clips shaped like snack chips.
- Technical Context: The dispute is in the field of consumer kitchenware, where product differentiation and market appeal are often driven by unique and ornamental product designs.
- Key Procedural History: The patent infringement allegations are brought alongside claims for copyright and trademark infringement, suggesting a broad intellectual property enforcement action against Defendants' alleged "copycat" products. The complaint does not mention any prior litigation or administrative proceedings concerning the patents-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2019-02-11 | Priority Date for D893,995 Patent |
| 2019-02-11 | Priority Date for D911,832 Patent |
| 2020-08-25 | U.S. Patent No. D'893,995 Issued |
| 2021-03-02 | U.S. Patent No. D'911,832 Issued |
| 2022-11-03 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D893,995 - "Bag Clip," issued August 25, 2020
The Invention Explained
- Problem Addressed: As a design patent, the ’995 Patent does not solve a technical problem but instead provides a new, original, and ornamental design for a manufactured article. (D'893,995 Patent, Claim). The aim is to create a visually distinct and appealing product in the consumer goods market.
- The Patented Solution: The patent claims the specific ornamental design for a bag clip that mimics the appearance of a ridged, ruffled potato chip. The design consists of two opposing clamping members, each embodying the characteristic undulating shape and surface texture of a potato chip, as depicted in the patent's figures. (D'893,995 Patent, FIG. 1, 3). The broken lines in the figures indicate that the internal hinge mechanism is not part of the claimed design. (D'893,995 Patent, Description).
- Technical Importance: The design's importance lies in its ability to differentiate a common household item by giving it a "fresh, fun, and often unexpected" appearance, which can be a significant driver of consumer choice. (Compl. ¶12).
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a bag clip, as shown and described." (D'893,995 Patent, Claim).
- The essential visual elements of this design include:
- The overall appearance of two opposing clamping members shaped like ruffled potato chips.
- The specific undulating, ridged surface contour of the members.
- The profile and proportions of the clip as depicted from multiple orthographic and perspective views.
U.S. Design Patent No. D911,832 - "Bag Clip," issued March 2, 2021
The Invention Explained
- Problem Addressed: Similar to the '995 Patent, the ’832 Patent provides a novel ornamental design for a bag clip, intended to create a unique aesthetic rather than solve a functional issue. (D'911,832 Patent, Claim).
- The Patented Solution: The claimed design is for a bag clip where the two opposing clamping members have the appearance of triangular tortilla chips. (D'911,832 Patent, FIG. 1). The design is characterized by its distinct triangular shape, slightly curved profile, and surface texture that evokes a corn chip. (D'911,832 Patent, FIG. 6, 7). As with the '995 Patent, the internal mechanics shown in broken lines are disclaimed and do not form part of the protected design. (D'911,832 Patent, Description).
- Technical Importance: This design leverages a recognizable and whimsical food shape to transform a utilitarian object into a novelty product with unique market appeal. (Compl. ¶12, ¶13).
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a bag clip, as shown and described." (D'911,832 Patent, Claim).
- The essential visual elements of this design include:
- The overall appearance of two opposing clamping members shaped like triangular tortilla chips.
- The specific triangular profile with slightly rounded corners.
- The gently curved shape and proportions of the clip as shown in the patent's figures.
III. The Accused Instrumentality
Product Identification
The accused products are bag clips sold by Defendants through their e-commerce websites. (Compl. ¶16). Specifically identified products include the "2pcs Potato Chip Shaped Sealing Clip" (SKU: sh2108311188896153), the "1pc Potato Chip Design Binder Clip" (SKU: ss2207160680376446), and the "2pcs Potato Chips Shaped Sealing Clip" (SKUs: sh2109133406624663 and ss2208292217737474). (Compl. ¶30, ¶31).
Functionality and Market Context
The accused products function as clips to seal bags. (Compl. p. 9-10). The complaint alleges these products are "pirated 'copycats'" of Plaintiff's FRED® brand products and that Defendants' business model relies on the sale of such infringing goods. (Compl. ¶15, ¶20). A provided image shows a side-by-side comparison of an accused product with the patented design to support the allegation of visual similarity. (Compl. p. 9). Another image shows a different accused product, described as a "Potato Chip Design Binder Clip," which visually resembles the tortilla-chip design of the '832 Patent. (Compl. p. 10).
IV. Analysis of Infringement Allegations
The standard for design patent infringement is whether an "ordinary observer, familiar with the prior art, would be deceived into purchasing the accused product in the belief that it is the patented design."
D'893,995 Patent Infringement Allegations
| Key Ornamental Feature of the Claimed Design | Corresponding Feature of the Accused Product | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental appearance of two opposing clamping members shaped like ruffled potato chips. | The accused product is alleged to feature two opposing clamping members shaped like ruffled potato chips. A product image is provided. | ¶30; p. 9 | FIG. 1 |
| The specific undulating and ridged surface contour of the chip-like members. | The accused product is alleged to have an undulating and ridged surface contour that is "substantially similar" to the patented design. | ¶30; p. 9 | FIG. 3 |
| The overall visual impression created by the design as a whole, as depicted in the patent figures. | The complaint alleges the accused product bears a design "substantially similar to the ornamental design of the '995 Patent." | ¶30 | FIG. 1-7 |
D'832,832 Patent Infringement Allegations
| Key Ornamental Feature of the Claimed Design | Corresponding Feature of the Accused Product | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental appearance of two opposing clamping members shaped like triangular tortilla chips. | The accused products are alleged to feature two opposing clamping members shaped like triangular chips. Product images are provided. | ¶31; p. 10 | FIG. 1 |
| The specific triangular profile of the members, as viewed from the front and rear. | The accused products are alleged to have a triangular profile that is "substantially similar" to the patented design. | ¶31; p. 10 | FIG. 6, 7 |
| The overall visual impression created by the design as a whole, as depicted in the patent figures. | The complaint alleges the accused products bear a design "substantially similar to the ornamental design of the '832 Patent." | ¶31 | FIG. 1-7 |
- Identified Points of Contention:
- Scope Questions: In a design patent case, the primary question of scope is how closely an accused product must mimic the patented drawings to infringe. The dispute may focus on whether the specific contours, proportions, and surface textures of the accused clips are close enough to the patented designs to deceive an ordinary observer.
- Technical Questions: The analysis will involve a side-by-side comparison of the designs. Questions for the court may include: Do minor variations in the number or depth of the ruffles on the accused "potato chip" clip create a different overall visual impression from the '995 Patent? Does the specific curvature and corner radii of the accused "tortilla chip" clip differentiate its design from that claimed in the '832 Patent in the eyes of an ordinary observer?
V. Key Claim Terms for Construction
In design patent litigation, the claim is understood to be the design itself as depicted in the drawings, and detailed verbal construction is less common than in utility patent cases. However, the scope of what is protected is a central issue.
- The Term: "The ornamental design for a bag clip, as shown and described."
- Context and Importance: The construction of this phrase determines the scope of protection. The key is to separate the protected ornamental features from the underlying, unprotected functional aspects of a "bag clip." Practitioners may focus on this distinction because features dictated solely by function are not protected by a design patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that the claim protects the overall visual impression and general concept of a chip-shaped clip, and that minor differences in detail do not avoid infringement. The focus would be on the design as an integrated whole.
- Evidence for a Narrower Interpretation: A party could argue that protection is limited to the precise ornamental features shown in the solid lines of the drawings. The use of broken lines to depict the internal hinge mechanism in both the '995 and '832 Patents explicitly disclaims those functional elements from the scope of the claimed design, narrowing the focus to the purely ornamental external appearance of the "chips." (D'893,995 Patent, FIG. 1, 2; D'911,832 Patent, FIG. 1, 2).
VI. Other Allegations
- Willful Infringement: The complaint alleges that Defendants' infringement was willful, undertaken with "full knowledge of, and/or reckless disregard for, Lifetime Brands' intellectual property rights." (Compl. ¶33). The factual basis for this allegation includes assertions that Defendants' entire business model is predicated on selling "copycat" products and that they intentionally turn a "blind eye" to the intellectual property rights of others. (Compl. ¶19, ¶20).
VII. Analyst’s Conclusion: Key Questions for the Case
This case appears to center on straightforward design patent infringement allegations, amplified by claims of a broader pattern of willful conduct. The key questions for the court will likely be:
- A central issue will be one of visual comparison: when viewed side-by-side, are the accused SHEIN clips so visually similar to the designs claimed in the '995 and '832 Patents that an ordinary observer would be deceived into believing they are the same as or related to the patented products?
- A key evidentiary question will concern willfulness: can Plaintiff establish that Defendants' alleged infringement was egregious, rising beyond typical infringement to the level of "piracy"? The court's view of the allegations concerning Defendants' overall business model may heavily influence the analysis of willfulness and potential damages.