2:23-cv-07449
UMBRA LLC v. MHM Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Umbra LLC (New York)
- Defendant: MHM Inc. (California)
- Plaintiff’s Counsel: Mintz Levin Cohn Ferris Glovsky and Popeo P.C.
- Case Identification: 2:23-cv-07449, C.D. Cal., 09/08/2023
- Venue Allegations: Venue is alleged to be proper as Defendant is a California corporation with its principal place of business located within the Central District of California, and conducts business including offering for sale and selling the accused products in the district.
- Core Dispute: Plaintiff alleges that Defendant’s picture frame products infringe a design patent for a three-dimensional, geometric picture frame.
- Technical Context: The dispute concerns the ornamental design of consumer home décor products, specifically tabletop picture frames that create a "floating" visual effect.
- Key Procedural History: The complaint notes that on March 29, 2023, Plaintiff’s counsel sent a cease-and-desist letter to Defendant identifying the patent-in-suit and the accused products. This correspondence establishes a date of alleged knowledge for the purpose of willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 2014-05-22 | D'731,799 Patent Priority Date (Application Filing) |
| 2015-06-16 | U.S. Patent No. D'731,799 Issued |
| 2023-03-29 | Cease-and-desist letter sent to Defendant MHM |
| 2023-09-08 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D731,799 - "Picture Frame"
- Patent Identification: U.S. Design Patent No. D731,799, "Picture Frame," Issued June 16, 2015.
- The complaint contains clerical errors regarding this patent. The heading for "COUNT ONE" incorrectly identifies it as "U.S. PATENT NO. 9,907,799" (Compl. p. 5), and the text alleges an incorrect issue date of March 6, 2018 (Compl. ¶15). The body of the complaint and its exhibits consistently refer to the correct D731,799 patent.
The Invention Explained
- Problem Addressed: Design patents protect aesthetics rather than function. The patent is directed to providing a new, original, and ornamental design for a picture frame (Compl. ¶18; D’799 Patent, Claim).
- The Patented Solution: The patent claims the specific visual appearance of a three-dimensional, wireframe-style picture frame. The design consists of a geometric, prism-like structure that supports two panes of glass, between which a photograph can be placed to create a "floating" effect (D’799 Patent, Fig. 8). The overall impression is one of minimalist, geometric construction, defined by the specific shapes and proportions shown in the patent figures (D’799 Patent, Figs. 1-7).
- Technical Importance: The design provides a distinctive aesthetic in the consumer goods market, which the complaint alleges is embodied in Plaintiff's "PRISMA" picture frame product line (Compl. ¶¶ 7-8).
Key Claims at a Glance
- Design patents contain a single claim.
- The asserted claim is for: "The ornamental design for a picture frame, as shown and described." (D’799 Patent, col. 2:6-8).
III. The Accused Instrumentality
Product Identification
The complaint identifies the accused instrumentalities as "picture frame products" sold by MHM (Compl. ¶8), including at least one product named "Glass Floating Frame for Pressed Flowers" (Compl. ¶27).
Functionality and Market Context
The accused products are described as picture frames available for sale to consumers on e-commerce platforms such as Amazon.com (Compl. ¶¶10, 28). The complaint alleges these products have a visual design that infringes the ’799 Patent (Compl. ¶29). The complaint provides a side-by-side visual comparison showing the accused product, which, like the patented design, is a three-dimensional, geometric wireframe-style picture frame. (Compl. ¶29, p. 6).
IV. Analysis of Infringement Allegations
Design patent infringement is determined from the perspective of an "ordinary observer." The test is whether the resemblance between the patented design and the accused product is such as to deceive an ordinary observer, inducing them to purchase one supposing it to be the other. The complaint’s allegations are summarized below by breaking down the overall patented design into its key visual features and mapping them to the accused product as depicted in the complaint.
'799 Patent Infringement Allegations
| Patented Design Feature (from the single claim) | Alleged Infringing Feature | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental appearance of a three-dimensional, geometric picture frame. | The complaint presents a photograph of the "Exemplary Accused Product," which also embodies a three-dimensional, geometric wireframe design. | ¶29 | Figs. 1, 8 |
| A front elevational view showing a wireframe structure creating the appearance of a smaller square rotated within a larger square. | The accused product's front view, as depicted, shows a similar square-within-a-square wireframe structure. | ¶29 | Fig. 2 |
| A slim, three-dimensional profile defined by interconnected wire-like struts forming a prism shape. | The accused product is shown to have a three-dimensional, prism-like shape formed by thin structural members. | ¶29 | Figs. 4-7 |
| A central picture-holding element that creates a "floating" visual effect for the displayed item. | The photograph of the accused product shows it holding a picture in a central position, creating a similar "floating" effect. | ¶29 | Fig. 8 |
Identified Points of Contention
- Visual Similarity: The central dispute will be whether an ordinary observer would find the accused product's design to be substantially the same as the design claimed in the ’799 Patent. The complaint juxtaposes Figure 8 from the patent with a photograph of the accused product to argue for this similarity (Compl. ¶29).
- Scope of Protection: A potential point of contention is the scope of the patented design in light of prior art. A court will need to determine whether the similarities between the two designs are based on the novel features of the patent or on functional elements or design concepts that were already common in the public domain. The complaint does not address prior art.
- Design Differences: The infringement analysis may focus on any subtle differences in proportion, angle, finish, or construction between the patented design and the accused product to assess whether they are significant enough to prevent an ordinary observer from being deceived.
V. Key Claim Terms for Construction
In design patent litigation, the claim is defined by the drawings rather than by specific textual limitations. Consequently, traditional claim construction focusing on the meaning of disputed terms is generally not a central issue. The dispute will instead focus on a comparison of the accused design to the patented design as a whole, as depicted in the patent’s figures, from the perspective of an ordinary observer.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement, stating that MHM "encouraged, instructed, and aided its manufacturers, distributors, end users, and customers to make, use, sell, and/or offer to sell" the accused products (Compl. ¶31). It is also alleged that MHM encouraged its "distribution partners to infringe" (Compl. ¶30).
- Willful Infringement: Willfulness is alleged based on MHM's purported continued infringement after receiving actual notice of the ’799 Patent via a cease-and-desist letter dated March 29, 2023 (Compl. ¶32). The complaint further alleges that MHM did not respond to the letter, which may be presented as evidence of willful conduct (Compl. ¶23).
VII. Analyst’s Conclusion: Key Questions for the Case
A core issue will be one of visual comparison: from the perspective of an ordinary purchaser of home décor items, is the overall ornamental design of MHM’s "Glass Floating Frame" substantially the same as the design claimed in the ’799 Patent, such that a purchaser could be deceived?
A second key question, likely to be central to the defense, will be the scope of the patent's novelty: to what extent are the similarities between the products attributable to the specific, protected ornamental features of the ’799 Patent versus unprotectable functional aspects or design elements common to prior art frames?
Finally, should infringement be found, a critical question for damages will be willfulness: did MHM's alleged continued sale of the accused products after receiving the March 29, 2023 notice letter constitute conduct egregious enough to warrant an award of enhanced damages under 35 U.S.C. § 284?