DCT
2:23-cv-09759
Mark Viniello v. Catalonia Fashion
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Mark Viniello (California) and Over Active Imaginations, Inc. (California)
- Defendant: Catalonia Fashion (Jurisdiction unknown; principal place of business in California)
- Plaintiff’s Counsel: Murthy Patent Law Inc.
- Case Identification: 2:23-cv-09759, C.D. Cal., 12/27/2023
- Venue Allegations: Venue is alleged to be proper in the Central District of California because Defendant's principal place of business is located in the district, and Defendant has allegedly committed acts of patent infringement in the district through sales to local customers.
- Core Dispute: Plaintiffs allege that Defendant’s "Mermaid shaped sleeping bag" products infringe three U.S. design patents that claim ornamental designs for such articles.
- Technical Context: The dispute concerns the ornamental design of wearable blankets, specifically those crafted to resemble a mermaid's tail, a novelty consumer product.
- Key Procedural History: The First Amended Complaint alleges that Defendant had actual knowledge of the asserted patents as of November 14, 2023, due to a notice email sent by Plaintiffs' counsel. The complaint also alleges that Plaintiffs reported the infringement to Amazon.com on November 11, 2023.
Case Timeline
| Date | Event |
|---|---|
| 2013-02-25 | Earliest Priority Date for ’669 and ’792 Patents |
| 2015-10-29 | ’055 Patent assigned to Over Active Imaginations, Inc. |
| 2015-10-30 | Priority Date for ’055 Patent |
| 2015-11-24 | U.S. Patent D743,669 Issued |
| 2016-03-22 | U.S. Patent D751,792 Issued |
| 2017-07-18 | U.S. Patent D792,055 Issued |
| 2023-11-11 | Plaintiff informs Amazon of alleged infringement |
| 2023-11-14 | Plaintiff sends pre-suit notice email to Defendant |
| 2023-12-27 | First Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D743,669, “Sleeping Bag,” Issued November 24, 2015
The Invention Explained
- Problem Addressed: Design patents protect novel, non-obvious ornamental designs for an article of manufacture. The patent does not articulate a technical problem but instead provides a new aesthetic appearance for a sleeping bag (D'669 Patent, p.1, CLAIM).
- The Patented Solution: The patent claims the specific ornamental design for a sleeping bag as depicted in its figures. The core ornamental features include a tapered body culminating in a bifurcated, flared fin, evocative of a mermaid's tail. The front surface of the body features an overlapping, scale-like pattern, while the back surface features simple horizontal bands (D'669 Patent, Figs. 1-2).
- Technical Importance: The design provides a distinctive and fanciful appearance for a consumer textile product, differentiating it from conventional sleeping bags or blankets (D'669 Patent, p.1, TITLE).
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is Claim 1.
- The claim protects: "The ornamental design for a sleeping bag, as shown and described" in the patent's drawings (D'669 Patent, p.1, CLAIM).
U.S. Design Patent No. D751,792, “Sleeping Bag,” Issued March 22, 2016
The Invention Explained
- Problem Addressed: As a design patent, the ’792 patent offers a new ornamental design for a sleeping bag, distinct from prior designs (D'792 Patent, p.1, CLAIM).
- The Patented Solution: The patent claims an ornamental design that shares the overall mermaid-tail shape of the ’669 Patent but features a different surface ornamentation. Instead of scales, the front surface of the body is adorned with a quilted, diamond-stitch pattern. The back surface, similar to the ’669 Patent, shows horizontal bands (D'792 Patent, Figs. 1-2).
- Technical Importance: This design offers an alternative aesthetic to the scale-patterned version, broadening the visual variety of mermaid-themed wearable blankets (D'792 Patent, p.1, TITLE).
Key Claims at a Glance
- The single asserted claim is Claim 1.
- The claim protects: "The ornamental design for a sleeping bag, as shown and described" in the patent's drawings (D'792 Patent, p.1, CLAIM).
Multi-Patent Capsule
- Patent Identification: U.S. Design Patent No. D792,055, “Mermaid sleeping bag,” Issued July 18, 2017.
- Technology Synopsis: The ’055 Patent protects another ornamental design for a mermaid-shaped sleeping bag. This design is characterized by evenly spaced broken lines that illustrate stitching in a scale-like pattern across the body and fin, with cross-hatching indicating fabric texture (D'055 Patent, p.1, DESCRIPTION; Figs. 1-2).
- Asserted Claims: Claim 1 (Compl. ¶65).
- Accused Features: Defendant's "Mermaid shaped sleeping bag" products are accused of infringing the design claimed in the ’055 Patent (Compl. ¶38, ¶66).
III. The Accused Instrumentality
- Product Identification: The accused products are identified as "Mermaid shaped sleeping bag" and "Mermaid tail blankets" (Compl. ¶38, ¶40).
- Functionality and Market Context: The complaint alleges these are wearable blankets sold by Defendant Catalonia Fashion through its own website, cataloniastore.com, and its Amazon store (Compl. ¶16, ¶39-40). The products are designed for a user to wear, simulating the appearance of a mermaid tail (Compl. ¶38). A screenshot from Defendant’s website shows the accused "Mermaid shaped sleeping bag" product (Compl. ¶39). A separate screenshot from Defendant's Amazon store provides another example of the sale of the accused products (Compl. ¶40).
IV. Analysis of Infringement Allegations
The infringement test for a design patent is whether an "ordinary observer," giving the level of attention a typical purchaser would, would find the design of the accused product to be substantially the same as the claimed design.
D'669 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a sleeping bag, as shown and described. | Defendant’s “Mermaid shaped sleeping bag” products are alleged to embody an overall ornamental design substantially the same as the claimed design, which includes a mermaid-tail shape and scale-like surface pattern. | ¶44 | p.1, CLAIM |
D'792 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a sleeping bag, as shown and described. | Defendant’s “Mermaid shaped sleeping bag” products are alleged to embody an overall ornamental design substantially the same as the claimed design, which includes a mermaid-tail shape and a quilted surface pattern. | ¶54 | p.1, CLAIM |
- Identified Points of Contention:
- Visual Similarity: The central dispute will be a visual comparison between the accused products and the patent figures. The question for the court is whether the overall visual impression of the accused blankets is "substantially the same" as the specific designs claimed in the ’669, ’792, and ’055 patents. This includes comparing the overall shape, fin design, and surface ornamentation (e.g., scales vs. quilted diamonds vs. stitching pattern).
- Scope Questions: A question may arise as to whether minor differences in proportion, stitching, or fin shape between the accused products and the patent drawings are sufficient to escape infringement in the eye of an ordinary observer.
V. Key Claim Terms for Construction
In design patent cases, formal claim construction is less common than in utility patent cases, as the drawings themselves typically define the claim scope. However, the language identifying the article of manufacture can sometimes be relevant.
- The Term: "sleeping bag"
- Context and Importance: The patents claim a design for a "sleeping bag" (D'669 Patent, p.1, CLAIM). The accused products are described as both "sleeping bag[s]" and "blankets" (Compl. ¶38, ¶40). Practitioners may focus on this term to argue about the scope of products to which the ordinary observer test should be applied. The question is whether applying the patented design to a "wearable blanket" infringes a patent for a "sleeping bag" design.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party may argue that the term "sleeping bag" is merely descriptive of one article to which the design can be applied and does not limit the scope of protection. The focus is on the ornamental design itself, not the functional use of the article, suggesting the design is protected if applied to any visually similar article, like a wearable blanket.
- Evidence for a Narrower Interpretation: A party could argue that the "ordinary observer" is a purchaser of "sleeping bags," and would compare the accused product to the patented design within that context. If the accused "blanket" is marketed and sold in a different context, it may raise a question as to whether the hypothetical ordinary observer would be deceived.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendant induces infringement by promoting its products online, which allegedly encourages customers to use the products in an infringing manner (Compl. ¶47-48, ¶58-59, ¶69-70). The complaint also alleges contributory infringement, stating the accused products are not staple articles of commerce suitable for substantial noninfringing use (Compl. ¶49, ¶60, ¶71).
- Willful Infringement: Willfulness is alleged based on Defendant’s continued infringement after receiving actual notice of the asserted patents. The complaint cites a November 14, 2023, email as providing such notice, as well as reports made to Amazon on November 11, 2023 (Compl. ¶23, ¶41, ¶46, ¶57, ¶68).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual comparison: will an ordinary observer, comparing the accused "Mermaid tail blankets" to the designs in the '669, '792, and '055 patents, find them to be substantially the same in overall ornamental appearance, such that the observer would be induced to purchase one thinking it was the other?
- A key evidentiary question will be one of willfulness: did the defendant have pre-suit knowledge of the asserted patents via the alleged email and Amazon notifications, and if so, did its continued sales of the accused products constitute objective recklessness sufficient to support a finding of willful infringement?
- A potential secondary question concerns the scope of the article: does the identification of the article as a "sleeping bag" in the patents limit the scope of protection in a way that is meaningful when the accused product is marketed as a "wearable blanket"?