DCT

2:24-cv-00351

Laltitude LLC v. Shantou Gaowo Science & Education Toys Co Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:24-cv-00351, C.D. Cal., 01/12/2024
  • Venue Allegations: Plaintiff asserts that venue is proper in any judicial district because all defendants are foreign residents who are not residents of the United States.
  • Core Dispute: Plaintiff seeks a declaratory judgment that its toy race cars do not infringe Defendants' design patent, and that the patent is invalid and unenforceable, following Defendants' infringement complaints to Amazon which resulted in the removal of Plaintiff's products.
  • Technical Context: The technology at issue is the ornamental design of a toy car chassis, specifically for battery-operated cars intended for use with magnetic tile track sets.
  • Key Procedural History: The complaint alleges that Defendants filed infringement claims with Amazon based on the D603 patent, causing the removal of Plaintiff’s products. Plaintiff contends that its own products, sold publicly more than a year before the patent's filing date, constitute invalidating prior art that Defendants failed to disclose to the USPTO during prosecution, amounting to inequitable conduct.

Case Timeline

Date Event
2020-01-31 Alleged public disclosure of Accused Products via YouTube video by Plaintiff
2021-03-11 D1,007,603S Patent filing date
2023-12-12 D1,007,603S Patent issue date
2023-12-16 Defendants allegedly inform Amazon of infringement by Plaintiff
2023-12-22 Plaintiff responds to Amazon, asserting patent invalidity
2024-01-02 Plaintiff's counsel contacts Defendants' agent regarding the dispute
2024-01-12 Complaint for Declaratory Judgment filed

II. Technology and Patent(s)-in-Suit Analysis

  • Patent Identification: U.S. Design Patent No. D1,007,603S, "Toy Car," issued December 12, 2023.

The Invention Explained

  • Problem Addressed: Design patents do not solve a technical problem but instead protect a new, original, and ornamental design for an article of manufacture. This patent protects the specific aesthetic appearance of a toy car (D1,007,603S, Claim).
  • The Patented Solution: The patent claims the ornamental design for the chassis, or undercarriage, of a toy car, as depicted in the patent's figures (D1,007,603S, FIG. 1-8). The design’s scope is limited to the features shown in solid lines, which include the overall rectangular frame, wheel assemblies, and various protrusions and compartments on the bottom of the chassis (D1,007,603S, FIG. 6). The upper body of the car is depicted in broken lines, indicating it is not part of the claimed design (D1,007,603S, Description).
  • Technical Importance: The claimed design provides a specific visual appearance for the underbody of a toy car, an element that is visible to the consumer during play and battery replacement.

Key Claims at a Glance

  • Design patents contain a single claim. The asserted claim is: "The ornamental design for a toy car, as shown and described."
  • The essential visual elements of this design claim, shown in solid lines in the patent figures, include:
    • A generally rectangular chassis base.
    • Four wheels with a specific tread pattern.
    • A defined battery compartment outline.
    • An on/off switch housing.
    • Distinctive "winged" protrusions located near the front and rear axles.
  • The complaint does not reserve the right to assert dependent claims, as none exist in a design patent.

III. The Accused Instrumentality

Product Identification

  • The accused products are Plaintiff's "toy race car" models sold under the PicassoTiles brand, for use with magnetic toy play sets (Compl. ¶1). The complaint identifies these products by several Amazon Standard Identification Numbers (ASINs) (Compl. ¶6).

Functionality and Market Context

  • The complaint describes the accused toy car as having a bottom chassis that holds its wheels, batteries, an on/off switch, an electric motor, and "track extensions" that guide the car within the grooves of a magnetic track (Compl. ¶13). The complaint alleges these products have been sold since at least 2019 and that their removal from Amazon following Defendants' infringement notice has caused "significant financial loss" (Compl. ¶¶1, 20). An image provided in the complaint shows the underside of the accused toy car, revealing its mechanical and structural features (Compl. p. 2).

IV. Analysis of Infringement Allegations

As this is a declaratory judgment action, the following chart summarizes the Plaintiff's allegations of non-infringement, arguing that an ordinary observer would find the Accused Products "plainly dissimilar" to the patented design (Compl. ¶34). A key visual exhibit compares the patented design directly with images of the Accused Product (Compl. p. 12).

D1,007,603S Infringement Allegations

Claim Element (from D1,007,603S as depicted) Alleged Non-Infringing Feature (Plaintiff's Allegations of Dissimilarity) Complaint Citation Patent Citation
Ornamental design as a whole The overall design of the Accused Product is "plainly dissimilar" to the patented design in the eye of an ordinary observer. ¶34 FIG. 1-8
"Winged" protrusions near the axles The protrusions on the Accused Products are "hollow with reception points for screws/bolts and are not solid protrusions with the winged features illustrated in the D603 Patent." ¶33 FIG. 6
Overall design relative to prior art The patented design is allegedly closer to other cited prior art than it is to the Accused Products. ¶33 FIG. 6
  • Identified Points of Contention:
    • Scope Questions: The central infringement question is whether, in the eye of an ordinary observer, the accused toy car chassis is "substantially the same" as the patented design. This analysis will depend on the visual weight given to the differing protrusion designs and other subtle variations.
    • Technical Questions: A key evidentiary question will be how the "ordinary observer" test applies when comparing the patented design's "solid... winged" protrusions with the accused product's "hollow" protrusions designed to receive screws. The complaint raises the question of whether this difference is significant enough to avoid a finding of infringement.

V. Key Claim Terms for Construction

In design patent litigation, "construction" involves determining the scope of the claimed design, particularly by distinguishing ornamental features from those dictated purely by function.

  • The Term: "ornamental design"
  • Context and Importance: The scope of the patent hinges on which aspects of the depicted toy car chassis are considered "ornamental." Plaintiff alleges that numerous features are dictated by function and are therefore unprotectable under 35 U.S.C. § 171 (Compl. ¶¶31, 41). Practitioners may focus on this issue because if significant portions of the design are deemed functional, the remaining protectable design scope may be too narrow to support an infringement claim. The complaint provides an annotated view of the patent's Figure 6 to identify allegedly functional elements (Compl. p. 9).
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation (Defendant's potential argument): The specific arrangement, proportions, and visual interplay of all components on the chassis, including the battery compartment, switch, and motor housing, create a unitary, non-obvious visual impression that is ornamental as a whole, even if individual parts have a function.
    • Evidence for a Narrower Interpretation (Plaintiff's argument): The complaint argues that features like the "on/off switch, battery compartment holder, grooved wheels, track slots, wheel axels, a motor compartment, and mounting frames" are dictated by their utility (Compl. ¶41). The argument suggests these functional aspects must be filtered out, leaving a much thinner scope of protectable ornamental features.

VI. Other Allegations

  • Invalidity: Plaintiff alleges the D603 patent is invalid on several grounds:
    • Prior Public Use/On-Sale Bar (35 U.S.C. § 102): The complaint alleges that Plaintiff's own Accused Products were sold and publicly disclosed (via a YouTube video posted January 31, 2020) more than one year prior to the patent's March 11, 2021 filing date, rendering the patent anticipated by prior art (Compl. ¶¶39-40).
    • Functionality (35 U.S.C. § 171): The complaint alleges the patent is invalid for claiming a design whose features are "purely dictated by function" (Compl. ¶41).
  • Unenforceability (Inequitable Conduct): The complaint alleges that Defendants and their prosecution counsel knew of Plaintiff’s prior art product sales but intentionally withheld this material information from the USPTO with an intent to deceive, constituting inequitable conduct that would render the patent unenforceable (Compl. ¶¶45-49).
  • Patent Misuse: Plaintiff alleges that Defendants have misused the D603 patent by asserting it against Plaintiff's products via complaints to Amazon, knowing the patent was invalid, unenforceable, and not infringed, in an attempt to restrain competition (Compl. ¶¶52-53).

VII. Analyst’s Conclusion: Key Questions for the Case

  1. A key evidentiary question will be one of prior art: Can Plaintiff produce sufficient evidence to prove that its Accused Products were publicly used or on sale in the United States before the critical date of March 11, 2020? The strength of this evidence will be critical to its invalidity claims.
  2. A core issue will be one of functionality: To what extent are the visual features of the claimed chassis design—such as the shape of the battery compartment and the configuration of the track-guiding protrusions—dictated by their utilitarian purpose? The court’s determination on this issue will define the scope of any protectable ornamental design.
  3. A central question for infringement will be the perception of the ordinary observer: Assuming the patent is valid and has protectable scope, are the visual differences between the patented design and the accused product, particularly the nature of the protrusions, significant enough to prevent an ordinary observer from finding the two designs substantially the same?