AutoStoa LLC v. Prowinch LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: AutoStoa LLC (California) and Gaatu, Inc. (Delaware)
  • Defendant: Prowinch LLC (Florida)
  • Plaintiff’s Counsel: Rimon, P.C.
• Case Identification: 2:24-cv-10519, C.D. Cal., 12/06/2024
• Venue Allegations: Venue is alleged to be proper based on Defendant Prowinch maintaining a physical place of business, its "Los Angeles Branch," within the Central District of California.
• Core Dispute: Plaintiffs seek a declaratory judgment that their electric hoist products do not infringe Defendant’s design patent for a "control housing," and that the patent is invalid as anticipated by Plaintiffs' own prior art sales.
• Technical Context: The dispute concerns the ornamental design of control boxes used for industrial equipment, specifically electric winches and hoists.
• Key Procedural History: The action was precipitated by an intellectual property infringement report filed by Defendant Prowinch with Amazon.com, which led to an accusation of patent infringement against Plaintiffs' product listings. The complaint notes that the patent-in-suit is subject to a terminal disclaimer filed during prosecution.

Case Timeline

Date	Event
2019-08-26	Plaintiffs first offered Accused Products for sale
2019-11-14	Plaintiffs first sold Accused Products
2021-08-27	D'519 Patent application filed (effective priority date)
2023-03-03	Related '633 Application declared abandoned
2023-05-09	D'519 Patent issued
2024-10-16	Amazon.com wrote to Plaintiffs regarding Defendant's infringement report
2024-12-06	Complaint for Declaratory Judgment filed

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

U.S. Design Patent No. D985,519 - "Control Housing"

• Patent Identification: U.S. Design Patent No. D985,519, "Control Housing", issued May 9, 2023 (the "’519 Patent").

The Invention Explained

• Problem Addressed: Design patents protect the ornamental appearance of an article of manufacture rather than its utilitarian features. As such, the patent does not articulate a technical problem but instead presents a novel aesthetic design for a control housing (D’519 Patent, Claim; Compl. ¶9).
• The Patented Solution: The patent claims the specific ornamental design for a "control housing" as depicted in its seven figures (Compl. ¶9, ¶20). The design features a generally rectangular, two-part housing with a sloped top face, a recessed window-like feature on the front, and two cylindrical protrusions at the bottom for cable entry (D’519 Patent, FIG. 1-7). The patent contains no written description of the design beyond the titles of the figures (Compl. ¶20).
• Technical Importance: The design provides a distinct visual appearance for the control box of an electric hoist, which can serve to distinguish a product in the marketplace.

Key Claims at a Glance

• The complaint asserts that the single claim of the ’519 Patent is at issue (Compl. ¶9, ¶18, ¶22).
• The single claim is for: "The ornamental design for a control housing, as shown and described" (D’519 Patent, Claim).
• The scope of a design patent claim is defined by its figures. Key visual elements of the claimed design include:
  • A box-like overall form with a sloped upper surface.
  • A recessed rectangular area on the front face.
  • Two circular port-like features on the bottom surface.
  • Specific proportions and surface contours as depicted in the patent's seven drawing figures.

III. The Accused Instrumentality

Product Identification

• The complaint identifies three accused products sold under the "PARTSam" tradename: "Partsam 440lbs Automatic Lift Electric Cable Hoist" (Accused Product 1), "Partsam 880lbs Automatic Lift Electric Cable Hoist" (Accused Product 2), and "Partsam Electric Hoists 1320lbs Automatic Lift Electric Cable Hoist" (Accused Product 3) (Compl. ¶11-13).

Functionality and Market Context

• The products are electric cable hoists sold through Amazon.com (Compl. ¶11-13). The specific accused feature is the "black receiver control box" (Compl. ¶12-13). The complaint alleges that these products were first sold by Plaintiffs as early as November 14, 2019, predating the patent's filing date by more than one year (Compl. ¶11-13).

IV. Analysis of Infringement Allegations

The complaint seeks a declaratory judgment of non-infringement and does not contain a claim chart. Instead, it presents a narrative argument that Plaintiffs' products do not infringe. The core of this argument is that any visual similarity between the accused products and the patented design is attributable to unprotectable functional features (Compl. ¶18, ¶22, ¶26). Plaintiffs allege that once these functional features are properly excluded from the analysis, the remaining ornamental features of their products are "sufficiently different" from the claimed design such that an "ordinary observer" would not be deceived into purchasing one product believing it to be the other (Compl. ¶18, ¶22, ¶26). The complaint does not, however, specify which particular features of the control housing it considers to be functional. No probative visual evidence provided in complaint.

V. Key Claim Terms for Construction

• The Term: "ornamental design"
• Context and Importance: In design patent cases, infringement is assessed from the perspective of an ordinary observer. However, this test applies only to the "ornamental" aspects of the design; features dictated solely by function are not protected and must be factored out of the comparison. Therefore, the central question is not one of defining a text-based term, but of legally separating the claimed design's protectable ornamental elements from its unprotectable functional elements. The outcome of the case may depend on what aspects of the "control housing" design are deemed functional.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation (More Features Considered Ornamental): The ’519 Patent itself contains no text describing the function of any part of the housing, which could suggest that the design as a whole is presented as ornamental. A party could argue that in the absence of any functional disclosure, the design should be viewed primarily as a matter of aesthetic choice.
  • Evidence for a Narrower Interpretation (More Features Considered Functional): A party could argue that the basic shape of a "control housing," the need for a "window" for a display or button, and the presence of "ports" for cables are all functionally required (Compl. ¶18, ¶22, ¶26). The complaint's repeated invocation of the functionality doctrine suggests Plaintiffs will argue that most, if not all, of the design is dictated by the need to enclose electronics and interface with a hoist, thereby narrowing the scope of protectable ornamentation to minimal, and allegedly different, stylistic details.

VI. Other Allegations

• Invalidity: The complaint contains a specific count for a declaration of patent invalidity (Compl. ¶28-42). The primary theory is anticipation under 35 U.S.C. § 102(a)(1). Plaintiffs allege that their own Accused Products were on sale and sold in the U.S. as early as November 14, 2019 (Compl. ¶30, ¶35, ¶39). Because this date is more than one year prior to the ’519 Patent's effective filing date of August 27, 2021, Plaintiffs contend that their products constitute invalidating prior art (Compl. ¶32-34). This argument relies on the premise that Defendant's infringement accusation is an admission that the Accused Products fall within the scope of the patent's claim (Compl. ¶31, ¶36, ¶40).
• Indirect Infringement: The prayer for relief requests a declaration of non-infringement as to contributory and induced infringement (Compl. p. 10, ¶a). However, the body of the complaint does not allege any specific facts related to these forms of infringement.
• Willful Infringement: The prayer for relief also requests a declaration of non-willfulness (Compl. p. 10, ¶a). The factual basis for the dispute is the infringement notice from Amazon dated October 16, 2024, which placed Plaintiffs on notice of the ’519 Patent (Compl. ¶14). This notice would be the basis for any future claim of willful infringement by the Defendant against the Plaintiffs for post-notice conduct.

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

This declaratory judgment action appears to center on two critical and potentially dispositive questions for the court:

1. A core issue will be one of anticipation: Are the Plaintiffs' own accused products, allegedly sold nearly two years before the patent's filing date, prior art that invalidates the patent's single claim under 35 U.S.C. § 102(a)(1)? This question turns on whether the court accepts the sales dates and agrees with the defendant's apparent contention that the products embody the patented design.

2. A key question for infringement will be the ornamental/functional distinction: Which visual elements of the claimed "control housing" design are dictated by function and must be excluded from the infringement analysis? The resolution of the non-infringement claim will likely depend on this factual determination, for which the complaint currently provides no specific evidence.