5:18-cv-02286
Pilot Inc v. Coolman Outdoor Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Pilot Inc. (California)
- Defendant: Coolman Outdoor Corp. (California)
- Plaintiff’s Counsel: Fernald Law Group LLP
- Case Identification: 5:18-cv-02286, C.D. Cal., 10/26/2018
- Venue Allegations: Venue is asserted based on Defendant having its principal place of business within the Central District of California.
- Core Dispute: Plaintiff alleges that Defendant’s sale of exterior automotive steps infringes a design patent covering the ornamental appearance of such a product.
- Technical Context: The dispute is in the automotive aftermarket accessories sector, where product differentiation and consumer appeal are often driven by ornamental design in addition to functionality.
- Key Procedural History: The patent-in-suit was assigned to Plaintiff in October 2017. The complaint states that Plaintiff notified Defendant of the alleged infringement via a letter in August 2018, approximately two months before filing this lawsuit.
Case Timeline
| Date | Event |
|---|---|
| 2011-01-05 | '559 Patent Priority Date (Application Filed) |
| 2012-05-01 | '559 Patent Issue Date |
| 2017-10-18 | '559 Patent assigned to Plaintiff Pilot Inc. |
| 2018-08-02 | Plaintiff sent notice of infringement to Defendant |
| 2018-10-26 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D658,559 - Automotive Step
- Patent Identification: U.S. Design Patent No. D658,559, Automotive Step, issued May 1, 2012.
The Invention Explained
- Problem Addressed: As a design patent, the patent does not articulate a technical problem. Instead, it offers a new, original, and ornamental design for an article of manufacture, an automotive step (D658,559 Patent, Title).
- The Patented Solution: The patent protects the specific visual appearance of an automotive step as depicted in its seven figures (’559 Patent, DESCRIPTION). The design features an elongated body with distinctively flared end caps and two recessed, textured step pads separated by a solid central bridge (’559 Patent, FIG. 7). The claim is for the overall visual aesthetic created by these features in combination, not their functional attributes (’559 Patent, Claim).
- Technical Importance: The claimed design provides a unique aesthetic for an automotive accessory, a market where visual appearance can be a significant factor in consumer purchasing decisions.
Key Claims at a Glance
- The patent contains a single claim: "The ornamental design for an automotive step, as shown and described" (’559 Patent, Claim).
- The "elements" of a design claim are the visual features of the design as a whole. The key visual features depicted include:
- An elongated, slightly curved main body.
- Uniquely shaped end pieces that flare outwards.
- Two distinct, recessed step pads.
- A textured surface pattern on the step pads.
- A solid central divider separating the two step pads.
III. The Accused Instrumentality
Product Identification
The "Accused Products" are "exterior automotive steps" offered for sale and sold by Defendant Coolman Outdoor Corp. through its eBay accounts, including "outdoorpro11," "truckmartoutlet," and "truckmate" (Compl. ¶¶10-11).
Functionality and Market Context
The products function as steps to aid ingress and egress from a vehicle (Compl. ¶8). The complaint's infringement theory is based entirely on the product's appearance, alleging that the Accused Products "embody the patented design" and are "nearly identical to the design claimed by the '559 patent" (Compl. ¶11). The complaint provides a side-by-side visual comparison to support this allegation (Compl. p. 3).
IV. Analysis of Infringement Allegations
Design patent infringement is determined from the perspective of an "ordinary observer." Infringement occurs if such an observer, familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented design. The complaint alleges that the Accused Products are "nearly identical" to the patented design (Compl. ¶11). The complaint provides a side-by-side image to support its allegations. The complaint provides a photograph of "Coolman's Accused Product" next to a reproduction of "Figure 7 of the '559 Patent" for direct comparison (Compl. p. 3).
’559 Patent Infringement Allegations
| Visual Feature of Patented Design | Alleged Infringing Feature of Accused Product | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design for an automotive step | The complaint alleges the Accused Products are "nearly identical to the design claimed by the '559 patent." | ¶11 | Claim |
| Elongated body with flared end caps and two recessed, textured step pads separated by a central divider | The visual evidence provided shows an automotive step with a similar overall shape, end caps, and dual-pad configuration. | p. 3 | FIG. 7 |
Identified Points of Contention
- Visual Similarity: The central dispute will be a factual comparison of the two designs. The question for the court will be whether the visual similarities between the Accused Product and the drawings in the ’559 Patent are substantial enough that an ordinary observer would be confused.
- Role of Prior Art: The scope of a design patent's protection is informed by the prior art. A key question, not addressed in the complaint, will be how crowded the field of prior art is for automotive step designs. The existence of similar prior art could narrow the scope of the ’559 Patent, meaning smaller differences in the accused design might be sufficient to avoid infringement.
V. Key Claim Terms for Construction
The complaint does not provide sufficient detail for an analysis of claim construction. In design patent litigation, the claim is understood to be the design itself as shown in the drawings, and disputes rarely center on the construction of a specific textual term. The analysis will instead focus on the visual comparison of the overall designs.
VI. Other Allegations
- Indirect Infringement: The complaint includes a conclusory allegation of inducement to infringe (Compl. ¶21). It does not, however, plead specific facts concerning Defendant's intent, such as through user manuals or advertising that instruct third parties on how to perform an infringing act. The core of the case as pleaded is direct infringement.
- Willful Infringement: Willfulness is alleged based on Defendant’s continued sales of the Accused Products after receiving a notice-of-infringement letter from Plaintiff’s counsel on August 2, 2018 (Compl. ¶¶13-14, 17, 24). The complaint alleges that Defendant did not respond to this correspondence (Compl. ¶14).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be a factual question of visual identity: would an ordinary observer, viewing the Accused Product and the patented design, be deceived into believing the two are the same? The side-by-side visual evidence presented in the complaint suggests Plaintiff will argue the designs are "nearly identical," while Defendant may point to subtle differences to distinguish its product.
- The outcome may depend on the scope of the patent's protection, which will be determined by comparing the patented design to the prior art. The degree of novelty and ornamentality of the '559 design over what existed before will dictate whether minor variations in the accused product are sufficient to escape infringement.
- If infringement is established, a key question for damages will be one of willfulness: did the Defendant's alleged continuation of sales after receiving the August 2, 2018 notice letter constitute the type of egregious conduct that warrants enhanced damages under 35 U.S.C. § 284?