DCT
5:19-cv-00111
Razer Auto Inc v. DNA Motor Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Razer Auto, Inc. (California)
- Defendant: DNA Motor Inc., Jia Jie Chen (California)
- Plaintiff’s Counsel: Kelly Tech Law
- Case Identification: 5:19-cv-00111, C.D. Cal., 01/18/2019
- Venue Allegations: Venue is based on Defendant DNA Motor Inc. being incorporated in California, having a regular and established place of business in the district, and having committed alleged acts of infringement within the district.
- Core Dispute: Plaintiff alleges that Defendant’s aftermarket vehicle taillights infringe two of its design patents.
- Technical Context: The case concerns the ornamental designs of aftermarket accessories in the automotive parts market, where unique aesthetics can be a significant product differentiator.
- Key Procedural History: The complaint notes that prior to the suit, Plaintiff’s products embodying the patented designs were sold on Amazon with listings that publicly displayed the design patent numbers. Plaintiff also conducted several "test buys" of the accused products from Defendants' alleged online storefronts on eBay and Amazon.
Case Timeline
| Date | Event |
|---|---|
| 2016-09-28 | Earliest Priority Date for '167 and '021 Patents |
| 2017-11-03 | Plaintiff begins selling taillights embodying the patented designs |
| 2018-01-30 | U.S. Design Patent D809,167 ('167 Patent) Issued |
| 2018-12-05 | Plaintiff conducts test buys of accused products from eBay sellers "speed_daddy" and "moto-1" |
| 2019-01-08 | U.S. Design Patent D838,021 ('021 Patent) Issued |
| 2019-01-09 | Plaintiff conducts test buy of accused product from Amazon seller "DNA Motoring" |
| 2019-01-18 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D838,021 - "Taillight for vehicle"
The Invention Explained
- Problem Addressed: In the context of design patents, the "problem" is the need for a new, original, and ornamental design for an article of manufacture, in this case, a vehicle taillight.
- The Patented Solution: The patent discloses a specific ornamental design for a vehicle taillight. The key visual features, shown in solid lines, include a rectangular housing with a front face divided into two primary recessed sections for lighting. The upper section features a grid pattern and is bordered by an angled, chevron-like element, while a series of horizontal fins extend from its left side. The lower section has a similar configuration. The portions of the taillight shown in broken lines, such as the mounting hardware and rear housing, are not part of the claimed design ('021 Patent, Description; FIG. 2).
- Technical Importance: The design provides a unique and distinctive aesthetic for an automotive component, which serves to differentiate the product in the competitive aftermarket accessories market (Compl. ¶23).
Key Claims at a Glance
- The single claim is for "The ornamental design for a taillight for vehicle, as shown and described." ('021 Patent, Claim).
- The essential visual elements of the design are depicted in solid lines in Figures 1-7, including:
- A front face with two recessed, grid-patterned light sections.
- An angled, raised border partially surrounding each light section.
- A series of horizontal, fin-like strakes adjacent to the light sections.
- The complaint notes that features shown in broken lines are disclaimed and do not form part of the protected design (Compl. ¶43).
U.S. Design Patent No. D809,167 - "Taillight for vehicle"
The Invention Explained
- Problem Addressed: The patent addresses the need for a new, original, and ornamental design for a vehicle taillight.
- The Patented Solution: The '167 Patent discloses an ornamental design for a vehicle taillight that is visually similar to, but distinct from, the '021 Patent design. The primary difference is in the angled border element; in the '167 Patent, this border is a more pronounced, solid, V-shaped element that encloses the corner of each lighting section. The overall arrangement of two recessed lighting sections with adjacent horizontal fins remains a core part of the design ('167 Patent, Description; FIG. 2).
- Technical Importance: This design provides an alternative unique aesthetic for a vehicle taillight, aimed at product differentiation in the aftermarket parts sector (Compl. ¶23).
Key Claims at a Glance
- The single claim is for "The ornamental design for a taillight for vehicle, as shown and described." ('167 Patent, Claim).
- The essential visual elements shown in solid lines in Figures 1-7 include:
- A front face with two recessed, grid-patterned light sections.
- A distinct, V-shaped border element enclosing the corner of each light section.
- A series of horizontal, fin-like strakes adjacent to the light sections.
- As with the '021 Patent, the complaint specifies that broken-line portions are disclaimed (Compl. ¶43).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are aftermarket taillights ("Infringing Products") allegedly sold by Defendants on e-commerce platforms like Amazon and eBay under seller names such as "DNA Motoring," "speed_daddy," and "moto-1" (Compl. ¶¶ 7-9, 36-38).
Functionality and Market Context
The products function as vehicle taillights and are marketed with descriptions such as “LED 3D Bar Brake Tail Light” and “Full 3D LED Brake Reverse Tail Light” (Compl. ¶44). The complaint alleges these products are of inferior quality compared to Plaintiff's authentic taillights (Compl. ¶53). The complaint includes a visual from an alleged test buy, showing a photograph of the accused product's front face (Compl. ¶41(b), p. 10). This visual depicts a taillight with two recessed lighting areas and horizontal strakes, which Plaintiff alleges is substantially similar to its patented design.
IV. Analysis of Infringement Allegations
D838,021 Patent Infringement Allegations
The complaint supports its infringement allegations with side-by-side photographic comparisons of the accused product and the '021 Patent figures. The complaint provides a comparison for each of the seven patent figures, such as the front-view comparison which juxtaposes the patent's Figure 2 against a photograph of the accused product (Compl. ¶41(b), p. 10).
| Claim Element (from '021 Patent as shown) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design for a taillight for vehicle as shown in the patent figures. | The overall ornamental design of the accused taillight, which is alleged to be substantially the same as the patented design in the eyes of an ordinary observer. | ¶48 | '021 Patent, FIGS. 1-7 |
| A front face featuring two distinct, recessed lighting sections with internal grid patterns. | The accused product's front face incorporates two recessed lighting sections with a similar gridded appearance. | ¶41(b) | '021 Patent, FIG. 2 |
| A series of horizontal, fin-like strakes located to the left of the lighting sections. | The accused product features a series of horizontal strakes in a visually identical position and configuration. | ¶41(b) | '021 Patent, FIG. 2 |
| An angled, raised border element partially enclosing the upper-right and lower-right portions of the two lighting sections. | The accused product includes a border element in the same location and with a similar angled shape. | ¶41(b) | '021 Patent, FIG. 2 |
D809,167 Patent Infringement Allegations
The complaint provides similar side-by-side comparisons for the '167 Patent. A key visual is the front-view comparison, which places Figure 2 of the '167 Patent next to a photograph of a second accused product obtained via a test buy (Compl. ¶42(b), p. 14).
| Claim Element (from '167 Patent as shown) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design for a taillight for vehicle as shown in the patent figures. | The overall ornamental design of the accused taillight, which is alleged to be substantially the same as the patented design in the eyes of an ordinary observer. | ¶48 | '167 Patent, FIGS. 1-7 |
| A front face featuring two recessed lighting sections with internal grid patterns. | The accused product's front face has two recessed lighting sections with a similar gridded appearance. | ¶42(b) | '167 Patent, FIG. 2 |
| A distinct, V-shaped border element enclosing the corner of each of the two lighting sections. | The accused product is alleged to have a visually identical V-shaped border element in the same position on each lighting section. | ¶42(b) | '167 Patent, FIG. 2 |
| A series of horizontal, fin-like strakes adjacent to the lighting sections. | The accused product features a series of horizontal strakes in a visually identical position and configuration. | ¶42(b) | '167 Patent, FIG. 2 |
- Identified Points of Contention:
- Scope Questions: The central question for design patent infringement is whether an "ordinary observer," familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented design. The dispute will focus on whether the visual similarities between the accused products and the claimed designs are substantial enough to meet this test.
- Technical Questions: A factual question will be whether any minor differences between the accused products and the patent figures are sufficient to alter the overall visual impression, or if they are trivial and do not detract from the substantial similarity of the designs. The complaint alleges that an ordinary observer would consider the designs "substantially the same" (Compl. ¶48).
V. Key Claim Terms for Construction
In design patent cases, claim construction is typically not a central issue, as the claim scope is defined by the drawings rather than words. However, the scope of the article of manufacture itself could be a point of discussion.
- The Term: "taillight for vehicle"
- Context and Importance: Practitioners may focus on this term because its scope defines the field of prior art against which the novelty and non-obviousness of the design are measured. A narrower definition (e.g., "taillight for a Jeep Wrangler") would limit the relevant prior art, while a broader definition ("taillight for any passenger vehicle") would expand it. This context is critical for the "ordinary observer" test.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent titles and claims refer broadly to a "taillight for vehicle" without specifying any particular make or model ('021 Patent, Title; '167 Patent, Title). The figures depict a generic taillight design not explicitly tied to a specific vehicle.
- Evidence for a Narrower Interpretation: While the patents are general, the complaint's factual background and evidence of commercial use point to a specific market segment. For instance, the Amazon URLs provided for Plaintiff's own products explicitly mention "Wrangler-Taillight" (Compl. ¶34), suggesting the design's application and intended market may be more specific than the claim language alone implies.
VI. Other Allegations
- Indirect Infringement: The complaint's patent-specific counts (First and Second Causes of Action) allege direct infringement under 35 U.S.C. § 271 and do not explicitly plead inducement or contributory infringement (Compl. ¶¶ 86, 94).
- Willful Infringement: The complaint alleges that infringement was willful and intentional (Compl. ¶52). The factual basis for this allegation is Defendant’s alleged "constructive notice" of the patents, which Plaintiff claims arose from its own Amazon product listings that "publicly published and displayed" the relevant design patent numbers for anyone to see (Compl. ¶¶ 35, 52).
VII. Analyst’s Conclusion: Key Questions for the Case
- The Ordinary Observer Test: The case will fundamentally turn on a visual comparison. The central question for the court will be whether an ordinary observer, taking into account the prior art, would find the overall ornamental appearance of the Defendants' accused taillights to be substantially the same as the designs claimed in the '021 and '167 patents.
- Impact of Disclaimed Features: A key issue in the infringement analysis will be the extent to which the unclaimed elements (shown in broken lines in the patent figures) affect the overall visual impression of the claimed design. The court will need to determine if the similarities in the claimed solid-line features are sufficient for infringement, even with potential differences in the unclaimed housing or mounting structures.
- Sufficiency of Willfulness Allegations: A significant legal and factual question will be whether Plaintiff's allegation of "constructive notice"—based on the presence of its patent numbers on its own Amazon product pages—is sufficient to establish the pre-suit knowledge and culpable state of mind required to support a claim for willful infringement.