Skinify LLC v. Jonathan Blake Buller

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Skinify, LLC (Delaware)
  • Defendant: Jonathan Blake Buller (California)
  • Plaintiff’s Counsel: Greenfield LLP
• Case Identification: 5:20-cv-00988, C.D. Cal., 05/07/2020
• Venue Allegations: Venue is asserted based on Defendant's residence in the judicial district.
• Core Dispute: Plaintiff seeks a declaratory judgment that its protective "skins" for the Nintendo Switch gaming system do not infringe Defendant's design patents, and that those patents are invalid.
• Technical Context: The technology concerns adhesive, ornamental, and protective coverings ("skins") designed to be applied to the exterior of popular consumer electronics, in this case, the Nintendo Switch game console and its peripherals.
• Key Procedural History: This lawsuit was filed after Defendant allegedly submitted infringement complaints to Amazon.com, resulting in the removal of over 250 of Plaintiff's product listings. Plaintiff alleges that Defendant had previously filed and then retracted similar complaints after being notified of the patents' alleged invalidity, and that the renewed complaints constitute bad faith enforcement.

Case Timeline

Date	Event
2017-03-03	Nintendo Switch first offered for sale in the U.S.
2017-03-06	Plaintiff's first sale of accused protective covers for Nintendo Switch
2017-03-07	Plaintiff begins advertising accused protective covers
2017-04-12	Application filed for the '211 Design Patent
2017-08-04	Application filed for the '891 Design Patent
2018-04-10	'211 Design Patent issues
2019-01-08	'891 Design Patent issues
2019-12-02	Defendant files initial takedown complaints with Amazon.com
2019-12-16	Defendant retracts initial takedown complaints
2020-04-28	Defendant files new takedown complaints with Amazon.com
2020-05-07	Complaint for Declaratory Judgment filed

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

U.S. Design Patent No. D815,211

• Patent Identification: U.S. Patent No. D815,211, titled "Skin Cover for a Game Controller," issued April 10, 2018.

The Invention Explained

• Problem Addressed: The complaint describes the purpose of such products as providing a "protective cover" to "inhibit scratching or soiling of the exterior surfaces" of electronic game controllers (Compl. ¶ 6).
• The Patented Solution: The patent claims the ornamental design for a three-piece skin cover specifically shaped for a modern game controller resembling the Nintendo Switch "Joy-Con" controllers mounted in a grip ('211 Patent, FIG. 1, FIG. 3). The design is defined by the specific two-dimensional shapes and cutouts of the adhesive skins, which are shown in solid lines, while the controller they are applied to is shown in broken lines to illustrate environment and forms no part of the claimed design ('211 Patent, Description).
• Technical Importance: These form-fitting skins allow consumers to protect and customize high-value electronic devices without impeding access to controls (Compl. ¶¶ 6, 14).

Key Claims at a Glance

• The single claim is for "The ornamental design for a skin cover for a game controller, as shown and described" ('211 Patent, Claim).
• The essential visual elements of the design are the specific shapes, contours, and arrangement of cutouts for the two controller pieces and the central grip piece, as depicted in the patent's figures ('211 Patent, FIG. 1).

U.S. Design Patent No. D837,891

• Patent Identification: U.S. Patent No. D837,891, titled "Skin Cover Set for a Gaming Console and Console Docking Station," issued January 8, 2019.

The Invention Explained

• Problem Addressed: The invention addresses the need for a coordinated set of protective and ornamental coverings for an entire gaming system, including both the console and its docking station (Compl. ¶¶ 6, 10; '891 Patent, Title).
• The Patented Solution: The patent claims the ornamental design for a set of three distinct skin pieces. The figures depict a skin for the rear of the console's main screen unit, a skin for the front face of the docking station, and a wrap-around skin for the side of the docking station ('891 Patent, FIGs. 1-3). The claim covers the specific ornamental appearance of this set of shapes when viewed together ('891 Patent, Description).
• Technical Importance: The design provides a comprehensive aesthetic and protective solution covering multiple components of the Nintendo Switch system (Compl. ¶¶ 6, 10).

Key Claims at a Glance

• The single claim is for "The ornamental design for a skin cover set for a gaming console and console docking station, as shown and described" ('891 Patent, Claim).
• The essential visual elements are the specific shapes and proportions of the three separate skin pieces shown in Figures 1, 2, and 3 ('891 Patent, FIGs. 1-3).

III. The Accused Instrumentality

Product Identification

• The accused products are Plaintiff Skinify's "protective covers" or "skins" sold under its "DecalGirl®" brand and designed for the Nintendo Switch® game controller, console, and docking station (Compl. ¶¶ 6-7, 10).

Functionality and Market Context

• The complaint describes the products as adhesively sealed covers "specially tailored to cover exterior surfaces" of the Nintendo Switch hardware (Compl. ¶ 6). They are configured to "closely conform to the exterior contours" of the devices without covering screens or buttons (Compl. ¶ 10). The complaint includes a photograph of a Nintendo Switch console, docking station, and controller to illustrate the device for which the accused skins are designed (Compl. p. 4).
• Plaintiff alleges that its products are sold with different colors and artwork to appeal to customer preferences (Compl. ¶ 14). The Amazon.com online marketplace is identified as representing the "major portion of Skinify's sales" (Compl. ¶ 9).

IV. Analysis of Infringement Allegations

The complaint seeks a declaratory judgment of non-infringement, refuting infringement assertions allegedly made by the Defendant in takedown notices to Amazon.com. The complaint itself does not contain a comparative analysis or claim chart demonstrating non-infringement, nor does it provide an image of the accused product (referencing an unattached Exhibit A). The primary focus of the complaint is on invalidity.

The core test for design patent infringement is whether, in the eye of an ordinary observer, the accused design is substantially the same as the claimed design, such that the observer would be induced to purchase one supposing it to be the other. The complaint's non-infringement argument is stated conclusorily (Compl. ¶¶ 30, 37).

Identified Points of Contention

The dispute as framed in the complaint centers almost entirely on validity, not non-infringement.

• Anticipation / On-Sale Bar: The central factual contention is that the patents are invalid under 35 U.S.C. § 102 because Plaintiff was publicly selling and advertising the allegedly infringing skins before the patent applications were filed (Compl. ¶¶ 21-22). The complaint alleges a first sale date of March 6, 2017, which predates the '211 Patent application filing (April 12, 2017) and the '891 Patent application filing (August 4, 2017) (Compl. ¶¶ 11, 15-16). This raises the question of whether Plaintiff's own product is invalidating prior art.
• Functionality: The complaint asserts that both design patents are invalid because the claimed designs are functional (Compl. ¶¶ 27, 34). This argument is supported by the pleading that "shapes of the protective covers used with the Nintendo Switch® game controller and docking station are dictated by the exterior contours of each game controller and docking station" (Compl. ¶ 10). This raises the legal question of whether the designs are "primarily ornamental" as required by 35 U.S.C. § 171, or if their appearance is dictated by their function.

V. Key Claim Terms for Construction

In design patent litigation, the "claim" is the design itself, as shown in the drawings. The key interpretive issue is not the definition of a text-based term, but the scope of the claimed ornamental design.

• The "Term": "The ornamental design ... as shown and described."
• Context and Importance: The scope of the design claim is dispositive. A narrow interpretation limited to the exact visual representation would make it easier for Plaintiff to prove non-infringement, while a broader interpretation covering the general visual impression would make Defendant's infringement case stronger but also make the patents more susceptible to invalidity challenges based on functionality and prior art. Practitioners may focus on the functionality doctrine, as its application could render the entire design unpatentable or dramatically narrow its scope.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party seeking a broader scope might point to the use of broken lines in the patent figures (e.g., '211 Patent, FIG. 3), arguing that this properly disclaims the functional hardware and claims the skin design itself in any environment. This would suggest the overall visual impression of the skin's shape is the core of the invention.
  • Evidence for a Narrower Interpretation: A party seeking a narrower scope would argue that the design is dictated by function, as alleged in the complaint (Compl. ¶ 10). This would suggest that patentability, if any, resides only in the purely ornamental and non-functional aspects of the specific curves and cutouts shown in the solid lines of the drawings ('211 Patent, FIG. 1; '891 Patent, FIGs. 1-3). Any feature necessary to fit the controller or accommodate a button would be excluded from the claim's scope.

VI. Other Allegations

• Indirect Infringement: Plaintiff seeks a declaration that it and its customers have not infringed the patents-in-suit either directly or indirectly (Compl. ¶¶ 30, 37). The complaint does not specify the basis for any indirect infringement allegations made by Defendant.
• Willful Infringement: This allegation is not applicable in a declaratory judgment action filed by the accused infringer.
• Intentional Interference and Unfair Competition: Plaintiff asserts state-law claims for intentional interference with prospective economic advantage and unfair competition (Compl. ¶¶ 39-49). These claims are based on allegations that Defendant submitted takedown complaints to Amazon.com with knowledge that the patents were invalid and not infringed (Compl. ¶ 42). The complaint alleges that Defendant's knowledge stems from prior communications with Plaintiff's counsel, which had previously resulted in Defendant retracting an earlier set of complaints (Compl. ¶¶ 18-19, 42).

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

• A central factual issue will be one of timing and identity: can Plaintiff establish with clear and convincing evidence that the specific "configuration of protective covers" it began selling in March 2017 is substantially the same as the ornamental designs claimed in the '211 and '891 patents, whose applications were filed subsequently?
• A core legal issue will be one of validity under the functionality doctrine: are the claimed designs "primarily functional," as their shapes are allegedly "dictated by the exterior contours" of the Nintendo Switch hardware, or do they contain sufficient non-functional ornamental aspects to be valid under 35 U.S.C. § 171?
• A key question for the non-patent claims will be one of intent and bad faith: did Defendant's filing of infringement complaints with Amazon.com, particularly after being put on notice of the patents' alleged invalidity and having previously retracted similar complaints, constitute an objectively baseless and bad faith act sufficient to support claims for unfair competition?