5:25-cv-00078
Intl Bullion Metal Brokers USA Inc v. QVC Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: International Bullion and Metal Brokers USA, Inc. (New York / Florida)
- Defendant: QVC, Inc. (Delaware); NES Jewelry, Inc. (New York)
- Plaintiff’s Counsel: Hankin Patent Law, APC
- Case Identification: 5:25-cv-00078, C.D. Cal., 01/13/2025
- Venue Allegations: Venue is alleged based on Defendant QVC having regular and established places of business in the district, including offices and a distribution warehouse, and both Defendants conducting business and committing alleged acts of infringement within the district.
- Core Dispute: Plaintiff alleges that Defendants' "Diamonique Puffed Pave Bale Initial Necklace with Box" infringes a design patent for an "Ornament."
- Technical Context: The technology at issue is the ornamental design of a spherical, hinged container that resembles a holiday ornament and is intended for packaging or displaying small items like jewelry.
- Key Procedural History: The complaint alleges a prior business relationship between Plaintiff and Defendant QVC, during which Plaintiff allegedly notified QVC in June 2020 that its ornament product was patented. Plaintiff also sent a formal cease and desist letter to QVC in December 2024, prior to filing suit.
Case Timeline
| Date | Event |
|---|---|
| 2019-09-10 | '524 Patent Priority Date |
| 2020-02-06 | '524 Patent Application Filing Date |
| 2020-06-02 | Plaintiff allegedly notifies Defendant QVC that its ornament is patented |
| 2020-12-01 | '524 Patent Issue Date |
| 2024-12-10 | Plaintiff sends Cease and Desist letter to Defendant QVC |
| 2024-12-20 | Defendant QVC responds to Cease and Desist letter |
| 2025-01-13 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D903,524 - Ornament
- Patent Identification: U.S. Design Patent No. D903,524, titled "Ornament," issued December 1, 2020.
The Invention Explained
- Problem Addressed: Design patents protect the ornamental appearance of an article of manufacture rather than its utility. The patent secures the rights to a new, original, and ornamental design for a container. (Compl. ¶25, ¶27).
- The Patented Solution: The patent claims the specific visual appearance of an ornament. The design consists of a generally spherical body with a decorative bow and loop on top, designed for hanging. ('524 Patent, Fig. 1). The sphere is constructed with a horizontal hinge, allowing it to open into two semi-spherical halves to function as a container. ('524 Patent, Fig. 9). The patent explicitly notes that features shown in broken lines, such as the internal fittings, do not form part of the claimed design. ('524 Patent, Description).
- Technical Importance: The design provides a distinct aesthetic that combines the function of product packaging (a jewelry box) with a decorative object (a holiday ornament). (Compl. ¶9, ¶27).
Key Claims at a Glance
- The patent asserts a single claim for "The ornamental design for an ornament, as shown and described." ('524 Patent, Claim).
- The scope of the claim is defined by the visual characteristics depicted in the patent's solid-line drawings, which include:
- A generally spherical body.
- A top-mounted hanging loop and bow assembly.
- A hinged, two-part construction.
- The overall visual impression created by the combination and arrangement of these features.
III. The Accused Instrumentality
Product Identification
The "Diamonique Puffed Pave Bale Initial Necklace with Box" ("the Infringing Product"). (Compl. ¶19).
Functionality and Market Context
The accused product is described as a jewelry box sold with a necklace, where the box itself is designed to appear as a decorative ornament. (Compl. ¶19-20). The complaint alleges the product features a spherical shape, a top-mounted ribbon, and opens on a hinge, and that Defendant QVC sold it through its television channel and website. (Compl. ¶18, p. 5). Plaintiff alleges that Defendant NES, a "direct competitor," supplied the Infringing Product to QVC. (Compl. ¶14, ¶20).
IV. Analysis of Infringement Allegations
The infringement test for a design patent 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 deceived into purchasing one supposing it to be the other.
Claim Chart Summary
| Claim Element (from the single claim) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for an ornament, as shown and described. | The complaint alleges that the accused product's design is "identical" to the claimed design. This allegation is supported by visual evidence comparing the product to the patent drawings, focusing on the overall spherical shape, the top-mounted ribbon and loop, and the hinged, two-part clamshell construction. The complaint provides a three-column visual comparison of the patented design drawings, the Plaintiff's commercial embodiment, and the accused product, showing them in both closed and open configurations. | ¶31; p. 5 | Figs. 1-10 |
Identified Points of Contention
- Scope Questions: The primary dispute will turn on whether an ordinary observer would find the overall visual appearance of the accused product and the patented design to be substantially similar. The court's analysis will focus on the design as a whole, not minor differences.
- Technical Questions: A potential point of contention may be whether differences in surface ornamentation (e.g., the "pave" texture of the accused product versus the unadorned line drawings of the patent) or the specific style of the ribbon and bow are sufficient to differentiate the designs in the mind of an ordinary observer.
V. Key Claim Terms for Construction
In design patent litigation, "claim construction" involves determining the scope of the claimed design as a whole, as depicted in the drawings, rather than construing specific text-based terms.
The Term
"The ornamental design for an ornament, as shown and described."
Context and Importance
The entire infringement analysis depends on the visual scope of the design claimed in the '524 Patent. Practitioners may focus on whether the scope is broad enough to cover variations in texture and minor features or if it is strictly limited to the exact forms shown in the solid-line drawings.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The use of simple line drawings without any surface shading or texture could support an interpretation that the design covers the claimed shape and configuration regardless of the specific surface material or finish (e.g., smooth, glittered, or "pave").
- Evidence for a Narrower Interpretation: The specific proportions and shapes of the sphere, bow, and loop as depicted in the solid lines could be argued to narrowly define the protected design. The patent's description explicitly disclaims all subject matter shown in broken lines, limiting the claim to only the solid-line features. ('524 Patent, Description).
VI. Other Allegations
Indirect Infringement
The complaint alleges contributory and induced infringement, asserting that Defendant NES supplied the allegedly infringing products to Defendant QVC for resale to the public. (Compl. ¶20, ¶55, ¶60).
Willful Infringement
The willfulness allegation is based on alleged knowledge by both defendants. (Compl. ¶62). For QVC, Plaintiff alleges pre-suit knowledge based on a June 2, 2020 email in which Plaintiff identified its product as "Patented." (Compl. ¶40-41). For NES, Plaintiff alleges on "information and belief" that as a "fierce competitor," NES was aware of the patent prior to its dealings with QVC. (Compl. ¶42-43). The complaint also references a December 2024 cease and desist letter sent to QVC as further evidence of knowledge. (Compl. ¶53).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual similarity: Would an ordinary observer, giving the attention a typical purchaser gives, find the overall design of the accused "Diamonique" jewelry box to be substantially the same as the design depicted in the '524 Patent, or are there sufficient visual differences to distinguish them?
- A key evidentiary question for willfulness will be one of knowledge and intent: What evidence will be presented to support the allegation that Defendant QVC had actual knowledge of the patent from the 2020 email, and can Plaintiff substantiate its "information and belief" allegation that Defendant NES was aware of the patent before it began supplying the accused products?