DCT
8:17-cv-01109
P P Imports LLC v. BigMouth LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: P&P Imports, LLC (California)
- Defendant: BigMouth, LLC (Indiana)
- Plaintiff’s Counsel: ThornCrest Law
- Case Identification: 8:17-cv-01109, C.D. Cal., 06/28/2017
- Venue Allegations: Plaintiff alleges venue is proper because Defendant has transacted business in the Central District of California.
- Core Dispute: Plaintiff, an alleged infringer, seeks a declaratory judgment that its inflatable flamingo products do not infringe Defendant's design patent, and further that the Defendant's patent is invalid and unenforceable.
- Technical Context: The dispute centers on the ornamental design of inflatable flamingo-shaped pool floats, a product category within the consumer recreational goods market.
- Key Procedural History: The complaint states this declaratory judgment action was initiated after Defendant accused Plaintiff of patent infringement through eBay's Verified Rights Owner (VeRO) program and in a formal letter from counsel. Plaintiff also alleges that Defendant engaged in inequitable conduct by failing to disclose known prior art to the U.S. Patent and Trademark Office during prosecution of the patent-in-suit.
Case Timeline
| Date | Event |
|---|---|
| c. 1980 | H.J. Stotter Products Corp. allegedly sold "Flamingo Floater" |
| 2001 | Oriental Trading Company allegedly sold "Floating Flamingo Coasters" |
| 2014-03-05 | P&P launches its "Inflatable Flamingo Drink Holder" |
| 2015-03-16 | ’182 Patent Application Filing Date (Priority Date) |
| 2016-02-XX | P&P launches its "Flamingo Party Tube Inflatable Raft" |
| 2016-06-14 | U.S. Patent No. D759,182 issues |
| 2017-05-02 | Defendant allegedly charges Plaintiff with infringement via eBay |
| 2017-05-26 | Defendant's counsel sends letter charging Plaintiff with infringement |
| 2017-06-28 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D759,182 - "Flamingo Float"
The Invention Explained
- Problem Addressed: Design patents protect ornamental appearance rather than functional solutions. The filing seeks to protect a specific aesthetic design for an article of manufacture, in this case, a pool float (Compl. ¶17; ’182 Patent, Claim).
- The Patented Solution: The patent claims the ornamental design for a "flamingo float" as depicted in its seven figures ('182 Patent, Claim). The claimed design consists of the visual combination of a toroidal (donut-shaped) body, a stylized S-curved neck and head assembly rising from the body, and specific two-dimensional artwork depicting wings on the sides of the body ('182 Patent, FIG. 1, 4, 6). The design as shown in the patent figures does not include a tail.
- Technical Importance: The patent protects a specific visual appearance in what the complaint portrays as a competitive market for novelty consumer products, aiming to distinguish the patentee's product aesthetically from others (Compl. ¶15.b).
Key Claims at a Glance
- The patent asserts a single claim for "The ornamental design for a flamingo float, as shown and described" ('182 Patent, Claim).
- The scope of a design patent claim is defined by its drawings. The key visual elements comprising the overall design include:
- The specific profile and curvature of the flamingo's head and neck.
- The proportions of the neck relative to the circular body.
- The particular stylized artwork used for the wings on the body's surface.
- The absence of other features, such as a tail.
- The complaint seeks a declaration of non-infringement of all claims of the patent ('182 Patent, Compl. ¶8).
III. The Accused Instrumentality
Product Identification
- Plaintiff’s "Flamingo Party Tube Inflatable Raft" and "Inflatable Flamingo Drink Holder," collectively referred to as "P&P's Floats" (Compl. ¶7).
Functionality and Market Context
- The accused products are inflatable items for recreational use in water (Compl. ¶7). The complaint asserts they are commercially distinct products that do not copy the patented design. The central non-infringement argument is that the accused products are visually distinguishable from the design claimed in the '182 Patent (Compl. ¶¶ 15.d, 15.e, 24). Exhibit D of the complaint provides a visual comparison of the parties' products alongside alleged prior art. This exhibit shows five different flamingo float products, including those from the Plaintiff, the Defendant, and third parties (Compl., Ex. D).
IV. Analysis of Infringement Allegations
As this is a complaint for declaratory judgment of non-infringement, the following table summarizes the Plaintiff's asserted points of distinction, which counter the infringement allegations made by the Defendant. The legal test for design patent infringement is whether an "ordinary observer," giving the attention a purchaser usually gives, would be deceived into purchasing the accused product believing it to be the patented design.
- D759,182 Infringement Allegations
| Claim Element (from the '182 Patent Drawings) | Plaintiff's Alleged Distinguishing Feature | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design, characterized by the specific shapes and surface ornamentation shown. | The overall design of "P&P's Floats" is not "substantially the same" as the patented design. | ¶24 | FIG. 1-7 |
| The shape and contour of the head and neck. | The shape and contour of the head and neck on both of "P&P's Floats" are "completely distinguishable" from the patented design. | ¶15.d, 15.e | FIG. 4, 5 |
| The absence of a tail feature on the float body. | The "Flamingo Party Tube Inflatable Raft" includes a tail, a feature absent from the patent drawings. | ¶15.d | FIG. 3 |
| The specific shape of the eyes and wing art. | The shape of the eyes and the wing art on the "Flamingo Drink Holder" are different from the patented design. | ¶15.e | FIG. 1, 6 |
- Identified Points of Contention:
- Scope Questions: The primary dispute will concern the scope of the '182 Patent's design in light of the alleged prior art. A key question for the court will be whether the prior art narrows the scope of the patent to its precise details, making the differences alleged by the Plaintiff (e.g., the presence of a tail) sufficient to avoid infringement.
- Technical Questions: A factual question will be whether the alleged differences in the "shape and contour of the head and neck" and the "shape of the eyes and wing art" are significant enough to create a different overall visual impression in the eyes of an ordinary observer (Compl. ¶¶ 15.d, 15.e). The comparative images in Exhibit D will be central to this analysis (Compl., Ex. D).
V. Key Claim Terms for Construction
In design patent cases, claim construction focuses on describing the claimed visual design rather than defining textual terms. The analysis centers on the overall visual impression.
- The Term: The "overall ornamental design" as a whole.
- Context and Importance: The entire infringement analysis turns on this concept. The "ordinary observer" test requires comparing the accused products to the patented design as a whole. Practitioners may focus on whether the design's scope is broad enough to cover variations or is limited to the exact depiction in the drawings, especially given the alleged prior art.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party asserting infringement might argue that the core concept of the design—a flamingo with a specific S-shaped neck on a circular float body—is what creates the overall impression, and minor details or additions like a tail do not change it. The claim covers the design "as shown and described," which can be argued to capture the holistic look and feel ('182 Patent, Claim).
- Evidence for a Narrower Interpretation: The Plaintiff argues that the existence of prior art flamingo floats requires the '182 Patent to be construed narrowly and limited to its specific features (Compl. ¶15.b). Under this view, any deviation, such as the addition of a tail on the "Flamingo Party Tube" or different artwork on the "Flamingo Drink Holder," would be legally significant and distinguish the products from the claimed design (Compl. ¶¶ 15.d, 15.e).
VI. Other Allegations
- Inequitable Conduct: The complaint includes a count for inequitable conduct (Compl. ¶¶ 19-21). It alleges that the patent's inventor knew of material prior art, specifically Plaintiff's "Inflatable Flamingo Drink Holder" which was allegedly on sale a year before the patent application was filed, and intentionally withheld this information from the USPTO with an intent to deceive (Compl. ¶21).
- Willful Infringement: While the complaint does not allege willfulness against the Plaintiff, it attaches as Exhibit C a letter from Defendant's counsel. This letter explicitly puts Plaintiff on "formal notice" of its patent rights and states that "continued sales... will likely be deemed a willful infringement," which establishes the legal controversy and the risk of enhanced damages that precipitated this declaratory judgment action (Compl., Ex. C).
VII. Analyst’s Conclusion: Key Questions for the Case
- 1. The Invalidity Hurdle: A threshold issue is one of validity: Does the prior art cited by the Plaintiff, particularly its own "Inflatable Flamingo Drink Holder" allegedly sold since 2014, render the '182 patent's design obvious or anticipated to a designer of ordinary skill in the art?
- 2. The Infringement Test: A central question is one of visual comparison: Assuming the patent is valid, would an ordinary observer, when viewing the designs in the context of the prior art, be deceived into believing Plaintiff's floats are the same as the patented design, or are the alleged differences—such as the presence of a tail and variations in head shape and artwork—sufficient to create a distinct overall visual impression?
- 3. The Unclean Hands Allegation: A key evidentiary challenge for the Plaintiff will be one of intent: Can Plaintiff produce clear and convincing evidence that the patent's inventor not only knew of the alleged prior art but deliberately withheld it from the patent office with the specific intent to deceive the examiner, as required to prove inequitable conduct?