DCT
8:18-cv-01994
Neal M Cohen v. Walmart Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Neal M. Cohen (California)
- Defendant: Walmart Inc. (Delaware)
- Plaintiff’s Counsel: Vista IP Law Group LLP
- Case Identification: 8:18-cv-01994, C.D. Cal., 11/07/2018
- Venue Allegations: Venue is alleged to be proper because Defendant Walmart resides in the Central District of California, has committed acts of infringement in the district, and maintains a regular and established place of business there.
- Core Dispute: Plaintiff alleges that Defendant’s sale of various flashlights shaped like baseball bats infringes a design patent covering the ornamental appearance of such a flashlight.
- Technical Context: The dispute concerns the ornamental design of consumer electronic products, specifically handheld flashlights configured with the aesthetic appearance of a baseball bat.
- Key Procedural History: Subsequent to the filing of this complaint, the sole patent-in-suit, U.S. Design Patent No. D487,321, underwent ex parte reexamination. On November 30, 2020, the USPTO issued a Reexamination Certificate cancelling the patent's only claim, which presents a significant, and potentially dispositive, challenge to the plaintiff's ongoing infringement action.
Case Timeline
| Date | Event |
|---|---|
| 2003-05-07 | D487,321 Patent Application Filing Date (Priority Date) |
| 2004-03-02 | D487,321 Patent Issue Date |
| 2018-11-07 | Complaint Filing Date |
| 2019-02-25 | Reexamination Request Filed for the D487,321 Patent |
| 2020-11-30 | Reexamination Certificate Issued, Cancelling the Sole Claim |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D487,321 - "FLASHLIGHT"
The Invention Explained
- Problem Addressed: The patent does not describe a technical problem but instead provides a new, ornamental design for an article of manufacture, a flashlight (’321 Patent, Title).
- The Patented Solution: The patent discloses an ornamental design for a flashlight that is shaped to look like a baseball or softball bat (’321 Patent, DESCRIPTION). The claimed design, shown in solid lines in the patent’s figures, consists of the elongated, tapering body, knobbed handle, and end cap characteristic of a bat (D487,321 Patent, Figs. 1-3). The patent notes that features shown in broken lines, such as a key chain or a pocket clip, form no part of the claimed design (’321 Patent, DESCRIPTION).
- Technical Importance: The design's purpose was to imbue a utilitarian object (a flashlight) with a novel aesthetic appearance, potentially increasing its consumer appeal.
Key Claims at a Glance
- The complaint asserts the patent’s sole claim.
- Design patent claims are directed to the visual appearance of an object. The single claim of the ’321 Patent is for:
- "The ornamental design for the flashlight, as shown and described." (’321 Patent, CLAIM).
III. The Accused Instrumentality
Product Identification
The complaint identifies five accused products: the “TACBAT flashlight,” the “Q5 LED Baseball Bat Security Camping Torch Long Emergency Light Flashlight,” the “Ozark Trail Mini Bat Light,” the “Stalwart CREE 17 in LED Aluminum Safety Flashlight Bat,” and the “LED Security Stick Bat Flashlight” (collectively, the “Walmart Products”) (Compl. ¶12).
Functionality and Market Context
The complaint alleges these are flashlight products manufactured, used, sold, and/or offered for sale by Walmart through its retail stores and its website, www.walmart.com (Compl. ¶¶12, 14-15). The core of the infringement allegation is that the Walmart Products "embody the patented design of the '321 Patent and/or colorable imitations thereof" (Compl. ¶13). The complaint includes an image of the "Ozark Trail Mini Bat Light," showing a flashlight with a body shaped like a miniature baseball bat (Compl. ¶12, Ex. 4).
IV. Analysis of Infringement Allegations
Design patent infringement is determined from the perspective of an “ordinary observer.” The analysis centers on whether the accused design is substantially the same as the claimed design such that an ordinary observer would be deceived into purchasing the accused product, believing it to be the patented design.
D487,321 Infringement Allegations
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a flashlight, as shown and described. | The accused Walmart Products are flashlights that allegedly "embody the patented design" by having an overall visual appearance of a baseball bat, which Plaintiff contends is the same as or a colorable imitation of the design shown in the patent's figures. | ¶13 | ’321 Patent, CLAIM, Figs. 1-8 |
- Identified Points of Contention:
- Scope Questions: A central question is the scope of the claimed design. The infringement analysis will depend on comparing the overall visual impression of the accused products with the specific features shown in solid lines in the patent's figures, while disregarding functional elements and those aspects shown in broken lines, such as the key chain and pocket clip (’321 Patent, DESCRIPTION).
- Legal Questions: The most significant legal question is the effect of the post-filing cancellation of the patent’s only claim during ex parte reexamination (D487,321 C1, p. 2). A patent claim that has been cancelled is void ab initio (from the beginning), which typically prevents the patentee from recovering any damages for infringement, even for acts that occurred before the cancellation. This raises the question of whether the plaintiff’s entire cause of action is moot.
V. Key Claim Terms for Construction
Claim construction in design patent cases focuses on the scope of the claimed design as a whole, rather than the definition of individual words.
- The Term: "The ornamental design for [a] flashlight, as shown and described"
- Context and Importance: The entire infringement analysis rests on the interpretation of the visual design claimed in the patent's figures. The key issue is what an ordinary observer would perceive as the substance of the patented design.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue that the "design" covers any flashlight with the general shape and proportions of a baseball bat, as this is the dominant visual feature. The patent’s title and description of the object as a "FLASHLIGHT" shaped like a "baseball/softball bat" may support an interpretation focused on this overall concept (’321 Patent, Title, DESCRIPTION).
- Evidence for a Narrower Interpretation: A party could argue the design is limited to the precise contours and proportions shown in the figures. The patent explicitly disclaims certain features by showing them in broken lines (e.g., key chain, pocket clip, and specific "lighting caps"), which narrows the scope of the protected design to only what is shown in solid lines (’321 Patent, DESCRIPTION).
VI. Other Allegations
- Indirect Infringement: The complaint does not contain allegations of indirect infringement (inducement or contributory infringement). It alleges only direct infringement under 35 U.S.C. § 271(a) (Compl. ¶12).
- Willful Infringement: The complaint does not explicitly plead "willful infringement" or allege that Walmart had pre-suit knowledge of the ’321 Patent. However, it does request that the case be declared "exceptional" under 35 U.S.C. § 285, which is the statutory basis for awarding attorney fees, often in cases of willful infringement or litigation misconduct (Compl. ¶D, p. 4).
VII. Analyst’s Conclusion: Key Questions for the Case
The trajectory of this case appears to hinge on two primary questions, one legal and one factual.
- A dispositive threshold question will be one of legal viability: what is the legal effect of the USPTO’s post-complaint cancellation of the patent’s sole claim? The court must determine if the cancellation renders the patent unenforceable ab initio, thereby mooting the plaintiff’s entire claim for damages.
- Should the case proceed, a core factual issue will be one of visual similarity: would an ordinary observer, familiar with the prior art, be deceived into thinking the accused Walmart products are the same as the patented design? This would require a direct comparison of the products' appearances against the specific ornamental features depicted in the solid-line drawings of the ’321 Patent.