DCT
8:19-cv-00516
TCP Investments LLC v. Creative Outdoor Distributors USA Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: TCP Investments, LLC (California)
- Defendant: Creative Outdoor Distributors USA, Inc. (Delaware) and Brian Horowitz (California)
- Plaintiff’s Counsel: MANDOUR & ASSOCIATES, APC Associates
- Case Identification: 8:19-cv-00516, C.D. Cal., 06/05/2019
- Venue Allegations: Venue is alleged to be proper based on the defendants' residence within the district and because a substantial part of the events giving rise to the claims occurred there.
- Core Dispute: Plaintiff seeks a declaratory judgment that its collapsible utility wagon wheels do not infringe Defendant's design patent, following an infringement complaint filed by Defendants with Amazon.com that resulted in the delisting of Plaintiff's products.
- Technical Context: The dispute concerns the ornamental design of wheels for consumer products, specifically collapsible utility wagons, where visual appearance can be a significant market differentiator.
- Key Procedural History: The complaint alleges that on November 13, 2018, Defendants submitted a patent infringement claim to Amazon against Plaintiff, leading to the disabling of Plaintiff's product listings during the 2018 holiday shopping season. This lawsuit followed.
Case Timeline
| Date | Event |
|---|---|
| 2015-03-06 | '637 Patent Priority Date |
| 2016-05-31 | '637 Patent Issue Date |
| 2018-11-13 | Defendants allegedly submit patent infringement notice to Amazon |
| 2019-06-05 | First Amended Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D757,637 - "TREAD FOR A TIRE"
The Invention Explained
- Problem Addressed: Design patents protect ornamental appearance rather than function. The implicit problem addressed is the need for a new, original, and ornamental design for a tire tread that distinguishes it from prior designs ('637 Patent, Claim).
- The Patented Solution: The patent claims the specific visual appearance of a tire tread as depicted in its drawings ('637 Patent, Claim). The design features a repeating pattern of S-shaped, wave-like lugs that extend across the tread surface ('637 Patent, FIG. 1, FIG. 2). The side view illustrates how these ornamental lugs wrap around the shoulder of the tire, contributing to the overall aesthetic ('637 Patent, FIG. 3). The broken lines in the figures indicate the portions of the tire that are not part of the claimed design ('637 Patent, Description).
- Technical Importance: In the market for consumer goods like collapsible utility wagons, a distinctive wheel tread design can serve as a source identifier and a key element of product appeal, separating one competitor's product from another's ('637 Patent, FIG. 1; Compl. ¶¶11, 20).
Key Claims at a Glance
- The single claim of the '637 Patent is asserted: "The ornamental design for a tread for a tire, as shown and described."
- As a design patent, the claim's scope is defined by the visual representations in the drawings. The essential "elements" are the collective visual features of the design as depicted in Figures 1-3.
- The complaint seeks a declaration of non-infringement of this claim, either literally or under the doctrine of equivalents (Compl. ¶28).
III. The Accused Instrumentality
Product Identification
- The products at issue are Plaintiff TCP's collapsible utility wagon products (Compl. ¶13).
Functionality and Market Context
- The specific feature at issue is the "wheel design and tread" of Plaintiff's wagons (Compl. ¶13).
- The complaint alleges that both Plaintiff and Defendants sell competing collapsible utility wagons on Amazon.com (Compl. ¶11). The dispute arose after Defendants' infringement complaint to Amazon caused Plaintiff's sales listings to be disabled, allegedly interrupting sales during the 2018 holiday shopping season and resulting in at least $65,000 in lost prospective sales (Compl. ¶¶17, 20, 28). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
As this is a complaint for declaratory judgment of non-infringement, the following table summarizes the Plaintiff's contentions regarding why its product does not infringe the asserted patent, which was the basis for the Defendants' accusation of infringement.
| Claim Element (from the '637 Patent Claim) | Plaintiff's Alleged Non-Infringing Design Feature | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a tread for a tire, as shown and described. | The overall design of Plaintiff's product, which is alleged to be differentiable in "surface ornamentation, construction, relative dimensions and configuration," and therefore not "substantially the same" as the patented design to an ordinary observer. | ¶¶15, 16 | FIG. 1-3 |
- Identified Points of Contention:
- Scope Questions: The central issue for the court will be the application of the "ordinary observer" test. This raises the question of whether an ordinary purchaser of a collapsible utility wagon would find the overall visual appearance of the Plaintiff's wheel tread to be substantially the same as the design claimed in the '637 Patent, such that they would be induced to purchase one believing it to be the other (Compl. ¶15).
- Technical Questions: The complaint asserts that TCP's product is "differentiable" from the patented design in several aspects, including "surface ornamentation, construction, relative dimensions and configuration" (Compl. ¶16). A key evidentiary question will be whether these alleged differences are significant enough to create a different overall visual impression, or if they are minor details that do not alter the substantial similarity of the designs.
V. Key Claim Terms for Construction
In design patent cases, the "claim" is typically understood to be the visual depiction of the design itself, rather than a set of text-based limitations. As such, traditional claim construction of specific terms is generally not a central issue. The dispute focuses on a holistic comparison of the accused product's design with the patented design as shown in the drawings. The primary legal test is the "ordinary observer" test, which is a question of fact, not a matter of construing claim language. The complaint does not identify any specific terms within the patent's title or description as a basis for a construction dispute (Compl. ¶¶15-16).
VI. Other Allegations
The complaint does not allege patent infringement and therefore omits allegations of indirect or willful infringement. Instead, it includes several non-patent claims against the Defendants, including:
- Tortious Interference: Alleging Defendants knew of Plaintiff's economic relationship with Amazon and its customers and intentionally interfered with it by filing a baseless infringement complaint (Compl. ¶¶33-35).
- Trade Libel and Unfair Competition: Alleging Defendants misrepresented to Amazon that Plaintiff infringed the '637 Patent, knowing the statement was untrue or with reckless disregard for its truth, causing Plaintiff financial harm (Compl. ¶¶39-40, 45). The complaint alleges these actions were timed to coincide with the 2018 holiday shopping season to disrupt a competing product (Compl. ¶20).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual comparison: Applying the "ordinary observer" test, is the overall ornamental design of the Plaintiff’s utility wagon wheel "substantially the same" as the design depicted in the '637 patent, or do the alleged differences in ornamentation and configuration create a distinct visual impression?
- A key question related to the non-patent claims will be one of intent: Did Defendants have a good faith basis to believe Plaintiff's product infringed the '637 Patent when they filed their complaint with Amazon, or was the complaint, as Plaintiff alleges, a bad-faith effort to disrupt a competitor's sales during a critical commercial period?