DCT

8:19-cv-00886

Bird B Gone Inc v. Flock Free Bird Control Systems Services LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 8:19-cv-008866, C.D. Cal., 05/10/2019
  • Venue Allegations: Plaintiff alleges venue is proper because Defendant conducts business in the district, is subject to personal jurisdiction there, and has asserted its patent rights within the district.
  • Core Dispute: Plaintiff seeks a declaratory judgment that Defendant's design patent is invalid due to a prior on-sale bar and unenforceable due to inequitable conduct, following Defendant’s accusations of patent infringement against Plaintiff’s bird deterrent product.
  • Technical Context: The technology involves wind-powered, rotating devices with reflective surfaces designed to visually deter pest birds from landing in protected areas.
  • Key Procedural History: The dispute arose after Defendant Flock Free sent Plaintiff a letter accusing it of infringing U.S. Design Patent D829,299 and reported Plaintiff's product to Amazon, resulting in its delisting. Plaintiff alleges the patent is invalid because Defendant’s own product embodying the design was on sale more than one year prior to the patent's priority date. The complaint also notes that Defendant unsuccessfully attempted to file a Certificate of Correction with the U.S. Patent and Trademark Office, which Plaintiff presents as evidence of an attempt to deceive the agency.

Case Timeline

Date Event
2013-02-23 Defendant allegedly began sale of "Flock Reflector" product
2015-11-30 Plaintiff allegedly entered exclusive partnership with Terminix
2015-12-01 Priority Date for U.S. Patent No. D829,299
2016-08-01 Plaintiff's "Reflect-A-Bird" product allegedly first went on sale
2018-09-25 U.S. Patent No. D829,299 issues
2018-10-29 Defendant allegedly filed a proposed Certificate of Correction
2019-01-09 PTO allegedly denied Defendant's Request for Certificate of Correction
2019-02-01 Defendant allegedly reported Plaintiff's product to Amazon.com
2019-03-04 Defendant allegedly sent infringement notice letter to Plaintiff
2019-05-10 Complaint for Declaratory Judgment filed

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

U.S. Design Patent No. D829,299 - “Pest Deterrent Device With Rotating Feature”

The Invention Explained

  • Problem Addressed: Design patents protect the ornamental appearance of an article of manufacture rather than its utilitarian features. The '299 Patent does not articulate a specific technical problem but instead claims rights to a particular ornamental design for a bird deterrent device (Compl. ¶15; ’299 Patent, Claim).
  • The Patented Solution: The patent claims the specific visual design of a rotating device. As illustrated in the patent's figures, the design consists of a central hub from which three arms extend radially. Each arm terminates in a single, angular, vane-like element that appears to be bent or folded to create multiple reflective surfaces (’299 Patent, Figs. 1, 3). The complaint includes a figure from the patent showing a top-down view of this three-vaned design (Compl. ¶15).
  • Technical Importance: The claimed design provides a distinct visual appearance for a wind-driven, reflective bird deterrent, a product category where the parties are alleged to be direct competitors (Compl. ¶30).

Key Claims at a Glance

  • Design patents contain a single claim. The asserted claim is for: "The ornamental design for a 'pest deterrent device with rotating feature,' as shown and described" (’299 Patent, Claim).
  • The scope of this claim is defined by the visual representations in the patent's six figures, which depict the device from top, bottom, front, rear, left, and right side elevations (’299 Patent, Figs. 1-6). The overall visual impression created by these drawings constitutes the claimed design.

III. The Accused Instrumentality

Product Identification

  • Plaintiff’s "Reflect-A-Bird Deterrent product" (Compl. ¶16, ¶24).

Functionality and Market Context

  • The Reflect-A-Bird is a wind-powered rotating device with reflective elements intended to deter birds (Compl. ¶24). A photograph provided in the complaint shows a device with a central stand and a rotating head. The head features three arms, each holding what appears to be a pair of back-to-back, reflective, cup-shaped or circular elements (Compl. ¶24).
  • The complaint alleges the product was developed for a partnership with Terminix and was sold on Amazon.com before being delisted due to Defendant’s infringement report (Compl. ¶24-25, ¶27). The parties are alleged to be competitors in the market for bird deterrence products (Compl. ¶30).

IV. Analysis of Infringement Allegations

The complaint does not contain a claim chart. It recounts infringement allegations made by Defendant Flock Free against Plaintiff Bird-B-Gone (Compl. ¶22, ¶24). The central question in a design patent case is whether "in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other."

The complaint presents images of both the patented design and the accused product, allowing for a visual comparison. The patented design features three single, angular, folded vanes on a central hub (Compl. ¶15). The accused Reflect-A-Bird product, in contrast, features three arms each holding a pair of back-to-back, circular, cup-shaped reflectors (Compl. ¶24).

Identified Points of Contention

  • Scope Questions: The primary dispute over infringement will be a visual one: Would an ordinary observer consider the overall visual appearance of the accused product, with its dual circular/cup-shaped reflectors, to be "substantially the same" as the patented design, which features single angular/vane-like elements?
  • Technical Questions: While design patents protect ornamentality, the differences in the shape of the reflective elements (angular vanes vs. circular cups) may be a focal point. The court will need to determine if these differences are minor variations or if they create a distinct overall visual impression that avoids infringement.

V. Key Claim Terms for Construction

In design patent litigation, the claim is typically defined by the drawings rather than by textual limitations. Consequently, claim construction disputes over specific terms are rare. The core of the dispute is a comparison of the accused product's design to the patented design as a whole, as depicted in the patent's figures. The complaint does not raise any specific terms for construction, focusing instead on factual allegations of invalidity and unenforceability.

VI. Other Allegations

Invalidity Allegations (On-Sale Bar)

The central claim of the lawsuit is that the ’299 Patent is invalid under 35 U.S.C. § 102. Plaintiff alleges that Defendant’s own "Flock Reflector" product, which allegedly embodies the patented design, was on sale and in public use in 2013 (Compl. ¶46). This is more than one year prior to the patent’s earliest priority date of December 1, 2015, which would constitute an "on-sale bar" to patentability (Compl. ¶17, ¶46). Plaintiff cites YouTube videos from 2013 and 2014 as evidence of these prior sales and public disclosures (Compl. ¶31-32).

Unenforceability Allegations (Inequitable Conduct)

Plaintiff alleges that the ’299 Patent is unenforceable due to inequitable conduct before the U.S. Patent and Trademark Office (“PTO”). The complaint alleges that the named inventors and their prosecuting attorney knew that the design had been on sale for more than a year prior to the priority date but intentionally withheld this material information from the PTO with the intent to deceive the agency (Compl. ¶48, ¶51). As evidence of knowledge and deceptive intent, the complaint points to an alleged attempt by Defendant to file a Certificate of Correction on October 29, 2018, to change the patent's priority date, which the PTO subsequently denied (Compl. ¶53-54).

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

The resolution of this declaratory judgment action appears to depend on three central questions:

  1. A dispositive factual question of invalidity: Did the defendant, Flock Free, sell or publicly disclose a product embodying the design claimed in the ’299 Patent more than one year before the patent's December 1, 2015 priority date? The evidence of sales and online videos from 2013 and 2014 will be central to resolving this on-sale bar allegation.
  2. A question of intent and materiality for inequitable conduct: If a prior sale or public use created an on-sale bar, did the inventors and their attorney know this information was material to patentability and deliberately withhold it from the PTO with an intent to deceive?
  3. A visual question of design patent infringement: If the patent is ultimately found to be valid and enforceable, is the overall ornamental design of Plaintiff's "Reflect-A-Bird" product, which uses dual cup-shaped reflectors, substantially the same as the patented design's single angular vanes in the eyes of an ordinary observer?