DCT
8:19-cv-01246
Etekcity Corp v. Divine LEDs Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: EtekCity Corporation (Iowa Corporation, principal place of business in California)
- Defendant: Divine LEDs, Limited (Hong Kong, China)
- Plaintiff’s Counsel: Lamkin IP Defense
- Case Identification: EtekCity Corporation v. Divine LEDs, Limited, 8:19-cv-01246, C.D. Cal., 06/22/2019
- Venue Allegations: Venue is asserted on the basis that Defendant may be sued in any judicial district and that its actions, including sending an allegedly improper takedown notice to Amazon.com, have damaged Plaintiff in the Central District of California.
- Core Dispute: Plaintiff seeks a declaratory judgment that Defendant’s design patent for a collapsible lantern is invalid and unenforceable, and further alleges tortious interference with business advantage stemming from Defendant's enforcement actions.
- Technical Context: The dispute concerns the ornamental design of collapsible LED camping lanterns, a product category within the consumer electronics and outdoor recreation markets.
- Key Procedural History: The central event precipitating this lawsuit is a "Takedown Notice" sent by Defendant Divine to retailer Amazon.com, alleging that Plaintiff EtekCity's lantern product infringed the patent-in-suit. The complaint notes this notice was sent on April 13, 2019, three days before the patent officially issued. This notice allegedly led to the delisting of EtekCity’s product and forms the basis for both the case or controversy required for a declaratory judgment action and the separate tort claim.
Case Timeline
| Date | Event |
|---|---|
| 2014-03-26 | Chinese Design Patent No. CN 302773777 S allegedly issues |
| 2014-12-01 | EtekCity allegedly begins selling its EtekCity Lantern |
| 2015-01-11 | Divine allegedly begins selling its collapsible lantern |
| 2016-08-23 | Application for D'168 Patent filed (earliest priority date) |
| 2019-04-13 | Divine sends takedown notice to Amazon.com regarding D'168 Patent |
| 2019-04-16 | U.S. Design Patent D846,168 issues |
| 2019-06-22 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D846,168 - "Collapsible lantern," issued April 16, 2019
The Invention Explained
- Problem Addressed: Design patents do not articulate a technical problem and solution in the manner of utility patents. They protect the novel, non-obvious, and ornamental appearance of an article of manufacture (D'168 Patent, Claim).
- The Patented Solution: The patent claims the specific ornamental design for a "collapsible lantern" as depicted in its six figures (D'168 Patent, Claim, Figs. 1-6). Key visual features of the design include a cylindrical body with a wider top and bottom cap, a central section that collapses, and two wire-like handles that pivot from the top cap (D'168 Patent, Fig. 1). Figure 6 shows the design in a collapsed state, where the central section is retracted into the main body (D'168 Patent, Fig. 6). The broken lines in the drawings indicate portions of the lantern that do not form part of the claimed design (D'168 Patent, Description).
- Technical Importance: The claimed design provides a specific aesthetic for a collapsible lantern, which may serve to distinguish the product in a competitive marketplace for consumer outdoor equipment.
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is: "The ornamental design for a collapsible lantern, as shown and described." (D'168 Patent, Claim).
- The "elements" of a design claim are the visual features depicted in the patent's drawings, including:
- The overall two-tiered cylindrical shape in its extended state (Fig. 1).
- The specific configuration of the top cap, including divots from which handles emerge (Fig. 5).
- The appearance of the wire handles and their pivot points (Fig. 1, 3).
- The visual relationship between the upper and lower body sections (Fig. 2).
- The appearance of the lantern in its collapsed configuration (Fig. 6).
III. The Accused Instrumentality
Product Identification
- The product at issue is Plaintiff's own "EtekCity's Lantern" (Compl. ¶22).
Functionality and Market Context
- The complaint describes the product as a "collapsible camping lantern" that EtekCity has been selling on platforms including Amazon.com since December 2014 (Compl. ¶¶ 8, 22). The lawsuit was prompted by Divine's takedown notice to Amazon, which caused the EtekCity Lantern to be delisted, resulting in an "immediate loss of revenue" (Compl. ¶17). EtekCity alleges it has suffered more than a million dollars in damages due to the delisting (Compl. ¶37).
IV. Analysis of Invalidity Allegations
The primary count in the complaint seeks a declaratory judgment that the D'168 Patent is invalid. The core allegations are summarized below.
| Prior Art Reference Alleged by Plaintiff | Alleged Basis for Invalidity (Anticipation under 35 U.S.C. § 102) | Complaint Citation |
|---|---|---|
| Chinese Design Patent No. CN 302773777 S | The complaint alleges this Chinese patent, issued to Divine's own manufacturer more than two years before the D'168 patent was filed, covers the same lantern design. | ¶¶9, 14, 21 |
| Divine's own 2015 sales | The complaint alleges Divine began selling its own collapsible lantern, embodying the patented design, in January 2015, more than one year before the patent's filing date, creating an on-sale bar to patentability. | ¶¶10, 13, 21 |
| EtekCity's 2014 sales | The complaint alleges that EtekCity's own lantern, which Divine accused of infringement, was publicly sold since December 2014, making it prior art to the D'168 patent. | ¶¶8, 21 |
| "Ultra Bright LED Light Camping Lantern Unboxing and Review" YouTube Video | The complaint identifies a publicly available YouTube video as additional prior art that anticipates the patent's claim. | ¶21 |
No probative visual evidence provided in complaint.
- Identified Points of Contention:
- Visual Identity: A central question will be whether the designs shown in the cited prior art references are "substantially the same" as the design claimed in the D'186 Patent, from the perspective of an ordinary observer.
- Evidentiary Questions: The case may turn on EtekCity's ability to produce sufficient evidence to prove the public availability and specific designs of the products sold in 2014 and 2015, and to establish that the Chinese patent depicts an identical design.
V. Key Claim Terms for Construction
In design patent litigation, formal claim construction of written terms is rare. The "claim" is understood to be the design itself as depicted in the drawings. The controlling legal test is not based on defining words but on a holistic visual comparison. Practitioners may therefore focus on the overall visual impression rather than specific terms. The primary legal question for the court will be applying the "ordinary observer" test, which asks whether an ordinary observer, familiar with the prior art, would be deceived into believing the accused design is the same as the patented design. The invalidity analysis applies a similar test, comparing the patented design to the prior art.
VI. Other Allegations
- Indirect Infringement: Not applicable. The plaintiff is seeking a declaration of non-infringement and invalidity, not alleging infringement.
- Inequitable Conduct: The complaint includes a count for unenforceability due to inequitable conduct (Compl., Count Two). It alleges that the named inventor on the D'168 Patent, Ali Badaci, intentionally withheld material prior art from the USPTO with the intent to mislead the agency (Compl. ¶¶ 28, 31). The specific facts alleged to support this claim include:
- Knowledge and Materiality: The complaint alleges Divine and its inventor knew of their own prior sales since 2015 and knew their manufacturer held a Chinese patent on the same design (Compl. ¶¶ 12, 27). This art is alleged to be material and not cumulative to any art considered by the examiner (Compl. ¶30).
- Intent to Deceive: Intent is alleged based on an inference from the knowing failure to disclose material art (Compl. ¶28). The complaint further supports an inference of intent by noting that Divine sent its takedown notice to Amazon before the patent had even issued, allegedly in an effort to harm EtekCity (Compl. ¶29).
VII. Analyst’s Conclusion: Key Questions for the Case
This declaratory judgment action appears to center on the following key questions for the court:
- Anticipation by Prior Art: Is the ornamental design claimed in the D'168 Patent substantially the same as the designs disclosed in the asserted prior art, including the 2014 Chinese patent and the products sold by both EtekCity and Divine more than one year before the patent's filing date? The outcome of this factual comparison will determine the patent's validity.
- Inequitable Conduct: Can EtekCity produce clear and convincing evidence that the patentee knew of material prior art (such as its own prior sales or its manufacturer's patent), understood its materiality, and made a deliberate decision to withhold it from the USPTO with the specific intent to deceive?
- Wrongful Enforcement: Separate from the patent issues, a key question is whether Divine’s pre-issuance takedown notice, if based on a patent it allegedly knew was invalid and unenforceable, constitutes an improper and wrongful act sufficient to support a claim for intentional interference with EtekCity’s business relationships.