DCT
3:23-cv-02397
Rosenblatt Innovations LLC v. ICC Northwest Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Rosenblatt Innovations LLC (California) and Sonoma Cast Stone Corporation (California)
- Defendant: ICC Northwest, Inc. (Oregon) and Niebaum-Coppola Estate Winery, L.P. (California)
- Plaintiff’s Counsel: Stainbrook & Stainbrook, LLP
- Case Identification: 3:23-cv-02397, N.D. Cal., 05/16/2023
- Venue Allegations: Venue is alleged to be proper in the Northern District of California because Defendant Niebaum-Coppola resides in the district and both defendants are alleged to have committed acts of infringement within the district.
- Core Dispute: Plaintiffs allege that the ornamental design of pivotal manway covers manufactured and sold by Defendant ICC-NW, and used by Defendant Niebaum-Coppola, infringes a design patent owned by Plaintiffs.
- Technical Context: The dispute concerns the ornamental design of industrial components, specifically manway covers for large tanks used in the wine and beverage production industry.
- Key Procedural History: The complaint notes that Plaintiffs provided Defendant ICC-NW with a notice letter and a copy of the patent on March 20, 2023, approximately two months prior to filing the lawsuit. Plaintiff Sonoma Cast Stone Corporation is identified as the exclusive licensee of the patent-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2018-07-20 | 'D411 Patent Priority Date (Application Filed) |
| 2021-03-16 | 'D411 Patent Issue Date |
| 2021-03-16 | Alleged Infringement Commences |
| 2023-03-20 | Pre-suit Notice Letter Sent to Defendant ICC-NW |
| 2023-05-16 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Design Patent No. D913,411, “Pivotal Manway Cover,” issued March 16, 2021. (Compl. ¶11).
- The Invention Explained:
- Problem Addressed: As a design patent, the 'D411 patent does not articulate a specific technical problem in a background section; its purpose is to protect the ornamental, non-functional appearance of an article of manufacture. (Compl. ¶14).
- The Patented Solution: The patent protects the specific visual appearance of a pivotal manway cover as depicted in its seven figures. ('411 Patent, Claim). The claimed design consists of the features shown in solid lines, including a circular cover, a multi-spoked hand wheel for sealing, and a pivoting arm assembly for opening and closing the cover, while the broken lines showing the tank are for environmental context only and form no part of the claimed design. ('411 Patent, DESCRIPTION, Figs. 1-7).
- Technical Importance: The complaint alleges that the patented design is embodied in Plaintiffs' commercial products, suggesting the design has recognized aesthetic value in the market for winery and beverage production equipment. (Compl. ¶15).
- Key Claims at a Glance:
- The complaint asserts the single claim of the 'D411 patent. (Compl., Prayer for Relief ¶1).
- The patent contains one claim for: "The ornamental design for a pivotal manway cover, as shown and described." ('411 Patent, Claim). This claim protects the overall visual impression created by the design depicted in the patent's drawings.
III. The Accused Instrumentality
- Product Identification: The accused products are pivotal manway covers on stainless steel tanks that Defendant ICC-NW allegedly manufactures, imports, and sells for use in wine, beer, cider, and other food and beverage production. (Compl. ¶¶17-18).
- Functionality and Market Context: The accused manway covers are components of large industrial tanks. The complaint alleges that Defendant Niebaum-Coppola purchased and uses the accused products at its winery. (Compl. ¶¶18, 22). A photograph provided in the complaint shows the accused manway covers installed on a series of large tanks within what appears to be a commercial winery. (Compl. ¶22).
IV. Analysis of Infringement Allegations
Design patent infringement is assessed from the perspective of an "ordinary observer." The complaint alleges that the accused product's design is "substantially the same" as the patented design. (Compl. ¶29). The allegations can be summarized by comparing key features of the patented design to the accused product as described and depicted in the complaint.
D913,411 Infringement Allegations
| Claim Element (Key Feature from 'D411 Patent) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design for a pivotal manway cover, as shown and described | The complaint alleges the Accused Products are "substantially the same" as the patented design, creating a resemblance that would deceive an ordinary observer. | ¶29 | Claim, Figs. 1-7 |
| A circular hand wheel with multiple spokes used to secure the cover | A photograph of the accused product installed at the Niebaum-Coppola winery depicts a manway cover with a multi-spoked, circular hand wheel. | ¶22 | Fig. 6 |
| A pivoting arm assembly that connects the cover to a mounting point on the tank | The Accused Product is described as a "horizontally pivoting manway cover," and the provided image shows it incorporates a pivoting arm mechanism. | ¶28, ¶22 | Fig. 1 |
| The specific visual relationship between the hand wheel, arm, and cover | The complaint alleges Defendants "appropriated the ornamental design for a pivotal manway cover as shown and described in the '411 patent." | ¶12 | Figs. 1, 3 |
- Identified Points of Contention:
- Scope Questions: The central legal question will be the application of the "ordinary observer" test: is the overall ornamental appearance of the accused manway cover substantially the same as the claimed design? The analysis will likely focus on whether any differences between the designs are significant enough to be noticed by an ordinary observer, thereby avoiding a finding of infringement.
- Technical Questions: A key factual question will be what a side-by-side comparison between the accused product and the patent figures reveals. The court will need to determine if visual similarities in the overall configuration, proportions, and specific features of the two designs are sufficient to support the complaint's allegation that ICC-NW "copied" the patented design. (Compl. ¶33).
V. Key Claim Terms for Construction
In design patent cases, the "claim" is the design as a whole, as depicted in the drawings. The analysis focuses less on construing specific textual terms and more on the overall visual impression of the claimed design.
- The Term: The "ornamental design ... as shown and described."
- Context and Importance: The scope of the claimed design is the crux of the infringement analysis. The dispute will turn on the visual comparison between this design and the accused product. Practitioners may focus on this because the outcome of the "ordinary observer" test is entirely dependent on what an observer is understood to be comparing. (Compl. ¶29).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that the claim covers the overall visual impression and that minor variations in proportions or surface details between the patent figures and an accused product do not alter this impression. The claim language "as shown and described" could be argued to encompass the holistic design rather than a rigid set of individual features. ('411 Patent, Claim).
- Evidence for a Narrower Interpretation: The patent explicitly states that the broken lines showing the tank are for "illustrating environmental structures only and form no part of the claimed design." ('411 Patent, DESCRIPTION). A party could argue this demonstrates an intent to limit the claim scope strictly to the exact configuration and appearance of the solid-line elements—the cover, wheel, and arm assembly.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendant ICC-NW induces infringement by selling the accused manway covers to customers like Niebaum-Coppola for their use, and contributes to that infringement. (Compl. ¶¶18, 24).
- Willful Infringement: Willfulness is alleged based on Defendant ICC-NW’s continued infringing activities after receiving actual notice of the 'D411 patent via a letter dated March 20, 2023. (Compl. ¶¶19, 34). The complaint also makes a direct allegation that ICC-NW "copied" the design embodied in Plaintiffs' products. (Compl. ¶33).
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 accused manway cover substantially the same as the design claimed in the 'D411 patent, such that an observer would be deceived into purchasing one believing it to be the other?
- A key evidentiary question will be one of intent: Can Plaintiffs substantiate the allegation that Defendant ICC-NW "copied" the patented design? The evidence presented on this point could significantly influence the analysis of both infringement and willfulness.