4:23-cv-03574
Med Inc v. Impresa Products LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: MED et al, Inc. (North Carolina)
- Defendant: Impresa Products, LLC (California)
- Plaintiff’s Counsel: Burr & Forman LLP; Bunsow De Mory LLP
- Case Identification: 3:23-cv-03574, N.D. Cal., 07/19/2023
- Venue Allegations: Venue is alleged to be proper because Defendant resides in, has committed acts of infringement in, and maintains a regular and established place of business in the judicial district.
- Core Dispute: Plaintiff alleges that Defendant’s competing thumb guard infringes its design patent for a "Device for fitting over a thumb to discourage thumb-sucking."
- Technical Context: The dispute is in the market for pediatric medical devices, specifically products designed to help children cease thumb-sucking habits.
- Key Procedural History: The complaint alleges that prior to the infringing activity, an affiliate of the Defendant (Dragonfly) engaged in multiple, unsuccessful attempts to acquire the Plaintiff and its AeroThumb® product, which embodies the patented design. Plaintiff also alleges it put Defendant on notice of infringement on October 28, 2022, nearly nine months before filing the complaint. These allegations are presented to support a claim of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2015-11-13 | 'D404 Patent Application Filing Date |
| 2016 | Plaintiff begins selling its AeroThumb® product |
| 2018-03-20 | 'D404 Patent Issue Date |
| 2021-04-12 | Defendant Impresa acquired by Zephyr Companies LLC |
| 2021-04-13 | Defendant's affiliate (Dragonfly) first contacts Plaintiff about acquisition |
| 2021-10-19 | Final alleged contact from Defendant's affiliate about acquisition |
| 2022-10-28 | Plaintiff sends notice of infringement to Defendant |
| 2023-07-19 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D813,404 - "Device for fitting over a thumb to discourage thumb-sucking"
Issued March 20, 2018. (Compl. ¶23-26).
The Invention Explained
- Problem Addressed: While the design patent does not contain a background section describing a technical problem, its title and overall context imply a need for an aesthetically distinct device to prevent or discourage thumb-sucking. (D813,404 Patent, Title).
- The Patented Solution: The patent claims the specific ornamental design of the device. Key visual features shown in solid lines in the patent's drawings include a vented, flared portion that covers the thumb, a wide U-shaped cutout to accommodate the webbing between the thumb and index finger, and two elongated arms that extend from the main body to facilitate securing the device. (’D404 Patent, Figs. 1, 5; "CLAIM"). The design creates a specific overall visual impression.
- Technical Importance: Plaintiff alleges that its commercial product embodying this design, the AeroThumb®, has become "quite successful and well-known in the thumb guard industry." (Compl. ¶21).
Key Claims at a Glance
- Design patents have a single claim. The asserted claim is for: "The ornamental design for a device for fitting over a thumb to discourage thumb-sucking, as shown and described." (’D404 Patent, "CLAIM").
- The core elements of the claim are the visual characteristics of the device as depicted in the solid-line drawings of the patent, including:
- The overall shape and proportions of the thumb-covering shield.
- The specific arrangement and shape of ventilation openings on the shield.
- The curvature and dimensions of the U-shaped cutout.
- The shape, length, and surface pattern of the two extending arms.
- The patent notes that broken lines in the figures, such as a hand or a wrist strap, depict unclaimed environmental subject matter. (’D404 Patent, "DESCRIPTION").
III. The Accused Instrumentality
Product Identification
"Competing thumb guards" sold by Defendant Impresa Products, LLC. (Compl. ¶2).
Functionality and Market Context
The complaint identifies the accused products as thumb guards sold directly on Defendant’s website and through third-party e-commerce platforms like Amazon.com and Walmart.com. (Compl. ¶33, 34). Plaintiff alleges that Defendant "blatantly copied the entirety of the AeroThumb®" after its affiliate failed to acquire Plaintiff's business. (Compl. ¶29). The complaint includes a side-by-side comparison from an Amazon.com product page, alleging that the infringing product is sold for about half the price of Plaintiff's AeroThumb® and directly competes on the same retail platforms. (Compl. ¶41; Ex. 16). The complaint provides a visual comparison of the Plaintiff's AeroThumb® product and the Defendant's accused product as worn on a hand. (Compl. p. 7, Table 1).
IV. Analysis of Infringement Allegations
The standard for design patent infringement is whether an "ordinary observer," giving such attention as a purchaser usually gives, would be so deceived by the similarity between the designs as to purchase one supposing it to be the other. The complaint alleges that the accused product's design is "substantially the same" and "virtually identical" to the patented design. (Compl. ¶35-37). The complaint presents visual evidence in side-by-side tables to support this allegation. (Compl. ¶37). For example, Table 3 compares figures from the patent directly with images of the accused product. (Compl. p. 10).
'D404 Patent Infringement Allegations
| Claimed Ornamental Feature (from 'D404 Patent) | Alleged Infringing Feature | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall visual appearance of the device, including a flared thumb shield, a U-shaped cutout, and two elongated extending arms. | The accused product is alleged to have an overall appearance that is "substantially the same" and "virtually identical" to the patented design. | ¶35, ¶37 | Figs. 1-8 |
| A flared, ventilated shield portion designed to fit over a thumb. | The accused product incorporates a thumb shield of a similar shape, proportion, and with similarly placed ventilation features as depicted in the patent. | ¶37, Table 3 | Fig. 5 |
| A large, U-shaped cutout at the base of the shield. | The accused product features a U-shaped cutout that mirrors the location and general shape of the cutout in the patented design. | ¶37, Table 3 | Fig. 5 |
| Two elongated, parallel arms extending from the shield, featuring a distinct surface pattern. | The accused product includes two elongated arms of a similar shape and proportion, extending from the main body. | ¶37, Table 3 | Fig. 1 |
- Identified Points of Contention:
- Scope Questions: The central question for the court will be the application of the "ordinary observer" test. Do the alleged similarities in overall shape, ventilation pattern, and arm configuration create a visual impression so similar that an ordinary observer would be deceived? (Compl. ¶36, 38).
- Technical Questions: A potential issue, common in design patent litigation, is the distinction between protectable ornamental features and unprotectable functional aspects. A question for the court may be whether the similarities between the products are dictated by the functional requirements of a thumb guard (e.g., needing to fit a hand, requiring ventilation) or by the specific, protected ornamental choices claimed in the 'D404 Patent.
V. Key Claim Terms for Construction
In design patent cases, the "claim" is understood through the drawings rather than textual definitions. The primary focus is on the scope of the claimed design as a whole.
- The Term: "The ornamental design ... as shown and described."
- Context and Importance: The entire infringement analysis hinges on the visual scope of the design depicted in the patent's figures. The interpretation of what an ordinary observer would perceive as the "overall ornamental design" will be determinative. Practitioners may focus on this as it defines the boundaries of the Plaintiff's intellectual property rights.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party may argue that the claim protects the overall visual impression and that minor differences in the accused product are insufficient to escape infringement if the aesthetic whole is the same. The patent provides multiple views (e.g., perspective, top, side), which collectively define a holistic three-dimensional appearance, not just a collection of discrete two-dimensional features. (’D404 Patent, Figs. 1-8).
- Evidence for a Narrower Interpretation: A party may argue the design is limited to the precise shapes and proportions depicted in the solid lines. The patent’s description explicitly disclaims matter shown in broken lines, stating it "form[s] no part of the claim." (’D404 Patent, "DESCRIPTION"). This statement provides a clear basis for arguing that the protected design is strictly limited to the solid-line features, and any variation in those features in an accused product could be a basis for a non-infringement argument.
VI. Other Allegations
- Indirect Infringement: The complaint makes a passing reference to indirect infringement but does not plead specific facts to support theories of inducement or contributory infringement beyond the general allegation of making and selling the products. (Compl. ¶45). The primary cause of action is direct infringement. (Compl. p. 11, "COUNT ONE (Direct Patent Infringement)").
- Willful Infringement: The complaint lays a detailed foundation for willfulness. It alleges that Defendant had knowledge of the patent and the associated AeroThumb® product due to its affiliate's "failed attempt to acquire MED et al, TGuard®, and/or the AeroThumb®." (Compl. ¶28). The complaint further alleges that infringement continued even after Plaintiff provided explicit notice via a letter dated October 28, 2022. (Compl. ¶40). These allegations of pre- and post-notice knowledge, combined with claims of "blatant" copying, are used to support a request for enhanced damages under 35 U.S.C. § 284. (Compl. ¶29, 52).
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 Impresa’s thumb guard substantially the same as the design claimed in the 'D404 Patent, such that a typical purchaser would be confused?
A second key issue may involve the functionality doctrine: The court may need to distinguish between the patent's protected ornamental aspects and any functional features. The case could turn on whether the similarities between the products are attributable to protected aesthetic choices or to unprotectable, functional necessities inherent in designing any thumb guard.
A significant factual question will relate to willfulness: Given the allegations of prior acquisition discussions concerning the commercial embodiment of the patent, and alleged infringement after receiving a notice letter, the court will need to evaluate whether Impresa acted with the requisite knowledge and intent to justify enhanced damages.