DCT

4:23-cv-04982

Phan v. Simply Mossy Art Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 4:23-cv-04982, N.D. Cal., 09/28/2023
  • Venue Allegations: Plaintiff alleges venue is proper because the Defendant is a foreign corporation not resident in the United States, and therefore may be sued in any judicial district.
  • Core Dispute: Plaintiff seeks a declaratory judgment that Defendant’s design patent for a bendable moss pole is invalid and requests an injunction ordering Defendant to retract an infringement report filed against Plaintiff on Amazon.com.
  • Technical Context: The technology at issue is bendable, moss-covered poles used as decorative and functional supports for climbing houseplants, a product category within the consumer gardening market.
  • Key Procedural History: The action was precipitated by an infringement report filed by Defendant Mossify through Amazon's internal complaint system, which led to the deactivation of Plaintiff Duspro's product listings. The complaint notes that the patent-in-suit was allowed by the USPTO without any office actions or substantive rejection. The complaint also references a separate lawsuit filed by Mossify in the Southern District of New York against Duspro and over 100 other defendants, which Duspro alleges is procedurally improper.

Case Timeline

Date Event
2019-09-20 Alleged prior art Instagram post by user @cyrilcybernated
2020-01-27 Alleged prior art Instagram post by user @garden.in.my.room
2020-03-02 Alleged prior art Instagram post by user @garden.in.my.room
2020-04-28 Alleged prior art Instagram post by user @garden.in.my.room
2020-05-29 Alleged prior art Facebook post by user “plant.trellises”
2020-10-24 Alleged prior art YouTube video by user @FelineJungle
2021-05-26 '355 Patent Application Filing Date
2023-06-13 '355 Patent Issue Date
2023-08-15 Approximate date of Mossify's Amazon infringement report
2023-09-28 Complaint Filing Date

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

U.S. Design Patent No. D989,355 - "Bendable Moss Pole Assembly"

  • Patent Identification: U.S. Design Patent No. D989,355, "Bendable Moss Pole Assembly", issued June 13, 2023.

The Invention Explained

  • Problem Addressed: As is typical for design patents, the specification does not articulate a specific problem being solved; protection is sought for the ornamental appearance of an article, not its utility (Compl. ¶31; ’355 Patent).
  • The Patented Solution: The patent claims the ornamental design for a "bendable moss pole assembly" (’355 Patent, col. 1:11-13). The design, illustrated in the patent’s figures, consists of the visual characteristics of a columnar pole with a textured, irregular surface created by moss bound with material like string or twine. The design is shown in both a straight orientation and in bent configurations, such as an L-shape and an S-curve (’355 Patent, Figs. 9-10). The base and an internal stem portion are illustrated in broken lines, indicating they do not form part of the claimed design (’355 Patent, col. 1:32-35).
  • Technical Importance: The complaint alleges that the visual features of the patented design were not new at the time of filing and, in fact, represent a common, publicly demonstrated method for creating homemade plant supports (Compl. ¶44-45).

Key Claims at a Glance

  • Design patents contain a single claim. The asserted claim is: "The ornamental design for a bendable moss pole assembly, as shown and described" (Compl. ¶33; ’355 Patent, col. 1:11-13).
  • The essential visual elements of the design are defined by the patent's drawings and include:
    • A generally columnar, elongated body.
    • A surface ornamentation characterized by an irregular, organic texture of moss-like material.
    • The appearance of being bound or wrapped by a thin material (e.g., string or twine).
    • The ability to hold a bent or curved shape.

III. The Accused Instrumentality

Product Identification

  • The products accused of infringement by Defendant, and which are the subject of this declaratory judgment action, are Plaintiff's "DUSPRO Forest Moss Pole" products, sold under eight different Amazon Standard Item Numbers (ASINs) (Compl. ¶18, ¶27).

Functionality and Market Context

  • The DUSPRO products are described as pliable, moss-covered garden stakes that can be bent into various ornamental shapes to support climbing plants (Compl. ¶5). The complaint alleges these were "best-selling" products, generating nearly $150,000 in monthly revenue prior to their deactivation on Amazon following Defendant's infringement report (Compl. ¶18, ¶55). The complaint includes an image of a DUSPRO product bent in a circular configuration. This image, from a March 2023 Instagram post, shows a plant support with a mossy, textured appearance (Compl. ¶50; Fig. 7, p. 12).

IV. Analysis of Invalidity Allegations

The complaint does not plead non-infringement but instead seeks a declaratory judgment that the ’355 Patent is invalid and unpatentable on grounds of functionality and anticipation/obviousness over prior art. The complaint alleges that numerous examples of identical designs were publicly available years before the patent's filing date.

The complaint presents several examples of what it alleges to be invalidating prior art. For instance, Figure 1 is an Instagram post from January 27, 2020, allegedly showing a moss pole with the same ornamental characteristics as the patented design (Compl. p. 8). Another example, Figure 6, is a Facebook post from May 29, 2020, that allegedly demonstrates a similar moss pole bent into a circular shape, a key feature of the accused products and a capability shown in the patent (Compl. p. 12). The complaint also points to a YouTube tutorial from October 24, 2020, that allegedly teaches the public how to make a pole with "design characteristics identical to the design claimed in the '355 Patent" (Compl. ¶47; Fig. 3, p. 9).

The core of the invalidity claim is that the features of the patented design are either dictated by function or are visually identical to publicly disclosed prior art.

V. Key Claim Terms for Construction

The complaint does not provide sufficient detail for analysis of specific claim terms. In design patent litigation, claim construction focuses on the overall visual impression of the claimed design as depicted in the drawings, rather than on the interpretation of specific text-based terms. The central issue for the court will be to articulate a verbal description of the patented design as a whole and then compare that design to the prior art and assess whether it is primarily functional.

VI. Other Allegations

  • Exceptional Case Allegations: The complaint requests that the case be declared "exceptional" under 35 U.S.C. § 285, which would permit the court to award attorney's fees to the prevailing party (Compl. Prayer for Relief ¶4). The basis for this request is not explicitly detailed but is implicitly tied to the allegation that Mossify is wrongfully asserting an invalid patent that was granted without substantive examination and was preceded by extensive public prior art (Compl. ¶34, ¶52).

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

This declaratory judgment action appears to center on two fundamental questions of design patent law.

  • A primary issue will be one of validity over prior art: Does the collection of social media posts and online tutorials presented in the complaint, which predate the patent's filing date, disclose a design that is visually indistinguishable from the one claimed in the ’355 Patent? The court will need to determine if an ordinary observer would find the overall visual impression of the prior art designs to be substantially the same as the patented design.
  • A second critical question will be the application of the functionality doctrine: Is the claimed ornamental design of the "bendable moss pole" dictated by its utilitarian purpose? The court will likely have to consider whether the pole's shape, texture, and bendability are driven by the functional requirements of supporting a plant with a moss substrate, which could render the design unpatentable regardless of the prior art.