Pro Troll Inc v. Proking Spoon LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: PRO-TROLL (California)
  • Defendant: Proking Spoon LLC (Michigan) and KMDA, Inc. (Minnesota)
  • Plaintiff’s Counsel: Antero, Tormey & Petrin LLP
• Case Identification: 5:18-cv-00731, N.D. Cal., 02/02/2018
• Venue Allegations: Venue is asserted based on Defendants allegedly conducting business and distributing, offering for sale, selling, and/or advertising their products within the Northern District of California.
• Core Dispute: Plaintiff alleges that Defendants’ fishing flashers infringe a design patent covering the ornamental appearance of a fishing lure.
• Technical Context: The dispute is in the field of fishing tackle, where the visual appearance of lures and flashers can be a key differentiator for attracting both fish and consumers.
• Key Procedural History: The complaint alleges that Plaintiff provided Defendants with actual notice of the asserted patent and the alleged infringement via cease-and-desist letters in August and October 2017, prior to filing suit. While not mentioned in the complaint, associated patent documents indicate that the patent-in-suit survived an ex parte reexamination proceeding, with the patentability of the single claim confirmed in a certificate issued on January 6, 2020.

Case Timeline

Date	Event
2004-05-13	'663 Patent Priority Date
2006-03-07	'663 Patent Issue Date
2017-08-28	Cease-and-desist letter sent to Defendant PROKING
2017-10-05	Cease-and-desist letter sent to Defendant KMDA
2018-02-02	Complaint Filing Date

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

U.S. Design Patent No. D516,663 - "FISHING LURE," issued March 7, 2006.

The Invention Explained

• Problem Addressed: Design patents do not contain a background section describing a technical problem. The implicit goal is the creation of a new, original, and ornamental design for an article of manufacture, in this case a fishing lure, that is aesthetically distinct from existing designs ('663 Patent, DESCRIPTION).
• The Patented Solution: The patent protects the specific ornamental appearance of a fishing lure as depicted in its seven figures ('663 Patent, Figs. 1-7). The design is characterized by an elongated, relatively flat body with rounded ends, a gentle S-curve profile when viewed from the side, an attachment hole at each end, and a distinctive raised, fin-like structure near one end ('663 Patent, Figs. 1, 4). The complaint attaches the patent as Exhibit A, which includes figures illustrating the claimed design (Compl., Ex. A).
• Technical Importance: The creation of a unique visual appearance for a fishing lure can serve to differentiate the product in a competitive marketplace and build brand recognition among consumers (Compl. ¶13).

Key Claims at a Glance

• The patent asserts a single claim for "The ornamental design for a fishing lure, as shown and described" ('663 Patent, CLAIM).
• The "elements" of a design claim are the visual features depicted in the drawings. The key ornamental features of the '663 Patent design include:
  • The overall elongated shape with rounded ends.
  • The specific side profile curvature, as shown in Figures 4 and 5.
  • The presence and placement of a raised, fin-like structure near one end of the lure.
  • The placement of circular holes at both ends of the lure body.
• As a design patent, there are no dependent claims.

III. The Accused Instrumentality

Product Identification

The accused products are fishing flashers sold under the name "Pro King Double Rudder Salmon Flasher" and flashers sold under KMDA's "Inticer" product line (Compl. ¶13).

Functionality and Market Context

The complaint identifies the accused products as "fishing products" and "flashers" (Compl. ¶¶ 7, 13). It alleges that Defendants are direct competitors who manufacture, distribute, and sell these products in the United States, including through websites such as www.allseasonssports.com and www.kmdainc.com (Compl. ¶¶ 10, 13). The complaint further alleges that Defendant KMDA manufactures and supplies the "Inticer" products to Defendant PROKING, which then "modifies or repackages the products for resale" (Compl. ¶14). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint does not include a claim chart. The infringement theory is based on the legal standard for design patent infringement, which asks whether an "ordinary observer," taking into account the prior art, would believe the accused design to be the same as the patented design.

The complaint alleges that "Defendants' KMDA Inticer flasher incorporates all non-functional features of the '663 Design Patent" (Compl. ¶15) and that "Defendants' Pro King Double Rudder Salmon Flasher incorporates all non-functional features of the '663 Design Patent" (Compl. ¶16). This allegation forms the basis of the infringement claim, asserting that the accused products have an overall appearance that is substantially the same as the patented design.

Identified Points of Contention

• Factual Question: The complaint does not include any images, diagrams, or detailed descriptions of the accused products. A central factual dispute will be establishing the actual appearance of the "Pro King Double Rudder Salmon Flasher" and "Inticer" products to enable a visual comparison against the '663 Patent's figures.
• Scope Question: The complaint's specific phrasing that the accused products copy "non-functional features" (Compl. ¶¶ 15, 16) suggests that the parties may dispute which aspects of the '663 Patent's design are ornamental and which are dictated by the lure's function. The scope of a design patent's protection does not extend to features that are primarily functional. The question for the court will be whether features like the lure's curvature or the fin-like structure are ornamental or are instead functional requirements for the flasher's hydrodynamic performance.

V. Key Claim Terms for Construction

In design patent cases, the "claim" is the drawing, and traditional claim construction of words is less common. The dispute centers on the scope of the claimed design as a whole.

• The "Term": The overall "ornamental design" for the fishing lure.
• Context and Importance: The case will likely turn on the separation of functional from ornamental features to define the scope of the protected design. The complaint anticipates this by alleging infringement of "non-functional features" (Compl. ¶¶ 15, 16). Practitioners may focus on this distinction because any feature deemed functional must be excluded from the infringement analysis, potentially narrowing the scope of the patent's protection significantly.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party could argue that the design as a whole, comprising the specific combination of curves, shapes, and features shown in solid lines in the drawings, creates a unitary visual impression that is protectable as a whole ('663 Patent, Figs. 1-7).
  • Evidence for a Narrower Interpretation: A party could argue that certain elements are dictated by their function—for example, that the S-curve profile ('663 Patent, Figs. 4-5) and the fin structure are necessary to create a specific wobbling or "flashing" action in the water to attract fish. If a court agrees, those features would be filtered out of the infringement comparison, leaving a much "thinner" design for infringement purposes.

VI. Other Allegations

• Indirect Infringement: The complaint makes a general allegation of induced and contributory infringement (Compl. ¶22). Factual support may be drawn from the allegation that KMDA manufactures and supplies infringing products to PROKING for resale, potentially constituting an act of contributory infringement (Compl. ¶14).
• Willful Infringement: The complaint alleges willfulness based on Defendants’ continued infringement after receiving actual notice of the '663 Patent via cease-and-desist letters dated August 28, 2017, and October 5, 2017 (Compl. ¶¶ 17, 18, 19, 25).

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

• A core issue will be one of functionality: which visual features of the patented lure design are purely ornamental and protectable, and which are dictated by hydrodynamic function? The court's determination on this point will define the scope of the patent right before any infringement analysis can proceed.
• A key evidentiary question will be one of visual comparison: what is the actual appearance of the accused "Inticer" and "Pro King Double Rudder Salmon Flasher" products? As the complaint lacks any visual evidence of the accused products, the infringement case hinges entirely on evidence yet to be presented.
• The ultimate legal question will be the application of the ordinary observer test: assuming the court identifies a scope of protectable ornamental design, is the overall visual appearance of the accused products substantially the same as the patented design, such that an ordinary observer would be deceived?