DCT

5:24-cv-05156

Honwell Products HK Ltd v. Perch Acquisition Co 12 LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:24-cv-05156, N.D. Cal., 08/14/2024
  • Venue Allegations: Venue is based on allegations that Defendants conduct significant business in the Northern District of California, including making sales of products practicing the patents-in-suit, and have claimed ownership of the patents in the district.
  • Core Dispute: Plaintiffs seek a declaratory judgment that twenty-two of Defendants' design patents are invalid for failure to name the correct inventor and are unenforceable due to inequitable conduct.
  • Technical Context: The dispute concerns the ornamental designs of various consumer electronics, primarily lighting and sound devices.
  • Key Procedural History: The complaint alleges a long-standing business relationship wherein Plaintiffs designed and manufactured products for Defendant London Johnson, Inc. (“LJ”), which was later acquired by Defendant Perch. Plaintiffs claim that under an implied agreement, they retained ownership of the intellectual property in their designs. The suit was filed after Plaintiffs allegedly discovered that LJ and later Perch had improperly filed for and obtained numerous design patents listing Defendant Brian P. Johnson as the inventor for designs Plaintiffs contend they created.

Case Timeline

Date Event
2015-01-01 Approximate start of business relationship between Honwell and LJ (stated as "around 2015")
2016-05-04 Priority Date for D827,606 and D797,963 Patents
2016-07-06 Priority Date for D806,677 and D827,619 Patents
2016-08-04 Priority Date for D828,606 Patent
2016-09-22 Priority Date for D857,963 Patent
2017-05-01 Priority Date for D851,789 Patent
2017-09-11 Priority Date for D825,792 Patent
2017-09-19 Issue Date for U.S. Patent No. D797,963
2017-09-22 Priority Date for D869,291 Patent
2017-12-13 Priority Date for D932,679 Patent
2018-01-02 Issue Date for U.S. Patent No. D806,677
2018-06-06 Priority Date for D904,667 Patent
2018-08-14 Issue Date for U.S. Patent No. D825,792
2018-09-04 Issue Date for U.S. Patent No. D827,606
2018-09-04 Issue Date for U.S. Patent No. D827,619
2018-09-11 Issue Date for U.S. Patent No. D828,606
2018-10-25 Priority Date for D903,927 Patent
2019-05-28 Priority Date for D927,463 Patent
2019-06-18 Issue Date for U.S. Patent No. D851,789
2019-08-27 Issue Date for U.S. Patent No. D857,963
2019-12-10 Issue Date for U.S. Patent No. D869,291
2020-02-06 Priority Date for D933,281 Patent
2020-02-07 Priority Date for D936,265 Patent
2020-03-20 Priority Date for D933,039 Patent
2020-12-01 Issue Date for U.S. Patent No. D903,927
2020-12-08 Issue Date for U.S. Patent No. D904,667
2021-01-15 Priority Date for D979,537, D979,538, and D996,395 Patents
2021-01-28 Priority Date for D965,196 Patent
2021-05-13 Priority Date for D999,187 Patent
2021-08-10 Issue Date for U.S. Patent No. D927,463
2021-10-05 Issue Date for U.S. Patent No. D932,679
2021-10-12 Issue Date for U.S. Patent No. D933,039
2021-10-12 Issue Date for U.S. Patent No. D933,281
2021-11-16 Issue Date for U.S. Patent No. D936,265
2022-09-27 Issue Date for U.S. Patent No. D965,196
2023-02-28 Issue Date for U.S. Patent No. D979,537
2023-02-28 Issue Date for U.S. Patent No. D979,538
2023-05-16 Date of alleged product purchase from Dongguan by Perch/Whele
2023-08-22 Issue Date for U.S. Patent No. D996,395
2023-09-18 Honwell allegedly discovers Amazon sale and sends letter regarding D828,606
2023-09-19 Issue Date for U.S. Patent No. D999,187
2023-09-29 Honwell sends letter regarding D965,196, D979,537, and D979,538
2023-10-17 Issue Date for U.S. Patent No. D1002066
2024-08-14 Complaint Filing Date

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

U.S. Design Patent No. D827,606 - "Sound Device," Issued September 4, 2018

The Invention Explained

  • Problem Addressed: Design patents do not solve technical problems; they protect the novel, non-obvious ornamental appearance of an article of manufacture (D827,606 Patent, Title). This patent addresses the need for a unique ornamental design for a sound device.
  • The Patented Solution: The patent claims the specific visual appearance of a sound device, characterized by a generally cuboid shape with rounded edges, a top surface featuring a specific layout of six circular indentations and an oblong control panel, and a front surface covered by a fabric-like grille pattern (D827,606 Patent, Figs. 1-2). The overall aesthetic combines simple geometry with specific surface details.
  • Technical Importance: The design reflects an aesthetic trend in consumer electronics toward minimalist forms combined with tactile surface finishes, aiming to integrate technology more seamlessly into home environments (D827,606 Patent, Fig. 1).

Key Claims at a Glance

  • The single claim is for "The ornamental design for a sound device, as shown and described" (D827,606 Patent, Claim).
  • The scope of a design patent claim is defined by its drawings. The key visual elements comprising the claimed design include:
    • A generally cuboid housing with rounded vertical and horizontal edges.
    • A top surface with a specific arrangement of six circular, concave buttons and a recessed, oblong central control panel.
    • A front face entirely covered by a textured grille pattern.
    • The overall visual impression created by the combination of these features.

U.S. Design Patent No. D797,963 - "Light Bar," Issued September 19, 2017

The Invention Explained

  • Problem Addressed: This patent addresses the need for a new and ornamental design for a "light bar" (D797,963 Patent, Title).
  • The Patented Solution: The patent protects the ornamental design of an elongated, slim light bar. Its key features include a rectangular housing with rounded corners, a smooth, translucent upper lens, and a circular button or sensor element centrally located on the top surface (D797,963 Patent, Figs. 1-2). The design emphasizes a low-profile, unobtrusive appearance.
  • Technical Importance: This type of linear, minimalist design is common for under-cabinet or accent lighting, where the aesthetic goal is often to provide illumination without the fixture itself being visually prominent (D797,963 Patent, Fig. 1).

Key Claims at a Glance

  • The single claim is for "The ornamental designs for a light bar, as shown and described" (D797,963 Patent, Claim).
  • The key visual elements defining the claimed design include:
    • An elongated, shallow, rectangular form factor.
    • Softly rounded corners and edges.
    • A distinct circular feature positioned in the center of the top surface.
    • The overall visual appearance generated by these combined elements.

Multi-Patent Capsule: U.S. Design Patent No. D904,667 - "Motion-Sensing Light," Issued December 8, 2020

  • Technology Synopsis: The ’667 Patent protects the ornamental design for a motion-sensing light. The design consists of a square housing with soft, rounded corners and a prominent, centrally-located, honeycomb-textured sensor dome on its front face (D904,667 Patent, Figs. 1-2).
  • Asserted Claims: Claim 1.
  • Contended Issue: The complaint seeks a declaration that the patent is invalid and unenforceable, alleging that the design was created by Plaintiffs and improperly patented by Defendants (Compl. ¶¶ 24, 34, 53).

Multi-Patent Capsule: U.S. Design Patent No. D828,606 - "Circular Light," Issued September 11, 2018

  • Technology Synopsis: The ’606 Patent protects the ornamental design for a circular or "puck" style light. The design is characterized by a simple, domed circular housing with three distinct light-emitting elements visible through the top lens, arranged in a triangular pattern (D828,606 Patent, Figs. 1, 6).
  • Asserted Claims: Claim 1.
  • Contended Issue: The complaint specifically identifies this patent as being secretly procured without Plaintiff's knowledge and as covering a product sold by Defendants on Amazon, forming a basis for the declaratory judgment action (Compl. ¶¶ 25-29).

(Note: The complaint lists 18 additional design patents that are subject to the same allegations of invalidity and unenforceability based on improper inventorship.)

III. The Accused Instrumentality

Product Identification

The complaint identifies a "lighting product" sold by Defendants Perch/Whele through Amazon that is allegedly "protected under at least the invalid/unenforceable U.S. Patent No. D828,606" (Compl. ¶¶ 25-26). More broadly, the action concerns the entire portfolio of "products practicing the patents-in-suit," which are generally described as "lighting and sound devices and their accessories" (Compl. ¶¶ 17-18).

Functionality and Market Context

The complaint does not focus on the technical functionality of the products. Instead, its allegations center on the products' design origin. The central claim is that the visual designs of these products were conceived and developed by Plaintiffs, who then manufactured them for Defendants (Compl. ¶¶ 40-43, 48). The complaint alleges that Defendants have made "significant sales" and derived "significant revenues and profits" from these products in California (Compl. ¶18).

IV. Basis for Declaratory Judgment Claims

No probative visual evidence provided in complaint.

The core of the complaint is not an allegation of infringement, but a request for a declaratory judgment of patent invalidity and unenforceability. The legal theories are based on incorrect inventorship and inequitable conduct.

Theory of Invalidity (Incorrect Inventorship)

The complaint alleges that all twenty-two patents-in-suit are invalid under 35 U.S.C. § 101 et seq. for failure to name the correct inventive entity (Compl. ¶¶ 35, 63). It is alleged that Brian P. Johnson, the sole named inventor on all the patents, did not invent or contribute to the conception of the claimed ornamental designs (Compl. ¶¶ 28, 34, 46, 49). The complaint asserts that the true inventors are employees of Plaintiffs (Honwell and Dongguan), such as Mr. Tang Kong Kin, Zhang Zhen Xing, and Jimi Pang, or outside designers commissioned by Plaintiffs, such as Ivan Yu and Ben Lai (Compl. ¶¶ 29, 33, 37-39, 70). The complaint characterizes the relationship between the parties as that of a designer/manufacturer (Plaintiffs) and a buyer/reseller (Defendants), not one of co-inventorship (Compl. ¶¶ 45, 50).

Theory of Unenforceability (Inequitable Conduct)

The complaint alleges that the patents-in-suit are unenforceable due to inequitable conduct before the U.S. Patent and Trademark Office (USPTO) (Compl. ¶¶ 36, 72). The basis for this claim is the allegation that Brian P. Johnson executed inventor declarations for the applications, stating he was the original inventor, while knowing this to be false (Compl. ¶¶ 51, 69). The complaint further alleges that these false statements were made with the specific "intent to deceive the U.S. Patent and Trademark Office" (Compl. ¶¶ 69-70).

Identified Points of Contention

  • Factual Question of Conception: The central dispute will be a factual inquiry into who conceived of the ornamental designs. The court will need to weigh evidence such as design drawings, prototypes, email communications, and testimony to determine whether Brian P. Johnson contributed to the "definite and permanent idea of the complete" ornamental design, or if conception was complete by Plaintiffs' employees or contractors before his involvement.
  • Nature of the Business Relationship: A key issue is the nature of the parties' relationship. The court may need to determine if an "implied agreement" existed that vested ownership of the design rights with Plaintiffs, as alleged, which would support their claim that Defendants had no right to file the patent applications in their own name (Compl. ¶¶ 18-19).

V. Key Claim Terms for Construction

In design patent litigation, the claim is defined by the drawings as a whole, and the controlling test for infringement is the "ordinary observer" test. Formal construction of specific written terms is rare. The central dispute in this case is not about the scope of the claimed designs, but about their authorship. Therefore, claim construction is unlikely to be a central issue.

The "Claim" as a Whole

The "claim" in each patent is the overall ornamental design shown in the figures.

Context and Importance

The dispute does not center on what a "Sound Device" (D827,606) or a "Light Bar" (D797,963) is. Rather, it centers on a question of fact: who invented the specific visual appearance of the devices depicted in the patent drawings? The outcome will depend on evidence of conception, not on parsing the meaning of claim terms. Practitioners will likely focus discovery and argument on the factual record of the design process rather than on claim construction briefing.

VI. Exceptional Case Allegations

Request for Attorney's Fees

Plaintiffs allege that this is an "exceptional case" under 35 U.S.C. § 285, which would permit the court to award them reasonable attorney's fees (Compl. ¶74).

Basis for "Exceptional" Finding

The request is predicated on the allegations of inequitable conduct and "fraudulent patent registration" (Compl. ¶62). Plaintiffs assert that Brian P. Johnson's alleged act of knowingly executing false inventor declarations with an intent to deceive the USPTO constitutes the type of egregious misconduct that warrants an exceptional case finding (Compl. ¶¶ 69-70, 72).

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

  • A primary issue will be one of inventorship fact-finding: Can Plaintiffs produce sufficient corroborating evidence (e.g., dated drawings, communications, purchase orders, testimony) to prove by clear and convincing evidence that their employees or contractors, and not Brian P. Johnson, were the true and sole conceivers of the ornamental designs claimed in the patents-in-suit?
  • A critical question for the unenforceability claim will be one of deceptive intent: If inventorship is found to be incorrect, can Plaintiffs further prove that Brian P. Johnson acted with a specific intent to deceive the USPTO when he signed the inventor declarations? The absence of such intent, even if the declaration was factually incorrect, may defeat the claim of inequitable conduct.
  • A foundational legal and factual question concerns the underlying business arrangement: What were the terms, express or implied, governing intellectual property rights between Plaintiffs and Defendants? The court's interpretation of this relationship could significantly influence the analysis of ownership and the propriety of Defendants' patent filings.