DCT

3:22-cv-01166

Deetsch v. Lei

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:22-cv-01166, S.D. Cal., 08/10/2023
  • Venue Allegations: Venue is alleged to be proper based on Defendants transacting business in the district, including advertising, distributing, offering for sale, and selling the accused products within California.
  • Core Dispute: Plaintiff alleges that Defendants’ specialized pillows for CPAP users infringe two of Plaintiff's design patents and that Defendants engaged in unfair competition through false advertising on the Amazon platform.
  • Technical Context: The technology concerns therapeutic pillows with specific ergonomic shapes designed to accommodate the mask and tubing of a continuous positive airway pressure (CPAP) machine used to treat sleep apnea.
  • Key Procedural History: The complaint alleges a lengthy history of notice to the Defendants, including a 2019 small claims court action, multiple notifications to Amazon through its Brand Registry service beginning in 2019, and formal cease and desist letters in March 2022. The complaint also alleges that Defendants used images of Plaintiff’s own products in advertising and packaging for the accused products. These allegations form the basis for claims of willful infringement.

Case Timeline

Date Event
2008-05-28 Earliest Priority Date for '529 and '530 Patents
2009-01-01 Plaintiff's Pillow Products brought to market "on or around 2009"
2009-07-07 U.S. Patent No. D595,529 Issues
2009-07-07 U.S. Patent No. D595,530 Issues
2018-08-16 Defendants allegedly began selling infringing products "on or before" this date
2019-09-26 Plaintiff submitted correspondence to Amazon alleging patent infringement
2019-10-16 Plaintiff filed a small claims suit against the Lei Defendants
2020-11-20 Plaintiff's registration for Amazon's Brand Registry service approved
2020-12-08 Plaintiff submitted "2020 Amazon Request" via Brand Registry to remove products
2022-03-24 Defendants allegedly received cease and desist letters from Plaintiff's counsel
2023-08-10 Second Amended Complaint Filed

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

U.S. Design Patent No. D595529 - Pillow Insert, Issued July 7, 2009

The Invention Explained

  • Problem Addressed: While design patents do not contain a problem-and-solution narrative, the complaint explains that the inventor, a sleep apnea patient, was inspired to create a pillow to accommodate a CPAP machine worn during sleep (Compl. ¶11).
  • The Patented Solution: The patent claims the specific ornamental appearance of a "pillow insert" ('529 Patent, CLAIM). The design features a generally rectangular main body with two contoured cutouts on one long side, creating a central neck support area and two raised side portions, and a broader, curved shape on the opposite long side ('529 Patent, Fig. 2). The overall shape appears intended to create recesses for a CPAP mask and hose when a user lies on their side.
  • Technical Importance: The design represents an effort to create an ergonomic sleeping surface specifically for users of CPAP equipment, a common treatment for sleep apnea (Compl. ¶¶ 11, 14).

Key Claims at a Glance

  • As a design patent, there is a single claim for the ornamental design as depicted in the patent's figures.
  • The claim covers the visual appearance of the pillow insert shown in Figures 1-7.

U.S. Design Patent No. D595530 - Pillow with X Straps, Issued July 7, 2009

The Invention Explained

  • Problem Addressed: This patent addresses the same context as the '529 Patent: providing a pillow suitable for a CPAP user (Compl. ¶11).
  • The Patented Solution: The patent claims the ornamental design for a pillow that incorporates the core shape of the '529 Patent but adds crisscrossing straps ("X Straps") on its rear side ('530 Patent, CLAIM; Fig. 5). The patent's description explicitly states that the broken lines showing a person's head, a sleep mask, and a zipper are for illustrative purposes only and "form no part of the claimed design" ('530 Patent, DESCRIPTION). This limits the protected design to the pillow's shape and the visible straps.
  • Technical Importance: This design adds a feature, the straps, to the base ergonomic shape, presumably for positioning or securing the pillow or related equipment (Compl. ¶94).

Key Claims at a Glance

  • The patent contains a single claim for the ornamental design of the "pillow with X straps" as depicted in the patent's figures.
  • The claim covers the visual appearance of the pillow and its integrated straps as shown in solid lines in Figures 1-7.

III. The Accused Instrumentality

Product Identification

The complaint names "Defendants' Pillow Products" and "pillowcase products" sold by Lumia Products and Peter Lei, primarily through Amazon.com (Compl. ¶¶ 15, 89, 90). The allegations specifically mention a product advertised as "2.0" and sold under ASIN B078W43XP9 (Compl. ¶¶ 72, 80).

Functionality and Market Context

The accused products are CPAP pillows marketed to sleep apnea patients (Compl. ¶10). The complaint alleges that Defendants' products are "identical to" the designs claimed in the patents (Compl. ¶26). The complaint provides a side-by-side visual comparison between the patented design and an accused product in Exhibit 17, which shows two pillows with nearly indistinguishable shapes (Compl. ¶97). Furthermore, the complaint alleges Defendants engaged in false advertising by transferring customer reviews from an older, discontinued product to the new "2.0" product listing to mislead consumers (Compl. ¶¶ 73, 182).

IV. Analysis of Infringement Allegations

The infringement theory for a design patent rests on the "ordinary observer" test, which asks whether an ordinary observer, familiar with the prior art, would be deceived into believing the accused design is the same as the patented design. The complaint alleges that Defendants' Pillow Products are "overall visually identical" to the patented designs and would deceive such an observer (Compl. ¶¶ 97, 98).

The complaint supports this allegation primarily through visual evidence. For the '529 Patent, Exhibit 17 provides a side-by-side photographic comparison of the patented design and an accused pillow, intended to show their substantial similarity (Compl. ¶97). For the '530 Patent, Exhibit 18 provides a similar side-by-side comparison (Compl. ¶98).

Unusually for a design patent case, the complaint provides "textual descriptions of features copied" in Exhibits 23 and 24, breaking the designs into elements like "Upper peak" and "Middle Portion" (Compl. ¶¶ 101-103). Plaintiff acknowledges that an "element-by-element comparison, untethered from application of the ordinary observer inquiry to the overall design, is procedural error," but states these exhibits are offered for "clarification" (Compl. ¶¶ 99, 101).

  • Identified Points of Contention:
    • Overall Visual Similarity: The central question will be whether the accused products are substantially similar to the claimed designs in their overall appearance, as judged by an ordinary observer. The defense may focus on any perceived visual differences to argue against a finding of infringement.
    • Improper Infringement Analysis: A potential point of contention, raised by the complaint itself, is the plaintiff's use of a textual, element-by-element breakdown of the design (Compl. ¶99). Defendants may argue this represents an improper attempt to analyze the design patent claim, which should be considered as a whole.

V. Key Claim Terms for Construction

In design patent litigation, claim construction focuses on the scope of the claimed design as a whole, rather than defining specific textual terms.

The Scope of the Claimed Design

Context and Importance

The scope is defined by the solid lines in the patent drawings. For the '530 Patent, determining what is explicitly not part of the claim is critical.

Intrinsic Evidence for Interpretation

  • Evidence for a Broader Interpretation: The parties may argue that the overall visual impression of the unique, multi-contoured shape is the dominant feature, and minor variations should not avoid infringement. The seven different views in each patent (top, bottom, front, rear, left, right, perspective) provide a comprehensive definition of the claimed three-dimensional shape ('529 Patent, Figs. 1-7).
  • Evidence for a Narrower Interpretation: For the '530 Patent, the specification provides explicit disclaimers. The broken lines depicting a person's head, a sleep mask, and a zipper "form no part of the claimed design" ('530 Patent, DESCRIPTION). This expressly limits the claim's scope to the pillow shape and the "X straps," preventing the claim from being interpreted to cover the pillow's use or features shown in broken lines.

VI. Other Allegations

Indirect Infringement

The complaint alleges that Defendant Peter Lei induced infringement by personally directing overseas manufacturers to produce products identical to the patented designs (Compl. ¶¶ 56-57, 64). It also alleges indirect infringement more generally against all Defendants for selling the products, thereby enabling customers to "use" the infringing designs (Compl. ¶¶ 89-90).

Willful Infringement

The complaint makes extensive allegations to support willfulness. It alleges Defendants had knowledge of the patents through multiple channels, including a 2019 small claims suit, direct correspondence to Amazon in 2019, multiple notices via Amazon's Brand Registry portal, and cease and desist letters received in March 2022 (Compl. ¶¶ 26, 29, 35, 46, 50). The complaint further alleges intentional copying, citing an instruction manual for Defendants' product that allegedly included images of Plaintiff's own product (Compl. ¶19). Exhibit 21 is cited as showing this instruction manual (Compl. ¶104).

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

  1. The Ordinary Observer Test: The case will fundamentally turn on a visual comparison. The key question for the fact-finder is one of holistic design similarity: considering the prior art, would an ordinary observer be deceived into purchasing Defendants' pillow believing it was the same as the one shown in Plaintiff's '529 and '530 Patents?
  2. Willfulness and Egregious Conduct: A central issue will be the Defendants' state of mind. Given the extensive history of alleged notice and claims of direct copying—including the alleged use of Plaintiff's own marketing photos in Defendants' instruction manuals—a key question is whether Defendants can establish a good-faith belief that their conduct was non-infringing, or whether their actions will be deemed willful.
  3. Damages and Causation: The complaint intertwines claims of patent infringement with claims of unfair competition, such as the alleged manipulation of Amazon product reviews. This raises a key question for damages: how will the court or a jury apportion the harm caused by the alleged patent infringement versus the harm caused by the alleged false advertising and deceptive marketing practices?