DCT
3:24-cv-01363
Plus Ev Holdings Inc v. Newflora LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Plus EV Holdings, Inc. (Missouri)
- Defendant: NewFlora LLC (California)
- Plaintiff’s Counsel: Haley Guiliano LLP; Workman Nydegger
- Case Identification: 3:24-cv-01363, S.D. Cal., 08/01/2024
- Venue Allegations: Venue is alleged to be proper because Defendant is a California entity that resides in the district, has committed alleged acts of infringement in the district, and maintains a regular and established place of business there.
- Core Dispute: Plaintiff alleges that Defendant’s pelvic wand products infringe its design patent for a pelvic wand.
- Technical Context: The technology resides in the field of pelvic health devices, specifically therapeutic wands used for massage and trigger point release.
- Key Procedural History: Plaintiff alleges it sent a notice letter to Defendant on June 17, 2024, informing Defendant of the patent and demanding it cease selling the accused products. The complaint notes that Defendant did not respond to this letter.
Case Timeline
| Date | Event |
|---|---|
| 2019-07-29 | Earliest Priority Date for D1,029,286 Patent |
| 2024-05-28 | U.S. Design Patent No. D1,029,286 Issued |
| 2024-06-17 | Plaintiff sends notice letter to Defendant |
| 2024-08-01 | Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Design Patent No. D1,029,286, “Pelvic Wand,” issued May 28, 2024 (’D286 Patent).
- The Invention Explained:
- Problem Addressed: Design patents protect ornamental appearance rather than functional solutions. The patent does not articulate a technical problem but instead claims a new, original, and ornamental design for an article of manufacture, specifically a pelvic wand (’D286 Patent, Claim).
- The Patented Solution: The patent protects the specific visual appearance of a pelvic wand. The design is characterized by a continuous, S-shaped curve with two ends of differing size and shape (’D286 Patent, FIG. 1). One end is thicker and more bulbous, while the other is more slender and tapered (’D286 Patent, FIG. 1, 4, 5). The overall impression is one of a smooth, ergonomic, and continuous form. The claim explicitly covers the ornamental design “as shown and described,” incorporating the visual details depicted in the patent’s figures (’D286 Patent, Claim).
- Technical Importance: The complaint alleges that Plaintiff invests in protecting its "unique product designs" and that Defendant has "copied" them, which suggests the specific ornamental design possesses commercial significance in the pelvic health device market (Compl. ¶¶ 8, 10).
- Key Claims at a Glance:
- Design patents contain a single claim. The asserted claim is: "The ornamental design for a pelvic wand, as shown and described." (’D286 Patent, Claim).
- The scope of this claim is defined by the solid lines in the patent's drawings, which depict the overall shape and surface ornamentation of the wand (’D286 Patent, FIG. 1-7). The dash-dash broken lines depict portions of the wand that are not part of the claimed design, and the dash-dot-dash broken lines define boundaries of the claim without forming a part of it (’D286 Patent, Description).
III. The Accused Instrumentality
- Product Identification: The complaint identifies two accused products: the "NewFlora Pelvic Wand" and the "NewFlora Vibrating Pelvic Wand" (collectively, the "Infringing Products") (Compl. ¶¶ 12, 14, 15).
- Functionality and Market Context:
- The complaint presents the accused products as tools for pelvic health that are distributed, imported, sold, and/or offered for sale by Defendant (Compl. ¶¶ 12, 14). The complaint alleges that Defendant competes with Plaintiff for product sales in California and that its products are sold to customers in the Southern District of California (Compl. ¶3).
- The infringement claim is based on the ornamental appearance of the products. The complaint provides a side-by-side comparison of the patented design with a photograph of the accused "NewFlora Pelvic Wand," which shows a purple, S-shaped wand with two distinct ends. (Compl. ¶12, Ex. 4). A similar comparison is made for the accused "NewFlora Vibrating Pelvic Wand" (Compl. ¶14, Ex. 6).
IV. Analysis of Infringement Allegations
The central test for design patent infringement is the "ordinary observer" test, which asks whether an ordinary observer, giving such attention as a purchaser usually gives, would be deceived into purchasing the accused product believing it to be the patented design. The complaint's allegations are based on a direct visual comparison.
- Claim Chart Summary:
| Claim Element (from the sole claim for "the ornamental design for a pelvic wand, as shown and described") | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design of the pelvic wand, characterized by a distinct S-shaped curvature and proportions as depicted in the patent figures. | The accused NewFlora Pelvic Wand and NewFlora Vibrating Pelvic Wand products are alleged to embody a design that is "substantially similar" to the patented design, featuring a nearly identical S-shaped curvature and proportions. The complaint visually supports this by placing a photograph of the accused product next to the patent's Figure 1. (Compl. Ex. 4). | ¶¶ 6, 12, 14, 21 | FIG. 1 |
| The specific ornamental features of the two functional ends of the wand: one thicker and bulbous, the other more slender and tapered. | The accused products are depicted with two ends that mirror the shape, size, and tapering of the ends shown in the patented design. | ¶¶ 12, 14 | FIG. 4, 5 |
- Identified Points of Contention:
- Scope Questions: A central question will be whether the overall visual impression of the accused products is "substantially the same" as the patented design in the eyes of an ordinary observer. While the complaint presents the designs as nearly identical, a defense may focus on any subtle differences in curvature, proportion, or surface finish not immediately apparent from the complaint's photographs.
- Technical Questions: The primary question is one of visual comparison, not technical operation. However, a potential issue could be the extent to which the S-shape and tapered ends are driven by function versus ornament. If certain features are deemed primarily functional, they may be given less weight in the infringement analysis, which could raise the question of what protectable ornamental design remains. The complaint does not address functionality, instead alleging wholesale copying of the design (Compl. ¶10).
V. Key Claim Terms for Construction
In design patent cases, the "claim" is understood to be the design itself as depicted in the drawings, and detailed verbal claim construction is generally disfavored by courts. The dispute typically centers on the application of the ordinary observer test to the accused product rather than the construction of specific terms. The complaint does not raise any issues of claim construction. The analysis will likely proceed directly to a comparison of the accused products with the design claimed in the ’D286 Patent.
VI. Other Allegations
- Indirect Infringement: The complaint focuses on direct infringement under 35 U.S.C. § 271, alleging that Defendant itself makes, uses, sells, offers for sale, or imports the accused products (Compl. ¶¶ 21-23). It does not contain specific factual allegations to support claims of induced or contributory infringement.
- Willful Infringement: The complaint alleges that Defendant’s infringement is willful and deliberate (Compl. ¶26). This allegation is based on Defendant's alleged continued infringement after receiving a notice letter from Plaintiff on June 17, 2024, which provided actual notice of the ’D286 Patent (Compl. ¶¶ 16, 24). The complaint also makes an allegation of direct copying "upon information and belief," which, if proven, could also support a finding of willfulness (Compl. ¶10).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this case will likely depend on the answers to a few key questions:
- A core issue will be one of visual identity: Applying the ordinary observer test, is the overall ornamental appearance of Defendant's "NewFlora" pelvic wands substantially the same as the design claimed in the ’D286 Patent? The case may turn on the visual evidence presented and whether any minor differences are sufficient to distinguish the designs in the eyes of a consumer.
- A key evidentiary question will be one of intent: Can Plaintiff substantiate its allegation of direct copying? Evidence of copying could not only strengthen the infringement case but would also be highly relevant to the claim for willful infringement.
- A central damages and remedies question will be one of willfulness: Did Defendant’s alleged infringement become willful as of June 17, 2024, when it was put on actual notice of the patent? An affirmative finding could expose Defendant to enhanced damages.