3:18-cv-02045
Lego AS v. Zuru Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Lego AS, LEGO Systems, Inc., and LEGO Juris A/S (Denmark, Delaware)
- Defendant: ZURU Inc. (British Virgin Islands)
- Plaintiff’s Counsel: Day Pitney LLP
- Case Identification: 3:18-cv-02045, D. Conn., 12/13/2018
- Venue Allegations: Plaintiff alleges venue is proper because Defendant is a foreign corporation that has committed acts of patent, copyright, and trademark infringement within the District of Connecticut.
- Core Dispute: Plaintiff alleges that Defendant’s "Max Build More" line of construction toys infringes four design patents covering the ornamental appearance of specific toy building blocks.
- Technical Context: The dispute is in the field of interlocking toy construction bricks, a mature and highly competitive segment of the global toy market where product appearance is a key differentiator.
- Key Procedural History: The complaint does not reference any prior litigation between the parties, Inter Partes Review (IPR) proceedings involving the asserted patents, or specific prosecution history events relevant to claim scope.
Case Timeline
| Date | Event |
|---|---|
| 2009-01-27 | Priority Date for U.S. Patent No. D614,707 |
| 2010-02-02 | Priority Date for U.S. Patent No. D641,053 |
| 2010-04-27 | Issue Date for U.S. Patent No. D614,707 |
| 2011-07-05 | Issue Date for U.S. Patent No. D641,053 |
| 2011-07-11 | Priority Date for U.S. Patent No. D688,328 |
| 2012-11-16 | Priority Date for U.S. Patent No. D701,923 |
| 2013-08-20 | Issue Date for U.S. Patent No. D688,328 |
| 2014-04-01 | Issue Date for U.S. Patent No. D701,923 |
| 2018-10-01 | Alleged Launch Date for Accused ZURU "Max Build More" Products |
| 2018-12-13 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D701,923 S - Building Block From A Toy Building Set
Issued April 1, 2014
The Invention Explained
- Problem Addressed: Design patents do not articulate a technical problem in a background section; rather, they seek to protect a new, original, and ornamental design for an article of manufacture (Compl. ¶44, 46).
- The Patented Solution: The patent claims the ornamental design for a specific toy building block characterized by a rectangular prism shape with two cylindrical studs on its top surface and two cylindrical connection receptacles on its front face (D’923 Patent, FIG. 7). This configuration allows the block to connect with other blocks both vertically (via the top studs) and horizontally (via the front receptacles). The complaint presents a figure from the patent to illustrate the claimed design (Compl. p. 23).
- Technical Importance: This design enables multi-directional building connections, expanding construction possibilities beyond simple vertical stacking.
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a building block from a toy building set, as shown and described" (D’923 Patent, Claim).
- The essential visual elements of the claimed design include:
- A generally rectangular block body.
- Two cylindrical studs protruding from the top surface.
- Two cylindrical receptacles located on one of the larger side faces.
- The specific proportions and spatial arrangement of these features as depicted in the patent's figures.
U.S. Design Patent No. D688,328 S - Building Block From A Toy Building Set
Issued August 20, 2013
The Invention Explained
- Problem Addressed: The patent seeks to protect a new, original, and ornamental design for a toy building block (Compl. ¶44, 47).
- The Patented Solution: The patent claims the ornamental design for an L-shaped building block (D’328 Patent, FIG. 1). The design consists of a main rectangular portion with two cylindrical studs on its top surface and two cylindrical receptacles on its side face, attached to a smaller, perpendicular block extension. The complaint includes a drawing from the patent showing this configuration (Compl. p. 23).
- Technical Importance: The L-shaped geometry of this design allows users to construct corners and create structural changes of direction.
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a building block from a toy building set, as shown and described" (D’328 Patent, Claim).
- The essential visual elements of the claimed design include:
- An overall "L" shape.
- Two cylindrical studs on the top surface of the larger block portion.
- Two cylindrical receptacles on the side face of the larger block portion.
- The specific proportions and arrangement of these elements as illustrated in the patent's figures.
U.S. Design Patent No. D641,053 S - Element Of A Construction Set
Issued July 5, 2011
Technology Synopsis
The patent protects the ornamental design for a sloped building element, featuring a rectangular base with a single stud that transitions via a curved slope to an upper section with two studs (Compl. p. 24; D'053 Patent, FIG. 1). This design is suitable for creating angled surfaces, supports, or decorative features in a larger construction.
Asserted Claims
The single claim is for the ornamental design as shown and described in the patent's figures (D'053 Patent, Claim).
Accused Features
Certain bricks included in ZURU's "Max Build More" value sets are alleged to be substantially similar to the design claimed in the ’053 Patent (Compl. ¶50, 54).
U.S. Design Patent No. D614,707 S - Element For A Toy Construction Set
Issued April 27, 2010
Technology Synopsis
The patent protects the ornamental design for a frame-like or window-like building element (Compl. p. 24; D'707 Patent, FIG. 1). The design consists of a rectangular frame with two cylindrical studs on its top edge and an internal circular connection point at its base.
Asserted Claims
The single claim is for the ornamental design as shown and described in the patent's figures (D'707 Patent, Claim).
Accused Features
Bricks included in the "Max Build More Building Bricks Accessories and Wheels Value Set (250 Pieces)" are alleged to be substantially similar to the design claimed in the ’707 Patent (Compl. ¶50, 55).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are specific building bricks (the "Infringing Bricks") contained within at least three ZURU product sets: the "Max Build More Building Bricks Value Set (759 Bricks)," the "Max Build More Building Bricks Value Set (253 Bricks)," and the "Max Build More Building Bricks Accessories and Wheels Value Set (250 Pieces)" (Compl. ¶50).
Functionality and Market Context
The accused products are sets of interlocking plastic construction bricks intended for creative play (Compl. ¶50-51). The complaint alleges these products are sold through major retailers such as Walmart and Target, sometimes positioned on shelves directly adjacent to Plaintiff's LEGO brand products (Compl. ¶41, 30). A photograph in the complaint shows ZURU's "MAX" branded products merchandised next to LEGO products in a retail aisle (Compl. p. 15). The packaging for the accused products is alleged to bear the phrase "COMPATIBLE WITH MAJOR BRANDS!" (Compl. p. 13).
IV. Analysis of Infringement Allegations
D701,923 S Infringement Allegations
| Claim Element (from the single claim) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a building block from a toy building set, as shown and described. | The accused ZURU brick is alleged to embody a substantially similar ornamental design, possessing a rectangular body, two cylindrical studs on its top surface, and two cylindrical receptacles on its front face, as shown in a comparative photograph. (Compl. p. 28). | ¶52 | FIG. 7 |
D688,328 S Infringement Allegations
| Claim Element (from the single claim) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a building block from a toy building set, as shown and described. | The accused ZURU brick is alleged to embody a substantially similar ornamental design, possessing an "L" shape, two cylindrical studs on the top of its main portion, and two cylindrical receptacles on its side face, as depicted in a comparative photograph. (Compl. p. 29). | ¶53 | FIG. 1 |
Identified Points of Contention
- Scope Questions: The central dispute will turn on the "ordinary observer" test for design patent infringement. This raises the question of whether alleged minor differences in proportion, plastic finish, or edge sharpness between the patented designs and the accused ZURU bricks are sufficient to avoid a finding of infringement. The complaint provides a visual comparison of ZURU's accused brick and a LEGO brick embodying the '923 Patent design (Compl. p. 28).
- Technical Questions: A key question for the court may be how to separate unprotectable functional aspects from the protected ornamental design. It may be argued that features essential for interlocking compatibility—such as the basic cylindrical shape and spacing of studs—are primarily functional and should be discounted when comparing the overall ornamental appearance of the bricks.
V. Key Claim Terms for Construction
In design patent litigation, the "claim" is the visual design depicted in the drawings, rather than a set of text-based limitations. The analysis therefore focuses on the scope of the claimed visual appearance.
- The Term: "The ornamental design ... as shown and described."
- Context and Importance: The entire infringement analysis depends on the scope of the visual design protected by each patent. The court's interpretation of this "claim" will define the visual elements against which the accused ZURU bricks are compared. Practitioners may focus on this issue because the distinction between ornamental and functional features is a common and often dispositive defense in design patent cases involving useful articles.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Plaintiff may argue that the claim scope covers the overall visual impression created by the combination and arrangement of the solid-line features in the patent drawings, such as the block shape, stud placement, and receptacle location. They may contend that the design is the holistic appearance and that minor variations do not alter this overall impression (e.g., ’923 Patent, FIG. 7).
- Evidence for a Narrower Interpretation: Defendant may argue that the claim is limited to the exact proportions and contours shown in the patent figures. They may also point to the functional purpose of the interlocking studs and receptacles, arguing that these features are dictated by utility and should be afforded a narrow scope of protection, or none at all. Furthermore, any features shown in broken lines in the patent drawings, such as the internal structures depicted in Figure 2 of the ’923 Patent, are explicitly disclaimed from the scope of the protected design.
VI. Other Allegations
- Willful Infringement: The complaint alleges that ZURU's infringement of the asserted design patents "is and has been willful" (Compl. ¶127). The complaint does not provide a specific factual basis for this allegation within the patent infringement count, but in a separate section related to trademark and copyright claims, it alleges that ZURU had "actual notice of the LEGO Group's copyrights and trademarks" since at least August 17, 2017 (Compl. ¶32).
VII. Analyst’s Conclusion: Key Questions for the Case
This case appears to center on fundamental principles of design patent law applied to a well-known consumer product category. The key questions for the court will likely be:
- A question of visual identity: Applying the "ordinary observer" test, are the accused ZURU bricks substantially the same in their overall ornamental appearance as the designs claimed in the four asserted patents? This will require a side-by-side comparison of the products and the patent drawings, focusing on the similarities in the designs as a whole.
- A question of protectability: To what extent are the visual features of the patented brick designs dictated by their function of interlocking with other bricks? The court's determination of which aspects of the designs are purely ornamental versus primarily functional will be critical in defining the scope of patent protection and, ultimately, in deciding infringement.