DCT
3:19-cv-01602
E Mishan & Sons Inc v. As Seen On Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: E. Mishan & Sons, Inc. ("Emson") (New York)
- Defendant: As Seen On PC, Inc. ("As Seen On PC") (Connecticut)
- Plaintiff’s Counsel: Robinson + Cole LLP; Notaro, Michalos & Zaccaria P.C.
- Case Identification: 3:19-cv-01602, D. Conn., 10/11/2019
- Venue Allegations: Venue is based on Defendant's residence in Connecticut and on allegations that Defendant has a regular and established place of business in the district where it committed acts of infringement.
- Core Dispute: Plaintiff alleges that Defendant’s "Rockrays" line of solar-powered outdoor lights infringes two design patents covering the ornamental appearance of such lights, in addition to related copyright claims.
- Technical Context: The dispute concerns the aesthetic design of consumer-grade, decorative solar-powered LED lights used for landscaping and pathway illumination.
- Key Procedural History: The complaint asserts both patent and copyright infringement. Plaintiff alleges that it registered copyrights for its "Block Stone Disk Light" and "Paver Stone Disk Light" designs prior to filing the suit. It further alleges Defendant had access to its designs before creating the accused products.
Case Timeline
| Date | Event |
|---|---|
| 2018-07-19 | Priority Date for U.S. Design Patent No. D842,521 |
| 2018-09-04 | Priority Date for U.S. Design Patent No. D842,523 |
| 2019-03-05 | Issue Date for U.S. Design Patent No. D842,521 |
| 2019-03-05 | Issue Date for U.S. Design Patent No. D842,523 |
| 2019-10-11 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D842,523 - “Rock Disk Light” (issued Mar. 5, 2019)
The Invention Explained
- Problem Addressed: Design patents protect ornamental designs for articles of manufacture rather than addressing a technical problem. The patent aims to provide a new, original, and ornamental appearance for a solar-powered disk light intended for consumer use in outdoor settings (Compl. ¶¶ 8-9).
- The Patented Solution: The patent claims the specific visual appearance of a "rock disk light" as depicted in its seven figures (D’523 Patent, Claim; DESCRIPTION). The design features an annular, or ring-shaped, body composed of irregularly shaped segments with a rough-hewn, stone-like texture, creating the impression of natural rockwork surrounding a central light fixture (D’523 Patent, FIGS. 1-2, 4-7).
- Technical Importance: The claimed design provides a distinct aesthetic for a consumer product in the competitive market for decorative outdoor lighting (Compl. ¶¶ 8, 10).
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is for: "The ornamental design for a rock disk light, as shown and described" (D’523 Patent, Claim).
- The essential elements are the visual characteristics of the design as a whole, including the overall annular configuration, the arrangement of individual stone-like segments, and the specific surface texture and contours shown in the drawings (D’523 Patent, FIGS. 1-7).
U.S. Design Patent No. D842,521 - “Paver Stone Disk Light” (issued Mar. 5, 2019)
The Invention Explained
- Problem Addressed: As with the D’523 Patent, this patent seeks to protect a new, original, and ornamental design for an outdoor solar disk light (Compl. ¶¶ 8-9).
- The Patented Solution: The patent claims the ornamental design for a "paver stone disk light," which is illustrated in its seven figures (D’521 Patent, Claim; DESCRIPTION). This design is also annular but is composed of more uniformly shaped, rectangular segments that resemble cut paving stones or bricks arranged in a ring (D’521 Patent, FIGS. 1-2, 4-7). The broken lines in Figure 3 indicate that the bottom surface of the light is not part of the claimed design (D’521 Patent, FIG. 3; DESCRIPTION).
- Technical Importance: The design offers a distinct, more geometric and structured aesthetic compared to natural rock-style lights, targeting a different consumer preference within the outdoor lighting market (Compl. ¶¶ 8, 10).
Key Claims at a Glance
- The asserted claim is for: "The ornamental design for a paver stone disk light, as shown and described" (D’521 Patent, Claim).
- The essential elements are the overall visual impression created by the annular shape, the arrangement of relatively uniform, rectangular paver-like segments, and the surface appearance shown in the patent figures (D’521 Patent, FIGS. 1-7).
III. The Accused Instrumentality
Product Identification
- The accused products are solar-powered LED lights sold under the trademark "Rockrays" (Compl. ¶ 28). The complaint identifies two specific styles: the "Belgium Block Rockrays" and the "Mixed Stone Rockrays" (Compl. ¶ 29).
Functionality and Market Context
- The accused "Rockrays" are described as solar-powered LED lights used in landscapes and along pathways (Compl. ¶¶ 9, 28). The complaint alleges these products are sold throughout the United States on major e-commerce websites, including Groupon.com, Amazon.com, and Overstock.com (Compl. ¶ 30). The complaint includes a photograph showing the packaging for both the "Belgium Block" and "Mixed Stone" versions of the accused lights (Compl. p. 8).
IV. Analysis of Infringement Allegations
The infringement test for a design patent is whether an "ordinary observer," familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented design. The complaint presents its allegations through side-by-side visual comparisons.
A side-by-side comparison table from the complaint shows the patented design figure next to a photograph of the accused product (Compl. p. 13).
D’523 Patent Infringement Allegations
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a rock disk light, as shown and described. | The complaint alleges that the "Belgium Block Rockrays" light has a design that is substantially the same as the patented design, pointing to its overall annular shape and the configuration of its individual rock-like segments. | ¶¶ 57-58 | Claim; FIGS. 1-7 |
D’521 Patent Infringement Allegations
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a paver stone disk light, as shown and described. | The complaint alleges that the "Mixed Stone Rockrays" light embodies a design that is substantially the same as the patented design, focusing on the overall visual impression created by the annular arrangement of stone-like pavers. | ¶¶ 63-64 | Claim; FIGS. 1-7 |
Identified Points of Contention
- Scope Questions: The central question will be whether the accused designs are "substantially the same" as the patented designs in their overall visual appearance. A court will assess if the differences between the accused products and the patent figures are minor enough that an ordinary observer would be confused.
- Technical Questions: A factual question for the court will be to compare the specific visual features of the designs. For the D’523 patent, this may involve comparing the shape, texture, and arrangement of the "rocks" on the accused "Belgium Block" light to those in the patent figures. For the D’521 patent, the analysis will focus on whether the pavers on the "Mixed Stone" product create the same overall visual impression as the more uniform pavers in the patent's design.
V. Key Claim Terms for Construction
In design patent litigation, the "claim" is the design itself as shown in the drawings, and construction of specific text-based terms is rare. The analysis focuses on the overall visual appearance of the claimed design, filtering out purely functional elements.
- The Term: The scope of the "ornamental design" as a whole.
- Context and Importance: The entire infringement analysis depends on the scope of the protected design. The court must determine what visual features are ornamental and part of the claimed design, as opposed to features that are purely functional or unclaimed. Practitioners may focus on this holistic scope because the ultimate infringement test compares the overall visual impression of the patented design with that of the accused product.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The solid lines used in all figures of the patents define the metes and bounds of the claimed ornamental designs (D’523 Patent, FIGS. 1-7; D’521 Patent, FIGS. 1-2, 4-7). The core protected aesthetic is an annular arrangement of stone-like segments around a central light.
- Evidence for a Narrower Interpretation: The broken lines in Figure 3 of both patents explicitly disclaim the bottom surface of the light, indicating it is not part of the protected design (D’521 Patent, FIG. 3; D’523 Patent, FIG. 3). Furthermore, a court would likely determine that certain aspects, such as the circular shape of the central light fixture itself, are functional and must be discounted when assessing the overall ornamental appearance.
VI. Other Allegations
Indirect Infringement
- The complaint's patent counts focus on direct infringement under 35 U.S.C. § 271, alleging that Defendant imports, offers for sale, and sells the accused products (Compl. ¶¶ 58, 64). The complaint does not plead specific factual allegations to support claims of induced or contributory infringement.
Willful Infringement
- The complaint alleges that Defendant's infringement has been and continues to be willful (Compl. ¶ 42). The factual basis for this allegation appears to be pre-suit knowledge, as the complaint alleges that Defendant "had access to Plaintiff's Block Stone Disk Light prior to importing, making, distributing and/or selling the Belgium Block Rockrays light" and similarly for the Paver Stone design (Compl. ¶¶ 38-39).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual similarity: From the perspective of an ordinary observer, are the accused "Belgium Block" and "Mixed Stone" designs substantially the same as the designs claimed in the D’523 and D’521 patents, respectively, or are the differences in stone shape, texture, and arrangement sufficient to create a distinct overall visual impression?
- A key evidentiary question will be one of copying and knowledge: Can the Plaintiff substantiate its allegations that the Defendant had access to its proprietary designs prior to developing the accused "Rockrays" lights? Proving access would be central to its claims for willful patent infringement and copyright infringement.
- The case may also turn on the scope of the patent claims in view of prior art: While not detailed in the complaint, the novelty and non-obviousness of the claimed designs over what was already known in the outdoor lighting field will be critical. The scope of the prior art will define how broad or narrow the patent protection is and, consequently, how similar an accused product must be to infringe.