DCT

1:18-cv-00833

Life Alert Emergency Response Inc v. Excelsis Investments Inc

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:18-cv-00833, D. Del., 06/01/2018
  • Venue Allegations: Venue is asserted in the District of Delaware on the basis that the defendant corporations are incorporated in Delaware and are therefore deemed to reside in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s emergency communicator pendant product infringes two design patents protecting the ornamental appearance of a mobile telephone.
  • Technical Context: The dispute is in the field of personal emergency response system (PERS) devices, which are often wearable pendants used to summon help.
  • Key Procedural History: The complaint alleges that Plaintiff provided Defendant HSN with pre-suit notice of infringement of the ’089 patent in August 2017. The ’085 patent is a divisional of the application that matured into the ’089 patent. Plaintiff holds rights to the patents via an exclusive license agreement.

Case Timeline

Date Event
2014-06-03 Priority Date for ’089 and ’085 Patents
2016-04-05 U.S. Patent No. D753,089 Issues
2017-08-21 Plaintiff sends notice letter to Defendant HSN re: ’089 Patent
2017-08-24 Plaintiff sends notice letter to Defendant Excelsis re: ’089 Patent
2017-10-17 U.S. Patent No. D800,085 Issues
2018-06-01 Complaint Filed

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

U.S. Patent No. D753,089

  • Patent Identification: U.S. Design Patent No. D753089, titled “Mobile Telephone,” issued April 5, 2016 (Compl. ¶14).

The Invention Explained

  • Problem Addressed: Design patents protect ornamental appearance, not functional solutions. The patent does not describe a technical problem but instead presents a new, original, and ornamental design for an article of manufacture (Compl. ¶16).
  • The Patented Solution: The patent claims the specific ornamental design for a "mobile telephone" as depicted in its figures ('089 Patent, Claim). Key visual features of the design include a compact, rectangular body with rounded corners, a prominent square-shaped central button with the word "HELP," a series of small circular indicator lights arranged horizontally above the main button, and a smaller circular button in the lower right quadrant ('089 Patent, Figs. 1-2). The design is presented from multiple perspectives to fully disclose its appearance ('089 Patent, Figs. 1-7, Description).
  • Technical Importance: The complaint asserts that the patent claims "novel and unique designs" for mobile telephones (Compl. ¶16).

Key Claims at a Glance

  • Design patents have a single claim. The asserted claim is for: "The ornamental design for a mobile telephone, as shown and described" (’089 Patent, Claim).

U.S. Patent No. D800,085

  • Patent Identification: U.S. Design Patent No. D800085, titled “Mobile Telephone,” issued October 17, 2017 (Compl. ¶19).

The Invention Explained

  • Problem Addressed: Similar to the ’089 patent, this patent protects a new, original, and ornamental design for an article of manufacture (Compl. ¶21).
  • The Patented Solution: The ’085 patent claims an ornamental design for a "mobile telephone" that is visually similar to the ’089 patent design but includes an integrated lanyard loop structure at its bottom edge ('085 Patent, Figs. 1, 5). The patent uses broken lines to illustrate portions of the mobile telephone that "form no part of the claimed design," thereby focusing the claim on the solid-line features ('085 Patent, Description). This design explicitly claims an embodiment configured to be worn or attached.
  • Technical Importance: The complaint asserts that the patent claims "novel and unique designs" related to mobile telephones (Compl. ¶21).

Key Claims at a Glance

  • The single asserted claim is for: "The ornamental design for a mobile telephone, as shown and described" (’085 Patent, Claim).

III. The Accused Instrumentality

Product Identification

  • The "911 Help Now Gen 2 Emergency Communicator Pendant with Two-Way Talk and Assisted-GPS" ("the Product") (Compl. ¶26).

Functionality and Market Context

  • The complaint identifies the Product as an "emergency medical response product" that Defendant Excelsis sold through, at least, the HSN retail channel (Compl. ¶¶23, 26). The Product’s name suggests it provides two-way voice communication and location services, consistent with the function of a personal emergency device (Compl. ¶26). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint does not include claim charts. Infringement is alleged based on the assertion that the accused Product is "covered by the claimed designs" of the asserted patents (Compl. ¶¶33, 40). The core of a design patent infringement analysis is the "ordinary observer" test, which assesses whether the accused design is substantially the same as the patented design such that an ordinary purchaser would be deceived.

  • Identified Points of Contention:
    • Overall Visual Similarity: The central factual question will be whether the overall ornamental appearance of the accused "Emergency Communicator Pendant" is substantially similar to the designs claimed in the ’089 and ’085 patents. This will involve a visual comparison of the products, focusing on the claimed features shown in solid lines in the patent figures.
    • Scope Questions: The patents claim a design for a "mobile telephone" ('089 Patent, Claim; '085 Patent, Claim). The accused product is marketed as an "Emergency Communicator Pendant" (Compl. ¶26). A potential point of dispute is whether the accused product constitutes the same "article of manufacture" as that claimed in the patents. The resolution of this issue could influence the scope of prior art considered and the context of the ordinary observer comparison.
    • Distinctions Between Patents: The infringement analyses for the two patents may differ. The ’085 patent, for example, explicitly claims a design with a lanyard attachment feature, which may or may not be present on the accused product, potentially strengthening or weakening the infringement allegation for that specific patent relative to the ’089 patent.

V. Key Claim Terms for Construction

While formal claim construction is less common for design patents than for utility patents, the scope of the claimed "article of manufacture" is a recurring legal issue.

  • The Term: "mobile telephone"
  • Context and Importance: This term, from the title and single claim of both patents, defines the article to which the ornamental design is applied ('089 Patent, Claim; '085 Patent, Claim). Its interpretation is critical because the accused product is identified as an "Emergency Communicator Pendant" (Compl. ¶26). Practitioners may focus on this term because the defendant may argue that its pendant is a different article of manufacture from a "mobile telephone," seeking to narrow the scope of the patent or alter the field of prior art for the infringement analysis.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A party could argue that "mobile telephone" should be construed broadly to encompass any portable electronic device capable of voice communication, which the accused "Pendant with Two-Way Talk" appears to be (Compl. ¶26).
    • Evidence for a Narrower Interpretation: A party could argue that the specific embodiments shown in the patent figures, which depict a handheld device without an obvious integrated wearing mechanism (in the ’089 patent) or with a specific type of loop (in the ’085 patent), limit the term to that particular form factor and not to all wearable communication devices.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both contributory and induced infringement for both patents (Compl. ¶¶33, 40). The factual basis for contributory infringement is an allegation that the accused Product "does not have any substantial non-infringing uses" (Compl. ¶30).
  • Willful Infringement: The complaint distinguishes its willfulness allegations by patent.
    • For the ’089 Patent, willfulness is alleged based on pre-suit knowledge, citing notice letters sent to Defendants HSN and Excelsis in August 2017, approximately ten months before the complaint was filed (Compl. ¶¶27, 29, 34-35).
    • For the ’085 Patent, willfulness is alleged to have occurred "at least since the date of this Complaint," suggesting the allegation is based on notice provided by the filing of the lawsuit itself, not pre-suit knowledge (Compl. ¶41).

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

  1. A core issue will be one of scope and product designation: can the ornamental design for a "mobile telephone," as claimed in the patents, be infringed by a product marketed as an "Emergency Communicator Pendant," and how does this classification affect the application of the ordinary observer test?
  2. The primary factual dispute will be one of visual comparison: is the overall ornamental appearance of the accused product substantially the same as the designs claimed in the ’089 and ’085 patents, and does the inclusion of the lanyard loop in the ’085 patent design create a meaningful distinction in the infringement analysis for each patent?
  3. A key question for damages will be willfulness: can Plaintiff prove that Defendants had pre-suit knowledge of the ’089 patent sufficient to support a finding of willful infringement, and does the post-suit-only willfulness allegation for the later-issued ’085 patent have a different legal standing?