DCT
1:19-cv-01150
Blackbird Tech LLC v. Elf Cosmetics Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Blackbird Tech LLC d/b/a Blackbird Technologies (Delaware)
- Defendant: Elf. Cosmetics, Inc. (Delaware)
- Plaintiff’s Counsel: STAMOULIS & WEINBLATT LLC
- Case Identification: 1:19-cv-01150, D. Del., 09/10/2019
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because the Defendant is a Delaware corporation that transacts business and has allegedly committed acts of infringement within the district.
- Core Dispute: Plaintiff alleges that Defendant’s "Precision Concealer Sponge" infringes a design patent covering the ornamental appearance of a face sponge.
- Technical Context: The dispute concerns the ornamental design of cosmetic applicators, a product category within the competitive consumer beauty market.
- Key Procedural History: The provided document is an amended complaint. The complaint does not mention any prior litigation, inter partes review proceedings, or licensing history related to the patent-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2012-02-16 | '358 Patent Priority Date (Filing) |
| 2012-08-28 | '358 Patent Issue Date |
| 2019-06-06 | Websites cited in complaint accessed |
| 2019-09-10 | Amended Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D666,358 - "Face Sponge"
- Patent Identification: U.S. Design Patent No. D666,358, “Face Sponge,” issued August 28, 2012. (Compl. ¶7).
The Invention Explained
- Problem Addressed: Design patents protect ornamentation rather than function. The implicit problem addressed is the need for a new, original, and ornamental design for a face sponge that is aesthetically distinct from existing designs. (D666,358 Patent, Claim).
- The Patented Solution: The patent discloses an ornamental design for a face sponge characterized by a distinct, three-dimensional shape. The design features a teardrop-shaped top with a pointed tip, a rounded, bulbous bottom, and a constricted "waist" between the two sections, as depicted in the patent's figures. (D666,358 Patent, Figs. 1-4, Description).
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is for: "The ornamental design for a face sponge, as shown and described." (D666,358 Patent, Claim).
- The core visual elements of the claimed design include:
- A continuous profile with a pointed upper portion.
- A constricted central portion.
- A rounded, bulbous lower portion.
- A flat, circular bottom surface.
III. The Accused Instrumentality
Product Identification
The "e.l.f. Precision Concealer Sponge." (Compl. ¶13).
Functionality and Market Context
The complaint identifies the accused product as a sponge used for applying cosmetics. (Compl. ¶9, 11). The allegations focus entirely on the product's ornamental appearance rather than its material composition or method of use. (Compl. ¶11, 13).
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 supports its infringement allegation with a direct visual comparison. The complaint provides a side-by-side chart comparing figures from the patent with photographs of the accused product to allege visual identity. (Compl. p. 4). A second visual on the following page compares the bottom view of the patented design with the base of the accused product. (Compl. p. 5).
D666,358 Infringement Allegations
| Claimed Design Feature (from Figs. 1-6) | Alleged Infringing Feature of the e.l.f. Sponge | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design as a whole, comprising a profile with a pointed top, constricted middle, and rounded bottom. | The complaint alleges the overall shape of the accused sponge misappropriates the patented design. | ¶11, p. 4 | Figs. 1-4 |
| A flat, circular bottom view. | The bottom surface of the accused sponge is alleged to be the same as the patented design's bottom view. | ¶11, p. 5 | Fig. 6 |
- Identified Points of Contention:
- Scope Questions: The central issue will be whether the overall visual impression of the accused sponge is "substantially the same" as the claimed design. A key question for the court will be how to weigh minor differences in curvature, proportion, and scale between the patent's line drawings and the physical accused product.
- Technical Questions: The complaint preemptively addresses a potential visual difference by stating that "small indents on the sponge are the result of the molded plastic packaging... and not the design of the sponge." (Compl. ¶11, fn. 2). This raises the evidentiary question of whether such packaging-induced artifacts should be disregarded by the "ordinary observer" when making the infringement comparison.
V. Key Claim Terms for Construction
In a design patent case, claim construction focuses on the visual impression of the design as a whole, as depicted in the drawings, rather than on textual definitions.
- The Term: "The ornamental design for a face sponge, as shown and described."
- Context and Importance: The scope of this design "claim" is the central issue. The court's interpretation of what is covered by the patent drawings—including the level of detail and proportion that is protected—will determine the outcome of the infringement analysis. Practitioners may focus on whether the design is limited to the exact proportions shown or covers the general "gestalt" of a pointed-top, narrow-waist, bulbous-bottom sponge.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The use of simple, unshaded line drawings in the patent may suggest that the claim covers the overall shape and configuration of the sponge, without being limited to a specific surface texture or precise, to-the-millimeter proportions. (D666,358 Patent, Figs. 1-6).
- Evidence for a Narrower Interpretation: The specific contours of the curves, the ratio of the height of the top portion to the bottom portion, and the degree of constriction in the middle, as depicted consistently across multiple figures, could be argued to define the design narrowly. (D666,358 Patent, Figs. 1-4). A party could argue that any noticeable deviation in these specific proportions in the accused product is sufficient to avoid infringement.
VI. Other Allegations
- Indirect Infringement: The complaint does not plead specific facts to support claims of induced or contributory infringement. It asserts a single count of direct infringement under 35 U.S.C. § 271. (Compl. ¶13).
- Willful Infringement: The complaint does not use the term "willful" or plead facts suggesting pre-suit knowledge of the patent by the Defendant. The prayer for relief includes a request for a finding of an exceptional case under 35 U.S.C. § 285 but does not provide a factual basis for such a finding in the body of the complaint. (Compl. Prayer for Relief ¶E).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this dispute will likely depend on the court's answers to two primary questions:
- Scope and the Ordinary Observer: A core issue will be one of design scope: when viewed by an ordinary observer, is the overall visual impression of the accused e.l.f. sponge "substantially the same" as the design claimed in the '358 patent, or do differences in proportion and curvature distinguish the two designs?
- Materiality of Differences: A key evidentiary question will be the visual significance of any differences between the patent's line drawings and the accused product. The case may turn on whether such differences are considered minor aesthetic variations that an ordinary observer would disregard or are substantial enough to create a different overall visual appearance.