DCT
1:19-cv-01151
Blackbird Tech LLC v. Morphe LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Blackbird Tech LLC d/b/a Blackbird Technologies (Delaware)
- Defendant: Morphe LLC (Delaware)
- Plaintiff’s Counsel: Stamoulis & Weinblatt LLC
- Case Identification: Blackbird Tech LLC v. [Morphe LLC](https://ai-lab.exparte.com/party/morphe-llc), 1:19-cv-01151, D. Del., 06/20/2019
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because the Defendant is a Delaware corporation, transacts business in the district, and has allegedly committed acts of infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s Morphe Pro Blender Beauty Sponge infringes its design patent for a face sponge.
- Technical Context: The technology resides in the field of cosmetic applicators, where the ornamental design and unique shape of a product can be a significant market differentiator.
- Key Procedural History: The complaint alleges that Defendant had pre-suit knowledge of the patent and its alleged infringement based on an April 2016 meeting between a representative for the patent's inventor and a representative for Morphe, which may form the basis for the willfulness allegation.
Case Timeline
| Date | Event |
|---|---|
| 2012-02-16 | ’358 Patent Priority Date (Filing Date) |
| 2012-08-28 | ’358 Patent Issue Date |
| 2016-04-01 | Alleged pre-suit notice of infringement to Morphe (approximate date) |
| 2019-06-20 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Design Patent No. D666,358, "Face Sponge," issued August 28, 2012.
The Invention Explained
- Problem Addressed: Design patents do not solve technical problems in the manner of utility patents; instead, they protect a new, original, and ornamental design for an article of manufacture. The goal is to secure rights to a unique aesthetic appearance for a face sponge (Compl. ¶9).
- The Patented Solution: The patent claims the specific ornamental design for a face sponge as depicted in its figures ('358 Patent, Claim). The design features a teardrop-like upper portion tapering to a point, a constricted "waist" in the middle, and a rounded, bulbous lower portion, creating an overall hourglass-like silhouette ('358 Patent, FIGS. 1-4). The top view shows a circle, while the bottom view shows concentric circles ('358 Patent, FIGS. 5-6; DESCRIPTION, col. 2:21-26).
- Technical Importance: In the cosmetics industry, distinctive product shapes can serve as a source identifier and a key driver of consumer purchasing decisions, distinguishing a product in a crowded market.
Key Claims at a Glance
- The single claim of a design patent covers the entire ornamental design.
- The claim is for: "The ornamental design for a face sponge, as shown and described" ('358 Patent, col. 2:9-11).
III. The Accused Instrumentality
- Product Identification: The Morphe Pro Blender Beauty Sponge (Compl. ¶11).
- Functionality and Market Context: The complaint identifies the accused instrumentality as a beauty sponge used for makeup application (Compl. ¶11). The allegations focus exclusively on the product's ornamental appearance rather than its functional operation. The complaint provides a side-by-side photographic comparison of the patented design and the accused product to support its infringement allegations (Compl. p. 4). This visual evidence shows the accused product, a red, textured sponge, from multiple angles corresponding to the patent's figures (Compl. pp. 4-5).
IV. Analysis of Infringement Allegations
The standard for design patent infringement is whether, in the eye of an ordinary observer, the two designs are substantially the same, such that the observer might be induced to purchase one supposing it to be the other. The complaint presents its infringement theory through a direct visual comparison.
D666,358 Infringement Allegations
| Claim Element (from the Single Claim) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a face sponge, as shown and described. | The complaint alleges that the Morphe Pro Blender Beauty Sponge embodies the patented design. A side-by-side visual comparison provided in the complaint juxtaposes the patent's line drawings with photographs of the accused product, alleging a misappropriation of the patented design. This comparison shows the accused product's overall shape, including its pointed top, pinched middle, and rounded bottom, allegedly mirroring the patented design. | ¶11, ¶13, p. 4 | col. 2:9-11; FIGS. 1-6 |
- Identified Points of Contention:
- Scope Questions: The central question will be whether the overall visual impression of the Morphe Pro Blender Beauty Sponge is substantially the same as that of the '358 patent's design. The analysis will focus on the similarity of the overall shape, the proportions of the top and bottom sections, and the specific curvature of the transitions between them.
- Technical Questions: While not a technical dispute in the utility patent sense, a factual question is whether the subtle differences in texture, color, and precise contours between the accused product and the patent's line drawings are sufficient to differentiate the designs in the mind of an ordinary observer. The complaint's visual evidence presents a photograph of the accused product next to the patent's front-view line drawing (Compl. p. 4, FIG. 1 comparison).
V. Key Claim Terms for Construction
In design patent litigation, the "claim" is understood to be the design itself as shown in the drawings, and formal construction of written terms is less common than in utility patent cases. The court's task is to articulate the scope of the visual design.
- The Term: "The ornamental design for a face sponge, as shown and described."
- Context and Importance: The entire case hinges on the scope of this design. The analysis will not be a textual one, but a visual one, focusing on what features shown in the solid lines of the patent drawings are part of the protected design and how they contribute to the overall visual impression.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue that the overall impression is defined by the general hourglass-like shape with one pointed end and one rounded end, suggesting that minor variations in proportion or curvature do not change the fundamental design. The patent shows the front, back, and side views as identical silhouettes, which may support an argument that the core protected feature is this two-dimensional profile ('358 Patent, FIGS. 1-3).
- Evidence for a Narrower Interpretation: A party could argue that the design is limited to the very specific proportions and curvatures shown in the drawings. The pinched "waist," the specific taper of the top section, and the semi-spherical nature of the bottom section could be argued as specific limitations that define a narrow design scope ('358 Patent, FIGS. 1-4).
VI. Other Allegations
- Indirect Infringement: The complaint does not allege indirect infringement.
- Willful Infringement: Willfulness is alleged based on purported pre-suit knowledge (Compl. ¶14, ¶19). The complaint claims that in April 2016, a representative for the inventor showed the '358 patent to Morphe's representative during collaboration discussions and specifically discussed Morphe's infringement of the patent (Compl. ¶14).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual similarity: In the eye of an ordinary observer, is the overall ornamental appearance of the Morphe Pro Blender Beauty Sponge substantially the same as the design claimed in the '358 patent, or are there sufficient visual differences to distinguish them?
- A key factual question will be one of pre-suit knowledge: Can the plaintiff substantiate its allegation that Morphe was expressly notified of the '358 patent and its alleged infringement during a meeting in April 2016? The answer will be critical to the claim for willful infringement and potential enhanced damages.