DCT

1:19-cv-02110

Blackbird Tech LLC v. Rite Aid Corp

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:19-cv-02110, D. Del., 11/07/2019
  • Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant is a Delaware corporation and thus resides in the district. The complaint also alleges Defendant transacts business and has committed acts of infringement in Delaware.
  • Core Dispute: Plaintiff alleges that the ornamental design of Defendant’s "Daylogic Complexion Perfection Specialty Sponge" infringes a design patent owned by Plaintiff.
  • Technical Context: The dispute is in the field of cosmetic applicators, where uniquely shaped sponges have become popular tools for applying and blending makeup.
  • Key Procedural History: The complaint does not mention any prior litigation, administrative proceedings (e.g., IPRs), or licensing history related to the patent-in-suit.

Case Timeline

Date Event
2012-02-16 '358 Patent Priority Date (Filing Date)
2012-08-28 '358 Patent Issue Date
2019-11-07 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.

The Invention Explained

  • Problem Addressed: Design patents do not solve technical or functional problems; they protect the novel, ornamental, and non-obvious appearance of an article of manufacture (Compl. ¶9). The patent sought to create a unique and aesthetically distinct design for a face sponge.
  • The Patented Solution: The patent claims the ornamental design for a face sponge as depicted in its six figures ('358 Patent, CLAIM). The design features a teardrop or gourd-like profile with three distinct sections: a pointed top end for precision application, a bulbous central body, and a wider, rounded bottom base ('358 Patent, FIG. 1-4). The side view shows a defined indentation or "waist" between the central body and the base ('358 Patent, FIG. 2). The top view is a simple circle, while the bottom view shows concentric circles, suggesting a flat or recessed base ('358 Patent, FIG. 5-6).
  • Technical Importance: In the consumer cosmetics market, a product's unique visual appearance can be a significant driver of consumer choice and brand identity.

Key Claims at a Glance

  • The patent contains a single claim: "The ornamental design for a face sponge, as shown and described." ('358 Patent, CLAIM).
  • The essential visual elements of this design claim, as depicted in the drawings, include:
    • A continuous, smooth-surfaced body
    • A pointed top tip
    • A bulbous, rounded middle section
    • An indented "waist" feature below the middle section
    • A wider, rounded bottom section that serves as a base

III. The Accused Instrumentality

Product Identification

  • The "Rite Aid Daylogic Complexion Perfection Specialty Sponge" (Compl. ¶11).

Functionality and Market Context

  • The accused product is a cosmetic sponge used for applying makeup (Compl. ¶11). The complaint provides a photograph of the accused product, showing it to be a purple, teardrop-shaped sponge with a pointed tip and a rounded bottom (Compl. p. 4).
  • The complaint alleges that Defendant manufactures, uses, distributes, offers for sale, and/or sells this product in the United States (Compl. ¶13). The complaint includes a side-by-side visual comparison, asserting the accused product's design is the same as the patented design (Compl. ¶11, p. 4). This comparison shows the accused product next to the patent's line drawings, highlighting the similarities in overall shape. (Compl. p. 4).

IV. Analysis of Infringement Allegations

Claim Chart Summary

  • While the complaint does not contain a formal claim chart, its allegations can be structured to compare the patented design's features against the accused product's appearance. 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.
Key Design Feature (from Figures 1-6) Alleged Infringing Functionality (as pictured) Complaint Citation Patent Citation
A pointed top tip The accused sponge has a pointed tip. ¶11, p. 4 FIG. 1-4
A bulbous, rounded middle section The accused sponge has a bulbous, rounded middle section. ¶11, p. 4 FIG. 1-4
An indented "waist" below the middle section The accused sponge features an indentation below its bulbous middle section. ¶11, p. 4 FIG. 1-4
A wider, rounded bottom section The accused sponge has a wide, rounded bottom section. ¶11, p. 4 FIG. 1-4
A circular top view and a circular, flat-bottomed base view The top and bottom views of the accused sponge appear to correspond to the patented design's circular profiles. ¶11, p. 4 FIG. 5-6

Identified Points of Contention

  • Scope Questions: The primary question is one of visual perception. A court will assess whether the overall visual impression of the accused Rite Aid sponge is substantially the same as the overall visual impression of the '358 patent's design.
  • Technical Questions: The analysis will not involve technical operation but will focus on visual details. A potential point of contention could be the precise proportions and curvature of the accused sponge compared to the patent's line drawings. For example, a court may examine whether the degree of indentation at the "waist" or the specific curvature of the bulbous section in the accused product are close enough to the patented design to confuse an ordinary observer.

V. Key Claim Terms for Construction

The Term

  • "face sponge"

Context and Importance

  • This term defines the article of manufacture to which the ornamental design is applied. Its construction is important because it sets the scope of the relevant prior art against which the novelty of the patented design and the similarity of the accused product are judged. Practitioners may focus on this term because the "ordinary observer" is considered to be familiar with the prior art in the field of "face sponges."

Intrinsic Evidence for Interpretation

  • Evidence for a Broader Interpretation: The parties are unlikely to dispute the general meaning of "face sponge." The term itself is broad and could encompass a wide variety of cosmetic applicators made of porous material.
  • Evidence for a Narrower Interpretation: The figures in the '358 patent depict a very specific type of teardrop-shaped blending sponge. A party could argue that the "face sponge" of the claim should be understood in the context of this specific sub-category of cosmetic tools, potentially narrowing the scope of relevant prior art.

VI. Other Allegations

Indirect Infringement

  • The complaint does not allege indirect infringement.

Willful Infringement

  • The complaint does not contain an explicit allegation of "willful infringement." However, in its prayer for relief, it requests that the court adjudge the case "exceptional under 35 U.S.C. § 285" and award attorneys' fees (Compl. Prayer for Relief ¶E). The complaint does not allege any specific facts to support a finding of willfulness or egregiousness, such as pre-suit knowledge of the patent.

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

  • A core issue will be one of visual comparison under the ordinary observer test: Is the overall ornamental design of the Rite Aid sponge substantially the same as the claimed design in the '358 patent, such that an ordinary purchaser would be deceived? The side-by-side comparison provided in the complaint will be a central piece of evidence in this analysis.
  • A secondary issue will be the impact of the prior art: Assuming the case proceeds, the scope and content of prior art designs for face sponges will be critical. The extent of similarity between the patented design and the prior art will inform how much weight is given to any minor differences between the patented design and the accused product.