DCT
1:19-cv-02209
Jacent Strategic Merchandising LLC v. 2 Dogs Distribution LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Jacent Strategic Merchandising, LLC (Delaware)
- Defendant: 2 Dogs Distribution, LLC (Delaware)
- Plaintiff’s Counsel: Morris, Nichols, Arsht & Tunnell LLP
- Case Identification: 1:19-cv-02209, D. Del., 11/27/2019
- Venue Allegations: Venue is asserted as proper under 28 U.S.C. § 1391(b) and (c). The complaint notes that a separate infringement action filed by Defendant against Plaintiff in the Eastern District of Texas is subject to a motion to transfer to Delaware, where both parties are incorporated.
- Core Dispute: Plaintiff seeks a declaratory judgment that its "Aluminum Carabiner" product does not infringe Defendant's design patent, and further that the patent is invalid and unenforceable due to the patentee's own prior commercial sales and alleged inequitable conduct before the U.S. Patent and Trademark Office.
- Technical Context: The dispute concerns the ornamental design of a large-format carabiner, a consumer product marketed for uses such as hanging bags from strollers and shopping carts.
- Key Procedural History: Plaintiff alleges that Defendant, in prior litigation and enforcement efforts, has admitted to selling products embodying the patented design ("The Mommy Hook") since at least 2006. Plaintiff argues this creates an on-sale bar that invalidates the patent, which claims a priority date of January 18, 2008. The complaint further alleges that the patentee failed to disclose these prior sales to the patent examiner during prosecution, giving rise to a claim of inequitable conduct.
Case Timeline
| Date | Event |
|---|---|
| 2006-04-03 | Alleged first use in commerce of "The Mommy Hook" product |
| 2008-01-18 | Priority date of U.S. Design Patent No. D613,583 |
| 2009-05-04 | Application for U.S. Design Patent No. D613,583 filed |
| 2010-04-13 | U.S. Design Patent No. D613,583 issues |
| 2017-08-11 | Defendant files complaint against Cyberush asserting the '583 Patent |
| 2019-08-02 | Plaintiff receives cease and desist letter from Defendant |
| 2019-10-11 | Defendant files patent infringement complaint against Plaintiff in EDTX |
| 2019-11-27 | Plaintiff files this Declaratory Judgment Complaint in D. Del. |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D613,583 - "CARABINER"
- Patent Identification: U.S. Design Patent No. D613,583 (“the ’583 Patent”), titled “CARABINER,” issued on April 13, 2010.
The Invention Explained
- Problem Addressed: As a design patent, the ’583 Patent does not articulate a technical problem. It seeks to protect the purely ornamental, non-functional visual characteristics of a carabiner. However, the complaint alleges that the defendant advertises the product based on its functional utility, such as being "Perfect for strollers and shopping carts" and having a foam grip that "keeps it from slipping or sliding" (Compl. ¶23). This raises the question of whether the design is dictated by function rather than aesthetics.
- The Patented Solution: The patent claims the specific visual appearance of the carabiner as depicted in its figures ('583 Patent, CLAIM, FIGS. 1-6). The design features a large, generally C-shaped body with an asymmetrical curve, a straight, spring-loaded gate on one side, and a thick, cylindrical foam grip covering the main curved portion of the body ('583 Patent, FIG. 1).
- Technical Importance: The claimed design provides a distinct visual appearance for a consumer-grade carabiner intended for carrying bags and other items, differentiating it from standard industrial or climbing carabiners (Compl. ¶¶ 22-23).
Key Claims at a Glance
- The patent asserts a single claim: “The ornamental design for a carabiner, as shown and described.” (’583 Patent, CLAIM).
- The scope of this claim is defined by the visual representations in Figures 1-6 of the patent, which depict the carabiner from perspective, front, top, left, right, and bottom views.
III. The Accused Instrumentality
Product Identification
- The "Aluminum Carabiner" marketed and sold by Plaintiff Jacent (Compl. ¶1).
Functionality and Market Context
- The complaint describes Jacent's product as a retail "impulse" item, commonly placed near checkout counters in stores (Compl. ¶8). The complaint does not provide a direct image of Jacent's accused "Aluminum Carabiner." However, it does include a photo of the defendant's "authentic Mommy Hook" product, which is alleged to be covered by the ’583 Patent. The complaint provides a visual of the Defendant's "The Mommy Hook" product, showing three brightly colored carabiners with foam grips and a straight gate mechanism (Compl. ¶22). This image, taken from a separate lawsuit filed by the Defendant, is presented as evidence of the product that was allegedly sold commercially since 2006 (Compl. ¶22).
IV. Analysis of Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement and, as such, does not provide a claim chart mapping the accused product to the patent claim. Instead, the complaint asserts that "The accused Aluminum Carabiner does not infringe the one and only claim in the '583 Patent" (Compl. ¶51) and that its "ornamentation... differs from the claim" (Compl. ¶14). The central infringement question for the court will be whether an ordinary observer, taking into account the prior art, would find the design of Jacent’s "Aluminum Carabiner" to be substantially the same as the design claimed in the ’583 Patent.
Identified Points of Contention
- Invalidity as a Defense to Infringement: The primary point of contention raised by the complaint is not a feature-by-feature dispute over infringement, but rather a challenge to the patent's validity. Jacent alleges that Defendant’s own "Mommy Hook" product constitutes invalidating prior art, which would narrow the scope of the patent claim and potentially render it invalid entirely (Compl. ¶¶ 20, 27, 39).
- Functionality: A key question will be whether the prominent features of the patented design—such as the large C-shape for fitting on stroller handles and the foam grip for comfort and anti-slip properties—are primarily functional. If the court determines these features are functional, they would be given little to no weight in the infringement analysis, making it more difficult for Defendant to prove that the overall designs are substantially similar (Compl. ¶23).
V. Key Claim Terms for Construction
In a design patent case, claim construction focuses on the visual impression of the drawings as a whole, rather than on specific text. The central issue is determining the scope of the claimed "ornamental design."
- The "Term": The "ornamental design for a carabiner, as shown and described."
- Context and Importance: The interpretation of the design's scope is critical. If key visual elements are deemed functional, they will be excluded from protection. This would narrow the scope of the patent, making a finding of non-infringement more likely and potentially supporting an invalidity defense under 35 U.S.C. § 171 (which bars patents for designs dictated by function).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent itself, by presenting the figures without disclaimers, suggests that all depicted features contribute to the overall ornamental design ('583 Patent, FIGS. 1-6).
- Evidence for a Narrower Interpretation: The complaint alleges that Defendant’s own marketing materials emphasize the functional advantages of the design, such as being "Perfect for strollers and shopping carts" and having a "foam grip [that] keeps it from slipping or sliding" (Compl. ¶23). Parties may argue this is evidence that these features are primarily functional and should be excluded from the scope of the protected ornamental design.
VI. Other Allegations
Inequitable Conduct
- The complaint makes a direct allegation of unenforceability due to inequitable conduct (Compl. ¶¶ 43-47).
- The claim is based on the allegation that the applicant for the ’583 Patent knew of its own prior commercial sales and public use of "The Mommy Hook" product, which allegedly occurred as early as April 2006 (Compl. ¶¶ 27, 46).
- Plaintiff alleges these sales constitute material prior art under the on-sale bar of 35 U.S.C. § 102(b), and that the applicant intentionally withheld this information from the USPTO to deceive the examiner into granting the patent (Compl. ¶¶ 45-46).
- As evidence of materiality, the complaint points to the prosecution history of a related, abandoned patent application, where an examiner allegedly rejected claims after the applicant's prior use was disclosed (Compl. ¶¶ 18, 46).
VII. Analyst’s Conclusion: Key Questions for the Case
This declaratory judgment action appears poised to center on the patent’s viability rather than a direct comparison of product designs. The key questions for the court are:
- A central issue will be one of patent validity: Does the evidence of Defendant's own commercial sales of "The Mommy Hook" product beginning in 2006, as alleged in the complaint, constitute an invalidating on-sale bar under 35 U.S.C. § 102(b), given the patent's 2008 priority date?
- A related dispositive question will be one of enforceability: Did the patent applicant commit inequitable conduct by allegedly failing to disclose its own material prior art sales to the patent office with an intent to deceive?
- The infringement analysis will depend on the scope of the design: To what extent are the visual features of the patented carabiner, such as its large C-shape and foam grip, dictated by function rather than ornamentation? The answer will define the scope of protectable design and shape the comparison with the accused product.