TAC Operating Co v. Protective Enclosures Co LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: TAC Operating Company dba PC Enclosures (Utah) and Stormshell LLC (Utah)
  • Defendant: Protective Enclosures Company LLC (Florida)
  • Plaintiff’s Counsel: Workman Nydegger
• Case Identification: 6:23-cv-01534, M.D. Fla., 08/10/2023
• Venue Allegations: Venue is alleged to be proper in the Middle District of Florida because the Defendant, a Florida LLC, resides in the district, maintains its principal place of business there, has a registered agent, and employs individuals within the district.
• Core Dispute: Plaintiffs allege that the ornamental design of Defendant’s television enclosures infringes a design patent, and further bring claims for trademark infringement, false advertising, and unfair competition.
• Technical Context: The technology at issue involves protective, weather-resistant enclosures designed to house television displays for outdoor or harsh-environment use.
• Key Procedural History: The complaint alleges that Plaintiff Stormshell has been selling products incorporating the claimed design since August 2018. This date is more than one year prior to the patent’s effective filing date of May 30, 2019, which may raise questions for the court regarding the on-sale bar to patentability under 35 U.S.C. § 102.

Case Timeline

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

U.S. Design Patent No. D879,751 - "Display Enclosure"

• Patent Identification: U.S. Design Patent No. D879,751, "Display Enclosure," issued March 31, 2020 (Compl. ¶31).

The Invention Explained

• Problem Addressed: Design patents address aesthetic rather than functional problems. The implicit problem is the need for a new, original, and ornamental design for a protective display enclosure to distinguish it visually in the marketplace.
• The Patented Solution: The patent claims the specific ornamental design for a display enclosure as depicted in its figures (D879,751 Patent, Claim). The design consists of the visual characteristics of a rectangular, clamshell-style housing with rounded corners and, most prominently, a repeating pattern of parallel, horizontal, recessed panels that cover the majority of the front and back surfaces (D879,751 Patent, Figs. 2, 3). The complaint describes the design as comprising "clamshell front and back covers" and "vertical indentations extending the length of the covers" (Compl. ¶39).
• Technical Importance: The complaint alleges that Plaintiffs were pioneers in the field of display shields and that their products are "well-known and recognized in the industry for their exceptional quality and durability," suggesting that unique product designs hold market significance (Compl. ¶¶ 14-15).

Key Claims at a Glance

• The single claim asserted is for: "The ornamental design for a display enclosure, as shown and described" (D879,751 Patent, Claim).
• The essential ornamental elements of the claimed design include:
  • The overall rectangular, clamshell configuration.
  • The rounded corners and edges of the housing.
  • A series of parallel, horizontal, elongated recessed panels on the front surface.
  • A similar series of parallel, horizontal, elongated recessed panels on the back surface.

III. The Accused Instrumentality

Product Identification

• Defendant's "The TV Shield E-Series" line of products (Compl. ¶3).

Functionality and Market Context

• The accused instrumentalities are protective outdoor television enclosures offered in multiple sizes (Compl. ¶37). The complaint alleges that they are sold and advertised by the Defendant, a direct competitor of the Plaintiffs in the display shield market (Compl. ¶¶ 3, 23). The complaint includes several images of the accused E-Series products, including a side-by-side comparison with the patented design (Compl. p. 12). The complaint provides a visual showing the front, back, and open configuration of the accused E-Series product (Compl. p. 12).

IV. Analysis of Infringement Allegations

The complaint alleges that the accused E-Series infringes the ’751 Patent because "to an ordinary observer, the two designs are substantially the same" (Compl. ¶38). The infringement theory is supported by a side-by-side visual comparison between the patent figures and photos of the accused product (Compl. p. 12). While design patent infringement is not typically presented in a claim chart format, the complaint's core allegations mapping the design features can be summarized as follows.

• Identified Points of Contention:
  • Scope Questions: The primary legal question for the court will be whether an ordinary observer, taking into account the prior art, would find the design of the accused E-Series to be substantially the same as the design claimed in the ’751 Patent. The analysis will focus on the overall visual impression created by the combination of claimed features.
  • Technical Questions: A significant factual discrepancy exists within the complaint itself. It textually alleges the design features "vertical indentations" (Compl. ¶39), while the visual evidence provided for both the patented design and the accused product clearly depicts horizontal indentations (Compl. p. 12; ’751 Patent, Fig. 2). This raises a question about the precision and accuracy of the infringement allegations as pleaded.

V. Key Claim Terms for Construction

In a design patent case, claim construction focuses on the scope of the claimed design as a whole, rather than on discrete textual terms.

• The "Term": The scope of "the ornamental design for a display enclosure, as shown and described."
• Context and Importance: The definition of the design's scope is the central issue. The court's interpretation will determine which visual elements are protected and to what degree of specificity. Practitioners may focus on this issue because the outcome of the "ordinary observer" test depends entirely on what features are considered part of the protected design and how those features are weighed in the overall comparison.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent disclaims through broken lines certain functional elements like internal mounting structures and external hardware, suggesting the protected design is primarily the overall shape and surface ornamentation of the housing itself, independent of these specific functional components (D879,751 Patent, Figs. 8, 17).
  • Evidence for a Narrower Interpretation: The figures consistently and precisely depict the shape, arrangement, and style of the horizontal recessed panels. An argument could be made that the claim is limited to this specific configuration, number, and appearance of indentations, and does not cover "indentations" in general (D879,751 Patent, Figs. 2, 3).

VI. Other Allegations

• Willful Infringement: The complaint alleges that Defendant's infringement is "knowing and willful" because Defendant allegedly continued to sell the accused E-Series after Plaintiff Stormshell "notified Defendant of the infringement" (Compl. ¶40). This allegation suggests a basis for willfulness based on both pre-suit and post-suit knowledge.

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

• A threshold issue will be one of patent validity: does the Plaintiff's own allegation of selling products incorporating the patented design since August 2018—more than one year prior to the May 30, 2019 patent filing date—create an invalidating on-sale bar under 35 U.S.C. § 102?
• The central infringement question will be one of visual comparison: considering the relevant prior art, would an ordinary observer be deceived into believing the accused E-Series product is the same as the design claimed in the ’751 Patent, focusing on the overall visual impression created by the shape and surface ornamentation?
• A key litigation question may be one of pleading sufficiency: does the complaint’s explicit—and apparently erroneous—textual description of the design’s primary feature as “vertical indentations” (Compl. ¶39), when all visual evidence shows horizontal indentations, affect the plausibility or legal sufficiency of the infringement claim?