DCT
8:18-cv-00852
Bullet Powdercoating LLC v. Twist Aftermarket LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Bullet Powdercoating, LLC; Bullet Concepts, LLC; and Robert Runman (Florida)
- Defendant: Twist Aftermarket, LLC, and Douglas A. Johnson (Florida)
- Plaintiff’s Counsel: Fee & Jeffries, P.A.
- Case Identification: 8:18-cv-00852, M.D. Fla., 04/10/2018
- Venue Allegations: Venue is asserted based on the defendants being subject to personal jurisdiction in the district and because a substantial portion of the events giving rise to the claims occurred there.
- Core Dispute: Plaintiffs seek correction of inventorship for a design patent, alleging their principal is the true inventor, and alternatively seek declaratory judgments of invalidity and non-infringement of that patent.
- Technical Context: The dispute centers on the ornamental design for a vehicle rooftop frame, specifically an aftermarket accessory for the Polaris Slingshot three-wheeled motor vehicle.
- Key Procedural History: The complaint alleges that Plaintiff Robert Runman invented a frame design, disclosed it during business negotiations, and that an associate of his former business partners, Defendant Douglas Johnson, subsequently filed for and obtained a design patent on the same invention, naming himself as the sole inventor. The suit was precipitated by a cease and desist letter sent by Defendant Twist Aftermarket to Plaintiffs.
Case Timeline
| Date | Event |
|---|---|
| 2015-02-01 | Mr. Runman conceives of the frame design (approx. late Jan-early Feb 2015) |
| 2015-02-19 | Mr. Runman allegedly discloses the invention to a potential investor |
| 2015-02-26 | Twist Initiative, LLC is formed by Mr. Runman and business partners |
| 2015-06-15 | A business partner purchases Mr. Runman's interest in Twist Initiative (approx. mid-June) |
| 2015-09-02 | Application for '207 Patent filed |
| 2017-03-14 | '207 Patent issues |
| 2017-11-14 | Defendant Twist Aftermarket sends cease and desist letter to Plaintiffs |
| 2018-04-10 | Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D781,207 S - "Vehicle Rooftop"
- Patent Identification: U.S. Design Patent No. D781,207 S, "Vehicle Rooftop," issued March 14, 2017.
The Invention Explained
- Problem Addressed: The complaint suggests a need for a frame to mount a canvas top on a specific open-cockpit vehicle, the Polaris Slingshot (Compl. ¶9). Design patents do not contain a "background" section, so the technical problem is defined by the context provided in the complaint.
- The Patented Solution: The patent claims the ornamental design for the vehicle rooftop frame itself ('207 Patent, Claim). The design consists of a tubular metal frame with a specific arrangement of bent tubes, cross-members, and mounting points, as depicted in the patent's eight figures ('207 Patent, FIG. 1-8). The overall aesthetic is what is protected, not the functional aspects of providing a roof.
- Technical Importance: The design provides a unique aesthetic for a niche aftermarket accessory, differentiating it in the custom automotive market (Compl. ¶¶ 2, 9).
Key Claims at a Glance
- Design patents have a single claim, which is directed to the ornamental design as shown in the drawings.
- Claim 1: "The ornamental design for a vehicle rooftop, as shown and described." (’207 Patent, p. 1, col. 2:1-2).
- The "elements" of a design patent claim are the collective visual features shown in the figures, which create the overall ornamental appearance. They are not parsed as distinct text-based limitations.
III. The Accused Instrumentality
Product Identification
- The "Accused Product" is a frame for mounting a canvas top on a Polaris Slingshot vehicle, which Plaintiff Bullet Concepts, LLC manufactures and sells (Compl. ¶¶ 9, 37).
Functionality and Market Context
- The complaint alleges that the Accused Product is the physical embodiment of the very same "Invention" that Mr. Runman conceived and which is claimed in the '207 Patent (Compl. ¶¶ 11, 28). Therefore, the complaint does not allege visual or functional differences between the patented design and the accused product; rather, it asserts that they are one and the same, originating from Mr. Runman's inventive work (Compl. ¶ 28).
IV. Analysis of Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement. The infringement allegations summarized below are those made by the Defendant, Twist Aftermarket, in its pre-suit cease and desist letter, as described by the Plaintiffs in their complaint (Compl. ¶¶ 27, 50). The Plaintiffs' primary argument for non-infringement is not based on a lack of visual similarity, but on the patent's alleged invalidity due to improper inventorship (Compl. ¶¶ 52-53).
No probative visual evidence provided in complaint.
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a vehicle rooftop, as shown and described. | The complaint states that Defendant Twist Aftermarket asserted in a cease and desist letter that the "Accused Product infringes the '207 Patent." Plaintiffs allege the Accused Product embodies the invention conceived by Mr. Runman, and that this invention is the same as the one claimed in the patent. | ¶¶27-28, 50 | p. 1, col. 2:1-15 |
- Identified Points of Contention:
- Legal Question: The central dispute is not a visual comparison of the accused product to the patented design. Instead, the dispositive question is a legal one: can Plaintiffs be held to infringe a design patent which they allege was improperly obtained by deriving the design from their own inventor, Mr. Runman? (Compl. ¶¶ 32, 52).
- Factual Question: The case will depend on evidence corroborating Mr. Runman's conception of the design prior to the involvement of the named inventor, Mr. Johnson, and the subsequent disclosure and alleged derivation of that design (Compl. ¶¶ 9, 12, 14).
V. Key Claim Terms for Construction
In a design patent, claim construction is secondary to the overall visual impression. There are no disputed technical terms whose construction is central to the infringement analysis as presented in the complaint. The primary dispute is over inventorship, not the meaning of claim language. However, one term defines the scope of the article of manufacture.
- The Term: "vehicle rooftop"
- Context and Importance: This term defines the article of manufacture to which the ornamental design is applied. Its scope determines what types of products the design can be asserted against. Here, the context is undisputed, as both parties' products are rooftops for the Polaris Slingshot vehicle (Compl. ¶9). The construction of "vehicle" is not a point of contention in this specific dispute but would be critical if the design were asserted against, for example, a golf cart or a boat canopy.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term "vehicle" is used without any limiting modifiers in the patent's title and claim, which could suggest applicability to a range of vehicles beyond the one for which it was originally designed.
- Evidence for a Narrower Interpretation: The specific shapes, proportions, and mounting points depicted in the patent figures ('207 Patent, FIG. 1-8) are clearly tailored to a particular type of vehicle body, which could be used to argue that the design is limited to the specific context of a three-wheeled vehicle like the Polaris Slingshot mentioned in the complaint (Compl. ¶9).
VI. Other Allegations
- Indirect Infringement: The complaint does not provide sufficient detail for analysis of any indirect infringement theories that may have been asserted by the Defendant.
- Willful Infringement: The complaint does not accuse the Defendants of willful infringement. However, it does allege that the Defendants' conduct constitutes an "exceptional case" warranting an award of attorneys' fees under 35 U.S.C. § 285 (Compl. ¶¶ 47, 55). The basis for this allegation is the assertion that Defendant Johnson and Twist Initiative knew Mr. Runman was the true inventor when applying for the patent and did so with "intent to deceive the PTO" (Compl. ¶44).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this case appears to hinge on questions of fact and law that precede a typical infringement analysis.
- A core issue will be one of inventorship and derivation: Does the evidence establish that Mr. Runman conceived of the patented design and that the named inventor, Mr. Johnson, derived the design from Mr. Runman, rather than independently conceiving it?
- A second key question is one of patent validity: If inventorship is found to be incorrect, was the omission of Mr. Runman a result of deceptive intent on the part of the applicants? Such a finding could render the '207 Patent invalid or unenforceable.
- Finally, the question of infringement is consequential: The parties appear to agree on the visual identity of the accused product and the patented design. Therefore, the infringement determination will likely be a legal conclusion that follows directly from the court's decisions on inventorship and validity.