DCT
0:19-cv-60270
Static Media LLC v. Ojcommerce LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Static Media LLC (Georgia)
- Defendant: OJCommerce, LLC (Florida)
- Plaintiff’s Counsel: Fisherbroyles, LLP
- Case Identification: 0:19-cv-60270, S.D. Fla., 02/14/2019
- Venue Allegations: Venue is asserted based on Defendant's principal place of business being located in the Southern District of Florida, as well as its business operations and alleged tortious acts within the state.
- Core Dispute: Plaintiff alleges that Defendant’s "Naomi Home Bench Riders Stadium Folding Seat" infringes a design patent covering the ornamental appearance of a stadium seat.
- Technical Context: The dispute concerns the aesthetic design of portable stadium seats, a consumer product category where visual appearance can be a key market differentiator.
- Key Procedural History: The complaint notes that the patent-in-suit was assigned from the inventor to the Plaintiff. It also alleges that Plaintiff provided Defendant with written notice of infringement approximately four months prior to filing the lawsuit, a fact that may be used to support claims for willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2015-03-04 | 'D400 Patent Priority Date |
| 2016-11-15 | U.S. Patent No. D771,400 issues |
| 2017-09-10 | 'D400 Patent assigned from inventor to Plaintiff |
| 2018-10-09 | Plaintiff provides pre-suit notice of infringement to Defendant |
| 2019-02-14 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D771,400 - "STADIUM SEAT," issued November 15, 2016
The Invention Explained
- Problem Addressed: Design patents protect ornamental appearance rather than functional solutions to technical problems. The 'D400 patent does not describe a technical problem but instead claims rights to a new, original, and ornamental design for a stadium seat (Compl. ¶1; ’D400 Patent, Claim).
- The Patented Solution: The patent protects the specific visual appearance of a stadium seat as depicted in its eight figures (’D400 Patent, DESCRIPTION, Figs. 1-8). The design features a foldable configuration with rectangular seat and back cushions, a visible frame structure, and a prominent hook on the bottom for securing the seat to a bleacher (’D400 Patent, Fig. 4). The scope of protection is defined by the overall visual impression created by these illustrated features, not their utilitarian function (’D400 Patent, col. 1:57-59).
- Technical Importance: The patent grants the owner the right to exclude others from making, using, or selling articles that embody the claimed ornamental design, thereby protecting a specific aesthetic in the consumer marketplace for portable seating (Compl. ¶10).
Key Claims at a Glance
- The patent contains a single claim: “The ornamental design for the stadium seat, as shown and described” (’D400 Patent, col. 1:57-59).
- The scope of this claim is defined by the visual representations in Figures 1 through 8 of the patent. The infringement analysis for a design patent centers on a comparison of the overall appearance of the accused product to the patented design as a whole.
III. The Accused Instrumentality
Product Identification
- The accused product is the "Naomi Home Bench Riders Stadium Folding Seat" (Compl. ¶11).
Functionality and Market Context
- The complaint identifies the accused product as a stadium seat that Defendant distributes, sells, and markets in the United States (Compl. ¶11). It is allegedly sold through Defendant’s own website as well as through major third-party online retailers, including Walmart and eBay (Compl. ¶11, fn. 1-3). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint does not contain a claim chart. The infringement theory is based on the legal standard for design patent infringement, which is whether an ordinary observer would find the two designs substantially the same. The complaint alleges that "To the eye of an ordinary observer, the ornamental designs and features of the Accused Product is substantially the same as those claimed in the ‘D400 Patent as a whole" (Compl. ¶12). It further alleges that OJCommerce has "applied the patented design claimed in the ‘D400 Patent, or a colorable imitation thereof, to the articles of manufacture constituting the Accused Product" (Compl. ¶13).
- Identified Points of Contention:
- Visual Comparison: The central dispute will involve a direct visual comparison between the design shown in the ’D400 Patent's figures and the design of the accused "Naomi Home Bench Riders Stadium Folding Seat." The key question for the court will be whether the overall visual impression of the accused product is "substantially the same" as the patented design.
- Colorable Imitation: The complaint's use of the phrase "colorable imitation" suggests a potential argument that even if minor differences exist, the accused product appropriates the novelty of the patented design, which deceives the ordinary observer (Compl. ¶13).
V. Key Claim Terms for Construction
Claim construction, the process of defining the meaning of disputed terms in a patent claim, is not typically a central issue in design patent litigation. The "claim" is understood to be the visual design depicted in the patent's figures as a whole, rather than a set of text-based limitations. The complaint does not identify any specific terms for construction, and the dispute is expected to focus on the visual comparison of the designs rather than the definition of any particular word.
VI. Other Allegations
- Indirect Infringement: The complaint alleges direct infringement under 35 U.S.C. § 271 but does not contain separate allegations for indirect infringement (i.e., induced or contributory infringement) (Compl. ¶19).
- Willful Infringement: The complaint alleges that Defendant’s infringement "has been and continues to be willful, deliberate and intentional" (Compl. ¶23). This allegation is based on the assertion that Defendant had "prior knowledge of the ‘D400 Patent" and continued to sell the accused product after receiving written notice of infringement from Static Media on October 9, 2018 (Compl. ¶¶15, 16).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this case will likely depend on the answers to two primary questions:
- A core issue will be one of visual similarity: In the judgment of an ordinary observer, is the overall ornamental appearance of Defendant's stadium seat substantially the same as the design claimed in the 'D400 patent, such that the observer would be deceived into purchasing one supposing it to be the other?
- A key damages question will be one of willfulness: Does the evidence show that Defendant continued its allegedly infringing conduct after receiving actual notice of the 'D400 patent on October 9, 2018, thereby justifying a finding of willful infringement and potential enhancement of damages?