DCT
1:24-cv-23514
Everlasting Candle Co Corp v. Hotel Collection LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Everlasting Candle Co. Corp. (Canada)
- Defendant: Hotel Collection LLC (Florida); Aroma360 LLC (Florida)
- Plaintiff’s Counsel: Brodsky Fotiu-Wojtowicz, PLLC; Knobbe, Martens, Olson & Bear, LLP
- Case Identification: 1:24-cv-23514, S.D. Fla., 09/12/2024
- Venue Allegations: Venue is alleged to be proper as Defendants are Florida-based companies that reside and operate in Miami, Florida, where a substantial portion of the events giving rise to the complaint allegedly occurred.
- Core Dispute: Plaintiff alleges that Defendants’ “Infinity Candle Set” products infringe three U.S. design patents covering ornamental designs for an oil-burning candle apparatus.
- Technical Context: The technology at issue is in the decorative home goods and ambient lighting sector, concerning the aesthetic and ornamental design of oil-burning candles.
- Key Procedural History: The complaint alleges that Defendants had pre-suit knowledge of the asserted intellectual property, stating that Plaintiff "repeatedly notified" Defendants of the infringing nature of their products. It further alleges that individuals using email addresses associated with Defendant Aroma360 purchased Plaintiff's own products prior to Defendants selling the accused "knockoff" products, which may be used to support allegations of willful infringement. The patents-in-suit share a common priority date, as two are derivative of the application that issued as the first patent.
Case Timeline
| Date | Event |
|---|---|
| 2020-08-25 | Priority Date for '847, '501, and '180 Patents |
| 2022-03-21 | First alleged purchase of Plaintiff's products by individuals with Aroma360 email addresses |
| 2023-07-14 | Second alleged purchase of Plaintiff's products by individuals with Aroma360 email addresses |
| 2024-03-12 | U.S. Design Patent No. D1,017,847 Issued |
| 2024-07-30 | U.S. Design Patent No. D1,037,501 Issued |
| 2024-08-13 | U.S. Design Patent No. D1,039,180 Issued |
| 2024-09-12 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D1,017,847 - "Oil Burning Candle Apparatus"
- Patent Identification: U.S. Design Patent No. D1,017,847, "Oil Burning Candle Apparatus", issued March 12, 2024.
The Invention Explained
- Problem Addressed: The complaint frames the product as an effort to "reimagine the traditional candle in a unique and aesthetically pleasing way" (Compl. ¶14).
- The Patented Solution: The patent claims the ornamental design for an oil-burning candle apparatus ('847 Patent, CLAIM). The design, as depicted in the patent's figures, consists of the combination of a transparent, tall, cylindrical vase and three slender, candlestick-like elements that are arranged to cross one another inside the vase and emerge from its opening ('847 Patent, FIG. 1). The broken lines in the figures indicate that the specific flame shape, the internal volume of oil, and the appearance of the candlestick elements between the symbolic break lines are not part of the claimed design ('847 Patent, p. 2, DESCRIPTION).
- Technical Importance: The design represents a specific aesthetic choice in the home decor market, offering an alternative to traditional wax candles or conventional oil lamps (Compl. ¶14).
Key Claims at a Glance
- The complaint asserts the single design claim of the patent (Compl. ¶28).
- The claim covers "The ornamental design for an oil burning candle apparatus, as shown and described" ('847 Patent, CLAIM).
U.S. Design Patent No. D1,037,501 - "Oil Burning Candle Apparatus"
- Patent Identification: U.S. Design Patent No. D1,037,501, "Oil Burning Candle Apparatus", issued July 30, 2024.
The Invention Explained
- Problem Addressed: As with the '847 Patent, the design seeks to provide an "aesthetically pleasing" alternative to traditional candles (Compl. ¶14).
- The Patented Solution: The '501 Patent, which is a continuation of the application leading to the '847 Patent, claims an ornamental design for an oil-burning candle apparatus ('501 Patent, CLAIM; '501 Patent, Related U.S. Application Data). The drawings appear to show the same overall visual arrangement as the '847 Patent: a set of three thin candlesticks crossing within a tall, cylindrical vessel ('501 Patent, FIG. 1).
- Technical Importance: The design contributes a specific visual aesthetic to the field of decorative lighting and home fragrance (Compl. ¶14).
Key Claims at a Glance
- The complaint asserts the single design claim of the patent (Compl. ¶35).
- The claim covers "The ornamental design for an oil burning candle apparatus, as shown and described" ('501 Patent, CLAIM).
U.S. Design Patent No. D1,039,180 - "Oil Burning Candle Apparatus"
- Patent Identification: U.S. Design Patent No. D1,039,180, "Oil Burning Candle Apparatus", issued August 13, 2024.
- Technology Synopsis: This patent claims the ornamental design for an oil-burning candle apparatus, featuring multiple thin candlestick elements arranged within a spherical or globe-shaped vase (’180 Patent, FIG. 1). The design, like the others asserted, aims to provide an aesthetically pleasing alternative to traditional candles (Compl. ¶14).
- Asserted Claims: The complaint asserts the patent’s single design claim (Compl. ¶42).
- Accused Features: The ornamental design of the Defendants' "Globe Infinity Candle Set" is specifically alleged to infringe this patent (Compl. ¶43).
III. The Accused Instrumentality
- Product Identification: The accused products are the "Oval Infinity Candle Set" and the "Globe Infinity Candle Set" (Compl. ¶20).
- Functionality and Market Context: The accused products are decorative candle sets sold by Defendants Hotel Collection and Aroma360. They are comprised of a glass vase (in "Oval" or "Globe" shapes and "Clear" or "Smoke" colors) and a set of metallic "Candlesticks" (in "Gold" or "Black") (Compl. ¶21). A screenshot from Defendants' e-commerce website shows the product options available to consumers (Compl. p. 8). The complaint alleges these are "knockoff products" that copy Plaintiff's own WYLIE and NEVA product lines and that Defendants market them as compatible only with their own "Infinity Oil" (Compl. ¶20, ¶31, ¶38, ¶45).
IV. Analysis of Infringement Allegations
The central test for design patent infringement is whether an "ordinary observer," giving the level of attention a typical purchaser would, would find the accused design to be "substantially the same" as the patented design.
D1,017,847 Infringement Allegations
The complaint alleges that the "Oval Infinity Candle Set" infringes the '847 Patent. A side-by-side visual comparison provided in the complaint shows a patent figure next to four variations of the accused product (Compl. p. 11).
| Claim Element (from Design Claim) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for an oil burning candle apparatus, as shown and described. | The design of the "Oval Infinity Candle Set," which features a combination of a tall, cylindrical glass vase holding three slender, metallic candlesticks that cross each other within the vase and emerge from the top opening. | ¶29 | '847 Patent, Claim; FIG. 1 |
- Identified Points of Contention:
- Scope Questions: The primary dispute will concern the overall visual similarity between the patented design and the accused product. A court may consider whether minor differences in the proportions of the vase, the curvature at the base of the vase, or the precise angle of the candlesticks are sufficient to distinguish the designs in the mind of an ordinary observer.
D1,037,501 Infringement Allegations
The complaint alleges that both the "Oval Infinity Candle Set" and the "Globe Infinity Candle Set" infringe the '501 Patent. The complaint provides visual comparisons of a figure from the '501 Patent with multiple accused product variations, including both oval and globe-shaped vases (Compl. p. 15-16).
| Claim Element (from Design Claim) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for an oil burning candle apparatus, as shown and described. | The design of the "Oval Infinity Candle Set" and the "Globe Infinity Candle Set," which feature a combination of a glass vase and three slender, metallic candlesticks arranged in a crossing pattern. | ¶36 | '501 Patent, Claim; FIG. 1 |
- Identified Points of Contention:
- Scope Questions: A significant question arises from the assertion of the '501 Patent against the "Globe Infinity Candle Set." The figures of the '501 Patent depict a tall, cylindrical vase, not a spherical one ('501 Patent, FIG. 1-3). The infringement analysis will turn on whether the overall visual impression of a design with a cylindrical vase is substantially the same as one with a spherical vase, a question of fact for the court or jury.
V. Key Claim Terms for Construction
In design patent litigation, claim construction is typically not a central issue, as the claim's scope is defined by the drawings rather than by textual limitations. The claim is understood to protect the overall ornamental design shown in the patent's figures.
- "The Claim" as a Whole: "The ornamental design for an oil burning candle apparatus, as shown and described."
- Context and Importance: The analysis will not focus on construing a specific word but on the visual scope of the design as a whole, as depicted in the solid lines of the patent drawings. The dispute will center on comparing the overall visual appearance of the accused products to the patented designs.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue that the design's core, protectable concept is the general arrangement of multiple slender wicks crossing within a transparent vessel, regardless of the vessel's precise shape (e.g., cylindrical vs. spherical).
- Evidence for a Narrower Interpretation: A party might argue that the specific shapes and proportions of the elements shown in the drawings—such as the cylindrical vase in the '847 and '501 patents or the spherical vase in the '180 Patent—are essential to the claimed design and that any deviation is significant to the ordinary observer. The patent's explicit claiming of different embodiments in separate patents ('180 Patent for the globe, '847 for the cylinder) may suggest the patentee viewed these shapes as distinct designs.
VI. Other Allegations
- Willful Infringement: The complaint alleges that Defendants' infringement was and continues to be willful (Compl. ¶30, ¶37, ¶44). The factual bases for this allegation include claims that:
- Individuals with email addresses from Defendant Aroma360 purchased Plaintiff's products on at least two occasions before Defendants began selling the accused products (Compl. ¶19).
- Plaintiff "repeatedly notified" Defendants' representatives that their products infringed the design patents, but Defendants continued their activities (Compl. ¶22, ¶30, ¶37).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this dispute will likely depend on the court's and/or jury's determination of the following key questions:
Visual Similarity: As a core issue of fact, is the overall ornamental appearance of Defendants' "Oval Infinity Candle Set" and "Globe Infinity Candle Set" substantially the same as the designs claimed in the '847, '501, and '180 patents from the perspective of an ordinary purchaser? The side-by-side comparisons presented in the complaint will be central to this analysis.
Scope of Design Protection: A key legal and factual question, particularly regarding the '501 patent's assertion against the "Globe" product, is one of "design scope". Can the ornamental design in the '501 Patent, which depicts a cylindrical vase, be infringed by a product with a spherical vase, or are these visually distinct designs in the eyes of an ordinary observer?
Willfulness and Damages: Given the allegations of copying after purchasing Plaintiff's products and continuing to sell post-notification, a critical question will be one of "intent". If infringement is found, the court will need to determine if the conduct was willful, which could expose Defendants to enhanced damages and an award of their total profits from the infringing sales pursuant to 35 U.S.C. § 289.