DCT
1:16-cv-02651
Twelve South LLC v. Spinido Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Twelve South, LLC (South Carolina)
- Defendant: Spinido, Inc. (Colorado)
- Plaintiff’s Counsel: Baker, Donelson, Bearman, Caldwell & Berkowitz, PC
- Case Identification: 1:16-cv-02651, N.D. Ga., 07/21/2016
- Venue Allegations: Venue is alleged to be proper in the Northern District of Georgia because Defendant Spinido, Inc. has transacted business and sold products that allegedly constitute infringement within the district.
- Core Dispute: Plaintiff alleges that Defendant’s "TI-SET" docking station infringes a design patent that protects the ornamental appearance of Plaintiff's "HiRise" charging pedestal.
- Technical Context: The dispute is in the consumer electronics accessories market, specifically concerning the ornamental design of stands for portable devices such as smartphones.
- Key Procedural History: The complaint notes that Plaintiff sent Defendant a cease and desist letter on February 26, 2016, asserting its rights in the patented design. The complaint alleges that the correspondence was returned as undeliverable and that Defendant did not respond.
Case Timeline
| Date | Event |
|---|---|
| 2014-01-22 | U.S. Design Patent No. D713,399 Priority Date (Filing Date) |
| 2014-09-16 | U.S. Design Patent No. D713,399 Issue Date |
| 2016-02-01 | Plaintiff's approximate discovery of Defendant's accused product |
| 2016-02-26 | Plaintiff sends cease and desist letter to Defendant |
| 2016-07-21 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D713,399 - Stand for cell phone or portable computing device
- Patent Identification: U.S. Design Patent No. D713,399, Stand for cell phone or portable computing device, issued September 16, 2014.
The Invention Explained
- Problem Addressed: The complaint asserts the "novelty and originality of the HiRise design" as a key market differentiator, suggesting a need for a distinctive ornamental appearance for a charging stand in a competitive market (Compl. ¶10, ¶14).
- The Patented Solution: The patent protects the specific visual and ornamental characteristics of a stand for a portable electronic device, not its functional aspects (’399 Patent, Claim). The design consists of a flat, generally rectangular base with rounded corners, a vertical support post rising from the base, and a smaller, angled support shelf to hold a device, with all elements having the specific proportions and curvatures depicted in the patent's figures (’399 Patent, FIG. 1, FIG. 4). The broken lines in the drawings indicate that the charging cable and connector are not part of the claimed design (’399 Patent, DESCRIPTION).
- Technical Importance: The complaint alleges that the product embodying the patented design has been commercially successful, with sales of over 450,000 units, and that its "distinctive design" provides "differentiation to other competitors' designs" (Compl. ¶14, ¶15).
Key Claims at a Glance
- The patent asserts a single claim: "The ornamental design for a stand for a cell phone or portable computing device, as shown and described." (’399 Patent, Claim).
- As a design patent, the claim is defined by the visual appearance of the article depicted in the drawings. Its essential visual elements are:
- A generally rectangular, flat base with rounded corners.
- A vertical support member extending upward from the rear portion of the base.
- An angled shelf member, projecting from the vertical support, on which a device rests.
- The specific proportions, contours, and overall visual impression created by the combination of these elements as shown in the solid lines of the patent figures.
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is Defendant's "TI-SET docking/charging station" (Compl. ¶23).
Functionality and Market Context
- The TI-SET is a stand designed for charging and hands-free use of electronic devices (Compl. ¶23). The complaint alleges that the product is sold through online consumer websites such as Amazon.com, the same marketplace used by the Plaintiff (Compl. ¶22, ¶35). The complaint provides a side-by-side visual comparison of a drawing from the ’399 Patent, a photograph of Plaintiff's HiRise product, and a photograph of Defendant's accused TI-SET product (Compl. ¶28). The complaint characterizes the accused product as a "knock-off" of the Plaintiff's HiRise product (Compl. ¶24).
IV. Analysis of Infringement Allegations
Design patent infringement is determined by the "ordinary observer" test, which assesses whether an ordinary observer would believe the accused design is the same as the patented design. The complaint alleges that the design of the TI-SET is "the same or substantially the same" as the design protected by the ’399 Patent (Compl. ¶25).
’399 Patent Infringement Allegations
| Claimed Design Feature (from ’399 Patent Figures) | Alleged Infringing Feature of the TI-SET | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design as shown and described. | The design of the TI-SET is "the same or substantially the same as the protected design," and the designs are "so similar as to be nearly identical." | ¶25, ¶29 | FIGS. 1-6 |
| A flat, generally rectangular base with rounded corners. | The TI-SET product incorporates a base with a shape and profile that the complaint alleges is substantially the same as the patented design, as depicted in the provided visual comparison. | ¶28, ¶29 | FIG. 1 |
| A vertically-oriented support post extending from the rear of the base. | The TI-SET product incorporates a vertical support post with a similar size, shape, and placement relative to the base as shown in the patented design. | ¶28, ¶29 | FIG. 1, FIG. 4 |
| An angled device support shelf projecting from the vertical post. | The TI-SET product incorporates an angled support shelf with similar proportions and orientation as the one depicted in the patented design. | ¶28, ¶29 | FIG. 1, FIG. 4 |
Identified Points of Contention
- Scope Questions: The central legal and factual question will be the application of the "ordinary observer" test. The court will need to determine if an ordinary observer, giving the matter such attention as a purchaser usually gives, would be deceived by the similarity between the accused TI-SET product and the patented design, inducing them to purchase the TI-SET believing it to be the product embodying the patented design (Compl. ¶44).
- Technical Questions: The analysis will focus on a visual comparison of the products. A key question is whether any minor differences in proportion, curvature, or surface finish between the accused TI-SET and the design shown in the ’399 Patent's figures are sufficient to create a different overall visual impression in the mind of an ordinary observer.
V. Key Claim Terms for Construction
In design patent cases, there are typically no claim terms to construe in the same manner as utility patents. The "claim" is the visual design itself. The primary issue is the scope of the claimed design as defined by the patent's drawings.
- The Term: "The ornamental design for a stand... as shown and described."
- Context and Importance: The scope of the claimed design is critical. The infringement analysis depends entirely on whether the accused product's design falls within the visual scope defined by the solid lines in the patent's figures. Practitioners may focus on this as it determines whether small variations in the accused product are sufficient to avoid infringement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The complaint argues for a broad interpretation of the design's scope by alleging that the designs are "substantially the same" and would deceive an ordinary observer, suggesting that the overall visual impression, rather than minor details, should control the analysis (Compl. ¶25, ¶29).
- Evidence for a Narrower Interpretation: The precise scope of the claim is defined by the solid lines in the patent's drawings (’399 Patent, FIGS. 1-6). Any deviation from the specific shapes, proportions, and contours shown could support an argument that the accused design is different. Further, the explicit disclaimer of the cable and connector via broken lines narrows the protected design to only the stand structure itself (’399 Patent, DESCRIPTION).
VI. Other Allegations
- Indirect Infringement: The complaint's prayer for relief seeks an injunction against "actively inducing infringement" (Prayer for Relief ¶b.i). However, the factual allegations in the body of the complaint focus exclusively on direct infringement through making, using, and selling, and do not provide a specific factual basis for an inducement claim (Compl. ¶43).
- Willful Infringement: The complaint alleges that Spinido's infringement was willful and deliberate (Compl. ¶31, ¶48). This allegation is based on Spinido's alleged continued infringement after receiving actual notice of the ’399 Patent via a cease and desist letter sent on February 26, 2016 (Compl. ¶41-42).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual similarity: In the eyes of an ordinary observer familiar with the prior art, is the overall ornamental appearance of the accused Spinido TI-SET product "substantially the same" as the design claimed in the ’399 Patent, such that the observer would be deceived?
- A key question for damages will be one of willfulness: Does the allegation that Spinido continued its accused activities after receiving a cease and desist letter in February 2016 support a finding of willful infringement, potentially leading to enhanced damages?
- A critical question for remedies will center on disgorgement of profits: If infringement is found, will the court determine that Twelve South is entitled to an award of Spinido's total profits from sales of the infringing product, a remedy available specifically for design patent infringement under 35 U.S.C. § 289 and requested by the Plaintiff (Compl. ¶47)?