DCT
1:18-cv-00256
Decathlon SA v. Alokele Hale LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Decathlon S.A. (France) and Decathlon USA LLC (Delaware)
- Defendant: Alokele Hale LLC, d/b/a H2O Ninja, and Alexander Krivoulian (Hawaii)
- Plaintiff’s Counsel: Goodsill Anderson Quinn & Stifel
- Case Identification: 1:18-cv-00256, D. Haw., 06/29/2018
- Venue Allegations: Venue is alleged to be proper in the District of Hawaii because Defendants are citizens of the district and a substantial part of the alleged infringing acts occurred there.
- Core Dispute: Plaintiff alleges that Defendant’s H2O Ninja Mask infringes a design patent and the associated trade dress for Plaintiff's EASYBREATH full-face snorkeling mask.
- Technical Context: The case involves the consumer sporting goods market, specifically the design of full-face snorkeling masks, which represent an alternative to traditional two-piece mask and snorkel sets.
- Key Procedural History: The complaint alleges that Defendants had knowledge of the asserted patent since at least April 17, 2017, which serves as a basis for the claim of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2013-11-06 | Earliest Priority Date ('722 Patent) |
| 2017-01-03 | Issue Date, U.S. Design Patent No. D775,722 S |
| 2017-04-17 | Alleged date of Defendant's knowledge of the '722 Patent |
| 2018-06-29 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D775,722 S - “Mask with Snorkel,” issued January 3, 2017 (’722 Patent)
The Invention Explained
- Problem Addressed: The complaint asserts that the design of its EASYBREATH mask is "unique" and "distinctive" compared to traditional snorkel masks which use a separate mouth tube (Compl. ¶3, ¶16). Design patents, by their nature, protect ornamental appearance rather than solving a functional problem.
- The Patented Solution: The ’722 Patent claims the specific ornamental design of a full-face mask integrated with a top-mounted snorkel (D’722 Patent, Claim). The claimed design features a large, continuous face lens, a rigid frame surrounding the lens, a breathing tube centered at the top, and a valve structure at the bottom (Compl. ¶16; D’722 Patent, FIG. 1, 2). The combination of these visual elements creates the overall aesthetic appearance protected by the patent.
- Technical Importance: The complaint alleges the design is "instantly recognizable as a Decathlon EASYBREATH mask" and that its "striking and distinctive nature" draws consumer attention (Compl. ¶16, ¶22).
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a mask with snorkel, as shown and described" (D’722 Patent, Claim).
- The scope of the claim is defined by the solid lines in the patent's 14 drawing figures. Key visual elements include:
- The overall ovoid shape of the mask.
- A large, panoramic front lens.
- A snorkel tube integrated into the top center of the mask frame.
- A distinct purge valve housing at the bottom center of the frame.
- The specific contours and proportions of the frame and snorkel components.
III. The Accused Instrumentality
Product Identification
- The accused product is the "H2O Ninja Mask" (Compl. ¶4).
Functionality and Market Context
- The complaint alleges the H2O Ninja Mask is a "knock-off" of Plaintiff's EASYBREATH mask that is "virtually identical in appearance" (Compl. ¶3, ¶4). The accused mask is described as having the same key features as the Plaintiff's product: "a clear, full-face lens surrounded by a rigid frame, a breathing tube centered at the top of the mask...and a valve at the bottom of the mask" (Compl. ¶29).
- A side-by-side visual comparison is provided in the complaint to show the alleged similarity between the products (Compl. p. 9). This image shows two full-face masks, each with a top-mounted snorkel and a similar overall shape and component layout.
- The complaint alleges the accused product is sold in the United States, including through online platforms such as Amazon.com, and is of "poor quality" (Compl. ¶32, ¶35).
IV. Analysis of Infringement Allegations
The standard for design patent infringement is whether an "ordinary observer, giving such attention as a purchaser usually gives," would be deceived into purchasing the accused product believing it to be the patented design (Compl. ¶46). The complaint alleges that the H2O Ninja Mask is "substantially the same as Plaintiff's patented design" under this test (Compl. ¶46).
’722 Patent Infringement Allegations
| Key Ornamental Feature (from D'722 Patent Figures) | Alleged Infringing Feature of the H2O Ninja Mask | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental appearance of a full-face mask with an integrated top-mounted snorkel | The complaint alleges the H2O Ninja Mask is "substantially the same" and a "colorable imitation" of the patented design. | ¶46, ¶49 | FIG. 1-7 |
| A clear, full-face lens surrounded by a rigid frame | The H2O Ninja Mask is alleged to have a "clear, full-face lens surrounded by a rigid frame." | ¶29 | FIG. 2 |
| A breathing tube centered at the top of the mask | The H2O Ninja Mask is alleged to have a "breathing tube centered at the top of the mask." | ¶29 | FIG. 2, 6 |
| A valve at the bottom of the mask | The H2O Ninja Mask is alleged to have a "valve at the bottom of the mask." | ¶29 | FIG. 2, 7 |
Identified Points of Contention
- Scope Questions: A central question will be how the prior art, which is not discussed in the complaint, limits the scope of the patented design. The degree of similarity required for infringement is viewed in the context of what designs previously existed. The analysis will focus on the overall visual impression of the designs, not on a simple checklist of features.
- Technical Questions: The infringement test is from the perspective of an ordinary observer, not a technical expert. The key question is whether the visual differences between the patented design and the H2O Ninja Mask are significant enough to prevent an ordinary observer from finding them substantially similar. The side-by-side comparison provided in the complaint will be a key piece of evidence in this analysis (Compl. p. 9).
V. Key Claim Terms for Construction
This section is not applicable, as design patents claim an overall ornamental design depicted in drawings, not specific textual claim terms that require construction. The scope of the claim is defined by the patent's figures.
VI. Other Allegations
- Indirect Infringement: The complaint includes boilerplate allegations of induced and contributory infringement (Compl. ¶47). However, it does not plead specific facts to support these claims, such as alleging that Defendants instructed others on how to infringe or sold a component that was not a staple article of commerce.
- Willful Infringement: The complaint alleges that Defendants' infringement has been "willful, intentional, and in bad faith" (Compl. ¶48). This allegation is supported by the specific factual assertion that "Defendants have known of the Patent since at least April 17, 2017" (Compl. ¶45).
VII. Analyst’s Conclusion: Key Questions for the Case
- The "Ordinary Observer" Test: Will a fact-finder, viewing the patented design and the accused H2O Ninja Mask side-by-side, conclude that the overall visual impression is "substantially the same," such that an ordinary observer would be deceived?
- Role of Prior Art: How will the landscape of prior art snorkel mask designs affect the scope of the ’722 Patent? The existence of similar prior art could narrow the patent's scope, requiring a closer identity between the accused product and the patented design to support a finding of infringement.
- Willfulness and Damages: Can Plaintiff prove that Defendants had pre-suit knowledge of the ’722 Patent as of the alleged date? If infringement is found, this evidence will be critical to the claims for willful infringement and enhanced damages under 35 U.S.C. § 284 and potentially for an award of infringer's profits under 35 U.S.C. § 289.