DCT
1:20-cv-00182
Aoren Endeavors LLC v. HiGear Design Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Aoren Endeavors LLC (Hawaii)
- Defendant: HiGear Design, Inc. (California) and John Mittelstadt (California)
- Plaintiff’s Counsel: Thorpe North & Western LLP
- Case Identification: 1:20-cv-00182, D. Haw., 04/23/2020
- Venue Allegations: Plaintiff Aoren alleges venue is proper in the District of Hawaii because Defendants purposefully directed activities at the state, including sending a cease and desist letter to Aoren in Hawaii, causing the removal of Aoren's product listings on Amazon, and selling products to Hawaii residents through an interactive website.
- Core Dispute: This is a declaratory judgment action in which Plaintiff seeks a court ruling that its "Dream Sling" travel pillow does not infringe Defendants' utility and design patents, coupled with claims that Defendants engaged in tortious interference and unfair competition by causing Plaintiff's products to be removed from e-commerce platforms.
- Technical Context: The dispute centers on the market for portable travel pillows designed to provide head and neck support for seated individuals, such as airline passengers.
- Key Procedural History: The complaint alleges that after Plaintiff Aoren began successfully selling its "Dream Sling" pillow, Defendant HiGear reported Aoren to Amazon for patent infringement, resulting in the removal of Aoren's product listings. Aoren alleges that HiGear repeatedly failed to provide a substantive basis for its infringement allegations and subsequently launched its own "i-Lene" pillow, which Aoren characterizes as a copy of the Dream Sling.
Case Timeline
| Date | Event |
|---|---|
| 2007-07-28 | Priority Date for U.S. Patent No. 7,758,125 |
| 2008-08-11 | Filing Date for U.S. Design Patent No. D599,150 |
| 2009-09-01 | U.S. Design Patent No. D599,150 Issues |
| 2010-07-20 | U.S. Patent No. 7,758,125 Issues |
| 2013 | Plaintiff's founder devises the "Dream Sling" pillow |
| 2016-02-16 | Plaintiff's U.S. Design Patent No. D749339 Issues |
| 2016-08-09 | Plaintiff's U.S. Patent No. 9,408,471 Issues |
| 2017-02-15 | Defendants file patent application for "i-Lene" pillow |
| 2018-04-25 | Amazon removes Plaintiff's "Dream Sling" listing |
| 2018-05-17 | Defendants send cease and desist letter to Plaintiff |
| 2018-11-15 | Defendants begin selling the "i-Lene" pillow on Amazon |
| 2019-06-11 | Defendants' U.S. Patent No. 10,314,402 Issues |
| 2020-04-23 | Complaint for Declaratory Judgment Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,758,125 - Portable Support Including a Pillow
Issued July 20, 2010
The Invention Explained
- Problem Addressed: The patent identifies a need for a versatile travel pillow that can provide lateral head support for a seated person without being limited to attachment to a seat back (’125 Patent, col. 1:19-23, 47-51).
- The Patented Solution: The invention is an elongated pillow, larger at its upper end, with connectors at both ends (’125 Patent, col. 1:56-65). These connectors provide two primary modes of use: the pillow can be tethered to a seat back, or the two ends can be connected to each other, forming a "closed loop configuration" that a user wears over a shoulder and across the chest like a sash to provide support (’125 Patent, col. 3:9-24). This allows the pillow to be supported by the user's own body.
- Technical Importance: The design's dual-mode functionality offered travelers an alternative to pillows that relied solely on seat-based attachment points, increasing its usability across different travel environments (’125 Patent, col. 1:47-51).
Key Claims at a Glance
- The complaint seeks a declaratory judgment of non-infringement of the ’125 Patent without specifying claims (Compl. ¶31). Independent claim 1 is representative of the core invention.
- Independent Claim 1 requires:
- An elongated pillow with a first end portion that is larger than the second and projects laterally for positioning over a shoulder.
- A first connector structure attached to the first pillow end portion.
- A second connector structure attached to the second pillow end portion.
- The connectors are for "selectively alternatively connecting" the pillow ends either to a seat or to each other.
U.S. Design Patent No. D599,150 - Portable Support Pillow
Issued September 1, 2009
The Invention Explained
- Problem Addressed: Design patents do not articulate a technical problem; they protect the novel, non-functional, ornamental characteristics of an article of manufacture.
- The Patented Solution: The patent claims the specific visual appearance of a travel pillow as depicted in its figures (’150 Patent, Figs. 1-7). The design is characterized by a unitary, curved, J-shaped body that is wider and bulbous at the top (the hook of the "J") and tapers toward a narrower, straighter lower portion.
- Technical Importance: The patent protects the unique aesthetics of the pillow design, distinguishing it from other pillows based on its look rather than its function.
Key Claims at a Glance
- Design patents contain a single claim. The claim is for "The ornamental design for a portable support pillow, as shown and described" (’150 Patent, Claim).
III. The Accused Instrumentality
Product Identification
Plaintiff's "Dream Sling" travel pillow (Compl. ¶10).
Functionality and Market Context
- The complaint describes the Dream Sling as a travel pillow that uses a "sling strap to stably support a person’s forearm(s) as a counterweight," which in turn generates a supporting force from the pillow against the user's head or neck (Compl. ¶10). The product's asserted mechanism of action relies on using the weight of the user's arm in a sling to hold the pillow in place. This is demonstrated in a product image showing a user with their arm resting in a strap connected to the pillow. (Compl. p. 4, "Dream Sling Photos and Instruction Manual").
- Aoren alleges that the Dream Sling was gaining "stellar Amazon customer feedback, and sales were steadily increasing" prior to Defendants' actions that led to its removal from the platform (Compl. ¶12).
IV. Analysis of Infringement Allegations
The complaint states that Plaintiff Aoren provided Defendants with exemplary claim charts in Exhibits 6 and 7 demonstrating non-infringement, but these exhibits were not attached to the complaint as filed (Compl. ¶27, ¶32). The analysis is therefore based on the complaint's narrative arguments.
’125 Patent Infringement Allegations
Aoren's central argument for non-infringement of the ’125 Patent appears to be a fundamental mismatch between the function of its "sling strap" and the claimed "connector structure" (Compl. ¶10, ¶16). The patent claims a connector system for either attaching the pillow to a seat or for connecting the pillow's two ends to form a wearable loop around the user's torso (’125 Patent, col. 5:1-14). In contrast, Aoren asserts its Dream Sling utilizes a strap for a different purpose: to create a sling that supports the user's arm, using the arm's weight as a counterweight to secure the pillow (Compl. ¶10). A visual comparison in the complaint contrasts the alleged copycat product's instructions for making a sling with the Dream Sling's instructions for resting an arm in the sling. (Compl. p. 12, "Dream Sling Photos and Instruction Manual"). This distinction in the mechanism of operation and structural purpose may form the primary basis for Aoren's non-infringement position.
’150 Patent Infringement Allegations
For the ’150 design patent, infringement is determined by the "ordinary observer" test, which asks whether an ordinary observer would find the design of the accused product to be substantially the same as the patented design. Aoren denies that the Dream Sling infringes, which suggests it believes the products are not visually confusingly similar (Compl. ¶27). The complaint provides images of both the Dream Sling and Defendants' product which embodies the patented design (Compl. p. 4, p. 7). A comparison of these images raises the question of whether the overall visual impression of the two products is the same. For example, the complaint's image of the Dream Sling depicts a distinct pillow element and a separate-looking strap element (Compl. p. 4), whereas the patented design appears as a more integrated, singular J-shaped form (’150 Patent, Fig. 1).
V. Key Claim Terms for Construction
- The Term: "connector structure" (from ’125 Patent, Claim 1)
- Context and Importance: The interpretation of this term appears central to the dispute. Aoren's non-infringement argument likely depends on establishing that its arm "sling strap" does not meet the definition of the claimed "connector structure." Practitioners may focus on this term because its construction could determine whether a strap designed as an arm counterweight falls within the scope of a claim requiring a structure for seat attachment or for forming a wearable torso loop.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself is broad, simply reciting "connector structure." The specification also refers generally to a "flexible strap" (e.g., ’125 Patent, col. 3:60), which could be argued to encompass a variety of strap-like components.
- Evidence for a Narrower Interpretation: The patent repeatedly describes the specific function of the "connector structure" as enabling two alternative modes: attachment to a seat back via a "tether" or connecting the pillow's two ends to form a "closed loop configuration" worn by the user (’125 Patent, col. 3:9-18, col. 3:28-40). This functional context may support a narrower construction limited to structures that perform one or both of these specific connection functions, potentially excluding a strap that serves only as an arm sling.
VI. Other Allegations
- Indirect Infringement: The complaint does not provide sufficient detail for analysis of any indirect infringement allegations made by Defendants against Plaintiff.
- Willful Infringement: The complaint does not provide sufficient detail for analysis of any willful infringement allegations made by Defendants against Plaintiff. Instead, the complaint alleges that Defendants' own enforcement conduct was objectively baseless and undertaken in bad faith (Compl. ¶19, ¶55).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction and functional difference: Can the term "connector structure" in the ’125 patent, which the specification describes as enabling seat attachment or the formation of a wearable torso loop, be construed to read on the Dream Sling's "sling strap," which the complaint alleges serves the distinct technical function of an arm counterweight?
- A key question for the design patent claim will be one of visual identity: Would an ordinary observer, comparing the patented design with the Dream Sling pillow, be deceived into believing the two products are the same, or are their overall ornamental appearances, as depicted in the complaint, sufficiently distinct to avoid infringement?
- A central theme of the case, extending beyond patent law, will be the propriety of pre-suit enforcement: The court will likely have to determine whether Defendants' infringement reports to Amazon were based on a good-faith, objectively reasonable belief that the patents were infringed, or whether, as Aoren alleges, they constituted tortious interference and unfair competition designed to eliminate a competitor from the market. The resolution of the patent claims will likely be highly influential on these related counts.