DCT
1:20-cv-07643
Controlled Entry Distributions Inc v. Master Remotes Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Controlled Entry Distributors, Inc. (Utah) and Transmitter Solutions, LLC (Nevada)
- Defendant: Master Remotes, Inc. (Illinois)
- Plaintiff’s Counsel: Levun, Goodman & Cohen, LLP; Dorsey & Whitney LLP
- Case Identification: 1:20-cv-07643, N.D. Ill., 12/22/2020
- Venue Allegations: Venue is alleged to be proper in the Northern District of Illinois because the Defendant is an Illinois corporation with a principal place of business within the district.
- Core Dispute: Plaintiffs allege that Defendant’s knock-off remote control transmitters infringe a design patent, in addition to Plaintiffs' trade dress, trademarks, and copyrights.
- Technical Context: The technology involves the ornamental design of wireless radio transmitters used for consumer products such as garage door and gate openers.
- Key Procedural History: The complaint alleges that Defendant is a former customer of Plaintiffs, having purchased "tens of thousands" of the patented Stinger® transmitters between 2018 and 2019. This prior relationship is presented as evidence of Defendant's knowledge of Plaintiffs' intellectual property rights. The complaint also notes recent copyright registrations for owner's manuals related to the products.
Case Timeline
| Date | Event |
|---|---|
| 2005-10-01 | Plaintiffs allegedly began continuous use of their trademarks |
| 2012-01-01 | Plaintiffs designed and first marketed the Stinger® transmitter |
| 2012-05-01 | Plaintiff Community Controls published owner's manuals for Stinger® |
| 2013-01-04 | D695,315 Patent Priority Date (Filing Date) |
| 2013-12-10 | U.S. Design Patent No. D695,315 Issued |
| 2015-10-01 | Plaintiff Transmitter Solutions published its own Stinger® manuals |
| 2018-01-01 | Defendant allegedly began purchasing Stinger® transmitters (period start) |
| 2020-11-04 | Plaintiffs filed copyright applications for owner's manuals |
| 2020-12-09 | Copyright Registration for 2012 owner's manual issued |
| 2020-12-22 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D695,315 - “Transmitter Apparatus”
The Invention Explained
- Problem Addressed: Design patents do not solve technical problems but protect the non-functional, ornamental appearance of an article of manufacture. The complaint alleges the protected design serves to create a "unique, non-functional overall look and feel" that distinguishes Plaintiffs' Stinger® transmitter from competing products and identifies Plaintiffs as the source (Compl. ¶¶ 18-19).
- The Patented Solution: The patent claims the specific ornamental design for a transmitter apparatus as depicted in its seven figures (’315 Patent, Claim). The core design features a two-part rectangular housing with outwardly curved sides, a large oval-shaped button on the upper portion, and a distinct V-shaped or arrow-like design element on the lower portion (’315 Patent, FIGs. 1-2, 6).
- Technical Importance: The complaint alleges that the distinct appearance of the transmitter has, through extensive promotion and sales, acquired "a valuable reputation and significant good will" and allows consumers to associate the product with Plaintiffs (Compl. ¶20).
Key Claims at a Glance
- The complaint asserts the single claim of the ’315 Patent.
- Claim 1: "The ornamental design for a 'transmitter apparatus,' as shown and described." (’315 Patent, col. 2:15-17). The essential ornamental elements are those shown in the patent's figures, which the complaint alleges include:
- a slim profile
- a rectangular shape with sides that are curved slightly outward
- a single button with an oval or elongated-diamond shape
- a downward pointing arrow shape below the button (Compl. ¶18).
III. The Accused Instrumentality
Product Identification
- The "Infringing Transmitter," described as a "knock-off Stinger transmitter product" sold by Defendant Master Remotes through its eBay store, "Danielstore1847" (Compl. ¶28).
Functionality and Market Context
- The complaint identifies the accused product as a remote control transmitter sold for use with "Sears Craftsman Garage Door Opener" systems and other compatible receivers (Compl. p. 11, screenshot). The complaint alleges Defendant began selling these "knock-off" products to "capitalize on the popularity of the Stinger® transmitter" after having previously been a reseller of Plaintiffs' authentic products (Compl. ¶¶ 27-28, 35). The complaint includes a screenshot from Defendant's eBay store listing for the accused product to demonstrate its sale and marketing. The screenshot shows the product being offered as a compatible replacement for various part numbers (Compl. p. 11).
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 article supposing it to be the patented one. The complaint makes its case through narrative allegations and visual comparisons. A side-by-side photographic comparison of Plaintiff's commercial product and the accused product is provided to allege the two are "virtually indistinguishable" (Compl. p. 9). A second visual directly compares a figure from the ’315 Patent with a photograph of the accused product to assert that their designs are "substantially the same" (Compl. p. 10).
'315 Patent Infringement Allegations
| Claim Element (from Claim 1 as described in Compl. ¶18) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a slim profile | The complaint alleges the "Infringing Transmitter includes a slim profile" and provides photographic evidence intended to show this feature. | ¶30 | col. 2:7-10 |
| a rectangular shape where the sides along the length of the rectangle are curved slightly outward | The complaint alleges the accused product has "a rectangular shape where the sides along the length of the rectangle are curved slightly outward," mirroring the design shown in the patent's top-down view. | ¶30 | col. 2:3 |
| a single button with an oval or elongated-diamond shape located in the top half of the front of the transmitter | The accused product is alleged to have "a single button with an oval or elongated-diamond shape located in the top half of the front of the transmitter." This is visually depicted in the complaint's side-by-side comparisons. | ¶30 | col. 2:3 |
| below the button, is a downward pointing arrow shape that protrudes slightly from the face of the transmitter | The complaint alleges the accused product incorporates "a downward pointing arrow shape that protrudes slightly from the face of the transmitter," which it contends is a feature of the protected Stinger Trade Dress and patented design. | ¶30 | col. 2:3 |
- Identified Points of Contention:
- Scope Questions: The central issue will be whether the overall visual impression of the accused product is "substantially the same" as the claimed design in the ’315 Patent. The defense may argue that any differences in proportion, surface texture, or the precise shape of the button and "arrow" element are significant enough to differentiate the designs in the mind of an ordinary observer.
- Technical Questions: While design patents protect non-functional features, a point of contention may arise over whether minor differences between the products are dictated by functional constraints not present in Plaintiffs' product. The complaint asserts the claimed features are "non-functional" and "serve a decorative and aesthetic purpose" (Compl. ¶19).
V. Key Claim Terms for Construction
In design patent litigation, the claim is understood to be the design itself as depicted in the drawings, rather than specific text-based terms. The primary "construction" issue is determining the overall scope of the visual design protected by the patent.
- The Term: "The ornamental design for a 'transmitter apparatus,' as shown and described."
- Context and Importance: The entire infringement analysis depends on the scope of this claimed design. The dispute will not center on the definition of a word but on the holistic comparison between the patented design and the accused product's appearance. Practitioners may focus on this analysis because the outcome of the "ordinary observer" test is dispositive for infringement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent drawings are line drawings, not photographs. This suggests the claim is not limited to a specific color, material, or surface texture, but rather covers the overall shape and configuration of the elements shown in solid lines. The claim covers the combination of the curved rectangular body, the large oval button, and the V-shaped element below it, irrespective of minor cosmetic details not shown.
- Evidence for a Narrower Interpretation: The scope is strictly defined by the visual information presented in the solid lines of the patent figures (’315 Patent, FIGs. 1-7). Any feature shown in the drawings—such as the specific proportions of the upper and lower sections, the precise curvature of the sides, or the aspect ratio of the button—could be argued to be a limiting part of the claimed design. A party could argue that a deviation in the accused product from these specific, depicted details is sufficient to avoid infringement.
VI. Other Allegations
- Indirect Infringement: The complaint does not allege indirect patent infringement (inducement or contributory infringement). The patent infringement claim is for direct infringement under 35 U.S.C. § 271(a) based on Defendant's alleged making, using, selling, offering for sale, and/or importing the accused transmitters (Compl. ¶46).
- Willful Infringement: The complaint makes a strong allegation of willful patent infringement. It alleges that Defendant was "aware of the ’315 Patent" and its infringement was "deliberate, and objectively reckless" (Compl. ¶47). The factual basis for this claim is the allegation that Defendant was a former customer who purchased "tens of thousands" of Plaintiffs' Stinger® transmitters and therefore had direct knowledge of the product, its design, and its associated intellectual property rights (Compl. ¶¶ 27, 40). A screenshot from Defendant's eBay store shows the accused product listing, which the complaint alleges uses Plaintiffs' "STINGER" and "Transmitter Solutions" marks, which could be used as further evidence of knowledge and intent (Compl. p. 11).
VII. Analyst’s Conclusion: Key Questions for the Case
A core issue will be one of visual identity: In the eye of an ordinary observer, is the overall ornamental design of the accused "Infringing Transmitter" substantially the same as the specific design claimed in the ’315 Patent? The case will likely depend on a close visual comparison, potentially aided by evidence of prior art designs to frame the perspective of the ordinary observer.
A second key question will be one of willfulness and intent: Can Plaintiffs prove that Defendant's alleged infringement was willful, given the allegations of a prior business relationship and extensive purchases of the patented product? The answer will significantly impact potential remedies, including the possibility of enhanced damages and attorneys' fees.
The case presents an interplay of intellectual property rights, with parallel claims for design patent infringement, trade dress infringement, and trademark infringement based on a similar set of facts. A central question will be how the scope and remedies for these distinct legal claims overlap or differ, particularly regarding the disgorgement of infringer's profits, which is an available remedy for design patent infringement under 35 U.S.C. § 289.