DCT

1:24-cv-01562

Huang v. Myfatboss

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:24-cv-01562, N.D. Ill., 02/26/2024
  • Venue Allegations: Plaintiff alleges venue is proper because Defendant, a foreign entity, directly targets and sells products to consumers throughout the United States, including Illinois, via the interactive Amazon.com marketplace.
  • Core Dispute: Plaintiff alleges that Defendant’s pet water fountain filters infringe a U.S. design patent covering the ornamental appearance of a filter.
  • Technical Context: The dispute is in the consumer pet products market, specifically focusing on replaceable components for automated pet water fountains.
  • Key Procedural History: The complaint does not mention any prior litigation, licensing history, or post-grant proceedings involving the patent-in-suit.

Case Timeline

Date Event
2018-03-20 ’D763 Patent Priority Date
2021-03-09 ’D763 Patent Issue Date
2024-02-26 Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. D912,763 - "FILTER FOR PET FOUNTAIN" (issued March 9, 2021)

The Invention Explained

  • Problem Addressed: As a design patent, the patent does not articulate a technical problem in a background section. Instead, it addresses the aesthetic challenge of creating a unique ornamental appearance for a consumer product component.
  • The Patented Solution: The patent claims a specific ornamental design for a pet fountain filter. The design consists of the visual appearance of a round-shaped filter with a hole in its center and four pockets evenly distributed on its surface, where each pocket is in the shape of a 90-degree circular sector (Compl. ¶12; ’D763 Patent, FIG. 1). The claim is defined by the drawings, which depict the overall visual impression of the article from multiple perspectives (D’763 Patent, p. 1, DESCRIPTION).
  • Technical Importance: The complaint alleges Plaintiff is one of China's leading manufacturers and suppliers of these filters, suggesting the design has commercial significance in the pet supply market (Compl. ¶15).

Key Claims at a Glance

  • The patent contains a single claim for "The ornamental design for a filter for pet fountain, as shown and described" (’D763 Patent, p. 1, CLAIM).
  • The scope of a design patent claim is defined by its drawings. The essential ornamental elements depicted are:
    • A circular overall shape.
    • A circular central aperture.
    • Four recessed pockets arranged in quadrants.
    • The proportional relationship between these features, which creates the overall visual impression.

III. The Accused Instrumentality

Product Identification

The accused products are various "MyfatBOSS" branded "Cat/Pet Water Fountain Filters" sold through an Amazon storefront (Compl. ¶6, ¶19). Specific models identified include the "MyfatBOSS 6 Pack – 63oz," "MyfatBOSS 10 Pack," "MyfatBOSS 16 Pack," "MyfatBOSS 6 Pack - 3L," and "MyfatBOSS 12 Pack" (Compl. ¶20(a)-(e)).

Functionality and Market Context

The accused products are described as replacement filters for use in pet water fountains (Compl. ¶20). The complaint alleges Defendant markets and sells these products throughout the United States via the Amazon marketplace (Compl. ¶6, ¶10). The complaint includes a visual from the patent depicting the patented design, which is embodied in Plaintiff's own "Patented Products" (Compl. ¶15). This image shows a round filter with four compartments and a central hole (Compl. p. 4, Fig.1).

IV. Analysis of Infringement Allegations

The complaint alleges that the accused MyfatBOSS products are "identical or nearly identical to the patented ornamental design" and that they "copy the ’D763 Design" (Compl. ¶22, ¶23). The infringement test for a design patent is whether an ordinary observer, familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented one.

The complaint states that a claim chart is attached as Exhibit 3, but this exhibit was not included with the filed complaint document (Compl. ¶23). Therefore, the infringement theory is summarized from the complaint's narrative allegations. The core of the allegation is a direct visual comparison. Plaintiff contends that the overall ornamental appearance of the accused filters is substantially the same as the design claimed in the ’D763 Patent. The complaint focuses the infringement analysis on the "MyfatBOSS 12 Pack" as a representative product, alleging it shares a "nearly identical infringing ornamental design" with the other accused products (Compl. ¶23).

Identified Points of Contention

  • Visual Similarity: The central question for the court will be whether the accused MyfatBOSS filters and the patented design are substantially the same in overall visual appearance from the perspective of an ordinary observer. Any minor differences between the products and the patent drawings will be evaluated to determine if they are sufficient to create a different overall visual impression.
  • Functionality vs. Ornamentality: A potential issue for the court to consider is the extent to which the claimed features are dictated by function rather than ornamentality. For example, the court may need to determine if the round shape, central hole, and quadrant-like pockets are primarily functional requirements for fitting into a specific pet fountain and holding filter media, or if they are primarily non-functional, ornamental choices. Features dictated by function are not protected by a design patent.

V. Key Claim Terms for Construction

In design patent cases, claim construction involves describing the claimed design in words to assist the fact-finder, rather than construing specific text-based terms. The focus is on the overall visual impression.

  • The Term: "The ornamental design for a filter... as shown and described."
  • Context and Importance: The scope of the claim is the design as a whole, not any single feature in isolation. The court’s construction will define the overall visual appearance against which the accused products are compared. Practitioners may focus on whether the scope is limited to the exact proportions shown or if it covers a broader range of similar quadrant-style filter designs.

Intrinsic Evidence for Interpretation

  • Evidence for a Broader Interpretation: The court could find the scope covers any round filter with a central hole and four similar recessed quadrants, focusing on the general layout as the core ornamental concept. The description of the design as a "round-shaped filter... with a hole in its center, and four pockets evenly distributed" supports this broader view (Compl. ¶12).
  • Evidence for a Narrower Interpretation: The court could limit the scope to the specific visual appearance depicted in the patent's drawings, including the precise proportions of the central hole, the thickness of the dividing walls between pockets, and the depth of the pockets as shown in the side and plan views (’D763 Patent, FIGS. 3-6).

VI. Other Allegations

Willful Infringement

The complaint's prayer for relief seeks enhanced damages, which requires a finding of willful infringement (Compl. p. 11, ¶E). However, the complaint does not contain specific factual allegations concerning Defendant’s pre-suit knowledge of the ’D763 Patent or other conduct that would typically support a claim for willfulness beyond the allegation that the accused products "copy the 'D763 Design" (Compl. ¶23).

VII. Analyst’s Conclusion: Key Questions for the Case

  1. A central issue will be one of visual comparison: Applying the "ordinary observer" test, are the accused MyfatBOSS filters "substantially the same" as the claimed design in overall appearance, or do any differences in proportion, curvature, or detail create a distinct visual impression?
  2. The case may also turn on the question of functionality: To what extent are the key features of the claimed design—the circular shape, central aperture, and four-pocket configuration—dictated by the functional requirements of a pet fountain filter, and therefore unprotectable as ornamental design elements? The resolution of this question will define the protectable scope of the patent.