DCT

1:23-cv-00465

Group Dekko Inc v. Metro Light & Power LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-00465, N.D. Ind., 11/01/2023
  • Venue Allegations: Venue is alleged to be proper in the Northern District of Indiana because Defendant Metro Light & Power transacts business in the district, and a substantial part of the events giving rise to the claims occurred there.
  • Core Dispute: Plaintiffs seek a declaratory judgment that their in-surface power distribution units do not infringe Defendant’s alleged trade dress and, further, that the Defendant’s asserted trade dress is invalid and unenforceable.
  • Technical Context: The dispute centers on the design of in-surface power and data distribution units, which are commonly integrated into office and commercial furniture to provide convenient access to electrical outlets and data ports.
  • Key Procedural History: This declaratory judgment action was filed after Plaintiffs received a cease-and-desist letter from Defendant on August 15, 2023, alleging that Plaintiffs' products infringe Defendant's trade dress. The complaint leverages Plaintiffs' own portfolio of design patents as evidence that the disputed design features are functional, common in the industry, and/or not exclusive to Defendant, thereby challenging the validity and scope of the asserted trade dress.

Case Timeline

Date Event
2014-07-23 Priority Date for D755,128; D755,129; D808,339 Patents
2015-01-01 Defendant Metro Light & Power, LLC was incorporated (approx.)
2016-01-01 Defendant Metro commenced releasing power distribution units (approx.)
2016-05-03 Issue Date for U.S. Patent No. D755,128
2016-05-03 Issue Date for U.S. Patent No. D755,129
2016-11-22 Priority Date for D812,009 Patent
2018-01-23 Issue Date for U.S. Patent No. D808,339
2018-03-06 Issue Date for U.S. Patent No. D812,009
2018-03-22 Priority Date for D856,937 Patent
2019-08-20 Issue Date for U.S. Patent No. D856,937
2020-03-26 Priority Date for D948,445; D948,446; D948,447 Patents
2022-04-12 Issue Date for U.S. Patent No. D948,445
2022-04-12 Issue Date for U.S. Patent No. D948,446
2022-04-12 Issue Date for U.S. Patent No. D948,447
2023-08-15 Defendant sent cease-and-desist letter to Plaintiff
2023-11-01 Complaint for Declaratory Judgment filed

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

Although no patents are asserted for infringement, the following design patents owned by Plaintiff Dekko are referenced in the complaint as evidence against the validity and scope of Defendant Metro's alleged trade dress.

U.S. Design Patent No. D755,128 - “Desktop Receptacle” (Issued May 3, 2016)

  • The Invention Explained:

    • Problem Addressed: The patent addresses the need for a new, original, and ornamental design for a power and data receptacle intended for use in a desktop or similar surface (D’128 Patent, Claim).
    • The Patented Solution: The patent claims the specific visual appearance of a desktop receptacle (D’128 Patent, Claim). As illustrated in the figures, the design consists of a rectangular housing with a faceplate, a surrounding bezel, and a linear arrangement of two electrical outlets and one data port (D’128 Patent, Fig. 1, 4). The design is intended to be integrated into furniture as part of an electrical system (Compl. ¶10).
    • Technical Importance: The design provides a specific aesthetic for integrating power and data access directly into furniture surfaces, a common feature in modern office environments (Compl. ¶10).

  • Key Claims at a Glance:

    • The single claim is for "The ornamental design for a desktop receptacle, as shown and described." (D’128 Patent, Claim).
    • The essential visual elements of the claimed design include:
      • A rectangular faceplate.
      • A raised bezel framing the faceplate.
      • A specific linear configuration of two power outlets and one data port.

U.S. Design Patent No. D755,129 - “Desktop Receptacle” (Issued May 3, 2016)

  • The Invention Explained:

    • Problem Addressed: Similar to the D'128 patent, this patent provides a new, original, and ornamental design for a desktop receptacle (D’129 Patent, Claim).
    • The Patented Solution: The patent claims the ornamental design for a desktop receptacle featuring a different configuration of components (D’129 Patent, Claim). The drawings depict a similar rectangular housing and bezel but with a different linear arrangement: one electrical outlet, one data port, a second electrical outlet, and a USB port (D’129 Patent, Fig. 1, 4). This illustrates an alternative aesthetic arrangement for the same general product type.
    • Technical Importance: This design, like its sibling patent, offers an aesthetic solution for integrating a specific combination of power and data ports into furniture surfaces (Compl. ¶10).

  • Key Claims at a Glance:

    • The single claim is for "The ornamental design for a desktop receptacle, as shown and described." (D’129 Patent, Claim).
    • The essential visual elements of the claimed design include:
      • A rectangular faceplate and surrounding bezel.
      • A specific linear arrangement of electrical outlets and data ports, distinct from the D'128 patent.

Multi-Patent Capsule

  • U.S. Design Patent Nos. D808,339; D812,009; D856,937; D948,445; D948,446; and D948,447
    • Technology Synopsis: These patents are part of what the complaint describes as a "long and continuous line of design patents owned by Dekko" (Compl. ¶13). Each patent claims the ornamental design for different configurations of surface-mount or clamp-on power distribution modules. The designs consistently feature a "thin profile bezel" and linearly arranged components, which Plaintiffs contend demonstrates their long-standing use of these design elements (Compl. ¶¶12-13).
    • Asserted Claims: As design patents, each contains a single claim for the ornamental design as shown in its figures.
    • Relevance to Dispute: Plaintiffs use this portfolio to argue that the features Defendant claims as its trade dress were part of Plaintiffs' own product designs, in some cases predating Defendant's formation, and are common elements in the industry (Compl. ¶¶13, 18).

III. The Accused Instrumentality

  • Product Identification: The products at the center of the trade dress dispute are Plaintiffs' "in-surface power distribution units and power supply products" manufactured by Furnlite on behalf of Dekko (Compl. ¶1).
  • Functionality and Market Context:
    • These units are designed for integration into office and commercial furniture to provide an electrical system with power and data access (Compl. ¶10).
    • The complaint states the units "feature linearly arranged power receptacles and data ports and utilize a sleek bezel" (Compl. ¶9). An image provided in the complaint shows a Furnlite unit with four linearly arranged power outlets set within a rectangular bezel designed for in-surface mounting (Compl. ¶11). This visual, showing a Furnlite in-surface power distribution unit, depicts the product design that Defendant alleges is confusingly similar to its own (Compl. ¶11, ¶17).
    • The complaint notes that such products are manufactured and sold by numerous entities competing with both Dekko and Metro (Compl. ¶10).

IV. Analysis of Infringement Allegations

This action is for a declaratory judgment of non-infringement of trade dress, not patent infringement. Therefore, a patent claim chart is not applicable. The analysis below summarizes the parties' positions on the trade dress dispute as detailed in the complaint.

The core of the dispute stems from a cease-and-desist letter in which Defendant Metro alleged that Plaintiffs' Furnlite products infringe Metro's trade dress for its "Bezel product line" (Compl. ¶17). Metro's asserted trade dress is described as encompassing a "slim diminutive exterior trim, flush-with-surface mounting method, narrow case and sleek design" (Compl. ¶17). Metro alleges that Plaintiffs' products "copy, or are so close in design to, Metro's Bezel products, that they appear to be part of Metro's Bezel product line" and cause consumer confusion (Compl. ¶17).

In their complaint for declaratory judgment, Plaintiffs counter that they do not infringe any valid trade dress rights (Compl. ¶24). Their primary arguments are that Metro's alleged trade dress is invalid because the constituent features are functional and have not acquired distinctiveness (Compl. ¶27). Plaintiffs allege that these features are not distinctive to Metro, do not act as a source identifier, and have not acquired a secondary meaning in the marketplace whereby consumers would associate the design with Metro (Compl. ¶¶23, 28). To support these contentions, Plaintiffs point to their own portfolio of design patents, some of which predate Metro's establishment, as well as patents belonging to third-party competitors, which allegedly show similar features like "thin profile bezels" and linear component arrangements (Compl. ¶¶13, 14, 18).

V. Key Claim Terms for Construction

As this case concerns trade dress rather than patent infringement, the analysis focuses on the key descriptive terms of the alleged trade dress whose interpretation as either functional or source-identifying will be central to the dispute.

  • The Term: "thin profile bezel" / "slim diminutive exterior trim"

    • Context and Importance: This feature appears to be the cornerstone of the alleged trade dress. Practitioners may focus on this term because its classification will be critical: if the bezel design is primarily functional (e.g., necessary to achieve a low-profile, flush-mounted aesthetic common in the industry), it cannot be protected as trade dress.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader (Source-Identifying) Interpretation: The complaint does not present evidence for this view, but Metro's position is implicitly that its specific bezel design is a non-functional, ornamental choice that identifies its products to consumers (Compl. ¶17).
      • Evidence for a Narrower (Functional/Generic) Interpretation: The complaint argues that "thin profile bezels" are a feature of Dekko's own "long and continuous line of design patents" (Compl. ¶13) and are also present in products from "other third party competitors" (Compl. ¶14). This evidence may support the argument that the feature is a common, functional, or at least widely-used ornamental element in the industry, rather than a unique identifier of Metro as a source.

  • The Term: "linearly arranged" components

    • Context and Importance: The horizontal arrangement of power and data ports is a key visual element of the products. The dispute will question whether this is a protectable aesthetic choice or a functional one driven by manufacturing efficiency, space constraints within furniture, and user convenience.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader (Source-Identifying) Interpretation: Metro would argue that its particular linear arrangement, in combination with other elements, creates a distinctive overall look (Compl. ¶17).
      • Evidence for a Narrower (Functional/Generic) Interpretation: The complaint explicitly states that Dekko's own design patents, such as the D’128 and D’129 patents, include "linearly arranged power receptacles and data ports" (Compl. ¶12; D'128 Patent, Fig. 4). Presenting its own patents for these designs allows Dekko to suggest that this arrangement is a common design choice in the industry and not exclusive to Metro.

VI. Other Allegations

The complaint does not allege indirect or willful infringement.

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

  • A central issue will be one of trade dress validity: are the design features of Metro's "Bezel products"—specifically the "slim diminutive exterior trim" and linear component layout—protectable as a source-identifying trade dress, or are they primarily functional and/or generic elements common to the market for in-surface power units?
  • A key evidentiary question will be the probative weight of prior designs: how will the court view Plaintiffs' evidence, including their portfolio of pre-existing design patents and examples of third-party products, when determining whether the alleged trade dress lacks the necessary distinctiveness and secondary meaning to be legally protectable?
  • Ultimately, the case may turn on a question of market perception: do consumers in the commercial furniture market associate the specific "sleek design" at issue with a single source (Metro), or do they view it as a general aesthetic or functional style available from multiple manufacturers, including the Plaintiffs?