Engineered BY Schildmeier LLC v. Wuhu Xuelang Auto Parts Co Ltd

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Engineered by Schildmeier, LLC (Indiana)
  • Defendant: Wuhu Xuelang Auto Parts Co., Ltd (People's Republic of China); AMAZING PARTS WAREHOUSE dba as several names (Kentucky)
  • Plaintiff’s Counsel: Ritchison Law Offices, PC
• Case Identification: 1:18-cv-03239, S.D. Ind., 10/18/2018
• Venue Allegations: Venue is alleged to be proper as Defendants transact business in the district, are subject to personal jurisdiction there, and a substantial part of the events giving rise to the claim occurred in the district, where Plaintiff is located.
• Core Dispute: Plaintiff alleges that Defendants’ bed rail stake pocket covers for trucks infringe its design patent.
• Technical Context: The technology involves ornamental covers for stake pockets, which are recesses in the bed rails of pickup trucks, a segment of the large automotive aftermarket accessories market.
• Key Procedural History: The complaint alleges that Plaintiff provided notice of its patent rights to Defendants via cease and desist letters sent through e-commerce platforms and postal mail. It further alleges that while advertisements were removed from Amazon, they were subsequently re-listed under different business names, whereas eBay refused to remove advertisements without a court order.

Case Timeline

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

U.S. Design Patent No. D816,584 - "PAIR OF BED RAIL STAKE POCKET COVERS"

• Patent Identification: U.S. Design Patent No. D816,584, "PAIR OF BED RAIL STAKE POCKET COVERS", issued May 1, 2018.

The Invention Explained

• Problem Addressed: While not explicitly stated in the design patent, such products generally address the aesthetic issue of open, unfinished stake pockets on truck bed rails and the functional issue of preventing debris accumulation within them.
• The Patented Solution: The patent claims the specific ornamental appearance of a pair of covers for these pockets ('584 Patent, Claim). The design features a distinct, asymmetrical trapezoidal shape with rounded corners, a textured top surface, and a defined profile including a flanged edge, as depicted in the patent's figures ('584 Patent, Figs. 1-7).
• Technical Importance: The design provides a unique aesthetic for a common automotive accessory in a market where visual differentiation is a key product feature.

Key Claims at a Glance

• The single claim of the '584 Patent is asserted (Compl. ¶19).
• The claim protects "the ornamental design for a pair of bed rail stake pocket covers, as shown and described" in the patent's seven figures ('584 Patent, Claim). The scope of protection is defined by the overall visual appearance of the article depicted in these drawings.

III. The Accused Instrumentality

Product Identification

The accused products are identified as "BED RAIL STAKE POCKET COVERS" sold by the Defendants (Compl. ¶15, 20).

Functionality and Market Context

The accused products are covers designed to be inserted into the stake pockets of truck bed rails (Compl. ¶15). The complaint alleges that the accused products are "exact copies of the Plaintiff's product" and are sold on various websites, including Amazon and eBay (Compl. ¶7, 12). The complaint includes a side-by-side photographic comparison of the Plaintiff's and Defendants' parts to support its allegations of visual identity (Compl. p. 5).

IV. Analysis of Infringement Allegations

The standard for determining design patent infringement is whether, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, the two designs are substantially the same, such that the resemblance is to deceive such an observer, inducing him to purchase one supposing it to be the other. The complaint alleges that the Defendants' product is a "literal infringement" of the '584 Patent and that the designs are "not only identical, but substantially the same" (Compl. ¶15, 20).

The complaint provides visual evidence to support this allegation. The complaint includes a side-by-side photographic comparison showing multiple angles of the "Plaintiff's Parts" and "Defendants' Parts," which appear to be visually indistinguishable in shape, texture, and profile (Compl. p. 5).

Identified Points of Contention

• Factual Question: The central issue for infringement will be a factual determination of whether an ordinary observer would find the accused design to be substantially the same as the patented design. The photographic evidence presented in the complaint suggests a high degree of visual similarity.
• Scope Questions: A potential, though less likely, point of contention could involve whether any features of the patented design are dictated solely by function. A defendant in a design patent case may argue that functional features should be excluded from the infringement analysis. Here, this could raise the question of whether aspects of the cover's shape are dictated by the dimensions of the stake pocket itself, or whether the specific aesthetic choices (e.g., surface texture, corner radii, flange profile) are primarily ornamental.

V. Key Claim Terms for Construction

As this is a design patent case, claim construction focuses on the overall visual impression of the design as depicted in the patent's figures, rather than the construction of specific textual terms. The scope of the claim is defined by the drawings as a whole. No specific terms from a written claim require construction in the traditional sense.

VI. Other Allegations

Indirect Infringement

The complaint contains language suggesting inducement, alleging that the visual similarity of the products would deceive an "ordinary purchaser" and induce them to purchase the accused product (Compl. ¶20). The factual basis for inducement beyond the act of selling a visually identical product is not separately detailed.

Willful Infringement

The complaint alleges that Defendants acted "deliberately and willfully" and with "full notice and knowledge" of the '584 Patent (Compl. ¶24). This allegation is supported by claims that Plaintiff sent multiple cease and desist letters and that Defendants continued to sell the products, sometimes under new business names after initial listings were taken down (Compl. ¶13, 16).

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

• A central issue will be a factual determination of visual identity: applying the "ordinary observer" test, is the ornamental design of the Defendants' bed rail stake pocket covers substantially the same as the design claimed in the '584 Patent? The resolution of this question may be heavily influenced by the side-by-side photographic evidence provided in the complaint.
• A key question for damages will be one of willfulness: does the evidence of prior notice, including cease and desist letters and alleged evasion of e-commerce takedowns, demonstrate that Defendants' alleged infringement was objectively reckless, potentially justifying an award of enhanced damages?