DCT
1:18-cv-03307
Covves LLC v. BigMouth Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Covves, LLC (California)
- Defendant: BigMouth Inc. (Indiana); BigMouth LLC (Indiana)
- Plaintiff’s Counsel: The McArthur Law Firm, PC; Overhauser Law Offices LLC
- Case Identification: 1:18-cv-03307, S.D. Ind., 10/26/2018
- Venue Allegations: Venue is alleged to be proper in the Southern District of Indiana because the BigMouth defendants are incorporated or organized in Indiana and maintain offices within the judicial district.
- Core Dispute: Plaintiff alleges that Defendant’s inflatable unicorn-themed pool floats and beverage holders infringe two of its design patents and associated trade dress.
- Technical Context: The lawsuit concerns the ornamental designs of novelty consumer products within the recreational pool toy market.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with actual notice of the patents-in-suit on or around March 22, 2018, during communications concerning the sale of the accused products on Amazon.com. This pre-suit notice is asserted as a basis for willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2015-08-24 | Priority Date for D'617 Patent and D'370 Patent |
| 2016-11-08 | Filing Date for D'370 Patent Application |
| 2017-04-11 | Issue Date for U.S. Patent No. D783,370 |
| 2017-05-23 | Issue Date for U.S. Patent No. D787,617 |
| 2018-03-22 | Plaintiff allegedly provided Defendant with actual notice of patents-in-suit |
| 2018-10-26 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D787,617 - Inflatable Toy
- Patent Identification: U.S. Patent No. D787617, titled "Inflatable Toy," issued on May 23, 2017.
The Invention Explained
- Problem Addressed: The complaint asserts that before Plaintiff's invention, "Adult-sized unicorn floats... did not exist" (Compl. ¶13). The patent itself, as is typical for a design patent, does not articulate a problem but instead claims a new, original, and ornamental design.
- The Patented Solution: The patent protects the specific ornamental appearance of an inflatable toy, not its function. The design consists of a large, ring-shaped floatable body from which a unicorn head and neck emerge at the front and a tail emerges at the rear (D'617 Patent, FIG. 1). The overall visual impression is defined by the combination of these elements as depicted in the patent's drawings (D'617 Patent, FIG. 1-6).
- Technical Importance: The complaint alleges that this design became "one of the most popular inflatable pool toys of 2016 and 2017," suggesting its aesthetic qualities held significant commercial value (Compl. ¶8).
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is for "The ornamental design for an inflatable toy, as shown and described" (D'617 Patent, Claim).
- The essential visual elements of the claimed design, shown in solid lines, include:
- A unicorn head with a horn, ears, and mane
- An elongated neck connecting the head to the body
- A ring-shaped body for flotation
- A tail with a distinct curve
- The broken lines in the patent drawings, such as the inner perimeter of the float's ring, illustrate portions of the article that form no part of the claimed design (D'617 Patent, "DESCRIPTION").
U.S. Design Patent No. D783,370 - Inflatable Beverage Holder
- Patent Identification: U.S. Patent No. D783370, titled "Inflatable Beverage Holder," issued on April 11, 2017.
The Invention Explained
- Problem Addressed: The complaint alleges that "mini cupholder unicorn floats did not exist before Covves invented and popularized them" (Compl. ¶13).
- The Patented Solution: The patent claims the ornamental design for a miniaturized, beverage-holding version of a unicorn float. The claimed design features a unicorn head, neck, and tail attached to a small, buoyant body with a central recess for a cup (D'370 Patent, FIG. 1, 3). All features shown in the drawings are rendered in solid lines, indicating they are all part of the claimed design.
- Technical Importance: The complaint identifies the product embodying this design as a "popular 'Mini Unicorn Cup Holder'" that was subject to third-party licensing deals, indicating the design's commercial appeal (Compl. ¶9, 17).
Key Claims at a Glance
- The single asserted claim is for "The ornamental design for an inflatable beverage holder, as shown" (D'370 Patent, Claim).
- The essential visual elements of the claimed design include:
- A rounded body with a central, circular empty space
- An attached elongated neck and unicorn head with a horn, ears, and mane
- An attached tail at the rear of the body
III. The Accused Instrumentality
Product Identification
- The accused products are sold under names including "Giant Unicorn Pool Float," "Giant Sparkly Unicorn Pool Float," "Sparkles The Unicorn Lil' Float" (collectively, "BigMouth Giant Unicorn Floats"), and "Unicorn Beverage Boats" (Compl. ¶28, 33).
Functionality and Market Context
- The accused products are inflatable toys. The "Giant Unicorn Floats" are large floats for people to use in water, while the "Unicorn Beverage Boats" are smaller floating devices designed to hold a cup or can (Compl. ¶21, 23). The complaint alleges that the accused products are "imitation" or "cloned" products created to "capitalize on Covves' hard work, intellectual property, and success" (Compl. ¶28, 44). The side-by-side photograph in the complaint shows Plaintiff's "Giant Unicorn" product next to one of Defendant's "Giant Unicorn Floats" in a pool setting (Compl. p. 7).
IV. Analysis of Infringement Allegations
The complaint alleges infringement under the "ordinary observer" test, asserting that the designs of the accused products are substantially the same as the patented designs (Compl. ¶38). Although the complaint references a claim chart in an exhibit that was not attached to the publicly filed document (Compl. ¶37), its narrative allegations and visual aids form the basis of the infringement theory.
D'617 Patent Infringement Allegations
The complaint provides a visual comparison of the patent drawing and a photograph of users with an accused product, with certain features circled to highlight similarity (Compl. p. 7, FIG.1).
| Ornamental Feature (from D'617 Patent) | Alleged Infringing Feature | Complaint Citation | Patent Citation |
|---|---|---|---|
| A raft body with an elongated neck | The accused products are alleged to feature a raft body with an elongated neck. | ¶31 | FIG. 1, 6 |
| A head affixed with a horn, two pointed ears, and a mane | The head of the accused products is alleged to have a horn, two pointed ears, and a mane. | ¶31 | FIG. 1, 6 |
| A mane that begins behind the horn and rests atop the head and neck | The mane on the accused products is alleged to follow the same placement. | ¶31 | FIG. 1, 6 |
| A tail affixed to the rear of the raft body | The accused products are alleged to feature a tail affixed to the rear of the body. | ¶31 | FIG. 6 |
D'370 Patent Infringement Allegations
The complaint offers a side-by-side image comparing the D’370 patent drawing to photographs of the accused "Unicorn Beverage Boats," with corresponding design elements circled (Compl. p. 8, FIG. 1).
| Ornamental Feature (from D'370 Patent) | Alleged Infringing Feature | Complaint Citation | Patent Citation |
|---|---|---|---|
| A rounded body with a rounded empty space in the center | The accused products allegedly feature a rounded body with a central empty space for a beverage. | ¶35 | FIG. 1, 3 |
| An elongated neck affixed to the body, with a head atop the neck | The accused products are alleged to have an affixed elongated neck and head. | ¶35 | FIG. 1, 2 |
| A head affixed with a horn, two pointed ears, and a mane | The head on the accused product is alleged to have the same features. | ¶35 | FIG. 1, 5 |
| A tail affixed to the rear of the rounded body | The accused products are alleged to have a tail attached to the rear of the body. | ¶35 | FIG. 1, 2 |
- Identified Points of Contention:
- Scope Questions: A central question for the court will be whether the overall visual impression of the accused products is "substantially the same" as the patented designs. The analysis will turn on whether an ordinary observer would attach more significance to the alleged similarities in the core components (head, body, tail configuration) or to any minor differences in color, texture (e.g., sparkles), or the precise curvature and proportion of individual elements.
- Technical Questions: The complaint argues that Defendant "copied Covves' patented design and trade dress nearly identically" despite "countless embodiments" it could have used (Compl. ¶31, 35). The key factual question is whether the differences that do exist between the products are sufficient to distinguish them in the mind of the ordinary observer, especially when considered in light of the prior art for inflatable toys.
V. Key Claim Terms for Construction
In design patent litigation, there are no claim terms to construe in the manner of utility patents. The "claim" is the visual design as a whole, depicted in the drawings. The analysis focuses on the scope of the claimed design and its overall visual effect.
- The "Term": The overall ornamental design for an "inflatable toy" / "inflatable beverage holder" as shown in the patent drawings.
- Context and Importance: The entire infringement analysis rests on comparing the overall appearance of the accused products to the patented designs. Practitioners may focus on whether the scope of protection covers the general concept of a unicorn-shaped float or is limited to the specific, detailed execution shown in the drawings.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Scope: Plaintiff may argue that the key contribution is the novel combination of the unicorn head, ring-body, and tail, and that the accused products replicate this overall visual gestalt. The solid lines in the drawings define the claimed design, and Plaintiff will argue these features are all present in the accused products (D'617 Patent, FIG. 1; D'370 Patent, FIG. 1).
- Evidence for a Narrower Scope: Defendant may argue that the patent protects only the precise proportions, shapes, and details depicted. Any variations in the accused products—such as different horn shapes, mane colors or textures, or tail curvatures—contribute to a different overall visual impression that an ordinary observer would not confuse with the patented design.
VI. Other Allegations
- Indirect Infringement: The complaint alleges active inducement of infringement under 35 U.S.C. § 271(b) (Compl. ¶57, 62). The factual basis for this claim is the allegation that BigMouth actively induced numerous retailers—including Target, Kohl's, and Nordstrom—to sell, advertise, and distribute the allegedly infringing products (Compl. ¶53).
- Willful Infringement: Willfulness is alleged based on pre-suit knowledge of the patents. The complaint states that on March 22, 2018, Plaintiff's counsel provided Defendant's counsel with copies of the patents-in-suit. It is alleged that Defendant continued to sell the accused products after receiving this notice, constituting willful and deliberate infringement (Compl. ¶42-45, 58, 63). The complaint further alleges that Defendant attempted to "avoid detection" by removing the word "unicorn" from an Amazon.com product title (Compl. ¶46).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual comparison: In applying the "ordinary observer" test, will a fact-finder determine that the overall ornamental appearance of Defendant's unicorn-themed floats is substantially the same as Plaintiff's patented designs, or are the visual differences between the products legally sufficient to avoid infringement?
- A key evidentiary question will be one of intent: Does the evidence of the March 2018 communications between counsel establish that any post-notice infringement by Defendant was "willful, wanton, malicious, [or] bad-faith," potentially justifying an award of enhanced damages under 35 U.S.C. § 284 or infringer's profits under 35 U.S.C. § 289?
- The case will also raise questions about the interplay of intellectual property rights: How will the concurrent assertion of design patent infringement and trade dress infringement, both based on the same product appearance, affect the legal analysis of liability and the potential scope of monetary and injunctive relief?