DCT
1:23-cv-10069
Ocean Shore Properties Inc v. Google LLC
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Ocean Shore Properties, Inc. (North Carolina)
- Defendant: Google LLC (Delaware)
- Plaintiff’s Counsel: Steven N. Fox
- Case Identification: 1:23-cv-10069, D. Mass., 01/10/2023
- Venue Allegations: Venue is based on Defendant's contacts with Massachusetts, including maintaining a place of business and selling the accused products within the district.
- Core Dispute: Plaintiff alleges that the ornamental design of Defendant’s Google Pixel Watch infringes two design patents directed to a circular mobile device.
- Technical Context: The lawsuit concerns the aesthetic design of smartwatches, a highly competitive and design-driven segment of the consumer electronics market.
- Key Procedural History: Both patents-in-suit list a terminal disclaimer on their face, which typically indicates they are part of a related family of applications and are linked for patent term purposes to avoid a double-patenting rejection.
Case Timeline
| Date | Event |
|---|---|
| 2016-02-24 | '495 and '360 Patents Priority Date (Filing Date) |
| 2017-12-19 | U.S. Patent No. D805,495 Issues |
| 2018-02-27 | U.S. Patent No. D811,360 Issues |
| 2023-01-10 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. D805,495 - "Rounded Edge Dual Screen Mobile Device" (Issued Dec. 19, 2017)
The Invention Explained
- Problem Addressed: Design patents protect ornamentation rather than function. The implied problem is the need for a novel and non-obvious aesthetic appearance for a mobile electronic device, distinct from existing designs.
- The Patented Solution: The patent claims the ornamental design for what its title describes as a "rounded edge dual screen mobile device" (’495 Patent, Title). The claimed design, shown in solid lines in the figures, consists of a perfectly circular, thin, disc-like body with smoothly rounded edges (’495 Patent, Figs. 1, 3, 5). Functional elements like ports and buttons are shown in broken lines and are explicitly disclaimed from the design (’495 Patent, Description).
- Technical Importance: The design embodies a minimalist aesthetic, focusing on pure geometric form (a circle) and smooth, continuous surfaces, which reflects a particular trend in industrial design for personal electronics.
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a rounded edge dual screen mobile device, as shown and described" (’495 Patent, Claim).
- The essential visual features of the design are:
- A perfectly circular overall shape in plan view.
- A thin profile with continuous, rounded edges.
- The application of this design to a "dual screen mobile device."
U.S. Patent No. D811,360 - "Rounded Edge Mobile Device" (Issued Feb. 27, 2018)
The Invention Explained
- Problem Addressed: As with the ’495 patent, the objective is to protect a novel ornamental design for a mobile device.
- The Patented Solution: This patent protects a design with a shape and profile that appears identical to the ’495 patent (’360 Patent, Figs. 1, 3, 5). However, a key distinction is that the front and back faces are depicted with stippling, which is described as representing an "opaque surface" (’360 Patent, Description). This contrasts with the ’495 patent, which does not include stippling and whose title suggests transparent screen surfaces.
- Technical Importance: By claiming an opaque surface, this patent may be intended to protect the same form factor when applied to devices that do not have a transparent screen or have a non-functional, decorative face.
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a rounded edge mobile device, as shown and described" (’360 Patent, Claim).
- The essential visual features of the design are:
- A perfectly circular overall shape in plan view.
- A thin profile with continuous, rounded edges.
- An opaque surface treatment on the device's faces.
- The application of this design to a "mobile device," without the "dual screen" qualifier.
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is the "GOOGLE PIXEL WATCH" (Compl. ¶9).
Functionality and Market Context
- The complaint identifies the accused product as an "electronic mobile device in the form of a smart watch" (Compl. ¶9).
- Plaintiff alleges that the ornamental design is a significant factor for an ordinary purchaser, who would give attention to the top portion of the watch when worn and when evaluating it for purchase (Compl. ¶12).
- The complaint references visual evidence to establish the design of the accused product. Exhibit C to the complaint is described as showing web pages advertising the Google Pixel Watch (Compl. ¶10). Exhibit D to the complaint is described as containing pictures of an actual purchased Google Pixel Watch, providing a direct depiction of the product's design (Compl. ¶11).
IV. Analysis of Infringement Allegations
The standard for design patent infringement is whether an "ordinary observer," giving the level of attention a typical purchaser would, would find the design of the accused product to be substantially the same as the claimed design, such that they would be deceived into purchasing the accused product believing it to be the patented one. The complaint alleges this standard is met for both patents (Compl. ¶15, ¶20).
Because a design patent's claim is visual and unitary, a traditional claim chart breaking down textual limitations is not fully applicable. The following table identifies the key visual features of the claimed designs and the corresponding allegations against the Google Pixel Watch.
'495 Patent & '360 Patent Infringement Allegations
| Key Visual Feature of the Claimed Designs | Alleged Infringing Feature of the Google Pixel Watch | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental appearance of a circular mobile device with a thin profile and rounded edges. | The "overall ornamental design of the Product is substantially similar to the claimed design" of the patents. | ¶15, ¶20 | ’495 Patent, Figs. 1-8; ’360 Patent, Figs. 1-8 |
| A perfectly circular plan-view shape. | The complaint accuses the Google Pixel Watch, which has a circular watch face, and provides a picture of the purchased product in Exhibit D. | ¶9, ¶11 | ’495 Patent, Fig. 3; ’360 Patent, Fig. 3 |
| A specific surface appearance (transparent for '495, opaque for '360). | The complaint alleges infringement of both patents without distinguishing between the transparent screen of the Pixel Watch and the differing surface treatments claimed. | ¶16, ¶21 | ’495 Patent, Title; ’360 Patent, Description |
- Identified Points of Contention:
- Scope Question: A primary issue may be whether the term "dual screen mobile device" in the title of the ’495 patent limits its scope to articles of manufacture with two screens. The accused Google Pixel Watch has a single screen, which may create a mismatch.
- Aesthetic Question: The central factual dispute will be whether the overall visual impression of the Google Pixel Watch is "substantially the same" as the minimalist patented designs in the eyes of an ordinary observer, especially when considering the universe of prior art for circular watches and electronic devices.
- Technical Question: The complaint asserts both patents, but the patents claim different surface treatments (one implicitly transparent, one explicitly opaque). A question for the court may be whether the single screen of the Pixel Watch can infringe both the design with the transparent surface (’495 patent) and the one with the opaque surface (’360 patent).
V. Key Claim Terms for Construction
In design patent cases, the "claim" is understood to be the drawings. However, the title of the patent can be used to define the "article of manufacture" to which the design is applied, making it a critical element for construction.
- The Term: "dual screen mobile device"
- Context and Importance: This term appears in the title and claim of the ’495 patent. Its construction is critical because if it is interpreted as a strict limitation on the article of manufacture, the patent might not cover the single-screen Google Pixel Watch, potentially negating the infringement claim for that patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue the claim is for the design "as shown and described," and that the drawings only depict a shape, not the functionality of two screens. Under this view, the "dual screen" language in the title might be seen as merely descriptive of an intended use, not a structural limitation on the article itself.
- Evidence for a Narrower Interpretation: A party could argue that the title expressly defines and limits the scope of the article to which the design can be applied. Precedent and PTO guidance (MPEP § 1503.01) state that the title is part of the specification and can limit the scope of the claim.
VI. Other Allegations
- Indirect Infringement: The complaint does not contain allegations of induced or contributory infringement.
- Willful Infringement: The complaint does not explicitly allege willful infringement or plead facts related to pre-suit knowledge of the patents.
VII. Analyst’s Conclusion: Key Questions for the Case
- A question of scope: Will the court construe the ’495 patent's claim as being strictly limited to a "dual screen mobile device," as stated in its title, potentially placing the single-screen Google Pixel Watch outside its scope?
- A question of visual comparison: Is the overall ornamental design of the Google Pixel Watch "substantially the same" as the minimalist, unadorned circular designs in the patents from the perspective of an ordinary observer, particularly when viewed in the context of other circular smartwatches and devices constituting the prior art?
- A question of patent distinction: How will the infringement analysis resolve the assertion of two separate patents that claim nearly identical shapes but different surface characteristics—one implicitly for a transparent screen (’495 patent) and the other for an "opaque surface" (’360 patent)—against a single accused product?