DCT

1:23-cv-12099

Glass v. Amsai Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-12099, D. Mass., 09/13/2023
  • Venue Allegations: Venue is asserted based on the defendant allegedly conducting business and selling the accused products into the stream of commerce within the District of Massachusetts.
  • Core Dispute: Plaintiff alleges that Defendant’s "O'Bright Ray" adjustable LED lamp infringes a design patent covering the ornamental appearance of a lamp.
  • Technical Context: The dispute concerns the ornamental design of consumer lighting products, specifically adjustable gooseneck lamps, a competitive market segment where visual appearance is a key differentiator.
  • Key Procedural History: The complaint alleges that Plaintiff provided Defendant with actual notice of the asserted patent and its alleged infringement via a cease-and-desist letter dated March 16, 2023, nearly six months prior to filing the lawsuit. The asserted patent is a continuation of a prior, now-abandoned application.

Case Timeline

Date Event
2012-02-02 D'089 Patent Priority Date
2016-11-29 D'089 Patent Issue Date
2023-03-16 Date of alleged pre-suit notice via cease-and-desist letter
2023-09-13 Complaint Filing Date

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

U.S. Design Patent No. D773,089 S - "Lamp"

  • Patent Identification: U.S. Design Patent No. D773,089 S, "Lamp," issued November 29, 2016.

The Invention Explained

  • Problem Addressed: Design patents protect the ornamental appearance of an article of manufacture, not a functional solution to a technical problem. The patent does not describe a problem but instead presents a new, original, and ornamental design for a lamp (D'089 Patent, Figs. 1-7).
  • The Patented Solution: The patent discloses a specific aesthetic design for a lamp. The claimed design consists of the visual characteristics shown in the patent's figures, which include a flat, circular base with a small switch, a short vertical post supporting a long, flexible, ribbed gooseneck arm, and a downward-facing, bell-shaped lamp head (D'089 Patent, Fig. 1, Fig. 5). The sole claim is for "The ornamental design for the lamp, as shown and described" (D'089 Patent, CLAIM).
  • Technical Importance: The design provides a distinct ornamental appearance for an adjustable gooseneck lamp, a common consumer product, which Plaintiff alleges has a "unique aesthetic appearance" (Compl. ¶10).

Key Claims at a Glance

  • Design patents contain a single claim. The asserted claim is: "The ornamental design for the lamp, as shown and described." (D'089 Patent, CLAIM).
  • The scope of this claim is defined by the visual elements depicted in the patent's seven figures, which include:
    • A flat, circular base supporting the structure.
    • A short, central post from which a flexible, ribbed gooseneck arm extends.
    • A generally conical or bell-shaped lamp head.
    • A power cord extending from the base.

III. The Accused Instrumentality

Product Identification

  • The "O'Bright Ray," an "adjustable LED beam floor lamp" (Compl. ¶14).

Functionality and Market Context

  • The complaint identifies the accused product as a lamp sold online, including on Amazon, in at least three different colors or finishes (Compl. ¶15). Plaintiff alleges these products are "knockoffs" sold at "significantly lower prices" than Plaintiff's commercial embodiments (Compl. ¶13). An Amazon product listing for the accused product, attached as an exhibit to the complaint, provides a visual depiction of its design (Compl. ¶15, Ex. 3).

IV. Analysis of Infringement Allegations

D'089 Patent Infringement Allegations

The complaint does not contain an embedded claim chart but references a separate claim chart exhibit, which was not available for this analysis (Compl. ¶17). The complaint's narrative infringement theory is based on the "ordinary observer" test for design patent infringement. Plaintiff alleges that the accused "O'Bright Ray" lamp is "substantially similar, if not identical, to the claimed design" of the D’089 Patent (Compl. ¶17). The core allegation is that the visual similarity is strong enough that an "ordinary observer would be deceived into purchasing the Accused Product believing it to have the design depicted in the D’089 Patent" (Compl. ¶16). The complaint states that a claim chart, provided as Exhibit 4, demonstrates this similarity by comparing figures from the patent to embodiments of the accused product (Compl. ¶17).

  • Identified Points of Contention:
    • Factual Question (Ordinary Observer Test): The central dispute will be factual: whether an ordinary purchaser, giving the attention a buyer usually gives, would be deceived by the similarity between the accused product's design and the D'089 Patent's drawings. The analysis will focus on the overall visual impression rather than a component-by-component breakdown.
    • Scope Questions: The scope of a design patent is narrowed by prior art. A key question for the court, though not raised in the complaint, will be how the overall appearance of the accused product compares to the patented design in the context of other existing gooseneck lamp designs. The degree of similarity required for a finding of infringement may depend on the crowdedness of the design field.

V. Key Claim Terms for Construction

The complaint does not provide sufficient detail for analysis of claim construction. For a design patent, claim construction does not involve interpreting textual terms but rather focuses on the scope of the claimed design as a whole, as depicted in the patent's drawings. The single claim—“The ornamental design for the lamp, as shown and described”—directs all analysis to the visual representations in Figures 1-7 of the D'089 Patent (D'089 Patent, CLAIM, Figs. 1-7). The dispositive issue is not the definition of a word but the holistic comparison of the accused product's appearance to the claimed design.

VI. Other Allegations

  • Indirect Infringement: The prayer for relief includes a request for a finding of induced infringement (Compl., Prayer for Relief ¶A). The factual allegations in the complaint, however, primarily focus on direct infringement through Defendant's own alleged making and selling of the accused product (Compl. ¶¶12, 14). The complaint alleges Defendant "knowingly sold the Accused Product into the stream of commerce with specific intent," but does not plead specific facts showing that Defendant actively encouraged or instructed third parties to infringe (Compl. ¶18).
  • Willful Infringement: Plaintiff alleges willful infringement based on Defendant's purported actual knowledge of the D'089 Patent (Compl. ¶18). This allegation is supported by the claim that Plaintiff's counsel sent a cease-and-desist letter to Defendant's registered agent on March 16, 2023, putting Defendant on notice of the patent and the alleged infringement (Compl. ¶19, Ex. 5). The complaint suggests that any infringement after this date was necessarily willful.

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

The resolution of this case will likely depend on the answers to two central questions:

  1. A central issue will be one of visual comparison: Applying the "ordinary observer" test, is the overall ornamental design of the accused "O'Bright Ray" lamp substantially the same as the design claimed in the D'089 Patent, considering the designs as a whole?
  2. A key evidentiary question will be one of intent: Does the evidence, particularly the March 16, 2023 cease-and-desist letter, establish that the Defendant had pre-suit knowledge of its alleged infringement, thereby supporting the claim for willful infringement and the potential for enhanced damages?