DCT

8:18-cv-03858

Delta T LLC v. Dan's Fan City Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: Delta T, LLC v. Dan's Fan City, Inc., 8:18-cv-03858, D. Md., 12/14/2018
  • Venue Allegations: Venue is alleged to be proper in the District of Maryland on the basis that Defendant owns and operates a retail store within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s "Vogue" brand ceiling fan infringes two design patents directed to the ornamental appearance of a modern ceiling fan and its central rotor.
  • Technical Context: The technology at issue resides in the competitive market for residential ceiling fans, where aesthetic design is a significant differentiator.
  • Key Procedural History: Plaintiff alleges it provided Defendant with actual notice of infringement for one patent via a cease-and-desist letter and constructive notice for the second patent via marking its own products. The '004 patent was filed as a continuation of a prior patent and includes a terminal disclaimer, disclaiming any patent term that would extend beyond the term of the parent patent, U.S. Patent No. D770,027.

Case Timeline

Date Event
2008-09-30 '757 Patent Priority Date
2010-04-27 '757 Patent Issue Date
2012-05-01 Plaintiff's "Haiku fan" formal program rollout
2016-04-26 '004 Patent Application Filing Date
2018-01-16 '004 Patent Issue Date
2018-12-14 Complaint Filing Date

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

U.S. Design Patent No. D614,757, "FAN" (issued April 27, 2010)

The Invention Explained

  • Problem Addressed: The complaint asserts that prior to the patented design, the ceiling fan market was saturated with "clunky models" having an "unattractive industrial appearance with for example, exposed rivets," "thick flat blades," and "heavy steel hardware to attach individual blades." (Compl. ¶¶ 8-9).
  • The Patented Solution: The '757 Patent protects the ornamental design for an entire fan. The associated "Haiku fan" is described as a "minimalist work of art" featuring "three thin, curved blades blended seamlessly into the fan's center rotor." (Compl. ¶7). This integrated, fluid design, as shown in the patent's figures, sought to replace the traditional bolted-on blade construction with a unified aesthetic. ('757 Patent, Figs. 1-5; Compl. ¶9).
  • Technical Importance: The design represented an effort to "revolutionize" the residential ceiling fan by introducing a "sleek and fluid design" inspired by organic minimalism, departing from the prevailing industrial aesthetic. (Compl. ¶¶ 7, 9).

Key Claims at a Glance

  • The single claim covers "The ornamental design for a fan, as shown and described." ('757 Patent, Claim).
  • The protected design consists of the overall visual appearance of the fan, characterized by:
    • A three-bladed configuration.
    • Airfoil-shaped blades that are thin and curved.
    • A seamless, flowing transition between the blades and the central hub, which in turn blends into a conical mounting structure.

U.S. Design Patent No. D808,004, "FAN" (issued January 16, 2018)

The Invention Explained

  • Problem Addressed: While not stating a distinct problem, the complaint presents this patent as protecting the "unique, remarkably striking, and easily recognizable" appearance of the center rotor of its "L-Series fan." (Compl. ¶17).
  • The Patented Solution: The '004 Patent protects the ornamental design for a fan, but the claim's scope is limited by the use of broken lines. The fan blades and mounting canopy are depicted in broken lines, indicating they form no part of the claimed design. ('004 Patent, Description). The protected design is therefore limited to the solid-lined center rotor, which the complaint describes as a "circle in the center... that delineates three equally-spaced curved outer segments." (Compl. p. 6, ¶17).
  • Technical Importance: This design is alleged to provide a distinct and recognizable aesthetic for the fan's central hub, emphasizing a "seamless organic construction... and the absence of traditional steel blade attachments." (Compl. p. 6, ¶17).

Key Claims at a Glance

  • The single claim covers "The ornamental design for a fan, as shown and described." ('004 Patent, Claim).
  • The protected design consists of the visual appearance of the central fan rotor, characterized by:
    • A central circular element.
    • Three curved segments that extend radially from the central element.
    • The fan blades and mounting structures are explicitly disclaimed and not part of the protected design.

III. The Accused Instrumentality

Product Identification

The accused product is the "Vogue 60 in. Indoor/Outdoor Ceiling Fan" (the "Vogue fan"), which is part of Defendant's "TroposAir" brand. (Compl. ¶3).

Functionality and Market Context

The Vogue fan is a residential ceiling fan. The complaint alleges it is sold through Defendant's retail stores, including one in Maryland, and online through its own websites as well as Amazon and Home Depot. (Compl. ¶3). The core of the accusation relates to the fan's visual appearance. Exhibit 6 of the complaint provides a bottom-view photograph of the accused Vogue fan, showing its three-bladed design and central rotor. (Compl. ¶18, Ex. 6).

IV. Analysis of Infringement Allegations

As these are design patents, infringement is determined by the "ordinary observer" test, rather than a limitation-by-limitation analysis of claim text. The table summarizes the allegations by mapping key features of the patented design to the accused product.

D614,757 Infringement Allegations

Key Feature of Patented Design ('757 Patent) Alleged Infringing Functionality (Vogue Fan) Complaint Citation
The overall ornamental design for a fan, characterized by three thin, curved, airfoil-shaped blades that blend seamlessly into a central hub and conical mounting structure. The complaint alleges that the overall appearance of the Vogue fan is "substantially the same as that of the '757 patented design in the eye of an ordinary observer" and constitutes a "mere colorable imitation." Photographic evidence is provided in Exhibit 6. ¶22(a), Ex. 6

D808,004 Infringement Allegations

Key Feature of Patented Design ('004 Patent) Alleged Infringing Functionality (Vogue Fan) Complaint Citation
The ornamental design for the fan's center rotor, characterized by a central circle and three curved segments extending from it (with the fan blades disclaimed). The complaint alleges the Vogue fan "incorporates a center rotor that is substantially identical in appearance to the design claimed in the '004 Patent," or is otherwise a "mere colorable imitation" that is "substantially the same in the eye of an ordinary observer." ¶26(a), Ex. 6

Identified Points of Contention

  • Application of the "Ordinary Observer" Test: The central dispute will be whether an ordinary observer, giving the attention a purchaser usually gives, would be deceived into purchasing the Vogue fan believing it to be the Plaintiff's fan. This analysis must be conducted in view of the prior art in the field of ceiling fan design.
  • Scope of the '004 Patent: For the '004 patent, a key question will be how to apply the ordinary observer test to a design where major functional components (the blades) are disclaimed. The analysis must focus on the claimed rotor, but the court may need to decide how the unclaimed environmental structure of the fan informs the perception of an ordinary observer.

V. Key Claim Terms for Construction

As the patents-in-suit are design patents, which protect the overall ornamental appearance of an article as depicted in the drawings, there are no specific claim terms that require construction in the manner of a utility patent. The central legal test is the "ordinary observer" test, which compares the patented design to the accused product in light of the prior art.

VI. Other Allegations

Indirect Infringement

The complaint alleges that Defendant actively induces infringement by causing others, such as manufacturers and retailers, to make, import, and sell the Vogue fan, whose appearance is allegedly substantially the same as the patented designs. (Compl. ¶¶ 22(b), 26(b)).

Willful Infringement

  • For the '757 Patent, willfulness is based on alleged pre-suit, actual knowledge. The complaint states that "Delta T notified DFC that its unauthorized manufacture and sale of the Vogue fan infringed the '757 Patent" and demanded that it cease and desist. (Compl. ¶19, 23).
  • For the '004 Patent, willfulness is based on alleged constructive knowledge. The complaint alleges Defendant had notice "by marking the L-Series fans with the number of the '004 Patent." (Compl. ¶27).

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

  • A core issue will be one of visual comparison: In the context of the relevant prior art, is the overall ornamental appearance of Defendant's Vogue fan "substantially the same" as the holistic design claimed in the '757 patent from the perspective of an ordinary observer?
  • A second key question will be the scope of design protection: For the '004 patent, which disclaims the fan blades, is the accused fan's central rotor alone sufficiently similar to the claimed design to support infringement, and to what extent does the surrounding (unclaimed) structure of the fan factor into the ordinary observer analysis?
  • A final question will be evidentiary regarding willfulness: What evidence will Plaintiff produce to substantiate its claim of actual pre-suit notice for the '757 patent, and is the alleged constructive notice via patent marking for the '004 patent sufficient to prove the knowledge and intent required for a finding of willful infringement?