2:24-cv-10937
Hit Notion LLC v. Sanders Collection Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Hit Notion LLC (Michigan)
- Defendant: Sanders Collection Inc. d/b/a Nestl Bedding and Clara Clark (New York)
- Plaintiff’s Counsel: Howard & Howard Attorneys PLLC
- Case Identification: 2:24-cv-10937, E.D. Mich., 04/10/2024
- Venue Allegations: Venue is based on Defendant allegedly transacting business within the district and on a forum selection clause in a prior settlement agreement between the parties.
- Core Dispute: Plaintiff alleges that Defendant’s reading pillows infringe two of its design patents and that Defendant has breached a prior settlement agreement related to the same conduct.
- Technical Context: The dispute centers on the ornamental designs of reading pillows, a consumer product category focused on providing ergonomic support for activities like reading in bed.
- Key Procedural History: The complaint alleges that the current dispute arises from Defendant's breach of a prior settlement agreement, which resolved an earlier lawsuit involving copyright issues and the '432 patent. The complaint states that the '600 patent issued after this agreement was signed. Plaintiff alleges it confronted Defendant in 2021 regarding the breach, but Defendant denied wrongdoing.
Case Timeline
| Date | Event |
|---|---|
| 2017-10-19 | Priority Date for '432 and '600 Patents |
| 2020-02-18 | U.S. Patent No. D875,432 Issues |
| 2022-04-26 | U.S. Patent No. D949,600 Issues |
| 2024-04-10 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D875,432 - “Pillow”
The Invention Explained
- Problem Addressed: Design patents protect ornamental appearance rather than function. This patent secures the rights to a specific, novel ornamental design for a pillow, distinguishing it from other pillows on the market.
- The Patented Solution: The patent claims the specific ornamental design for a pillow as depicted in its figures ('432 Patent, Claim). The design consists of a primary backrest portion with a wider base that tapers towards the top, two forward-projecting armrests, and a cylindrical head/neck pillow attached to the top of the backrest ('432 Patent, FIG. 1). FIG. 8 illustrates an alternate configuration where the head pillow portion is positioned lower on the backrest ('432 Patent, DESCRIPTION).
- Technical Importance: The design provides a distinctive visual identity for a reading pillow, which the complaint alleges contributes to the product's commercial success (Compl. ¶12).
Key Claims at a Glance
- The single claim asserted is for "The ornamental design for a pillow, as shown and described" ('432 Patent, Claim).
- The essential elements of this design claim are the visual characteristics of the pillow as depicted in solid lines in Figures 1-8, including:
- An upright back support structure.
- A pair of armrests extending forward from the base of the support structure.
- A generally cylindrical, detachable neck roll pillow attached to the upper portion of the support structure.
- Specific contours, proportions, and surface appearances of these elements, creating a unitary overall visual impression.
U.S. Design Patent No. D949,600 - “Pillow”
The Invention Explained
- Problem Addressed: Similar to the '432 patent, this patent protects an ornamental design for a pillow. As a continuation of the application that led to the '432 patent, it claims a related but distinct design scope ('600 Patent, (63)).
- The Patented Solution: The '600 patent claims the ornamental design for a pillow as shown in its figures, but critically, it uses broken lines to disclaim certain features ('600 Patent, Claim, DESCRIPTION). The patent's description states, "The even length broken lines in the drawings depict portions of the pillow that form no part of the claimed design" ('600 Patent, DESCRIPTION). These broken lines outline pockets on the rear of the backrest and on the outer sides of the armrests ('600 Patent, FIG. 4, FIG. 5). This approach seeks to protect the core shape of the pillow, independent of the presence or specific design of those pockets.
- Technical Importance: By disclaiming the pockets, the patent attempts to secure broader protection for the pillow's fundamental shape and configuration, making the design applicable to versions with or without the depicted pockets.
Key Claims at a Glance
- The single claim asserted is for "The ornamental design for a pillow, as shown and described" ('600 Patent, Claim).
- The essential elements are the visual characteristics shown in solid lines in Figures 1-8, while the pockets shown in broken lines are explicitly not part of the claimed design. The claimed design therefore consists of:
- The overall shape, contours, and proportions of the backrest, armrests, and cylindrical neck roll.
III. The Accused Instrumentality
Product Identification
The accused products are the "Clara Clark Bed Rest Reading Pillow with Arms and Pockets" and the "Nestl Reading Pillow" (Compl. ¶¶ 3, 29).
Functionality and Market Context
The complaint identifies the accused products as premium memory foam reading pillows sold online (Compl. ¶29). Plaintiff alleges that the design of the accused product is the "exact design Defendant promised not to sell" in a prior settlement agreement (Compl. ¶29). The complaint includes a screenshot from a retail website showing the "Clara Clark" pillow, which features a main backrest, two arms with pockets, and a top neck roll (Compl. ¶29, p. 7).
IV. Analysis of Infringement Allegations
D875,432 Infringement Allegations
The complaint alleges that the accused products are "so substantially similar as to be nearly identical" to the patented design, such that an ordinary observer would be deceived (Compl. ¶54). A visual comparison chart shows the patented design next to an image of a green version of the accused pillow (Compl. ¶53).
| Patented Design Feature (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a pillow, as shown in FIG. 2, including the front-view shape of the backrest, armrests, and neck roll. | The accused pillow's front-view appearance, which includes a similarly shaped backrest, armrests, and neck roll. | ¶53 | ’432 Patent, FIG. 2 |
| The ornamental design for a pillow, as shown in FIG. 5, including the rear-view shape and the specific rectangular pocket on the back. | The accused product is alleged to possess a rear view with features that are substantially similar to the patented design. | p. 12 | ’432 Patent, FIG. 5 |
| The ornamental design for a pillow, as shown in FIG. 8, including the perspective view with the neck roll positioned lower on the backrest. | The accused product is alleged to have an overall perspective appearance that is substantially similar to the patented design. | p. 12 | ’432 Patent, FIG. 8 |
Identified Points of Contention
- Scope Questions: The central issue will be the application of the "ordinary observer" test. A court will need to determine if an ordinary observer, acquainted with the prior art, would be deceived into purchasing Defendant's pillow believing it to be Plaintiff's patented design.
- Technical Questions: The analysis will focus on a visual comparison of the products. A key question is whether any subtle differences in the proportions, contours, or seam lines between the accused pillows and the '432 patent drawings are significant enough to differentiate the designs in the mind of an ordinary observer.
D949,600 Infringement Allegations
The complaint makes a similar infringement allegation for the '600 patent, again asserting that the accused design is "nearly identical" (Compl. ¶62). The complaint provides a visual chart comparing the patented design to a pink version of the accused product (Compl. ¶61).
| Patented Design Feature (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a pillow, as shown in solid lines in FIG. 2, claiming the core front-view shape of the backrest, armrests, and neck roll. | The accused pillow's front-view appearance, which is alleged to be substantially similar to the claimed overall shape of the pillow. | ¶61 | ’600 Patent, FIG. 2 |
| The ornamental design for a pillow, as shown in solid lines in FIG. 5, claiming the core rear-view shape while disclaiming the pocket (shown in broken lines). | The accused product's rear view, which is alleged to embody the claimed shape. The presence of a pocket on the accused product is irrelevant to the infringement of the claimed design. | ¶61 | ’600 Patent, FIG. 5 |
Identified Points of Contention
- Scope Questions: The use of broken lines in the '600 patent to disclaim the pockets is a critical distinction. This raises the question of whether this disclaimer broadens the protected scope to the pillow's core shape, making the infringement case stronger than for the '432 patent.
- Technical Questions: Does the overall shape of the accused pillow, stripped of its pockets, embody the design shown in the solid lines of the '600 patent? The focus will be exclusively on the contours and proportions of the backrest, arms, and neck roll.
V. Key Claim Terms for Construction
In design patent litigation, there are no traditional claim terms to construe. The "claim" is the visual design itself. The court's construction consists of a verbal description of the claimed design as shown in the patent's figures.
For the '432 Patent
- The Term: The Overall Ornamental Appearance
- Context and Importance: The entire infringement analysis rests on comparing the overall visual impression of the accused product with the patented design depicted in the drawings. The scope of protection is defined by all features shown in solid lines in the '432 patent's figures.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A court might focus on the general configuration of the pillow: a high-back reading pillow with two arms and a detachable neck roll.
- Evidence for a Narrower Interpretation: A court might focus on the specific details shown in the figures, including the precise curvature of the arms, the specific taper of the backrest, the dimensions of the pockets, and the visual appearance of the seams ('432 Patent, FIG. 1, 3, 5).
For the '600 Patent
- The Term: The Portions Shown in Solid Lines
- Context and Importance: This is the central issue for the '600 patent. The patent explicitly disclaims the pockets on the arms and back via broken lines. Practitioners may focus on this because it narrows the design to its core shape, which could make it easier to prove infringement against products that vary only in their pocket configuration.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Plaintiff will likely argue that the solid lines capture the essential ornamental identity of the pillow's shape, and that the disclaimer was intended to prevent competitors from avoiding infringement by simply altering or removing the pockets ('600 Patent, DESCRIPTION).
- Evidence for a Narrower Interpretation: Defendant could argue that even when limited to the solid-line features, its product's specific contours and proportions create a different overall visual impression than what is depicted in the '600 patent drawings.
VI. Other Allegations
Willful Infringement
The complaint alleges willful infringement for both patents (Compl. ¶¶ 55, 63). The allegations are based on Defendant's alleged knowledge of the '432 patent from the prior settlement agreement and its alleged continuation of infringing conduct after being confronted by Plaintiff in 2021 (Compl. ¶¶ 24, 32). For the '600 patent, willfulness may be inferred from the continued sales of a nearly identical design after the patent issued, especially given Defendant's awareness of the related '432 patent.
VII. Analyst’s Conclusion: Key Questions for the Case
Breach of Contract and Its Impact: A threshold issue, intertwined with the patent claims, will be whether Defendant's actions constitute a breach of the prior settlement agreement. The resolution of this claim could significantly influence the patent infringement analysis, particularly concerning willfulness and damages for the '432 patent.
Scope of Design Protection: The case presents two distinct questions of design patent scope. For the '432 patent, the question is whether the accused product is substantially similar to the entire claimed design, including its pockets. For the '600 patent, the question is whether the core shape of the accused product is substantially similar to the patented design, where the pockets are explicitly disclaimed. The differing scopes may lead to different infringement outcomes for each patent.
Willfulness and Intent: Given the alleged history of a prior settlement agreement and a subsequent confrontation between the parties, a central question will be whether Defendant's conduct rises to the level of willful infringement. The evidence surrounding Defendant's knowledge and intent will be critical in determining whether enhanced damages are warranted.