DCT
2:24-cv-10939
Hit Notion LLC v. DigitalPrints USA Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Hit Notion LLC (Michigan)
- Defendant: DigitalPrints USA Corp. d/b/a Cheer Collection (New York)
- Plaintiff’s Counsel: Howard & Howard Attorneys PLLC
- Case Identification: 2:24-cv-10939, E.D. Mich., 04/11/2024
- Venue Allegations: Venue is alleged to be proper in the Eastern District of Michigan because the defendant advertises and sells the accused products in Michigan, and the plaintiff maintains an interactive website to fulfill orders in the district.
- Core Dispute: Plaintiff alleges that Defendant’s "Cheer Collection" brand of backrest pillows infringes two of its design patents and also infringes its "HUSBAND PILLOW" trademark.
- Technical Context: The dispute centers on the ornamental design of novelty pillows, often called "husband pillows," which provide back and arm support for a user in a seated position.
- Key Procedural History: The complaint alleges that on May 11, 2023, Plaintiff filed an IP infringement complaint with Walmart.com regarding Defendant's product listings. It further alleges that Walmart investigated and subsequently "unpublished them from its platform." This event may be relevant to the allegation of willful infringement by establishing pre-suit knowledge.
Case Timeline
| Date | Event |
|---|---|
| 2017-10-19 | Priority Date for '432 and '600 Patents |
| 2019-12-13 | Application Date for '600 Patent |
| 2020-02-18 | '432 Patent Issue Date |
| 2022-04-26 | '600 Patent Issue Date |
| 2023-05-11 | Plaintiff files IP complaint with Walmart.com |
| 2024-04-11 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D875,432 - Pillow
- Patent Identification: U.S. Design Patent No. D875,432, "Pillow," issued February 18, 2020.
The Invention Explained
- Problem Addressed: Design patents protect ornamental appearance, not function. The implicit challenge addressed is the creation of a new, original, and ornamental design for a backrest pillow that is visually distinct from prior designs.
- The Patented Solution: The patent claims the specific visual appearance of a pillow characterized by an upright backrest section, two flared arms extending forward from the base of the backrest, and a detachable, cylindrical headrest pillow attached at the top ('432 Patent, FIG. 1, 3). The claim covers the specific proportions, contours, and overall visual impression created by the combination of these features as depicted in solid lines in the patent's drawings ('432 Patent, DESCRIPTION).
- Technical Importance: The design provides a particular aesthetic for a common consumer product in the home goods market.
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is: "The ornamental design for a pillow, as shown and described." (’432 Patent, CLAIM).
- The essential visual elements of this design, shown in solid lines, include:
- A main body with an upright back support.
- Two forward-projecting armrests integrated into the base of the back support.
- A distinct, detachable cylindrical bolster pillow serving as a headrest.
- Pockets on the rear of the backrest and on the outer side of the armrests.
U.S. Design Patent No. D949,600 - Pillow
- Patent Identification: U.S. Design Patent No. D949,600, "Pillow," issued April 26, 2022.
The Invention Explained
- Problem Addressed: As with the ’432 patent, the challenge is the creation of a new, original, and ornamental design for a pillow.
- The Patented Solution: The ’600 patent claims an ornamental design for a pillow that is visually very similar to the design in the ’432 patent. However, a key distinction is the use of broken lines to depict the pockets on the back and arms of the pillow ('600 Patent, FIG. 5). In design patents, broken lines indicate features that are for illustrative purposes only and are not part of the claimed design. Therefore, the ’600 patent claims the overall shape of the pillow without the pockets, potentially broadening the scope of the design to cover pillows of the same shape regardless of whether they have pockets.
- Technical Importance: This patent refines the scope of the earlier design by disclaiming specific surface features, focusing the legal protection on the core shape of the pillow.
Key Claims at a Glance
- The asserted claim is: "The ornamental design for a pillow, as shown and described." (’600 Patent, CLAIM).
- The essential visual elements of this design, shown in solid lines, include:
- A main body with an upright back support.
- Two forward-projecting armrests integrated into the base of the back support.
- A distinct, detachable cylindrical bolster pillow serving as a headrest.
- The patent explicitly disclaims the pockets on the back and arms by rendering them in broken lines ('600 Patent, DESCRIPTION).
III. The Accused Instrumentality
Product Identification
The accused products are "Pillows" sold by Defendant under the "Cheer Collection" brand (Compl. ¶ 21). The complaint identifies these products as being sold through online storefronts including Amazon, Walmart, eBay, and cheercollection.com (Compl. ¶ 20). A screenshot identifies one such product as the "Cheer Collection Wedge Back Support Pillow" (Compl. p. 6).
Functionality and Market Context
The accused products are backrest pillows with integrated arms and a headrest, designed to provide support to a user while sitting in bed or on the floor (Compl. p. 6). The complaint alleges that Defendant copied the patented designs and that the accused products are "the same or substantially the same" as Plaintiff's designs, such that an ordinary observer would be deceived (Compl. ¶¶ 20-21). The complaint includes a side-by-side visual comparison between figures from the '432 patent and photographs of an accused blue pillow (Compl. p. 10, ¶ 33).
IV. Analysis of Infringement Allegations
The complaint alleges that the design of the accused pillows is "so substantially similar, as to be nearly identical" to the patented designs (Compl. ¶ 21).
'432 Patent Infringement Allegations
| Claim Element (from "The ornamental design for a pillow, as shown and described") | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall configuration comprising an upright backrest, flared arms, and a detachable cylindrical headrest. | The accused product is alleged to have the same overall configuration, shape, and proportions as depicted in the patent's figures. | ¶¶ 21, 33 | '432 Patent, FIG. 1, FIG. 8 |
| The specific contours and visual appearance of the backrest and integrated arms. | The complaint provides a visual comparison suggesting the contours of the accused product's backrest and arms are substantially the same as those in the patent drawings. | ¶ 33 | '432 Patent, FIG. 2 |
| The inclusion of pockets on the back and arms as part of the overall ornamental design. | Photographs of the accused product appear to show pockets on the arms and a pocket on the back, consistent with the features claimed in the patent. | ¶ 33 | '432 Patent, FIG. 5 |
'600 Patent Infringement Allegations
| Claim Element (from "The ornamental design for a pillow, as shown and described") | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall configuration comprising an upright backrest, flared arms, and a detachable cylindrical headrest, independent of any pockets. | The complaint alleges the accused product embodies the core shape of the pillow design, which is the subject of the claim. A visual comparison is provided. | ¶¶ 21, 40 | '600 Patent, FIG. 1, FIG. 8 |
| The specific contours and visual appearance of the backrest and integrated arms as depicted in solid lines. | The complaint's side-by-side comparison alleges that the shape of the accused product is substantially the same as the claimed design. A side-by-side chart compares patent figures to images of accused products in beige and purple (Compl. p. 12, ¶ 40). | ¶ 40 | '600 Patent, FIG. 2 |
Identified Points of Contention
- Factual Question (Ordinary Observer Test): The central question for both patents will be whether an "ordinary observer," giving such attention as a purchaser usually gives, would be deceived into purchasing the Defendant's pillow believing it to be the Plaintiff's patented design. This will involve a visual comparison of the designs in light of the prior art.
- Scope Question ('600 Patent): The infringement analysis for the ’600 patent raises the question of how the presence of pockets on the accused product affects the comparison to a design that explicitly disclaims pockets via broken lines. An issue for the court may be whether the core, claimed shape of the '600 patent is appropriated, regardless of the addition of unclaimed features like pockets on the accused product.
V. Key Claim Terms for Construction
In design patent litigation, the "claim" is understood through the drawings rather than through textual terms. The analysis focuses on the scope of the overall visual design.
- The "Term": The "ornamental design for a pillow" as a whole.
- Context and Importance: The key determination is the overall visual impression of the patented design. The court will need to determine the scope of the claimed design to compare it against the accused product. Practitioners may focus on which specific features of the pillow are ornamental and contribute to the overall appearance, versus those that are purely functional.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that the claim covers the overall visual gestalt of the pillow—the combination of the high back, flared arms, and bolster headrest—and is not limited to the exact, precise curves shown. The existence of multiple figures showing the design from different angles ('432 Patent, DESCRIPTION) may support the view that it is the three-dimensional impression that is protected.
- Evidence for a Narrower Interpretation: A party could argue that the claim is limited to the precise proportions and contours shown in the drawings. For the '432 patent, the use of solid lines for all features, including the pockets, could support an argument that the design is a unitary whole and any deviation is significant. For the '600 patent, the explicit disclaimer of the pockets ('600 Patent, FIG. 5) narrows the claim by removing those features from consideration, focusing the inquiry only on the remaining solid-line elements.
VI. Other Allegations
- Indirect Infringement: The complaint does not allege indirect infringement. The claims are for direct infringement against the defendant for its own alleged making, using, selling, and importing activities (Compl. ¶¶ 32, 39).
- Willful Infringement: The complaint alleges that Defendant’s infringement was "willful and deliberate" for both the '432 and '600 patents (Compl. ¶¶ 36, 43). This allegation may be supported by the assertion that Plaintiff put Defendant on notice of its rights via an IP infringement complaint submitted to Walmart.com nearly a year before the lawsuit was filed (Compl. ¶ 24).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this design patent dispute will likely depend on the court's and/or jury's determination of two central questions:
A Factual Question of Visual Deception: The core issue is whether an ordinary observer, familiar with the prior art in backrest pillows, would find the design of the accused "Cheer Collection" pillows to be substantially the same as the designs claimed in the '432 and '600 patents. This visual test will be the ultimate measure of infringement.
A Question of Claim Scope and Disclaimers: A key legal and factual issue, particularly for the '600 patent, will be the effect of the disclaimed pockets. The case will question how the presence of features on an accused product (pockets) impacts the infringement analysis when those same features are explicitly excluded from the patented design via broken lines.