DCT
4:24-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: Plaintiff alleges venue is proper because Defendant conducts business in the district and because the parties previously agreed to jurisdiction in a prior settlement agreement.
- Core Dispute: Plaintiff alleges that Defendant’s reading pillow products infringe two design patents and that Defendant has breached a prior settlement agreement related to the same conduct.
- Technical Context: The dispute concerns the ornamental design of bed rest pillows, a consumer product category focused on providing back and arm support for activities like reading in bed.
- Key Procedural History: The complaint alleges the current dispute follows a prior copyright-based lawsuit between the parties that was resolved via a settlement agreement. That agreement allegedly referenced U.S. Design Patent D875,432 and required Defendant to stop selling an infringing product. Plaintiff alleges Defendant breached this agreement and continued its infringing conduct. The complaint also notes that Plaintiff confronted Defendant in 2021 regarding the alleged breach and that the second patent-in-suit, U.S. Design Patent D949,600, issued after the settlement agreement was executed.
Case Timeline
| Date | Event |
|---|---|
| 2017-10-19 | Priority Date for D875,432 Patent |
| 2017-10-19 | Priority Date for D949,600 Patent |
| 2020-02-18 | Issue Date for D875,432 Patent |
| 2022-04-26 | Issue Date for D949,600 Patent |
| 2024-04-10 | 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, titled "Pillow," issued February 18, 2020.
The Invention Explained
- Problem Addressed: Design patents do not articulate a technical problem and solution; instead, they protect the novel, non-obvious, and ornamental appearance of an article of manufacture (Compl. ¶ 50; ’432 Patent, Claim).
- The Patented Solution: The patent claims the specific ornamental design for a pillow. The design consists of a main backrest portion, two flared armrests extending forward, and a detachable cylindrical head pillow attached at the top (’432 Patent, FIGS. 1-8). The claimed design includes the specific proportions, contours, and overall visual impression created by these elements in combination (’432 Patent, DESCRIPTION).
- Technical Importance: The complaint alleges the product design is a significant factor in the commercial success of its "Husband Pillow" product (Compl. ¶12).
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a pillow, as shown and described" (’432 Patent, Claim). This claim protects the overall visual appearance of the pillow as depicted in the patent's figures.
- All features shown in the drawings with solid lines, including the rear and arm pockets, are part of the claimed design (’432 Patent, FIG. 5).
U.S. Design Patent No. D949,600 - "Pillow"
- Patent Identification: U.S. Design Patent No. D949,600, titled "Pillow," issued April 26, 2022.
The Invention Explained
- Problem Addressed: As a design patent, the ’600 Patent protects the ornamental appearance of the pillow rather than a technical function (Compl. ¶ 59; ’600 Patent, Claim).
- The Patented Solution: The patent claims an ornamental design for a pillow that is visually similar to the ’432 Patent, comprising a backrest, armrests, and a detachable head pillow (’600 Patent, FIGS. 1-8). A key distinction is that certain features, such as the pockets on the rear and arms of the pillow, are depicted in broken lines (’600 Patent, FIG. 5). The patent specification explicitly states that these broken lines "depict portions of the pillow that form no part of the claimed design," effectively disclaiming them from the scope of protection (’600 Patent, DESCRIPTION).
- Technical Importance: The patent covers a design related to Plaintiff's commercial pillow product line (Compl. ¶27).
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a pillow, as shown and described" (’600 Patent, Claim).
- The scope of this claim is limited to the features shown in solid lines; features shown in broken lines are not part of the claimed ornamental design (’600 Patent, DESCRIPTION).
III. The Accused Instrumentality
Product Identification
- The complaint identifies Defendant’s "Clara Clark Bed Rest Reading Pillow with Arms" and "Nestl Reading Pillow" products as the accused instrumentalities (Compl. ¶¶ 19, 29).
Functionality and Market Context
- The accused products are bed rest pillows designed to provide back and arm support (Compl. ¶29). Visuals provided in the complaint depict a product with a main backrest, two forward-extending arms, and a detachable neck roll, which is sold online (Compl. ¶29). For example, a screenshot shows the "Clara Clark" pillow offered for sale online, illustrating its configuration and various color options (Compl. ¶29, p. 7). The complaint alleges that the design of the accused product is the "exact design Defendant promised not to sell" in the prior settlement agreement (Compl. ¶29).
IV. Analysis of Infringement Allegations
D875,432 Infringement Allegations
The complaint alleges that the accused product's design is "so substantially similar as to be nearly identical" to the patented design, such that an ordinary observer would be deceived (Compl. ¶54).
| Claim Element (from "The ornamental design... as shown") | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| Ornamental design as shown in FIG. 2 (Front View) | The accused product is alleged to have a front visual appearance that is substantially the same as the patented design, including the shape of the backrest, arms, and top pillow. | ¶53 | FIG. 2 |
| Ornamental design as shown in FIG. 5 (Rear View) | The accused product, as pictured, allegedly incorporates a rear view with pockets on the main body and arms that mirrors the patented design. | ¶53 | FIG. 5 |
| Ornamental design as shown in FIG. 8 (Perspective View) | The accused product's overall three-dimensional shape and configuration, including the detachable and adjustable neck roll, is alleged to be substantially the same as the patented design. A side-by-side comparison of the patent figure and a photograph of a similar product is provided as evidence (Compl. ¶53, p. 12). | ¶53 | FIG. 8 |
D949,600 Infringement Allegations
The complaint makes similar allegations regarding the ’600 Patent (Compl. ¶62).
| Claim Element (from "The ornamental design... as shown") | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| Ornamental design as shown in FIG. 2 (Front View) | The accused product is alleged to present a front appearance, including the contours of the backrest and arms, that is substantially the same as the claimed solid-line design. | ¶61 | FIG. 2 |
| Ornamental design as shown in FIG. 5 (Rear View) | The accused product's rear appearance is alleged to be substantially similar to the claimed design. The complaint provides a visual comparison between a product and the patent's rear view (Compl. ¶61, p. 13). | ¶61 | FIG. 5 |
| Ornamental design as shown in FIG. 8 (Perspective View) | The accused product's overall shape and form is alleged to be substantially the same as the claimed design, creating a nearly identical visual impression. | ¶61 | FIG. 14 |
Identified Points of Contention
- Scope Questions: The central infringement question for both patents will be whether an "ordinary observer," taking into account the prior art, would find the design of the accused product to be substantially the same as the claimed design.
- Technical Questions: For the ’600 Patent, a key issue will be the effect of the unclaimed features (the pockets shown in broken lines). The infringement analysis must compare the accused product to the claimed design, and the court will have to determine how to weigh the presence of features on the accused product that correspond to the disclaimed elements in the patent.
V. Key Claim Terms for Construction
For design patents, the "claim" is the design itself as depicted in the drawings. The construction analysis focuses on what the drawings show and what, if anything, is disclaimed.
- The Term: "The ornamental design for a pillow, as shown and described."
- Context and Importance: The scope of this claim, particularly for the ’600 Patent, is critical. Practitioners may focus on the distinction between the solid lines (claimed subject matter) and broken lines (unclaimed subject matter) in the '600 patent, as this directly impacts the infringement comparison. The fact that the '432 patent claims these features with solid lines while the '600 patent disclaims them may become a central point of argument.
- Intrinsic Evidence for Interpretation (’600 Patent):
- Evidence for a Broader Interpretation: A party might argue that the infringement analysis should focus on the overall visual "gestalt" of the pillow, and that the presence or absence of pockets is a minor detail that does not change the overall impression perceived by the ordinary observer.
- Evidence for a Narrower Interpretation: The ’600 Patent’s specification provides strong evidence for a narrow construction, stating explicitly that "The even length broken lines in the drawings depict portions of the pillow that form no part of the claimed design" (’600 Patent, DESCRIPTION). This language suggests that any comparison for infringement must disregard those features and focus only on the elements shown in solid lines.
VI. Other Allegations
Willful Infringement
- The complaint alleges that Defendant’s infringement is willful (Compl. ¶¶ 55, 63). The asserted basis for willfulness as to the ’432 Patent is Defendant's alleged knowledge of the patent arising from the prior settlement agreement and a 2021 confrontation over an alleged breach of that agreement (Compl. ¶¶ 24, 32). The complaint also makes a general allegation of willfulness for the infringement of the ’600 Patent (Compl. ¶63).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of infringement under the ordinary observer test: is the overall ornamental appearance of Defendant's pillows "substantially the same" as the patented designs, such that a typical purchaser would be deceived into believing they were buying the patented product?
- A critical legal question will be one of claim scope and disclaimers: for the ’600 Patent, how will the court factor the pockets on the accused product into the infringement analysis when those same features are explicitly disclaimed from the patent's protection via broken lines?
- A key factual question will be the impact of the parties' prior history: does Defendant's alleged knowledge of the '432 patent from the prior settlement agreement, and its subsequent conduct after being confronted in 2021, support a finding of willful infringement?