Regalo Intl LLC v. Clute

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Regalo International, LLC (Minnesota)
  • Defendant: Lorne Jason Clute and Keezio Group, LLC (California)
  • Plaintiff’s Counsel: Fredrikson & Byron, P.A.; Altima Advisors
• Case Identification: 0:24-cv-00492, D. Minn., 02/15/2024
• Venue Allegations: Plaintiff Regalo alleges venue is proper in Minnesota because a substantial part of the events occurred there, Defendants have purposefully directed enforcement activities at Regalo in Minnesota, and Regalo is incorporated and has an established place of business in the state.
• Core Dispute: Plaintiff seeks a declaratory judgment that its inflatable toddler beds do not infringe Defendant’s design patent, and that the patent is invalid due to Defendant’s own prior sales activities.
• Technical Context: The dispute involves the ornamental design of portable, inflatable toddler mattresses that include integrated safety bumpers.
• Key Procedural History: This declaratory judgment action was filed after Defendants allegedly submitted an infringement report to Amazon, leading to the delisting of Plaintiff's product. Subsequently, Defendants filed their own infringement lawsuit against the Plaintiff in the Northern District of California. Plaintiff’s complaint also raises a significant invalidity challenge, alleging that Defendants’ own product, sold more than a year before the patent’s filing date, constitutes invalidating prior art under the on-sale bar.

Case Timeline

Date	Event
2017	Defendants allegedly began selling the "hiccapop Inflatable Toddler Travel Bed"
2019-03-28	U.S. Design Patent No. D852,543 application filed
2019-07-02	U.S. Design Patent No. D852,543 issued
Late 2023	Plaintiff Regalo began marketing its "Original Bed"
2024-01-08	Defendants allegedly submitted an infringement report to Amazon against Regalo's product
2024-01-17	Defendants (as Keezio Group, LLC) filed a patent infringement lawsuit against Regalo in N.D. Cal.
2024-02-15	Complaint for Declaratory Judgment filed by Regalo in D. Minn.

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

• Patent Identification: U.S. Design Patent No. D852,543, INFLATABLE MATTRESS WITH BUMPER, issued July 2, 2019 (’543 Patent).
• The Invention Explained:
  • Problem Addressed: The patent addresses the ornamental appearance of an inflatable toddler bed, seeking to provide a novel and non-obvious aesthetic design for such a product (D’543 Patent, CLAIM).
  • The Patented Solution: The patent claims the specific visual design of an inflatable mattress featuring four raised bumpers, a ribbed mattress surface, and a handle on one end ('543 Patent, Figs. 1, 3, 6). The design as a whole, including the particular contours of the side and end bumpers, constitutes the patented invention ('543 Patent, Figs. 1-7).
  • Technical Importance: The design provides a particular aesthetic for a product in the competitive juvenile consumer goods market, where visual appearance can be a significant differentiator (Compl. ¶13, ¶15).
• Key Claims at a Glance:
  • Design patents contain a single claim. The asserted claim is for "The ornamental design for an inflatable mattress with bumper, as shown and described" (’543 Patent, CLAIM).
  • The essential ornamental features of the claimed design include:
    • A rectangular inflatable base with a ribbed top surface.
    • Four raised bumpers integrated into the perimeter: two elongated, contoured bumpers on the long sides and two shorter, rounded bumpers on the ends.
    • A handle feature on one of the short ends.

III. The Accused Instrumentality

• Product Identification: The complaint seeks a declaratory judgment of non-infringement for two products: the "Regalo Inflatable Toddler Travel Bed With 4-Sided Bed Bumpers and Handles" (the "Original Bed") and a subsequent "Updated Bed" (Compl. ¶19, ¶45).
• Functionality and Market Context: Both products are portable, inflatable beds designed for toddlers (Compl. ¶19). The complaint alleges Regalo is a leader in the juvenile products industry and created its beds as part of ongoing research and development efforts (Compl. ¶13, ¶19). Regalo began selling the "Original Bed" in late 2023 through online retailers such as Amazon (Compl. ¶19, ¶20). After learning of the ’543 Patent, Regalo stopped selling the "Original Bed" and created the "Updated Bed" with further design changes (Compl. ¶30, ¶45).

IV. Analysis of Infringement Allegations

Design patent infringement is determined by the "ordinary observer" test, which asks whether an ordinary observer, familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented design. The complaint alleges several visual differences to argue that its products are not substantially the same as the patented design.

No probative visual evidence provided in complaint.

The complaint asserts the following differences between its products and the patented design to support its claim of non-infringement:

• Original Bed Non-Infringement Allegations (Compl. ¶43):

  • It allegedly has no handle, while the ’543 Patent design includes a handle shown in Figure 3.
  • Its bumpers are allegedly "larger and less contoured" than those shown in the ’543 Patent figures.

• Updated Bed Non-Infringement Allegations (Compl. ¶46):

  • It allegedly has only two bumpers on the sides, whereas the patented design shows four bumpers (including at the head and foot).
  • Its two bumpers allegedly have a "wave shape" that differs from the bumper shape in the patented design.

• Identified Points of Contention:

  • Scope Questions: The central infringement question is whether the differences articulated by Regalo are sufficient to distinguish its products from the patented design in the eyes of an ordinary observer. The analysis will not be a simple checklist of features but a comparison of the designs' overall visual effect.
  • Technical Questions: A factual question for the court will be whether the "Original Bed" bumpers are indeed "larger and less contoured" and whether the "Updated Bed" bumpers are a "wave shape" in a manner that creates a distinct visual impression from the patented design. A comparison between the two-bumper design of the "Updated Bed" and the four-bumper patented design raises a direct question of substantial similarity.

V. Key Claim Terms for Construction

Claim construction is not typically performed for design patents, as the drawings are the claim. However, the dispute will likely center on the visual significance of specific features depicted in the patent’s figures.

• The Term: "Handle" (as depicted in Figure 3).

• Context and Importance: Regalo's non-infringement argument for its "Original Bed" relies in part on the absence of this feature (Compl. ¶43). Practitioners may focus on this element because its presence or absence is a clear, binary difference between the accused product and the patented design. The court will have to determine how much weight an ordinary observer would give this single feature when considering the overall appearance of the product.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: A party could argue the handle is a minor feature and its absence does not change the overall visual impression of the bed's primary features (the bumper and mattress shape).
  • Evidence for a Narrower Interpretation: The patentee could argue the handle is an integral part of the claimed "as shown" design, and its inclusion in a specific figure (Fig. 3) makes it a material limitation of the claimed aesthetic ('543 Patent, Fig. 3).

• The Term: "Four bumpers" (as depicted in Figures 1 and 6).

• Context and Importance: Regalo's "Updated Bed" allegedly has only two bumpers, a significant structural difference from the four-bumper configuration shown in the patent (Compl. ¶46). The resolution of this issue is critical to determining infringement for the "Updated Bed."

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: A party might argue that the essence of the design is the contoured side bumpers, and that the end bumpers are less significant to the overall look.
  • Evidence for a Narrower Interpretation: The patent drawings consistently and clearly show a four-sided bumper configuration from multiple angles ('543 Patent, Figs. 1, 2, 3, 6). A party could argue that this four-sided arrangement is fundamental to the claimed design and that a two-sided version creates a substantially different visual appearance.

VI. Other Allegations

• Invalidity: The complaint includes a count for a declaratory judgment of invalidity of the ’543 Patent (Compl. ¶¶52-55). The core allegation is that Defendants’ own "hiccapop Inflatable Toddler Travel Bed" was publicly disclosed, sold, and/or available in 2017, which is more than one year prior to the patent's filing date of March 28, 2019 (Compl. ¶53). This raises a challenge under the on-sale bar of 35 U.S.C. § 102. The complaint further notes that Defendants themselves contend the ’543 Patent "describes and is associated with their 'hiccapop' Toddler Travel Bed," which, if true, could support the argument that their own product is invalidating prior art (Compl. ¶24, ¶35).

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

1. A core issue will be one of invalidity based on prior public use: Can Regalo prove that the Defendants' own "hiccapop" product, which allegedly embodies the patented design, was on sale or in public use before the critical date of March 28, 2018? If so, the ’543 patent could be invalid under the on-sale bar.
2. A second key issue will be one of holistic design comparison: For the non-infringement claim, will the specific visual differences alleged by Regalo—such as the absence of a handle or the use of two bumpers instead of four—be legally sufficient to create a different overall ornamental appearance from the patented design in the mind of an ordinary observer?
3. The case also presents a procedural question regarding competing lawsuits, with this declaratory judgment action in Minnesota following an infringement action filed by the patentee in California, raising potential questions of which case should proceed first under the first-to-file rule.