Arex Industries Inc v. Diode Dynamics LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Arex Industries, Inc. (California)
  • Defendant: Diode Dynamics, LLC (Missouri)
  • Plaintiff’s Counsel: Husch Blackwell LLP; Inhouse Co. Law Firm
• Case Identification: 4:25-cv-00541, E.D. Mo., 04/18/2025
• Venue Allegations: Venue is alleged to be proper in the Eastern District of Missouri because Defendant is organized under Missouri law and maintains a registered agent within the district.
• Core Dispute: Plaintiff alleges that Defendant’s aftermarket headlights for the Ford Bronco infringe its design patent covering the ornamental features of a vehicle headlight.
• Technical Context: The dispute is in the automotive aftermarket parts industry, specifically concerning the ornamental design of LED headlights for popular vehicle models.
• Key Procedural History: The complaint alleges that Plaintiff sent a cease and desist letter to Defendant in November 2023, providing notice of its then-pending patent application. The complaint also alleges ongoing contact with Defendant and third-party platforms post-issuance of the patent. These allegations form the basis for a claim of willful infringement.

Case Timeline

Date	Event
2022-07-25	Priority Date (Application for '331 Patent filed)
2022-11	Plaintiff showcases its Ford Bronco headlights at SEMA
2023-11	Plaintiff discovers Defendant's accused product at SEMA
2023-11	Plaintiff sends cease and desist letter to Defendant
2024-12-24	U.S. Patent No. D1,055,331 issues
2025-04-18	Complaint filed

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

U.S. Design Patent No. D1,055,331 - "Vehicle Headlight"

• Patent Identification: U.S. Design Patent No. D1,055,331, "Vehicle Headlight," issued December 24, 2024.

The Invention Explained

• Problem Addressed: In the context of design patents, the "problem" is the absence of a particular aesthetic design in the marketplace. The complaint argues that the patented design is distinct from the prior art, suggesting a goal of creating a novel and unique appearance for a vehicle headlight (Compl. ¶26-27).
• The Patented Solution: The patent protects the specific ornamental appearance of a vehicle headlight. The claimed design, as shown in solid lines in the patent's figures, consists of a main circular housing containing two vertically-stacked, rectangular "pillow-shaped" LED light trays. A horizontal light bar bisects the circular housing, passing between the two light trays. The surfaces surrounding the light trays feature a textured pattern of horizontal, "grille-like bars" ('331 Patent, FIG. 1, 3; Compl. ¶33). The broken lines in the patent drawings indicate that the overall external housing and mounting structures are not part of the claimed ornamental design ('331 Patent, Description).
• Technical Importance: The complaint alleges that the design is commercially significant and has achieved widespread consumer recognition, distinguishing Plaintiff's products in the automotive aftermarket (Compl. ¶5, ¶48, ¶50).

Key Claims at a Glance

• Design patents have a single claim. The asserted claim is for "The ornamental design for a vehicle headlight, as shown and described" ('331 Patent, Claim).
• The essential ornamental elements of the design, as alleged in the complaint, include:
  • A circular LED ring bisected by a horizontal, rectangular light bar
  • Twin pairs of rounded, rectilinear, "pillow-shaped" LED lights
  • Shallow, rectangular tray enclosures for the LED lights
  • A textured surface pattern of multiple horizontal, "grille-like bars" surrounding the light trays (Compl. ¶26, ¶33).

III. The Accused Instrumentality

Product Identification

• Defendant’s headlight "compatible with the 2021-2025 Ford Bronco" (Compl. ¶22). The complaint specifically shows photographs of Defendant’s "2021-2025 for Bronco LED Projector headlight" (Compl. ¶23).

Functionality and Market Context

• The complaint focuses on the ornamental appearance of the accused headlights, alleging they are "virtually, if not exactly, identical" to the patented design (Compl. ¶30, ¶32). The complaint includes a side-by-side visual comparison to support this allegation. A visual provided in the complaint shows a photograph of the accused product illuminated, highlighting the distinctive lighting signature (Compl. ¶13). The complaint positions Defendant as a direct competitor in the automotive lighting market that is exploiting Plaintiff's goodwill (Compl. ¶8, ¶51).

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 structures its infringement argument around this test, directly referencing the controlling case law, Egyptian Goddess, Inc. v. Swisa, Inc. (Compl. ¶24).

The complaint presents its infringement theory primarily through extensive visual comparisons. A chart on page 20 of the complaint breaks down the alleged similarities, pointing to specific features. A visual comparison provided in the complaint juxtaposes a drawing from the '331 Patent with a photograph of the accused headlight, highlighting their alleged visual similarity (Compl. ¶23). Another image provides call-outs identifying specific allegedly copied features on both the patented design and the accused product, such as the "Two pairs of pillow-shaped LED lights inside tray enclosures" and the "Grille-like bars design" (Compl. p. 20).

The complaint alleges that the accused product is "visually closer to the claimed design than it is to the closest prior art" (Compl. ¶31). To support this, it provides a multi-page chart comparing the patented design and the accused product to numerous prior art designs cited during the patent's prosecution (Compl. ¶26, pp. 10-19). The complaint argues that because the patented design "conspicuously departs from the prior art," the similarities between it and the accused product are dispositive for an ordinary observer (Compl. ¶30).

• Identified Points of Contention:
  • Scope Questions: The primary dispute will concern the overall visual impression. A question for the court is whether the combination of elements in the '331 Patent creates a total ornamental effect that is substantially the same as the accused product, when viewed in the context of the prior art.
  • Technical Questions: A key factual question will be the degree of similarity between the designs. The complaint alleges they are "virtually, if not exactly, identical" (Compl. ¶32), a point Defendant will likely contest by highlighting any perceived differences, no matter how small. The significance of any such differences will depend on the court's assessment of how distinct the patented design is from the prior art.

V. Key Claim Terms for Construction

In a design patent case, claim construction focuses on defining the scope of the claimed design as a whole rather than construing individual text-based terms. The central issue is the overall ornamental visual impression conveyed by the drawings.

• The Term: The scope of "the ornamental design for a vehicle headlight, as shown and described."
• Context and Importance: The determination of the design's scope will define the infringement analysis. If the scope is determined to be broad and covers the general aesthetic combination of elements, infringement may be easier to establish. If the scope is narrowed to the exact details and proportions shown in the drawings, any small deviation in the accused product could support a non-infringement argument. Practitioners may focus on this issue because the outcome of the "ordinary observer" test hinges on it.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The complaint argues that the design's key features—the bisected ring, pillow-shaped lights, and grille texture—are a conspicuous departure from the prior art, suggesting the protected scope is the novel overall combination of these elements (Compl. ¶27, ¶33).
  • Evidence for a Narrower Interpretation: The patent drawings use broken lines to disclaim the surrounding housing, mounting points, and other functional aspects ('331 Patent, Description). A party could argue that the claim is strictly limited to the specific ornamental features shown in solid lines, and that the overall shape and configuration are dictated by the vehicle (the Ford Bronco) for which the headlight is designed, potentially limiting the scope of what is purely ornamental.

VI. Other Allegations

• Indirect Infringement: The complaint does not explicitly plead a separate count for indirect infringement (induced or contributory).
• Willful Infringement: The complaint alleges willful infringement based on both pre-suit and post-suit knowledge. It specifically alleges that Plaintiff provided Defendant with notice of its pending patent application via a cease and desist letter in November 2023 (Compl. ¶14, ¶22). It further alleges that Defendant continued to infringe after the patent issued on December 24, 2024, despite repeated contact from the Plaintiff (Compl. ¶17-18). The prayer for relief seeks treble damages (Compl., Prayer ¶7).

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

• A core issue will be the application of the ordinary observer test in the context of the prior art. The case will turn on a fact-intensive visual comparison: Is the accused headlight "substantially the same" as the design claimed in the '331 Patent? The answer will depend heavily on whether the court views the patented design as a significant aesthetic leap over prior art headlights, as Plaintiff alleges, or as a more modest variation in a crowded field.
• A key evidentiary question will be one of willfulness. The complaint’s allegation of pre-suit notice via a cease and desist letter regarding the pending application raises a significant question of whether Defendant’s alleged infringement was "deliberate or intentional," potentially exposing it to enhanced damages if infringement is found.
• The analysis may also raise a question of functionality versus ornamentality. While not explicitly framed as a point of contention in the complaint, a defense could arise that certain features of the claimed design are dictated by function (e.g., light projection requirements, fitment on the Ford Bronco) and are therefore not protectable as part of an ornamental design, which could narrow the scope of the patent claim.