DCT

3:23-cv-00066

Millennium Outdoors LLC v. Walmart Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:23-cv-00066, S.D. Miss., 01/26/2023
  • Venue Allegations: Venue is alleged against Walmart based on its numerous "regular and established place[s] of business" in the district. Venue is alleged against Hangzhou GreatStar as a foreign entity that may be sued in any judicial district.
  • Core Dispute: Plaintiff alleges that Defendants' folding boat seat infringes two of its design patents and associated trade dress for a similar product.
  • Technical Context: The dispute concerns the ornamental design of folding, breathable mesh boat seats used in the marine and outdoor recreation industries.
  • Key Procedural History: The complaint alleges a prior business relationship where Walmart purchased and sold Plaintiff's patented boat seat from approximately 2015 to August 2016. During this period, Plaintiff allegedly advised Walmart that the product was subject to patent protection. This history may be significant for the allegations of willful infringement.

Case Timeline

Date Event
2014-07-16 Priority Date for D’046 and D’047 Patents
2014 Plaintiff begins selling an earlier version of boat seat with similar trade dress
c. 2015 Walmart begins purchasing and selling Plaintiff's patented boat seat
2015-04-21 U.S. Patent No. D727,046 Issues
2015-04-21 U.S. Patent No. D727,047 Issues
c. 2016-08 Plaintiff and Walmart terminate their business relationship
c. 2017 Plaintiff begins marketing the current "Millennium Boat Seat"
c. 2022-05 Defendants allegedly begin to manufacture and sell the Accused Product
2023-01-26 Complaint Filed

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

U.S. Design Patent No. D727,046 ("Boat Seat") - Issued April 21, 2015

  • The Invention Explained:
    • Problem Addressed: The complaint does not specify a technical problem addressed by the design patent, as design patents protect ornamental appearance rather than functional solutions. The patent protects the "non-functional, ornamental design for a boat seat" (Compl. ¶20).
    • The Patented Solution: The patent claims the unique visual appearance of a boat seat. The design consists of a fabric seat and backrest suspended within a minimalist, tubular metal frame. Key ornamental features shown in the patent's figures include the continuous, upward-curving frame that forms the armrests and backrest support, the specific shape of the mounting bracket, and the overall clean, taut aesthetic (D'046 Patent, Figs. 1-6). The complaint alleges Plaintiff was the first in the industry to offer a folding, breathable mesh boat seat, suggesting the design was novel at the time (Compl. ¶15).
  • Key Claims at a Glance:
    • The patent contains a single claim for "The ornamental design for a boat seat, as shown and described" (D'046 Patent, Claim). This claim protects the overall visual appearance of the boat seat as depicted in Figures 1-6.

U.S. Design Patent No. D727,047 ("Boat Seat") - Issued April 21, 2015

  • The Invention Explained:
    • Problem Addressed: As with the D'046 Patent, this patent protects ornamental appearance, not functional utility (Compl. ¶23).
    • The Patented Solution: The ’047 Patent claims an ornamental design for a boat seat that is visually very similar to the design in the D'046 Patent. It features the same general frame configuration and sling-style seat. A notable difference is the explicit depiction of circular fasteners or grommets attaching the fabric to the frame along the sides of the backrest (D'047 Patent, Figs. 1, 3, 6). The overall visual impression is of a lightweight, suspended seat with a distinct frame and mounting structure.
  • Key Claims at a Glance:
    • The patent contains a single claim for "The ornamental design for a boat seat, as shown and described" (D'047 Patent, Claim). The claim's scope is defined by the six figures included in the patent.

III. The Accused Instrumentality

  • Product Identification: The "DRIFT Folding Boat Seat, 400 LB Capacity, Model BT6357" (the "Accused Product") (Compl. ¶2).
  • Functionality and Market Context: The Accused Product is a "folding, breathable mesh boat seat" (Compl. ¶39). The complaint alleges that after Plaintiff and Walmart terminated their business relationship, Walmart "worked with GreatStar to create and sell a competing boat seat that is nearly identical to the Millennium Boat Seat" (Compl. ¶37). The product is sold on Walmart's website and competes with Plaintiff's products, which are sold through various retailers, including third-party sellers on Walmart's website (Compl. ¶¶ 35, 41, 55). The complaint includes a side-by-side visual comparison showing the Plaintiff's product (identified as "Boat Seat Trade Dress") and the Accused Product (Compl. ¶53, p. 17).

IV. Analysis of Infringement Allegations

The complaint alleges that infringement of a design patent occurs when, in the eye of an ordinary observer, the accused design is substantially the same as the claimed design, such that the observer would be induced to purchase the accused product supposing it to be the patented one (Compl. ¶¶ 62, 72). The complaint provides visual, side-by-side comparisons to support its allegations.

  • D’046 Patent Infringement Allegations: The complaint alleges that the Accused Product and the design claimed in the ’046 Patent are "substantially the same" (Compl. ¶43). To support this, Table 1 of the complaint presents direct comparisons of patent figures with photographs of the Accused Product. For example, a front perspective view of the Accused Product is shown next to Figure 1 from the patent, highlighting similarities in the overall frame shape, seat suspension, and minimalist aesthetic (Compl. ¶45, p. 10). Another comparison shows a side view of the Accused Product next to Figure 2, drawing attention to the similar profile of the frame and mounting hardware (Compl. ¶45, p. 11).

  • D’047 Patent Infringement Allegations: The complaint makes a parallel infringement allegation for the ’047 Patent, stating the overall appearances are "substantially the same" (Compl. ¶48). Table 2 provides corresponding visual evidence. A top-down view of the Accused Product is compared to Figure 3 of the patent, suggesting a similar silhouette and arrangement of the frame and fabric seat (Compl. ¶50, p. 15). The complaint's images suggest the Accused Product incorporates the fastener/grommet feature shown in the ’047 Patent.

  • Identified Points of Contention:

    • Scope Questions: A primary issue will likely be the extent to which the patented design is ornamental versus functional. Defendants may argue that elements such as the folding mechanism, the use of breathable mesh, and the general shape of the support frame are dictated by function and are therefore not part of the protected ornamental design. The court's assessment of functionality will be critical in defining the scope of the patent claim for the "ordinary observer" test.
    • Technical Questions: A factual question will be whether the visual differences between the patented designs and the Accused Product are sufficient to avoid infringement. These differences may include the specific branding ("DRIFT" logo), minor variations in hardware, or subtle proportional changes. The central question for the fact-finder is whether these differences are enough to prevent an ordinary observer from being deceived, or if they are trivial in the context of the overall similar appearance.

V. Key Claim Terms for Construction

In design patent litigation, the "claim" is the drawing itself, and traditional term construction is rare. The central dispute is typically over the scope of the design as a whole, focusing on what is ornamental versus functional.

  • The Term: "ornamental design for a boat seat"
  • Context and Importance: The entire case hinges on what aspects of the depicted seat are considered "ornamental." Any feature deemed primarily functional is excluded from the scope of the design patent and cannot serve as a basis for infringement. Practitioners may focus on this issue because if Defendants can successfully argue that the key similarities between the products are functional, the infringement case may fail.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader (More Ornamental) Interpretation: The patent claims the design "as shown and described," without disclaiming any specific part of the drawing. Plaintiff alleges that its design as a whole is "non-functional" (Compl. ¶¶ 20, 23). The argument would be that while a boat seat must be functional, there were many other ways to design one, and the specific aesthetic choices embodied in the drawings are purely ornamental.
    • Evidence for a Narrower (More Functional) Interpretation: Defendants may argue that features like the "breathable mesh" (Compl. ¶15) and the folding capability are purely utilitarian. They may also argue that the specific angles and structure of the metal frame are dictated by the need to provide stable support for a person's weight, making those structural elements functional.

VI. Other Allegations

  • Indirect Infringement: The complaint pleads direct and induced infringement (Compl. ¶¶ 65, 75). The factual basis for inducement appears to stem from the allegation that "Walmart worked with GreatStar to create and sell a competing boat seat" (Compl. ¶37), suggesting Walmart may have encouraged GreatStar to manufacture the allegedly infringing design.
  • Willful Infringement: The complaint alleges willful infringement based on Defendants' alleged knowledge of the patents (Compl. ¶¶ 67, 77). The factual support is based on the prior business relationship, during which Millennium allegedly "advised Walmart that the Millennium Boat Seat was the subject of patent protection" and Walmart itself advertised the seat as "patented" (Compl. ¶¶ 32, 36). The allegation that Defendants copied the design after this relationship ended further supports the claim of willfulness (Compl. ¶40).

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

  • Functionality vs. Ornamentation: A dispositive issue for the court will be to separate the functional aspects of the boat seat from its purely ornamental design. The scope of patent protection, and thus the entire infringement analysis, will depend on whether the overall shape, frame structure, and configuration are found to be aesthetic choices or utilitarian necessities.
  • The "Ordinary Observer" Test: The core factual question will be whether an ordinary observer, giving the attention a purchaser usually gives, would be deceived by the similarity between the Accused Product and the patented designs. This will involve weighing the striking overall visual similarities presented in the complaint's tables against any minor differences, such as logos or hardware details.
  • Evidence of Willful Copying: A key question for willfulness and potential enhanced damages will be the nature of the prior relationship between Millennium and Walmart. The evidence concerning Walmart's knowledge of the patents and the circumstances under which it allegedly "worked with GreatStar" to create a "nearly identical" product will be central to determining whether any infringement was intentional.