DCT
1:20-cv-03632
Ap Deauville LLC v. TSM Brands LLC
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: A.P. Deauville, LLC (New Jersey)
- Defendant: TSM Brands, LLC (New Jersey)
- Plaintiff’s Counsel: Curcio Mirzaian Sirot LLC; Lackenbach Siegel LLP
- Case Identification: 1:20-cv-03632, D.N.J., 04/03/2020
- Venue Allegations: Venue is alleged to be proper in the District of New Jersey as the Defendant is a New Jersey corporation that resides in, has a regular and established place of business in, and has allegedly committed acts of infringement in the district.
- Core Dispute: Plaintiff alleges that Defendant’s bottle design for a personal care product infringes a design patent and constitutes trade dress infringement.
- Technical Context: The dispute is in the field of consumer packaging, specifically the ornamental design of bottles for health and beauty products.
- Key Procedural History: The complaint alleges that Plaintiff has used the design in commerce since at least 2017 and has sold over 12 million products featuring the design. It also asserts that the patent grant serves as evidence that the design is ornamental and non-functional for the purposes of its parallel trade dress claim.
Case Timeline
| Date | Event |
|---|---|
| 2017-02-06 | U.S. Patent No. D828,173 application filed (Priority Date) |
| 2017 (at least) | Plaintiff begins using the design in commerce |
| 2018-09-11 | U.S. Patent No. D828,173 issues |
| 2020-04-03 | Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. D828,173 - "Bottle"
The Invention Explained
- Problem Addressed: Design patents protect ornamentation rather than function. The patent does not articulate a specific technical problem, but instead aims to provide a new and unique ornamental appearance for a bottle.
- The Patented Solution: The patent claims the specific visual appearance of a bottle as depicted in its six figures ('173 Patent, FIGS. 1-6). The design features a generally rectangular bottle body with an "hour glass or 'waisted'" shape created by concave indentations on its opposing narrow sides (Compl. ¶17; '173 Patent, FIG. 3). Within these indented grip areas, the surface is textured with a pattern of "stippling" or small raised bumps ('173 Patent, FIG. 5). The claim explicitly disclaims the threaded neck and opening of the bottle, which are shown in dashed lines ('173 Patent, Description).
- Technical Importance: The complaint alleges that the design has achieved significant commercial success, with over 12 million units sold, which suggests the design's value as a market differentiator (Compl. ¶21).
Key Claims at a Glance
- The patent asserts a single claim for "The ornamental design for a bottle, as shown and described" ('173 Patent, Claim).
- The essential visual elements of this single claim, as described in the complaint, are:
- An overall "hour glass or 'waisted'" bottle shape (Compl. ¶17).
- Indentations on each side of the bottle (Compl. ¶17).
- Stippling within the recessed indentations (Compl. ¶17).
III. The Accused Instrumentality
Product Identification
The accused instrumentality is the bottle used for Defendant’s "Luxury Men" 3 in 1 body wash, shampoo, and conditioner (Compl. ¶10).
Functionality and Market Context
The complaint describes the Defendant as a "leading supplier of value and private label brands" in the health, beauty, and household products segments (Compl. ¶5). The infringement allegation is focused exclusively on the ornamental appearance of the bottle. The complaint alleges that the accused bottle design is "virtually indistinguishable" from the Plaintiff's patented design and associated trade dress (Compl. ¶26). The complaint provides a drawing from the patent to illustrate the design at issue. This drawing shows a bottle with a "waisted" profile and stippled indentations on its sides (Compl., p. 4).
IV. Analysis of Infringement Allegations
D828,173 Infringement Allegations
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a bottle, as shown and described. | Defendant is alleged to be "making, using, and/or selling products embodying the design of the Patent," specifically the bottle for its "Luxury Men" product line. The complaint describes the accused design as being "virtually indistinguishable" from the patented design. | ¶10, ¶26 | col. 1:57-58 |
Identified Points of Contention
- Scope Questions: The primary legal question in a design patent case is whether, in the eye of an ordinary observer, the resemblance between the patented design and the accused design is such as to deceive such an observer into purchasing one supposing it to be the other. The dispute will center on the overall visual impression created by the accused bottle compared to the design claimed in the '173 Patent.
- Technical Questions: The analysis will involve a visual comparison of the products. A key question for the fact-finder will be whether the specific contours of the accused bottle's "waisted" shape, the dimensions and placement of its side indentations, and the pattern of its surface texturing are substantially the same as those shown in the patent's figures.
V. Key Claim Terms for Construction
In design patent litigation, the claim is typically understood to be the design as shown in the drawings, and courts often avoid providing detailed verbal descriptions. However, the scope of the claimed design remains a central issue.
- The Term: "The ornamental design for a bottle, as shown and described"
- Context and Importance: The entire infringement analysis depends on the scope of the visual impression protected by the patent's figures. The court's assessment of what constitutes the "design" will determine whether the accused product infringes.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue that the core, protectable concept is the combination of the overall "hour glass" silhouette with stippled side grips, and that minor variations in proportions or stipple density should not defeat a finding of infringement. The focus would be on the overall visual effect on the ordinary observer.
- Evidence for a Narrower Interpretation: A party could argue that the design is limited to the precise shapes and contours depicted in the patent's figures. The specific angles of the "waist," the exact oval shape of the indentations, and the regular pattern of the stippling shown in Figures 1-6 of the '173 Patent could be argued to define the narrow scope of protection. Further, the patent explicitly disclaims portions shown in dashed lines, such as the bottle's threaded neck, which narrows the scope of the claimed design ('173 Patent, Description).
VI. Other Allegations
- Indirect Infringement: The complaint does not contain allegations of indirect infringement.
- Willful Infringement: The complaint alleges that the Defendant's infringement is willful (Compl. ¶12). This allegation is based "upon information and belief" that the "Defendant intentionally copied the patented design with full knowledge of the Patent" (Compl. ¶12).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual similarity: Under the "ordinary observer" test, is the overall ornamental appearance of the Defendant's "Luxury Men" bottle substantially the same as the design claimed in the '173 patent? The outcome will depend on a comparison of the holistic visual impression of the two designs, not on an enumeration of minor differences.
- A key evidentiary question will concern willfulness: Can the Plaintiff produce evidence beyond the "information and belief" pleading standard to demonstrate that the Defendant had pre-suit knowledge of the '173 patent and "intentionally copied" the design, as would be required to support a claim for enhanced damages?
- The case also presents a question of dual protection: The complaint leverages the existence of the design patent to support its claim that the bottle shape is non-functional, a prerequisite for trade dress protection (Compl. ¶18). The litigation will likely explore the overlapping scope and remedies available under both patent and trademark law for the same bottle design.