DCT
2:17-cv-12854
Atomi Inc v. Unitech Group LLP
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Atomi, Inc. (New York)
- Defendant: Unitech Group LLC (New Jersey)
- Plaintiff’s Counsel: Satterlee Stephens LLP
- Case Identification: 2:17-cv-12854, D.N.J., 12/08/2017
- Venue Allegations: Venue is alleged to be proper in the District of New Jersey because the Defendant is incorporated and transacts business within the district, including offering for sale and selling the accused products.
- Core Dispute: Plaintiff alleges that Defendant’s USB charging stand infringes a design patent covering the ornamental appearance of a charging station.
- Technical Context: The dispute concerns consumer electronic accessories, specifically multi-port charging docks, a product category where aesthetic design is a key market differentiator.
- Key Procedural History: The complaint alleges that Plaintiff has licensed the patent-in-suit to at least five other companies. It further alleges that Defendant received notice of the patent from Amazon.com on September 6, 2017, and then received a copy of the patent and a license offer directly from Plaintiff on September 7, 2017, but continued to sell the accused product without taking a license.
Case Timeline
| Date | Event |
|---|---|
| 2015-05-19 | '829 Patent Priority Date (Application Filing) |
| 2017-02-14 | '829 Patent Issue Date |
| 2017-Summer | Defendant allegedly began importing accused units |
| 2017-09-06 | Defendant allegedly informed by Amazon.com of infringement complaint |
| 2017-09-07 | Defendant allegedly provided a copy of the '829 Patent by Plaintiff |
| 2017-12-08 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D778,829 - CHARGING STATION
- Patent Identification: U.S. Design Patent No. D778,829, CHARGING STATION, issued February 14, 2017 (the “’829 Patent”).
The Invention Explained
- Problem Addressed: Design patents protect the ornamental appearance of an article of manufacture rather than its utilitarian features. The objective is to secure rights to a new, original, and non-obvious aesthetic design that distinguishes a product in the marketplace.
- The Patented Solution: The ’829 Patent claims the specific ornamental design for a charging station as depicted in its seven figures (’829 Patent, Claim; FIGS. 1-7). The design consists of a rectangular base with rounded corners supporting four thin, parallel, transparent-appearing vertical dividers. These dividers also feature rounded top corners and are shown to be significantly taller than the base. The patent’s description explicitly disclaims elements shown in broken lines, such as the specific configuration of ports on the rear of the device and the feet on its underside, meaning these features are not part of the protected design (’829 Patent, col. 1:65-68).
- Technical Importance: In the market for consumer electronics like charging stations, where functional differences may be minimal, a unique and pleasing ornamental design can be a significant driver of commercial success and brand identity (’829 Patent, FIG. 1).
Key Claims at a Glance
- The patent contains a single claim for: "The ornamental design for a charging station, as shown and described." (’829 Patent, Claim).
- This claim protects the overall visual appearance of the charging station as illustrated in the solid-line portions of the patent's drawings.
III. The Accused Instrumentality
Product Identification
The complaint identifies the accused product as the "USB 4 Port Charging Stand" (the "Infringing Units") (Compl. ¶13).
Functionality and Market Context
The accused product is a charging station designed to hold and charge multiple electronic devices simultaneously (Compl. p. 6). The complaint alleges that the Defendant, under the seller name "Tech Union," imports these units from China and sells them on Amazon.com (Compl. ¶13, ¶15). The complaint includes a three-panel image comparing figures from the ’829 Patent, the Plaintiff's "Atomi Product," and the accused "Unitech Product" (Compl. p. 6). This visual alleges a strong resemblance in the overall form, proportions, and features of the accused product to the patented design.
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 breaks down the design into several key visual features to support its infringement allegation.
’829 Patent Infringement Allegations
| Claim Element (from descriptive text in Compl. ¶21) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a generally rectangular platform with radiused corners | The accused product is alleged to have a base with a similar rectangular shape and rounded corners. The visual provided shows the base of the accused Unitech Product. | ¶21; p. 6 | col. 1:52-53 (FIG. 1) |
| a recessed area in the back where a plurality of USB ports and a power wire are located | The accused product is alleged to have a recessed rear area containing charging ports. | ¶21 | col. 1:56-57 (FIG. 4) |
| four thin plastic (see-through) dividers | The accused product is shown with four thin, transparent dividers rising from its base. | ¶21; p. 6 | col. 1:52-53 (FIG. 1) |
| [dividers] which are nearly twice the height of the base and which have radiused tops extending upwardly from the platform | The dividers on the accused product appear to have proportions and rounded top corners similar to those in the patented design. | ¶21; p. 6 | col. 1:61-64 (FIGS. 6-7) |
Identified Points of Contention
- Scope Questions: A primary issue will be the impact of the elements disclaimed via broken lines in the patent drawings (e.g., the specific port cutouts). The complaint's description includes "a recessed area in the back where a plurality of USB ports...are located" (Compl. ¶21), but the patent itself does not claim the specific appearance of those ports (’829 Patent, FIG. 4). This raises the question of whether any visual similarity in this unclaimed region is legally relevant to the infringement analysis.
- Visual Comparison Questions: The core of the dispute will be a factual comparison of the designs. The complaint presents a side-by-side photograph of the accused product next to the patented design to argue they are "substantially the same" (Compl. p. 6; ¶30). The defense may argue that differences in proportion, materials, or other details are significant enough to differentiate the products in the mind of an ordinary observer.
V. Key Claim Terms for Construction
In design patent litigation, the "claim" is understood to be the design itself as depicted in the drawings, rather than a set of text-based limitations. The central analysis is not the construction of terms but the comparison of the overall visual appearance of the claimed design and the accused product.
- The Term: "The ornamental design for a charging station, as shown and described."
- Context and Importance: The scope of this "visual claim" is the crux of the case. The court’s analysis will focus on what an ordinary observer perceives when viewing the design as a whole, filtering out any functional aspects or features disclaimed in the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that the claim's scope covers the overall visual impression created by the combination of a low-profile rectangular base with four tall, thin, rounded-top vertical dividers. This view would treat minor variations in curvature or proportion as insignificant.
- Evidence for a Narrower Interpretation: A party could argue that the claim is limited to the exact proportions and contours shown in the solid lines of the patent figures. This interpretation would emphasize the legal effect of the broken-line disclaimers, arguing that any similarity in the unclaimed port area must be ignored by the ordinary observer, potentially highlighting differences in the claimed portions.
VI. Other Allegations
- Indirect Infringement: The prayer for relief includes a request to enjoin "actively inducing infringement" (Compl. Prayer ¶B). However, the factual allegations in the body of the complaint focus on direct infringement by Defendant’s own acts of importing, offering for sale, and selling the accused products (Compl. ¶29, ¶31). The complaint does not set forth specific facts to support a claim for induced infringement, such as allegations that Defendant instructed third parties to perform an infringing act.
- Willful Infringement: The complaint alleges willful infringement based on Defendant's purported knowledge of the ’829 Patent prior to the lawsuit. The basis for this allegation is a notice from Amazon.com on September 6, 2017, and direct notice from Plaintiff, which included a copy of the patent, on September 7, 2017 (Compl. ¶16-18). The complaint alleges that Defendant resumed selling the accused product after receiving this notice, which may support the claim that the infringement was willful and deliberate (Compl. ¶19, ¶28, ¶34).
VII. Analyst’s Conclusion: Key Questions for the Case
- The "Ordinary Observer" and Disclaimed Features: A central legal question will be how the features disclaimed via broken lines in the ’829 Patent (such as the port arrangement) affect the infringement analysis. The case may turn on whether the overall visual similarity is compelling enough to an ordinary observer even after legally ignoring any resemblance in these unclaimed regions.
- Substantial Similarity of Overall Appearance: The key factual question for the court will be whether the accused Unitech product and the patented design are "substantially the same." This will involve a holistic visual comparison, guided by prior art, where the side-by-side evidence presented in the complaint will likely play a significant role.