DCT
2:17-cv-02851
Omix Ada Inc v. Qingdao Hairunkaiyun Auto Parts Co Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: OMIX-ADA, INC. (Georgia)
- Defendant: Qingdao Hairunkaiyuan Auto Parts Co., Ltd. (China); Xianghe Baoliang Metal Products Co., Ltd. (China)
- Plaintiff’s Counsel: Dickinson Wright PLLC
- Case Identification: 2:17-cv-02851, D. Nev., 10/31/2017
- Venue Allegations: Venue is based on Defendants' alleged acts of infringement within the District of Nevada, including offering for sale and displaying the accused products at the SEMA automotive trade show in Las Vegas.
- Core Dispute: Plaintiff alleges that Defendants' aftermarket automotive products—a hood latch and an auxiliary light mount—infringe the ornamental designs protected by two of its U.S. design patents.
- Technical Context: The dispute involves the ornamental appearance of aftermarket parts for Jeep® vehicles, a market characterized by a high degree of consumer enthusiasm and product customization.
- Key Procedural History: The complaint does not mention any prior litigation, licensing history, or post-grant proceedings related to the patents-in-suit. The suit was filed concurrently with the SEMA trade show where the alleged infringement was observed.
Case Timeline
| Date | Event |
|---|---|
| 2012-10-11 | U.S. Patent No. D692,290 Priority Date (Application Filing) |
| 2013-10-29 | U.S. Patent No. D692,290 Issued |
| 2014-09-03 | U.S. Patent No. D773,110 Priority Date (Application Filing) |
| 2016-11-29 | U.S. Patent No. D773,110 Issued |
| 2017-10-30 | Plaintiff observed accused products at SEMA show |
| 2017-10-31 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D692,290 - "Hood Latch," Issued October 29, 2013
The Invention Explained
- Problem Addressed: Design patents do not articulate a technical problem but instead protect the novel, non-obvious, and ornamental appearance of an article of manufacture. The patent addresses the need for a new and unique ornamental design for an automotive hood latch.
- The Patented Solution: The patent claims the specific ornamental design for a two-part hood latch assembly (’290 Patent, Claim 1). The design, depicted across six figures, features a top handle piece with a recessed grip area and parallel raised ridges, connected via a central threaded bolt to a lower mounting base (’290 Patent, FIG. 1, 2). The overall visual impression is that of a robust, industrial-style latch mechanism.
- Technical Importance: In the automotive aftermarket, particularly for enthusiast vehicles, the aesthetic appearance of functional components like hood latches is a significant differentiator and driver of consumer purchasing decisions (Compl. ¶¶ 7-9).
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a hood latch, as shown and described" (’290 Patent, col. 1:57-58).
U.S. Design Patent No. D773,110 - "Auxiliary Light Mount Assembly," Issued November 29, 2016
The Invention Explained
- Problem Addressed: The patent protects a new ornamental design for an assembly used to mount auxiliary lights onto vehicles.
- The Patented Solution: The patent claims the ornamental design for the light mount assembly, which is characterized by a distinctive cross or "X" shape when viewed from the front or back (’110 Patent, FIG. 3, 4). The design consists of two primary clamping members that pivot to encircle a tubular structure. The patent explicitly disclaims the tubular bumper and an inset logo symbol, shown in broken lines, indicating they are for illustrative purposes only and not part of the claimed design (’110 Patent, Description, col. 1:65 - col. 2:1).
- Technical Importance: The design provides a unique aesthetic for a common aftermarket accessory, allowing vehicle owners to achieve a customized look when adding auxiliary lighting (Compl. ¶¶ 13-14).
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for an auxiliary light mount assembly, as shown and described" (’110 Patent, col. 1:57-59).
III. The Accused Instrumentality
Product Identification
- Defendant Hairunkaiyuan’s "Infringing Hood Latch," identified with product code JE1002 (Compl. ¶25; Table 1 at p. 6).
- Defendant Xianghe Baoliang’s "Infringing x-Clamps," identified with SKU SG-807 (Compl. ¶39; Table 1 at p. 8).
Functionality and Market Context
- Both accused products are aftermarket automotive parts targeted at the Jeep enthusiast market (Compl. ¶¶ 7, 14).
- The complaint alleges that the Defendants promoted, displayed, and offered these products for sale at the SEMA show in Las Vegas, a premier trade event for the specialty automotive industry (Compl. ¶¶ 27-30, 38-40). The complaint includes a photograph showing a poster of the accused Infringing Hood Latch at Defendant Hairunkaiyuan's trade show booth (Compl. ¶31). Another image from a catalog shows the accused Infringing x-Clamp alongside other similar products offered by Defendant Xianghe Baoliang (Compl. ¶40).
IV. Analysis of Infringement Allegations
The central test for design patent infringement is 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 supports its allegations primarily through side-by-side visual comparisons.
D692,290 Infringement Allegations
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a hood latch, as shown and described. | The accused "Infringing Hood Latch" (JE1002) is alleged to embody a design substantially the same as the patented design, creating a virtually identical overall visual impression for an ordinary observer. This is illustrated in a side-by-side comparison. | ¶29, Table 1 | col. 1:57-58; FIG. 1 |
D773,110 Infringement Allegations
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for an auxiliary light mount assembly, as shown and described. | The accused "Infringing x-Clamp" (SG-807) is alleged to embody a design substantially the same as the patented design, particularly in its distinctive "X" shape, creating a virtually identical overall visual impression. This is illustrated in a side-by-side comparison. | ¶39, Table 1 (p.8) | col. 1:57-59; FIG. 2 |
Identified Points of Contention
- Visual Similarity: The core of the dispute will be a factual comparison of the designs. The primary question for the fact-finder will be whether the overall visual impression of the accused products is "substantially the same" as that of the patented designs. The complaint presents images suggesting a high degree of similarity for both products. A photograph of the accused hood latch, JE1002, is placed next to an image from the '290 Patent, inviting direct comparison (Compl. Table 1, p. 6).
- Significance of Differences: The defense may attempt to highlight any minor differences in proportion, surface texture, or ornamentation between the patented designs and the accused products. The key legal question will be whether any such differences are sufficient to prevent an ordinary observer from being deceived into purchasing the accused product believing it was the patented one.
V. Key Claim Terms for Construction
In design patent litigation, the claim is defined by the drawings, and formal claim construction is less common than in utility patent cases. However, the scope of the article of manufacture, as identified in the patent's title and claim, can be relevant.
- The Term: "hood latch" (’290 Patent) and "auxiliary light mount assembly" (’110 Patent).
- Context and Importance: These terms define the articles of manufacture to which the ornamental designs are applied. Practitioners may focus on these terms because design patent protection is limited to the design as applied to the specified article. A finding of infringement requires that the accused product be the same type of article as that identified in the patent. In this case, the accused products appear to be the same articles of manufacture as those recited in the patents, suggesting this may not be a point of significant dispute.
- Intrinsic Evidence for Interpretation: The primary evidence for the scope of a design patent claim is the visual disclosure in the drawings.
- Evidence for a Broader Interpretation: The claim language "as shown and described" encompasses the overall visual impression created by the solid-line drawings from multiple perspectives.
- Evidence for a Narrower Interpretation: The scope is limited by what is visually disclosed. Any feature not shown, or shown in broken lines as in the ’110 Patent, is not part of the claimed design (’110 Patent, col. 1:65-68). The title and claim language also limit the design's application to a "hood latch" and an "auxiliary light mount assembly," respectively.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that each defendant is actively inducing and contributing to infringement by selling and/or distributing the accused products to others within the United States (Compl. ¶¶ 47, 56). The factual basis provided is the sale and offering for sale of the products to downstream customers and distributors (Compl. ¶¶ 26, 37).
- Willful Infringement: The complaint alleges that both infringements have been and continue to be "intentional and willful" (Compl. ¶¶ 34, 43). This allegation is based "upon information and belief" that each defendant knew of the respective patent-in-suit before beginning its infringing activities (Compl. ¶¶ 33, 42).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of visual identity: For each patent, is the overall ornamental appearance of the accused product "substantially the same" as the patented design in the eyes of an ordinary observer? The case will likely depend heavily on the visual evidence presented, such as the side-by-side comparisons provided in the complaint.
- A key evidentiary question will concern willfulness: What evidence can the plaintiff produce to substantiate its "information and belief" allegation that the defendants had pre-suit knowledge of the patents? The answer will be critical for the plaintiff's claims for enhanced damages under 35 U.S.C. § 284 and attorney fees.