DCT
2:18-cv-00812
FNA Group Inc v. Jiangsu Longteng Pengda Electric Mechanical Co Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: FNA Group, Inc. (Illinois/Wisconsin)
- Defendant: Jiangsu Longteng-Pengda Electric Mechanical Co., Ltd. (P.R. China)
- Plaintiff’s Counsel: Santoro Whitmire; Holland & Knight LLP
- Case Identification: 2:18-cv-00812, D. Nev., 05/07/2018
- Venue Allegations: Venue is based on Defendant’s alleged business activities in Nevada, including attending the National Hardware Show in Las Vegas as an exhibitor to offer and promote the allegedly infringing products.
- Core Dispute: Plaintiff alleges that its former Chinese manufacturing partner is infringing two U.S. design patents by manufacturing and selling visually near-identical pressure washer pumps to Plaintiff's competitors.
- Technical Context: The dispute centers on the ornamental design of high-pressure pumps, which are core components in the competitive market for commercial and consumer pressure washers.
- Key Procedural History: The complaint details a prior manufacturing and licensing relationship between the parties that began in 2012 and ended in 2016. Plaintiff alleges that Defendant, its former licensee, subsequently used proprietary information to create and sell "knock-off" products. Critically, the complaint alleges that an employee of the Defendant is a named co-inventor on both of the asserted patents, a fact that may be central to the willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 2012-03-27 | Parties enter into Nondisclosure and License Agreements |
| 2012-08-10 | '211 Patent Priority Date (Application Filing) |
| 2012-10-09 | '762 Patent Priority Date (Application Filing) |
| 2014-02-18 | U.S. Patent No. D699,762 Issues |
| 2014-02-25 | U.S. Patent No. D700,211 Issues |
| 2016-XX-XX | Business relationship between FNA and LT terminates |
| 2017-XX-XX | LT allegedly files lawsuit in China against FNA's new manufacturer |
| 2018-05-07 | Complaint Filed |
| 2018-05-08 | National Hardware Show begins, where LT is allegedly exhibiting |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. D699,762 - "Pump" (the ’762 Patent)
- Patent Identification: U.S. Design Patent No. D699,762, "Pump," issued February 18, 2014.
- The Invention Explained:
- Problem Addressed: Design patents do not solve technical problems; they protect the novel, non-functional, ornamental appearance of an article of manufacture. This patent protects the unique visual design of a pump.
- The Patented Solution: The patent claims the specific ornamental design for a pump as illustrated in its eight figures ('762 Patent, Figs. 1-8). The design is characterized by a combination of visual features including the overall shape of the housing, the specific configuration of the manifold with its various ports and fittings, and the pattern of cooling fins on the main body ('762 Patent, Figs. 1, 5, 7). The patent explicitly disclaims certain elements shown in broken lines, indicating they are not part of the protected design ('762 Patent, Description).
- Technical Importance: The complaint alleges that FNA distinguishes itself from competitors through "innovative proprietary product lines," suggesting that a unique and recognizable product appearance is a key part of its market strategy (Compl. ¶18).
- Key Claims at a Glance:
- Design patents contain a single claim. The asserted claim is: "The ornamental design for a pump, as shown and described" ('762 Patent, Claim).
- The scope of this claim is defined by the visual appearance of the pump depicted in solid lines in the patent's drawings, including:
- The overall profile and proportions of the pump assembly.
- The specific arrangement and design of the inlet/outlet ports, valves, and adjustment knobs on the manifold.
- The shape and contour of the main housing and its mounting flange.
U.S. Patent No. D700,211 - "Pump" (the ’211 Patent)
- Patent Identification: U.S. Design Patent No. D700,211, "Pump," issued February 25, 2014.
- The Invention Explained:
- Problem Addressed: As a design patent, the '211 Patent protects the ornamental appearance of a pressure washer pump, not its technical function.
- The Patented Solution: The patent claims the ornamental design for a pump as depicted in its figures ('211 Patent, Figs. 1-8). Key visual features include a more rectangular main housing with prominent vertical cooling fins, a distinct manifold assembly with a spring-loaded relief valve, and a specific arrangement of hexagonal bolt heads and connection ports ('211 Patent, Figs. 1, 3).
- Technical Importance: As with the '762 Patent, the unique ornamental design protected by the '211 Patent appears to be an element of FNA's strategy to create distinctive and high-quality products in a competitive market (Compl. ¶¶ 18-19).
- Key Claims at a Glance:
- The patent asserts a single claim: "The ornamental design for a pump, as shown and described" ('211 Patent, Claim).
- The essential visual elements defined by the solid-line drawings include:
- The specific geometry of the housing, including the fin pattern and mounting plate.
- The layout, shape, and relative positioning of the components on the pump's manifold.
- The overall visual impression created by the combination of these elements.
III. The Accused Instrumentality
- Product Identification: The accused instrumentalities are pressure washer pumps manufactured, imported, offered for sale, and sold by Defendant LT (Compl. ¶¶ 124, 133). These include pumps sold under LT's own model numbers (e.g., LT921/LT922) and pumps incorporated into finished products sold by third parties, such as Nilfisk Pressure Pro's "Dirt Laser" pressure washers and products sold to Karcher North America (Compl. ¶¶ 44, 51, 55, 125).
- Functionality and Market Context: The accused products are primarily horizontal and vertical axial pumps used in pressure washers (Compl. ¶¶ 42, 44). The complaint alleges that these are "knock-off" or "virtually identical" copies of FNA's proprietary pumps, which LT previously manufactured for FNA under license (Compl. ¶¶ 40, 52). The complaint provides a side-by-side photographic comparison of an LT product, an FNA product, and a patent figure to illustrate the alleged similarity (Compl. ¶45, p. 8). LT is accused of using its knowledge from the prior relationship to supply these pumps directly to FNA's competitors (Compl. ¶50).
IV. Analysis of Infringement Allegations
The complaint alleges infringement of design patents, which turns on whether an "ordinary observer," familiar with the prior art, would be deceived into believing the accused design is the same as the patented design. The complaint supports its allegations with side-by-side visual comparisons.
'762 Patent Infringement Allegations
The complaint provides a visual comparison of an "LT Pump on Nilfisk PW" and a standalone "LT Pump" against an "FNA Patent Figure" from the '762 Patent (Compl. ¶125, p. 19).
| Claim Element (from Claim 1) | Alleged Infringing Functionality (Ornamental Appearance) | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a pump, as shown and described. | The overall visual appearance of LT's LT921/LT922 horizontal axial pump and the "Terminator" branded pump used in Nilfisk Pressure Pro's Dirt Laser models. The complaint alleges these products have an overall visual appearance that is "substantially the same" as the design claimed in the '762 patent to an ordinary observer. | ¶125 | Claim; Fig. 5 |
'211 Patent Infringement Allegations
The complaint includes a side-by-side comparison of the "LT Pump on Nilfisk PW" against an "‘211 Patent Figure" to support its infringement claim (Compl. ¶134, p. 21).
| Claim Element (from Claim 1) | Alleged Infringing Functionality (Ornamental Appearance) | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a pump, as shown and described. | The overall visual appearance of the "Terminator" branded pump used in Nilfisk Pressure Pro's Dirt Laser model PP3425H. The complaint alleges this pump has an overall visual appearance that is "substantially the same" as the design claimed in the '211 patent to an ordinary observer conversant in the prior art. | ¶134 | Claim; Fig. 3 |
- Identified Points of Contention:
- Scope Questions: A central issue will be distinguishing the protected ornamental aspects of the designs from their unprotected functional elements. The defense may argue that similarities between the accused pumps and the patented designs are dictated by mechanical function, whereas the plaintiff will likely argue that the specific shapes, contours, and arrangements are non-functional, ornamental choices that create a unique and protected overall appearance.
- Technical Questions: The key evidentiary question is inherently visual: After filtering out functional elements, are the accused designs and the patented designs substantially the same from the perspective of an ordinary observer? The court will need to assess whether any minor differences are sufficient to defeat the claim of infringement or if they are trivial in the context of the overall design.
V. Key Claim Terms for Construction
In design patent litigation, the "claim" is understood to be the design itself as depicted in the drawings. Formal claim construction of specific terms is rare. The primary legal determination is defining the scope of the protected design by separating ornamental from functional features.
- The Term: The scope of the claimed "ornamental design."
- Context and Importance: The outcome of the infringement analysis depends entirely on what visual features are considered part of the protected "ornamental design." Practitioners may focus on this issue because if the Defendant can successfully argue that most of the similarities are functional, the scope of what is protected becomes much narrower, making an infringement finding less likely.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patents claim the overall ornamental design "as shown and described" ('762 Patent, Claim; '211 Patent, Claim). Plaintiff may argue that the holistic combination of all features shown in solid lines creates a single, unique visual impression that is protectable, even if individual components have functional roles.
- Evidence for a Narrower Interpretation: The description in the '762 Patent explicitly states that "broken lines... are included for the purpose of illustrating portions of the pump that form no part of the claimed design" ('762 Patent, Description). A defendant may argue that this principle extends to features that are purely functional, even if shown in solid lines, thereby narrowing the scope of what the ordinary observer should compare.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that LT manufactures pumps and sells them to third-party companies like Nilfisk and Karcher, who then incorporate them into pressure washers sold in the U.S. (Compl. ¶¶ 51, 55-56, 125). These allegations support a claim for indirect infringement, as LT is accused of supplying the component that directly infringes the design patents.
- Willful Infringement: The complaint makes strong allegations of willfulness. The central allegation is that Wang Xu Dong, a named inventor on both asserted patents, is an employee of the Defendant LT (Compl. ¶¶ 126, 135). This suggests LT not only had knowledge of the patents but was directly involved in their creation. This is supplemented by allegations that LT was aware of the patent applications since their filing and that its conduct stems from a broken licensing agreement, suggesting intentional copying (Compl. ¶¶ 33-40, 126, 135).
VII. Analyst’s Conclusion: Key Questions for the Case
- The Core Visual Test: The case will primarily depend on the application of the "ordinary observer" test. A central question is whether a fact-finder, after accounting for prior art and filtering out purely functional elements, will find the overall ornamental appearance of LT's pumps to be "substantially the same" as FNA's patented designs, or if visual differences are sufficient to avoid infringement.
- The Impact of Co-Inventorship and Prior Relationship: A critical issue will be one of intent and copying. How will the alleged fact that one of the patent's inventors is an employee of the Defendant influence the analysis? This unusual circumstance raises significant questions about copying, which is a key factor in the infringement test, and will be the cornerstone of FNA's claim for willful infringement and enhanced damages.