DCT
2:22-cv-01728
Horowitz v. Christone Distribution Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Brian Horowitz (California)
- Defendant: Christone Distribution, Inc. (Delaware)
- Plaintiff’s Counsel: Ryan Ellis Law Corporation
- Case Identification: 2:22-cv-01728, D. Nev., 10/13/2022
- Venue Allegations: Venue is alleged to be proper in the District of Nevada as Defendant maintains a principal place of business in Las Vegas, Nevada.
- Core Dispute: Plaintiff alleges that Defendant’s HORSESHOE brand folding utility wagons infringe a design patent for an ornamental tire tread.
- Technical Context: The dispute concerns the aesthetic design of wheels used on collapsible utility wagons, a product category common in consumer recreational and gardening markets.
- Key Procedural History: The complaint references pre-suit correspondence wherein Plaintiff sent a cease-and-desist letter. It also attaches a response letter from Defendant, which acknowledges prior notice of the patent from Amazon, confirms sales of the accused products, and identifies the manufacturer.
Case Timeline
| Date | Event |
|---|---|
| 2015-03-06 | U.S. Patent No. D757,637 Priority Date (Application Filing) |
| 2016-05-31 | U.S. Patent No. D757,637 Issue Date |
| 2022-04-30 | Approximate date Defendant began selling Accused Products |
| 2022-08-11 | Plaintiff’s counsel sent cease-and-desist letter to Defendant |
| 2022-08-22 | Defendant responded to Plaintiff's letter |
| 2022-10-13 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D757,637 - Tread for a Tire
- Patent Identification: U.S. Design Patent No. D757637, Tread for a Tire, issued May 31, 2016.
The Invention Explained
- Problem Addressed: The patent does not articulate a technical problem, as is typical for design patents. It seeks to protect a new, original, and ornamental design for a tire tread (D’637 Patent, Title, Claim).
- The Patented Solution: The patent discloses an ornamental design for a tire tread characterized by a series of wide, curving lugs. The figures show lugs that originate near the center of the tread, curve outwards towards the shoulder, and taper as they approach the sidewall, with alternating lugs curving in opposing directions (’637 Patent, FIGS. 1-2). The design covers only the ornamental aspects of the tread itself; the underlying tire structure is depicted in broken lines, indicating it is not part of the claimed design (’637 Patent, Description).
- Technical Importance: The design provides a distinctive aesthetic for the wheels of products like utility wagons, which may influence consumer purchasing decisions in a competitive market (Compl. ¶14).
Key Claims at a Glance
- The patent contains a single claim: "The ornamental design for a tread for a tire, as shown and described."
- The complaint breaks down the claimed design into several visual characteristics:
- A tread that is wider than the sidewall height.
- A relatively flat tread profile curving into the sidewall at a distinct shoulder.
- Lugs that begin near the middle of the tread, curve to the shoulder, and taper into the sidewall.
- Every other lug curves in an opposing direction (Compl. ¶20).
III. The Accused Instrumentality
Product Identification
- The accused products are "HORSESHOE Brand New Heavy Duty... Collapsible Folding Utility Wagon[s]" (the "Accused Products") sold by Defendant Christone Distribution (Compl. ¶10; Compl. Ex. 2, p. 11).
Functionality and Market Context
- The complaint identifies the accused products through screenshots of online listings, including on Defendant’s own website and on Amazon (Compl. Ex. 2). A close-up photograph of the accused wagon's wheel shows its tread pattern in detail (Compl. Ex. 2, p. 13). The relevant feature is the ornamental design of the tire tread on the wheels of these utility wagons.
- The complaint alleges that Defendant imported and sold these folding wagons in the United States (Compl. ¶10). A letter from the Defendant attached as Exhibit 4 states that 218 units were sold on Amazon beginning in late April 2022 (Compl. Ex. 4, p. 55).
IV. Analysis of Infringement Allegations
D’637 Patent Infringement Allegations
| Claim Element (from "as shown and described") | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A tire tread that is at least several times wider than the height of the sidewall of the tire | The accused wheels have a tread that is significantly wider than the height of the sidewall. A product image shows this wide, low-profile tire design. | ¶21(a) | FIGS. 2-3 |
| A tire tread that is relatively flat up to the shoulders of the tread that curve into the sidewall of the tire | The accused wheels feature a tread that is mostly flat across its surface, with a pronounced curve at the shoulder where it meets the sidewall. | ¶21(b) | FIGS. 2-3 |
| A transition from the tread to the sidewall with a distinctly curved shoulder | The accused wheels exhibit a clearly defined, curved shoulder transition between the tread surface and the sidewall. | ¶21(c) | FIGS. 1, 3 |
| Lugs that begin about the middle of the tread and curve away from the middle of the tread to the shoulder and that gradually reduce to daylight into the sidewall at the edge of the shoulder | The tread on the accused wheels has lugs that begin near the tread's centerline, sweep outward to the shoulder, and taper down as they blend into the sidewall. A close-up image of the green-wheeled wagon clearly depicts this feature. | ¶21(d); Ex. 2, p. 21 | FIGS. 1-2 |
| Every other lug curving in opposing directions and daylighting at or near opposing shoulders | The lugs on the accused tread alternate in their direction of curvature, creating a repeating, symmetrical pattern. | ¶21(e) | FIGS. 1-2 |
- Identified Points of Contention:
- Scope Questions: A primary question in design patent cases is whether an "ordinary observer," giving such attention as a purchaser usually gives, would find the accused design to be substantially the same as the patented design. The dispute will focus on the overall visual impression created by the two designs, not just a feature-by-feature comparison.
- Technical Questions: The court will need to compare the visual appearance of the accused product's tread (Compl. Ex. 2, pp. 13, 21) with the claimed design as depicted in the patent's drawings (’637 Patent, FIGS. 1-3). The question is whether any differences in the lug shape, spacing, or curvature are significant enough to be noticeable to an ordinary observer, or if they are minor variations that do not alter the overall ornamental effect.
V. Key Claim Terms for Construction
For a design patent, the "claim" is the visual design itself. Formal construction of text-based terms is not the primary focus. Instead, the analysis centers on the scope of the claimed design as a whole.
- The "Term": The ornamental design for a tread for a tire, as shown and described.
- Context and Importance: The scope of the patent is defined by the solid lines in the drawings. Determining what is and is not part of the claimed design is critical. Practitioners will focus on this because the comparison for infringement must be between the accused product and the properly construed claim, not between the accused product and the patentee's commercial embodiment.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim is for the design "as shown and described." The description is minimal, suggesting the figures themselves are the primary definition. A party could argue this encompasses any tread with the same overall visual effect of alternating, curved, tapering lugs, even with minor differences.
- Evidence for a Narrower Interpretation: The patent specification explicitly states that "The broken lines showing other parts of the tire in FIGS. 1 and 3 indicating unclaimed environment and forming no part of the claim" (’637 Patent, Description). This definitively limits the protected design to the tread pattern itself, shown in solid lines, and excludes the tire's overall size, sidewall, and rim. The specific curvature, width, and taper of the lugs as depicted in the drawings could be argued to define the precise scope of the claim.
VI. Other Allegations
- Indirect Infringement: The complaint does not allege indirect infringement.
- Willful Infringement: The complaint seeks treble damages for "intentional infringement" (Compl. Prayer for Relief ¶3). The factual basis for this allegation is Defendant's alleged conduct after receiving notice of the patent. The complaint alleges Plaintiff sent a cease-and-desist letter on August 11, 2022 (Compl. ¶11, Ex. 3). More significantly, the complaint includes a response letter from Defendant dated August 22, 2022, which states that Defendant had already "received the notice from Amazon" claiming infringement "several weeks" prior, had "delisted subject item on Amazon and stop selling," but then sought to "negotiate with Mr. Brian for whether we can continue to sold out our remaining stocked 166 Units" (Compl. Ex. 4, pp. 55-56).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual similarity: From the perspective of an ordinary observer familiar with utility wagons, is the overall ornamental impression of the accused HORSESHOE-branded tire tread substantially the same as the design claimed in the ’637 Patent, or are there discernible differences that would prevent confusion?
- A key evidentiary question will concern willfulness: Given the defendant's letter attached to the complaint, which acknowledges receiving notice of infringement from Amazon prior to the plaintiff's letter, what evidence can the defendant present to demonstrate that its conduct was not objectively reckless, particularly concerning any sales made after receiving such notice?