DCT
1:24-cv-07986
Hit Notion LLC v. Digitalprints USA Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: HIT NOTION LLC (Michigan)
- Defendant: DIGITALPRINTS USA CORP. d/b/a Cheer Collection (New York)
- Plaintiff’s Counsel: Howard & Howard Attorneys PLLC
- Case Identification: 1:24-cv-07986, E.D. Mich., 04/11/2024
- Venue Allegations: Plaintiff alleges venue is proper because Defendant advertises and sells the accused products to customers in Michigan through online storefronts, including Amazon.com and Walmart.com.
- Core Dispute: Plaintiff alleges that Defendant’s backrest pillows infringe two design patents covering the ornamental appearance of a pillow with armrests and a headrest.
- Technical Context: The dispute concerns the ornamental design of consumer home goods, specifically pillows designed for back support, a competitive segment of the e-commerce market.
- Key Procedural History: The complaint alleges that on May 11, 2023, Plaintiff submitted an IP infringement complaint to Walmart.com regarding Defendant's listings, which resulted in Walmart investigating and unpublishing the listings. This event predates the lawsuit and may be used to support allegations of pre-suit knowledge.
Case Timeline
| Date | Event |
|---|---|
| 2017-10-19 | Priority Date for ’432 and ’600 Patents |
| 2019-12-13 | Application Date for ’600 Patent |
| 2020-02-18 | ’432 Patent Issue Date |
| 2022-04-26 | ’600 Patent Issue Date |
| 2023-05-11 | Plaintiff files IP infringement complaint with Walmart.com |
| 2024-04-11 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D875,432 - "Pillow," issued February 18, 2020 (’432 Patent)
The Invention Explained
- Problem Addressed: As a design patent, the specification does not articulate a technical problem. The patent protects a purely ornamental design for an article of manufacture.
- The Patented Solution: The patent claims the specific visual appearance of a pillow. The design consists of a main, upwardly tapering backrest body, two forward-projecting armrests extending from the base of the backrest, and a distinct, cylindrical headrest pillow attached to the top of the backrest (D’432 Patent, FIG. 1, 2). The figures illustrate a cohesive, integrated design with specific proportions and curvatures.
- Technical Importance: The complaint alleges that Plaintiff actively uses and applies this design to its commercial "Husband Pillow" product (Compl. ¶18).
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is for "The ornamental design for a pillow, as shown and described" (D’432 Patent, col. 1:57-58).
- The essential visual elements of the claimed design include:
- A unitary body comprising a central backrest and two flanking armrests.
- An upwardly tapering shape for the main backrest portion.
- A detachable, generally cylindrical headrest pillow positioned at the apex of the backrest.
- The specific proportions and relationships between the backrest, armrests, and headrest as depicted in the patent's figures.
U.S. Design Patent No. D949,600 - "Pillow," issued April 26, 2022 (’600 Patent)
The Invention Explained
- Problem Addressed: Similar to the ’432 Patent, the ’600 Patent protects a purely ornamental design and does not address a technical problem.
- The Patented Solution: The ’600 Patent claims an ornamental design for a pillow that is visually similar to the design in the ’432 Patent. A key distinction is the use of broken lines in the drawings, which, as stated in the patent's description, "depict portions of the pillow that form no part of the claimed design" (’600 Patent, col. 1:65-67). These broken lines appear to disclaim features such as a pocket on the rear of the backrest and pockets on the armrests, thereby focusing the claimed design on the overall shape and configuration of the pillow's main body, armrests, and headrest (D’600 Patent, FIG. 5).
- Technical Importance: This patent is a continuation of the application that led to the ’432 Patent and is also alleged to be embodied in Plaintiff's "Husband Pillow" product (Compl. ¶18; ’600 Patent, p. 1).
Key Claims at a Glance
- The single asserted claim is for "The ornamental design for a pillow, as shown and described" (’600 Patent, col. 1:58-59).
- The essential visual elements are largely the same as in the ’432 Patent, but the scope of the claim is formally limited to the features shown in solid lines. The claimed design consists of:
- The overall shape and contour of the backrest, armrests, and headrest.
- Features depicted in broken lines, such as pockets, are explicitly excluded from the scope of the claimed design.
III. The Accused Instrumentality
- Product Identification: The accused products are identified as "Cheer Collection's Pillows" (Compl. ¶21). A provided screenshot identifies one such product as the "Cheer Collection Wedge Back Support Pillow" (Compl. p. 6).
- Functionality and Market Context: The complaint alleges that Defendant sells, offers for sale, and advertises these backrest pillows through various e-commerce platforms, including Amazon.com, Walmart.com, eBay.com, and its own website (Compl. ¶20). The complaint includes a screenshot of an Amazon product listing for the accused pillow, showing its appearance and marketing (Compl. p. 6). The pillows are alleged to bear a design that is "the same or substantially the same" and "nearly identical" to Plaintiff's patented designs (Compl. ¶21).
IV. Analysis of Infringement Allegations
The complaint provides side-by-side comparisons of the patented designs and photographs of the accused products to support its infringement allegations. The central question for design patent infringement is whether an "ordinary observer" would find the two designs substantially the same, such that they might be induced to purchase one believing it to be the other.
’432 Patent Infringement Allegations
| Claim Element (Visual Feature from D’432 Patent) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| Overall ornamental design of a pillow with an integrated backrest, armrests, and cylindrical headrest | The accused product is a pillow with an integrated backrest, armrests, and a cylindrical headrest, creating a substantially similar overall visual impression. | ¶33 | col. 1:60-61 |
| Front profile with upwardly tapering backrest and flanking armrests, as shown in FIG. 2 | The front view of the accused pillow shows an upwardly tapering backrest flanked by two armrests, mirroring the proportions and shape of the patented design. | ¶33 | col. 1:62 |
| Perspective view showing the relationship between the headrest, backrest, and armrests, as shown in FIG. 8 | The perspective view of the accused product shows a similar three-dimensional relationship between its headrest, backrest, and armrest components. | ¶33 | col. 1:67-69 |
- Identified Points of Contention:
- Scope Questions: The primary dispute will center on the "ordinary observer" test. A court will have to determine if the overall visual impression of the accused product is substantially the same as the claimed design.
- Technical Questions: The analysis may focus on alleged subtle differences in proportion, curvature, and the specific shape of the armrests or headrest, and whether those differences are sufficient to distinguish the designs in the mind of an ordinary observer. The complaint's side-by-side visual chart directly compares the patented design figures with photos of an accused product (Compl. ¶33).
’600 Patent Infringement Allegations
| Claim Element (Visual Feature from D’600 Patent) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| Overall ornamental design, limited to solid-line features, including backrest, armrests, and headrest | The accused product embodies the overall shape and configuration of the backrest, armrests, and headrest shown in solid lines in the patent drawings. | ¶40 | col. 1:60-61 |
| Front profile defined by the solid-line contours of the backrest and armrests, as shown in FIG. 2 | The accused pillow's front profile allegedly matches the claimed solid-line shape and proportions depicted in the patent. | ¶40 | col. 1:62 |
| Perspective view showing the solid-line shape of the pillow, as shown in FIG. 8 | A purple version of the accused product is shown in a perspective view, which the complaint alleges is substantially similar to the claimed design (Compl. ¶40). | ¶40 | col. 1:67-69 |
- Identified Points of Contention:
- Scope Questions: The use of broken lines in the ’600 Patent to disclaim pockets will be a focal point. The legal question is how this disclaimer affects the infringement analysis. Plaintiff will argue the comparison should be limited to the claimed solid-line features, which it alleges are substantially similar. Defendant may argue that differences in the overall product, even in unclaimed features, alter the visual impression for an ordinary observer.
- Technical Questions: Does the accused product's overall shape, independent of any pockets or surface ornamentation, create the same visual impression as the solid-line design claimed in the ’600 Patent?
V. Key Claim Terms for Construction
In design patent litigation, there are typically no textual claim terms to construe. Instead, the court construes the single claim by reference to the patent's figures. The central issue is the scope of the claimed design.
- The Term: "The ornamental design for a pillow"
- Context and Importance: The scope of this "term" is defined by the patent's drawings and is the ultimate issue in the infringement analysis. For the ’600 Patent, the interpretation of the broken lines is critical, as it formally limits the scope of what is protected.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party arguing for a broader scope would emphasize the overall visual impression created by the drawings as a whole, arguing that an ordinary observer would not notice minor differences in specific contours. The design's gestalt or overall appearance would be paramount.
- Evidence for a Narrower Interpretation: A party arguing for a narrower scope would focus on the precise shapes and proportions shown in the figures. For the ’600 Patent, the description explicitly states that broken lines "depict portions of the pillow that form no part of the claimed design," which is strong intrinsic evidence for limiting the scope of protection to only the solid-line features (’600 Patent, col. 1:65-67).
VI. Other Allegations
- Indirect Infringement: The complaint does not contain specific allegations of indirect infringement (inducement or contributory infringement). The infringement counts focus on direct infringement under 35 U.S.C. § 271 for making, using, selling, offering for sale, and importing the accused products (Compl. ¶¶32, 39).
- Willful Infringement: The complaint alleges willful and deliberate infringement of both patents (Compl. ¶¶36, 43). The factual basis for this allegation appears to be pre-suit knowledge. The complaint alleges that Plaintiff initiated an IP infringement complaint with Walmart.com against Defendant’s listings on May 11, 2023, and that Walmart subsequently unpublished those listings (Compl. ¶¶24-25). This event may serve as evidence that Defendant was on notice of its allegedly infringing activity prior to the filing of the lawsuit.
VII. Analyst’s Conclusion: Key Questions for the Case
This case will likely hinge on the application of the "ordinary observer" test to the specific designs at issue. The central questions for the court appear to be:
- A question of visual similarity: Is the Defendant's backrest pillow design "substantially the same" as the designs claimed in the ’432 and ’600 patents from the perspective of an ordinary purchaser of such goods, or are there sufficient visual differences to avoid infringement?
- A question of claim scope: For the ’600 Patent, how will the court apply the ordinary observer test in light of the explicitly disclaimed features shown in broken lines? The core issue will be whether the infringement analysis is strictly limited to the solid-line portions of the design.
- A question of intent: Do the facts surrounding the prior IP complaint filed with Walmart.com provide sufficient evidence of pre-suit knowledge to support the claim for willful infringement and potential enhancement of damages?