DCT
2:18-cv-03891
Brookstone Co Inc v. Innovative Technology Electronics LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Brookstone Company, Inc. (New Hampshire) and Big Blue Audio, LLC (New Hampshire)
- Defendant: Innovative Technology Electronics, LLC (Delaware)
- Plaintiff’s Counsel: Merchant & Gould P.C.
- Case Identification: 2:18-cv-03891, E.D.N.Y., 07/06/2018
- Venue Allegations: Venue is alleged to be proper in the Eastern District of New York because Defendant resides in the district, has a regular and established principal place of business there, and has allegedly committed acts of infringement within the district.
- Core Dispute: Plaintiffs allege that Defendant’s portable Bluetooth speaker infringes a design patent and associated trade dress for an upright, tower-style speaker.
- Technical Context: The dispute is in the consumer electronics market, specifically concerning the design of portable wireless speakers, a highly competitive product category where visual appearance is a significant factor in consumer choice.
- Key Procedural History: The complaint alleges that Plaintiff Brookstone sent a letter to Defendant on April 18, 2018, providing actual notice of the asserted patent and its infringement concerns, which may serve as a basis for willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 2011 | Plaintiff begins selling "Big Blue Audio" speakers (Compl. ¶8) |
| 2013 | Plaintiff begins selling the "Big Blue Party" speaker (Compl. ¶23) |
| 2013-12-18 | Priority Date for U.S. Design Patent No. D762,193 ('193 Patent, p. 1) |
| 2016 | Defendant begins selling its own outdoor stereo speakers (Compl. ¶41) |
| 2016-07-26 | U.S. Design Patent No. D762,193 issues (Compl. ¶36) |
| 2017 | Plaintiff introduces "Big Blue Party 360" and "X" speakers (Compl. ¶24) |
| Late 2017-April 2018 | Defendant allegedly redesigns and begins selling the Accused Product (Compl. ¶42) |
| 2018-04-18 | Plaintiff sends notice letter to Defendant regarding alleged infringement (Compl. ¶50) |
| 2018-07-06 | Complaint filed (Compl. p. 1) |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D762,193 - "SPEAKER"
- Patent Identification: U.S. Design Patent No. D762,193, "SPEAKER", issued July 26, 2016.
The Invention Explained
- Problem Addressed: The complaint does not describe a technical problem in the manner of a utility patent. Rather, the implicit goal is the creation of a unique and ornamental visual design for a portable speaker to distinguish it in a crowded marketplace (Compl. ¶¶ 16, 18).
- The Patented Solution: The patent claims the ornamental design for a speaker as depicted in its drawings ('193 Patent, Claim). The design consists of an upright, rectangular tower with rounded vertical edges, capped at the top and bottom by squared elements that slightly overhang the main body, and featuring a prominent circular component on its front face ('193 Patent, FIGS. 1-2; Compl. ¶37). Features shown in broken lines, such as the handle and ports, are disclaimed and not part of the protected design ('193 Patent, Description).
- Technical Importance: The complaint alleges that the consistent use of this design aesthetic has established it as a distinctive trade dress, allowing consumers to identify speakers originating from Brookstone (Compl. ¶¶ 17-18).
Key Claims at a Glance
- As a design patent, the '193 Patent contains a single claim: "The ornamental design of a speaker, substantially as shown and described."
- The essential elements of the claim are the visual characteristics of the speaker shown in solid lines in the patent's seven figures, which collectively define its overall appearance. The complaint breaks these down into three core features (Compl. ¶¶ 37, 48):
- An upright speaker tower with a rectangular profile and rounded edges.
- A circular component located in the center of the front face.
- Top and bottom caps with squared, rounded edges that extend beyond the tower's circumference.
III. The Accused Instrumentality
Product Identification
- The accused product is "Innovative Technology's Portable 20 Watt Bluetooth Outdoor Weatherproof Rechargeable Wireless Speaker," referred to in the complaint as the "Infringing Speaker" (Compl. ¶42).
Functionality and Market Context
- The complaint describes the accused product as a redesigned outdoor stereo speaker that Defendant began selling between late 2017 and April 2018 (Compl. ¶42). It is allegedly sold for approximately $80.00 through Defendant's website and major retailers such as Walmart (Compl. ¶¶ 44-45). The complaint asserts this redesign was an "intentional effort to appropriate and trade on the key features" of Plaintiffs' design and trade dress (Compl. ¶42). The complaint provides a side-by-side photographic comparison of Plaintiff's "Big Blue Party" speaker and the accused speaker to illustrate the alleged similarity (Compl. p. 15).
IV. Analysis of Infringement Allegations
The standard for design patent infringement is whether, in the eye of an ordinary observer, the accused design is substantially the same as the claimed design, such that the observer might purchase one supposing it to be the other. The complaint alleges infringement by providing a visual comparison between the patent drawings and the accused product. A side-by-side view from the complaint shows the claimed design from the '193 Patent next to a photograph of the accused speaker (Compl. p. 16).
’193 Patent Infringement Allegations
| Claim Element (from the ornamental design) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An upright speaker tower design with a rectangular tower and rounded edges | The accused speaker is alleged to have an upright speaker tower design with a rectangular tower and rounded edges. | ¶48 | '193 Patent, FIGS. 1-2 |
| A circular component located in the center of the front speaker face | The accused speaker is alleged to have a "large rounded blue illuminated component located in the center of a face of the speaker." | ¶47 | '193 Patent, FIG. 2 |
| Top and bottom tower caps that are squared with rounded edges and that extend beyond the circumference of the upright speaker tower | The accused speaker is alleged to have top and bottom tower caps that are squared with rounded edges and that extend beyond the circumference of the upright speaker tower. | ¶48 | '193 Patent, FIGS. 1, 6-7 |
Identified Points of Contention
- Scope Questions: The primary dispute will turn on the "ordinary observer" test. A key question is whether the visual differences between the claimed design and the accused product are significant enough to avoid infringement. For example, the patent drawings depict a central component with distinct concentric rings ('193 Patent, FIG. 2), while the photograph of the accused product shows a single illuminated oval or lozenge shape (Compl. p. 16). The court will have to determine if the overall impression of the two designs is "substantially the same."
- Technical Questions: A factual question will be how to weigh the similarities (overall form factor, proportions, placement of key elements) against the differences (shape of the central button, handle design, surface textures). The defense may argue that the dissimilarities are readily apparent to an ordinary observer and create a different overall visual impression.
V. Key Claim Terms for Construction
In design patent cases, claim construction is typically not focused on textual terms but on the scope of the claimed design as a whole, as defined by the drawings. The central issue is the interpretation of the overall visual impression created by the claimed design.
- The "Term": The Overall Ornamental Design
- Context and Importance: The outcome of the infringement analysis depends entirely on the perceived scope of the claimed design and whether the accused product falls within it. Practitioners may focus on which visual elements dominate the overall impression and whether the differences are minor enough to be overlooked by an ordinary observer.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Plaintiffs may argue that the core, dominant features of the '193 Patent design—the upright tower shape, overhanging caps, and centrally-located circular element—are all replicated in the accused product, creating the same overall visual impression (Compl. ¶49).
- Evidence for a Narrower Interpretation: Defendants may point to the patent's specific visual details, arguing for a narrower scope. The patent claims a specific circular element with concentric rings ('193 Patent, FIG. 2), not just any central illuminated shape. Furthermore, the use of broken lines to disclaim the handle, ports, and top control layout ('193 Patent, FIGS. 1, 3, 6) narrows the protected design to the specific solid-line elements, potentially making differences in those unclaimed areas (like the handle) irrelevant while emphasizing differences in the claimed areas.
VI. Other Allegations
Willful Infringement
- The complaint alleges that Defendant’s infringement has been willful (Compl. ¶70). This allegation is supported by the claim that Defendant had pre-suit knowledge of the '193 Patent via a notice letter dated April 18, 2018, and continued its allegedly infringing sales thereafter (Compl. ¶¶ 50-51). The complaint also alleges that Defendant's redesign was an "intentional effort" to copy Plaintiffs' product design after having "access and exposure" to it for almost two years (Compl. ¶42).
VII. Analyst’s Conclusion: Key Questions for the Case
A core issue will be one of visual similarity: In the eye of an ordinary observer, is the overall ornamental appearance of the accused speaker, with its illuminated oval button, "substantially the same" as the design claimed in the '193 Patent, which depicts a button with concentric circles, or do these and other differences create a distinct visual impression?
A second key question will involve the intersection of patent and trade dress: How will Plaintiffs' parallel claims of trade dress infringement, which rely on consumer association and secondary meaning, influence the "ordinary observer" analysis for the design patent claim, which is meant to be a more objective comparison of design features?
Finally, a central evidentiary question will be the impact of prior art: The ultimate scope of the '193 Patent's design and the assessment of its similarity to the accused product will be viewed in the context of prior art in the portable speaker market. The degree to which the claimed design is a departure from prior designs will inform how much weight is given to the similarities and differences between the patented and accused designs.