DCT
6:23-cv-01174
Flocast LLC v. Movi Family LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Flocast, LLC (New York)
- Defendant: Movi Family LLC (California)
- Plaintiff’s Counsel: Rothwell, Figg, Ernst & Manbeck, P.C.
- Case Identification: 6:23-cv-01174, N.D.N.Y., 09/13/2023
- Venue Allegations: Venue is asserted based on allegations that the Defendant purposefully sold and delivered the accused product into the Northern District of New York through an established distribution chain.
- Core Dispute: Plaintiff alleges that Defendant’s "Movi Cocoon Changing Pad" infringes a design patent covering the ornamental appearance of a diaper changing pad and also infringes on Plaintiff's related trade dress.
- Technical Context: The dispute centers on the ornamental design of consumer baby care products, specifically wipeable, contoured diaper changing pads.
- Key Procedural History: The complaint alleges that Plaintiff sent a cease and desist letter to Defendant regarding infringement of the patent-in-suit on March 23, 2023, and that Defendant responded on April 6, 2023, rejecting Plaintiff's position. This pre-suit exchange is cited in support of the willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 2013-02-20 | U.S. Design Patent No. D714,072 Priority Date |
| 2014-09-30 | U.S. Design Patent No. D714,072 Issue Date |
| 2023-03-23 | Plaintiff sends cease and desist letter to Defendant |
| 2023-04-06 | Defendant responds to cease and desist letter |
| 2023-06-XX | Alleged start of Defendant's sales of accused product |
| 2023-09-13 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D714,072 - "Diaper Changing Pad"
- Patent Identification: U.S. Design Patent No. D714,072, "Diaper Changing Pad," issued September 30, 2014.
The Invention Explained
- Problem Addressed: As a design patent, the '072 Patent does not describe a technical problem but instead claims a novel ornamental appearance for a diaper changing pad, a typically utilitarian object.
- The Patented Solution: The patent protects the specific visual characteristics of the changing pad design as depicted in its figures ('072 Patent, Claim). The key ornamental features shown in the solid-line drawings include an overall "peanut" or hourglass shape when viewed from above (D'072 Patent, FIG. 6), a concave top surface with raised perimeter edges (D'072 Patent, FIG. 1), and an asymmetrical side profile where one end is elevated relative to the other (D'072 Patent, FIGS. 4-5).
- Technical Importance: The complaint alleges that the design is associated with "extremely high-quality diaper changing pad products" and has achieved "incredible recognition in the market" (Compl. ¶17).
Key Claims at a Glance
- The single asserted claim is for "The ornamental design for a diaper changing pad, as shown and described" (’072 Patent, Claim).
- The ornamental design is defined by the visual elements depicted in the patent's figures, which include:
- A contoured top surface with a continuous raised perimeter edge.
- A plan-view shape characterized by two rounded ends and an indented middle section.
- An asymmetrical side profile with one end higher than the other.
- A smooth, unadorned bottom surface that mirrors the overall plan-view shape.
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is the "Movi Cocoon Changing Pad" (Compl. ¶4).
Functionality and Market Context
- The accused product is a diaper changing pad sold to consumers (Compl. ¶4). The complaint alleges that the Movi Cocoon Changing Pad was "willfully and blatantly designed" to "unfairly capitalize on the goodwill and reputation of Plaintiff's changing pad" and that the two products compete directly (Compl. ¶5, ¶46). The complaint provides a side-by-side visual comparison purporting to show the similarity between a photograph of the accused product and the patented design's perspective view from Figure 1 (Compl. p. 10).
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 would be deceived into purchasing the accused product believing it to be the patented one. The complaint alleges infringement by breaking down the asserted visual similarities.
D'072 Patent Infringement Allegations
| Claimed Design Feature (from '072 Patent Figures) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A middle portion that is indented on both sides such that the middle portion is narrower than the end portions of the changing pad designs. | The accused Movi Cocoon is alleged to possess an indented middle portion that is narrower than its end portions. | ¶37, ¶54 | '072 Patent, FIG. 6 |
| Rounded end portions on opposite side of the indented middle portion. | The accused Movi Cocoon is alleged to have rounded end portions. | ¶37, ¶54 | '072 Patent, FIG. 6 |
| An elevated top surface at one end portion relative to the top surface of the opposite end portion. | The accused Movi Cocoon is alleged to have an elevated surface at one end relative to the other. | ¶37, ¶54 | '072 Patent, FIGS. 4-5 |
| Raised edges along the sides and one end portion of the changing pad. | The accused Movi Cocoon is alleged to have raised edges along its sides and one end. | ¶37, ¶54 | '072 Patent, FIG. 1 |
Identified Points of Contention
- Scope Questions: The complaint anticipates a potential defense regarding the bottom surface of the accused product, which it concedes is different from the smooth bottom shown in the patent's Figure 7 (Compl. ¶38). This raises the question of whether the differences on the bottom surface—which the complaint alleges are either functional or not visible at the time of purchase—are sufficient to differentiate the overall ornamental appearance in the eye of an ordinary observer.
- Technical Questions: A central factual question for the finder of fact will be whether the overall visual impression of the accused Movi Cocoon is substantially the same as the claimed design. The complaint provides a multi-angle photographic comparison between the accused product and the plaintiff's commercial embodiment to argue for a finding of substantial similarity (Compl. p. 12). The court will have to determine if the similarities in the overall shape and contour outweigh any minor differences.
V. Key Claim Terms for Construction
As the patent-in-suit is a design patent claiming a specific ornamental appearance, there are no textual claim terms whose construction will be central to resolving the dispute in the manner of a utility patent. The analysis will instead focus on a visual comparison of the accused product to the patent's drawings.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendant induced infringement by "instructing and encourage customers, purchasers, users, and manufacturers, to make and use the INFRINGING MOVI COCOON" through activities such as advertising and promotion (Compl. ¶64).
- Willful Infringement: The complaint alleges willfulness based on both pre- and post-notice conduct. It asserts Defendant "knew or deliberately disregarded the risk" that its product was a copy prior to being contacted (Compl. ¶30). It further alleges that Defendant has had actual knowledge of the '072 Patent and its alleged infringement "since at least April 6, 2023, when Defendant responded to Plaintiff's March 23, 2023 Letter" (Compl. ¶60).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of visual comparison: Will an ordinary observer, giving the level of attention a typical purchaser would, find the overall ornamental design of the accused Movi Cocoon to be substantially the same as the design claimed in the '072 Patent, such that the observer would be deceived?
- A key legal question will be the application of the functionality doctrine to the design patent analysis: How will the court treat the plaintiff's argument that alleged differences on the bottom surface of the accused product are functional and/or not visible at purchase, and therefore should be disregarded when comparing the overall ornamental appearance to the patented design (Compl. ¶38)?
- An evidentiary question for willfulness will be whether Plaintiff can establish that Defendant’s alleged copying was deliberate, or if Defendant's knowledge can only be established from the date it received Plaintiff's cease and desist letter.