DCT

1:17-cv-02625

Glo Science Inc v. De Simone

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:17-cv-02625, S.D.N.Y., 04/12/2017
  • Venue Allegations: Venue is alleged to be proper in the Southern District of New York because Defendants are subject to personal jurisdiction in the district, based on allegations of doing business and committing acts of infringement there.
  • Core Dispute: Plaintiff, an exclusive licensee, alleges that Defendants’ tooth whitening mouthpieces infringe two design patents covering the ornamental appearance of such devices.
  • Technical Context: The case concerns the intellectual property protecting the specific aesthetic and non-functional appearance of mouthpieces used in the consumer dental whitening market.
  • Key Procedural History: Plaintiff Glo Science, Inc. asserts its rights as the exclusive licensee of the patents-in-suit, which are owned by JBL Radical Innovations, LLC. The front page of the D765,255 patent indicates it is subject to a terminal disclaimer, a procedural tool used during prosecution that could affect the patent's enforceable term.

Case Timeline

Date Event
2010-06-14 ’074 Patent Priority Date (Application Filing)
2011-04-12 ’074 Patent Issue Date
2014-05-29 ’255 Patent Priority Date (Application Filing)
2016-08-30 ’255 Patent Issue Date
2016-09-01 Defendant Truecompany Ltd Incorporation Date
2017-04-12 Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Design Patent No. D636,074, “MOUTHPIECE,” issued April 12, 2011

The Invention Explained

  • Problem Addressed: Design patents protect aesthetics rather than function. The patent addresses the need for a new, original, and ornamental design for a mouthpiece used in dental applications (Compl. ¶15).
  • The Patented Solution: The patent claims the specific ornamental design for a mouthpiece as depicted in its seven figures ('074 Patent, Claim). The visual appearance is defined by the solid lines in the drawings, which show the overall shape of the device, including a U-shaped dental arch portion and a protruding connector stem ('074 Patent, Figs. 1-7). The patent notes that features shown in broken lines are not part of the claimed design ('074 Patent, Description).
  • Technical Importance: The complaint alleges that the patented design is a component of the Plaintiff's "unique product positioning," suggesting its commercial and branding significance in the marketplace (Compl. ¶23).

Key Claims at a Glance

  • Design patents contain a single claim. The asserted claim is for "The ornamental design for a mouthpiece, as shown and described" ('074 Patent, Claim).

U.S. Design Patent No. D765,255, “MOUTHPIECE,” issued August 30, 2016

The Invention Explained

  • Problem Addressed: This patent, like the '074 patent, concerns the ornamental appearance of a mouthpiece (Compl. ¶18).
  • The Patented Solution: The patent claims the ornamental design for a mouthpiece as illustrated in its six figures ('255 Patent, Claim). The scope of the design is limited to the features shown in solid lines, as the patent explicitly states that portions depicted in broken lines "do not form a part of the claimed design" ('255 Patent, Description). While similar to the '074 patent, this design presents a distinct, separately protected ornamental appearance.
  • Technical Importance: The complaint groups this patent with the '074 patent as contributing to its "unique product positioning," indicating the design's perceived value in distinguishing its products from competitors (Compl. ¶23).

Key Claims at a Glance

  • The single asserted claim is for "The ornamental design for a mouthpiece, as shown and described" ('255 Patent, Claim).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are "tooth whitening mouthpieces" sold by Defendants, referred to as the "Infringing Products" (Compl. ¶19). These products are allegedly marketed under the fictitious name "MILLION DOLLAR SMILE" and the trademark "truewhite" (Compl. ¶20).

Functionality and Market Context

The complaint alleges Defendants sell and market the accused products through a website, www.true-company.com (Compl. ¶19). The packaging for the accused products is shown in an exhibit referenced by the complaint. This exhibit is an image of the packaging for the accused products, bearing the 'truewhite' trademark (Compl. ¶20, Ex. 8).

The core of the infringement allegation is based on the visual appearance of the products, which are alleged to be "virtually identical in appearance to the mouthpieces claimed in the '074 and '255 patents" (Compl. ¶19). An image purporting to show the Defendants' infringing mouthpiece products is referenced as evidence of this similarity (Compl. ¶19, Ex. 7).

IV. Analysis of Infringement Allegations

The complaint does not contain a formal claim chart. The infringement theory for both asserted design patents is based on a visual comparison under the "ordinary observer" test.

D636,074 and D765,255 Infringement Allegations

The plaintiff’s infringement theory rests on the assertion that the accused mouthpieces are "virtually identical in appearance" to the designs claimed in both the ’074 and ’255 patents (Compl. ¶19). The complaint supports this by referencing an image of the plaintiff's own commercial product, which it alleges is covered by the patents (Compl. ¶22, Ex. 9), and comparing it to the accused products. The legal test for design patent infringement is whether an ordinary observer, familiar with the prior art designs, would be deceived into purchasing the accused product, believing it to be the patented design. The complaint alleges that this high degree of visual similarity establishes direct infringement by Defendants' making, using, selling, and offering for sale the accused products (Compl. ¶21, ¶26, ¶31).

Identified Points of Contention

  • Factual Question: The central dispute will be a factual comparison of the designs. The court or jury will need to determine if the accused products are "substantially the same" as the patented designs from the perspective of an ordinary observer. Any perceptible differences between the accused products and the patent figures will likely form the basis of the defense.
  • Scope Question: A key legal question will be the scope of the claimed designs, particularly in light of the elements shown in broken lines in the patent figures ('074 Patent, Description; '255 Patent, Description). The analysis must focus only on the claimed elements (solid lines) and how they compare to the corresponding features of the accused products.

V. Key Claim Terms for Construction

The complaint does not provide sufficient detail for analysis of claim construction. As this is a design patent case, the "claim" is defined by the drawings rather than textual limitations, and disputes typically focus on the overall visual impression, not the definition of specific terms.

VI. Other Allegations

Willful Infringement

The complaint alleges willful infringement for both patents. For the ’074 patent, willfulness is predicated on Defendants' alleged "full knowledge," inferred from the fact that the patent had been issued for over five years (Compl. ¶27). For the ’255 patent, knowledge is alleged based on the active and extensive marketing of Plaintiff's own product, which is covered by that patent (Compl. ¶32). The complaint further supports willfulness by alleging a "virtually identical appearance" between the products, which it characterizes as evidence of "deliberate, willful, wanton, and intentional" infringement (Compl. ¶22).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A central issue will be a factual question of visual identity: Would an ordinary observer, giving such attention as a purchaser usually gives, find that the design of the Defendants' "truewhite" mouthpiece is substantially the same as the ornamental designs claimed in the '074 and '255 patents?
  • A related question is one of claim scope: How will the features explicitly disclaimed via broken lines in the patent drawings affect the infringement analysis? The case may turn on whether the similarity resides in the claimed elements (solid lines) or the unclaimed elements (broken lines).
  • A key question for damages will be one of intent: Does the alleged "virtually identical appearance" of the products, combined with the market presence of Plaintiff's products and the age of the '074 patent, provide sufficient evidence to meet the standard for willful infringement, potentially leading to enhanced damages?