1:19-cv-06930
3 Bees Me Inc v. Vatos Toys
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: 3 Bees & Me Inc. (California)
- Defendant: Vatos Toys (China); Lukat Toys (China)
- Plaintiff’s Counsel: Mestechkin Law Group P.C.
- Case Identification: 1:19-cv-06930, S.D.N.Y., 08/08/2019
- Venue Allegations: Venue is asserted based on Defendants operating interactive websites and Amazon.com storefronts through which New York consumers can purchase products, with options for direct shipping to the state.
- Core Dispute: Plaintiff alleges that Defendants’ wheeled dinosaur toy sets infringe its U.S. design patent covering the ornamental appearance of a "Toy Dinosaur Set."
- Technical Context: The dispute concerns the ornamental design and overall visual appearance of products in the competitive children's toy market.
- Key Procedural History: The patent-in-suit was issued in June 2018. The complaint asserts that Plaintiff has been selling products embodying the patented designs since March 2017, prior to the patent's issuance.
Case Timeline
| Date | Event |
|---|---|
| 2017-02-10 | '754 Patent Priority Date |
| 2017-03-22 | Plaintiff begins selling products embodying the patented designs |
| 2018-06-05 | U.S. Design Patent D819,754 issues |
| 2019-05-01 | Plaintiff discovers Lukat's allegedly infringing products |
| 2019-05-23 | Plaintiff discovers Vatos' allegedly infringing products |
| 2019-08-08 | Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D819,754 - "Toy Dinosaur Set"
- Patent Identification: U.S. Design Patent No. D819,754, "Toy Dinosaur Set," issued June 5, 2018.
The Invention Explained
- Problem Addressed: As a design patent, the '754 Patent does not articulate a technical problem. Instead, it seeks to protect a new, original, and ornamental design for an article of manufacture. The complaint suggests the design creates a distinct aesthetic for a set of children's toys (Compl. ¶¶ 4, 18).
- The Patented Solution: The patent protects the specific visual appearance of a set of four wheeled dinosaur toys (’754 Patent, Claim; Figs. 1-34). The complaint characterizes the shared design language as "friendly baby dinosaurs with very large eyes, head regions which are the same size as the torso region and four wheels which replace the legs of the dinosaurs" (Compl. ¶18). The patented design encompasses four variations based on commonly recognized dinosaurs, including Triceratops (Fig. 27) and Stegosaurus (Fig. 19), creating a thematically unified set.
- Technical Importance: The design creates a cohesive and distinct visual identity for a toy set in the competitive children's toy market (Compl. ¶4).
Key Claims at a Glance
- The complaint asserts infringement of the patent's single claim: "The ornamental design for the toy dinosaur set, as shown and described" (’754 Patent, Claim).
- This claim protects the overall visual impression of the collective designs depicted in Figures 1-34 of the '754 Patent.
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are wheeled dinosaur toy sets, including the "VATOS Baby Toy Dinosaur Car" and "LUKAT Dinosaur Cars Toy," sold by Defendants Vatos Toys and Lukat Toys (Compl. ¶¶ 22-25, pp. 5-6).
Functionality and Market Context
The complaint describes the accused products as sets of colorful, pull-back dinosaur car toys (Compl. p. 5). Plaintiff alleges that Defendants sell these products on their own websites and through the Amazon.com marketplace, placing them in direct competition with Plaintiff's own products, which are sold through the same channels (Compl. ¶¶ 5, 8, 11, 45). The complaint further alleges that the Defendants' products are "inferior knock-offs" of a cheaper quality than Plaintiff's patented toys (Compl. ¶¶ 32, 45).
IV. Analysis of Infringement Allegations
Design patent infringement is determined by the "ordinary observer" test, which asks whether an ordinary observer, giving such attention as a purchaser usually gives, would be deceived into purchasing the accused product believing it to be the patented one. The complaint's allegations focus on a side-by-side comparison to argue for such a visual similarity. The complaint provides a side-by-side visual comparison of four of the plaintiff's patented toys against corresponding toys from both Lukat and Vatos to allege they are "virtually identical" (Compl. p. 7).
'754 Patent Infringement Allegations: Comparison of Ornamental Features
| Patented Design Feature ('754 Patent) | Alleged Infringing Feature (Defendants' Products) | Complaint Citation | Patent Citation |
|---|---|---|---|
| A set of stylized toy dinosaurs, including forms resembling a Triceratops, Stegosaurus, Brontosaurus, and Tyrannosaurus Rex. | A set of toy dinosaurs including visually similar Triceratops, Stegosaurus, Brontosaurus, and Tyrannosaurus Rex forms. | ¶27; p. 7 | Figs. 3, 11, 19, 27 |
| Each dinosaur is depicted with a "friendly baby" aesthetic, characterized by large, simple eyes and soft, rounded features. | The accused toys are depicted with large, simple eyes and a "cute cartoon" appearance that the complaint alleges is virtually identical to the patented design. | ¶18, ¶27; p. 6 | Figs. 3, 11, 19, 27 |
| A specific proportional scheme where the head region is approximately the same size as the torso region. | The complaint alleges the accused products have head regions that are the same size as the torso region, an assertion supported by the visual evidence provided. | ¶18, ¶27; p. 7 | Figs. 7, 15, 23, 31 |
| The replacement of dinosaur legs with four wheels, creating a toy car hybrid. | The accused products are described as "pull back cars" and are depicted with four wheels in place of legs, consistent with the patented design. | ¶18, ¶27; p. 5 | Figs. 7, 15, 23, 31 |
Identified Points of Contention
- Scope Questions: The central question is one of visual perception: is the overall ornamental impression of the Defendants' toy sets "substantially the same" as that of the patented designs? The infringement analysis will depend on a holistic comparison rather than a dissection of individual features.
- Evidentiary Questions: The court may need to consider the significance of any differences between the patented and accused designs. For instance, the accused products are sold in sets of six, whereas the patent claims a set of four. The question will be whether such differences, or any other minor variations in shape, proportion, or color, are sufficient to create a distinct visual impression in the mind of an ordinary observer, or if they are trivial in the context of the overall design.
V. Key Claim Terms for Construction
In a design patent case, the claim is understood to be the design as shown in the drawings. There are no traditional claim terms requiring construction.
VI. Other Allegations
Indirect Infringement
The prayer for relief includes a request to enjoin Defendants from "inducing infringement" (Compl. p. 10, (3)). However, the factual allegations in the complaint center on direct infringement via Defendants' own sales and do not plead specific facts, such as instructing third parties, that would typically support a claim for inducement.
Willful Infringement
The complaint alleges that Defendants’ infringement was "willful and deliberate" and seeks a finding that this is an exceptional case under 35 U.S.C. § 285 (Compl. p. 10, (2)). The factual basis for this allegation appears to rest on the assertion that the accused products are "virtually identical" to the patented designs, which may be argued to suggest intentional copying (Compl. ¶27). The complaint does not allege pre-suit knowledge via a notice letter or other communication.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual identity: From the perspective of an ordinary observer, is the overall ornamental appearance of the Defendants' toy sets substantially the same as the designs claimed in the '754 patent, to the point of causing confusion?
- A key evidentiary question will be the materiality of differences: Will the variations between the products—such as the number of toys per set (six accused vs. four patented) and any subtle differences in shape or features—be deemed sufficient to create a distinct overall visual impression, or will a fact-finder view them as minor variations on the patented design?
- The case will also raise questions of intent and attribution: If infringement is found, the court will need to determine if the degree of similarity supports a finding of willful copying, and subsequently, what portion of the Defendants' profits is properly attributable to the infringing designs for the purpose of calculating damages.