DCT

1:22-cv-08537

West Coast Imports Inc v. Emson Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:22-cv-08537, S.D.N.Y., 10/06/2022
  • Venue Allegations: Venue is alleged to be proper in the Southern District of New York because Defendants maintain their principal places of business in the district and have allegedly committed acts of infringement there.
  • Core Dispute: Plaintiff alleges that Defendants’ Bell+Howell branded "Color Changing Swivel LED Lights" infringe one utility patent and one design patent related to a portable, rotatable accent light.
  • Technical Context: The technology at issue falls within the consumer lighting products sector, specifically addressing portable, battery-operated lights that can be mounted and aimed.
  • Key Procedural History: Plaintiff alleges providing Defendants with actual notice of infringement of the design patent on or about December 29, 2021, prior to filing the complaint. Subsequent to the complaint's filing, on October 23, 2024, the U.S. Patent and Trademark Office issued an Ex Parte Reexamination Certificate for the '390 utility patent, cancelling claims 12-21, which includes all utility patent claims asserted in the complaint.

Case Timeline

Date Event
2018-11-27 '646 Design Patent Filing Date
2019-02-12 '390 Utility Patent Priority Date
2021-02-02 '646 Design Patent Issue Date
2021-12-29 Plaintiff alleges providing notice of infringement to Defendants
2022-08-30 '390 Utility Patent Issue Date
2022-10-06 Complaint Filing Date
2024-10-23 '390 Patent Reexamination Certificate Issued, Cancelling Asserted Claims 12-21

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

U.S. Patent No. 11,428,390 - "Rotating Light", August 30, 2022

The Invention Explained

  • Problem Addressed: The patent background identifies a general market for portable and stationary accent lights ('390 Patent, col. 1:24-28). The invention addresses the need for a versatile lighting device that is portable, mountable, and can be easily aimed or rotated within its mount (Compl. ¶10).
  • The Patented Solution: The patent describes a two-part light set: a self-contained, battery-powered "light portion" and a separate "holder." The light portion features two diametrically opposed projections on its cylindrical body. The holder has two corresponding "wings" with recesses that are configured to receive these projections, securing the light portion while still allowing it to be rotated or swiveled to direct the light beam. This design also permits the light portion to be easily removed from the holder for handheld use. ('390 Patent, col. 2:36-58; Fig. 7).
  • Technical Importance: The claimed invention provides a simple, purely mechanical solution for creating a lighting product that is simultaneously mountable, aimable, and portable.

Key Claims at a Glance

  • The complaint asserts independent claims 12 and 19 (Compl. ¶25). Claim 19 recites:
    • A "light portion" with a body for batteries, a transparent enclosure, a PCB with LEDs, and first and second diametrically opposed projections.
    • A "holder" with a rear portion and left and right wings extending perpendicularly from it.
    • Each wing has an inner and outer wall, with the inner wall defining an opening leading to a recess "that does not project into the outer wall."
    • The projections are secured in the recesses to hold the light portion.
    • The openings are configured to allow the light portion to be "easily removable."
  • The complaint does not reserve the right to assert dependent claims.

U.S. Design Patent No. D909,646 - "Circular Light", February 2, 2021

  • Patent Identification: D909,646, “Circular Light”, February 2, 2021.
  • Technology Synopsis: The patent claims the ornamental design for a circular, puck-style light. The protected design consists of the visual characteristics embodied in the product's shape, including its overall proportions and the specific gear-like appearance of the two projections on its sides. The holder shown in some figures with broken lines is for environmental context and is not part of the claimed design. ('646 Patent, Fig. 8).
  • Asserted Claims: Design patents contain a single claim for the ornamental design as shown in the drawings.
  • Accused Features: The complaint alleges that the overall visual appearance of the Defendants' product is "so similar, as to be nearly identical" to the patented design, infringing the '646 patent. (Compl. ¶¶28-29).

III. The Accused Instrumentality

Product Identification

  • The "Color Changing Swivel LED Lights" sold under the Bell+Howell brand (Compl. ¶12).

Functionality and Market Context

  • The Accused Product is a battery-operated, circular LED "puck" light sold with a corresponding plastic holder. As depicted in the complaint, the light unit can be snapped into the holder, which can be mounted to a surface. The light can then swivel within the holder to direct illumination. The complaint's annotated photographs show that the light portion is removable from the holder and contains batteries, a PCB with LEDs, and side projections for mounting. (Compl. ¶26, pp. 7-9). The complaint alleges the product was copied from Plaintiff's products seen at trade shows. (Compl. ¶12).

IV. Analysis of Infringement Allegations

'390 Patent Infringement Allegations

As noted in Section I, the asserted claims of the '390 patent were cancelled in an ex parte reexamination proceeding subsequent to the filing of the complaint. The following analysis is based on the allegations as presented in the original complaint.

The complaint provides annotated photographs to map elements of the Accused Product to the limitations of claim 19. An annotated image shows the Accused Product's main components, the "Light Portion" and the "Holder" (Compl. ¶26, p. 7).

Claim Element (from Independent Claim 19) Alleged Infringing Functionality Complaint Citation Patent Citation
a light portion comprising: a body configured to retain one or more batteries, the body having a transparent enclosure The accused "Light Portion" has a body with a battery compartment and a transparent front enclosure for the light. ¶26, p. 8 col. 2:37-42
a printed circuit board in the body containing one or more light-emitting diodes The accused "Light Portion" contains a "Printed Circuit Board" with multiple "LEDs." ¶26, p. 8 col. 2:42-45
a first projection extending outward from an outer surface of the body; and a second projection...diametrically opposite The accused "Light Portion" has a "First Projection" and a "Second Projection" on opposite sides of its body. ¶26, p. 8 col. 2:45-49
a holder for holding the light portion, comprising: a rear portion; a left wing extending from...the rear portion...and a right wing The accused "Holder" has a "Rear Portion" with a "Left Wing" and "Right Wing." An annotated photograph shows the holder's structure. ¶26, p. 9 col. 2:49-54
wherein the first projection is secured to the first recess...and the second projection is secured to the second recess...to hold the light portion The complaint alleges the product functions in this manner, showing the light portion seated in the holder. ¶26, p. 7 col. 2:55-58
wherein the first and second openings are configured to allow the light portion to be easily removable from the holder An annotated photograph is titled "Light Portion removable from Holder" and depicts the two pieces separated. ¶26, p. 9 col. 9:8-11

'646 Patent Infringement Allegations

The complaint alleges infringement of the '646 design patent under the "ordinary observer" test, arguing that the Accused Product and the patented design are "nearly identical" (Compl. ¶29). To support this, the complaint provides a series of side-by-side comparisons of figures from the '646 patent and photographs of the Accused Product from various angles (Compl. ¶28, pp. 10-13). For example, a perspective view of the Accused Product is shown next to FIG. 1 of the patent, highlighting the visual similarity of the overall form and side projections (Compl. ¶28, p. 10).

Identified Points of Contention

  • Procedural Question: The primary issue for the '390 patent is the legal effect of the post-filing cancellation of all asserted claims via reexamination. This raises the question of whether Plaintiff's infringement claim as pleaded is now moot and must be dismissed.
  • Design Scope Question: For the '646 patent, the dispute will center on the "ordinary observer" test. The key question for the fact-finder is whether the accused Bell+Howell light has an overall ornamental appearance so similar to the patented design that it would deceive a typical purchaser.

V. Key Claim Terms for Construction

The following analysis is based on the '390 patent claims as asserted in the complaint, notwithstanding their subsequent cancellation.

  • The Term: "recess that does not project into the outer wall"

    • Context and Importance: This term from claim 19 defines a key structural feature of the holder's wings. Infringement will depend on the physical construction of the accused holder. Practitioners may focus on this term to determine if the accused holder's structure, which appears to be molded from a single piece of plastic, meets this specific negative limitation.
    • Intrinsic Evidence for a Narrower Interpretation: The specification's description of the holder (200) and its recesses (220a, 220b) in conjunction with Figure 6 shows the recesses formed on an inner structure of the wings, distinct from the outer surface of the holder ('390 Patent, col. 6:26-35; Fig. 6). A defendant may argue this embodiment limits the claim to a structure with physically distinct inner and outer walls, where the recess is formed only in the inner one.

  • The Term: "easily removable"

    • Context and Importance: This functional term from claim 19 is subjective and its meaning is critical to determining infringement. The parties will likely dispute the degree of force and ease required to meet this limitation.
    • Intrinsic Evidence for a Broader Interpretation: The specification states that the light portion can be pulled out when "a little force is applied," which may support a broad interpretation that "easily removable" simply means removable by hand without special tools ('390 Patent, col. 6:41-43).
    • Intrinsic Evidence for a Narrower Interpretation: The same section of the specification also states that the projections are "tightly secured" within the recesses ('390 Patent, col. 6:40). A defendant could argue that "tightly secured" and "easily removable" create a specific balance of retention and release forces that the accused product may not possess.

VI. Other Allegations

  • Indirect Infringement: The complaint does not contain a count for indirect infringement. The prayer for relief, however, requests an injunction against "inducement of infringement, or contributory infringement of the '390 Patent" (Compl. p. 15, ¶C). The factual allegations do not provide a basis for an indirect infringement theory, such as by describing user manuals or instructions that would teach an end-user to assemble or use the product in an infringing manner.
  • Willful Infringement: Willfulness is alleged for both patents. The complaint alleges Defendants had knowledge based on attending the same trade shows as Plaintiff (Compl. ¶12), intentional copying (Compl. ¶22), and receiving actual written notice of infringement of the '646 patent in December 2021, after which they allegedly continued to sell the Accused Product (Compl. ¶¶23-24, 35, 41).

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

  • A dispositive threshold question is one of procedural viability: what is the legal effect of the USPTO's post-complaint cancellation of all asserted claims of the '390 patent? The court must determine if this action renders the utility patent infringement count moot or if Plaintiff has any path to amend its allegations.
  • The remainder of the case will likely turn on a question of visual identity: under the ordinary observer test for the '646 design patent, is the ornamental design of the accused Bell+Howell light substantially the same as the claimed design? The outcome will depend on the fact-finder's comparison of the products' overall visual impressions, not on a side-by-side analysis of minute details.