DCT

1:22-cv-08537

West Coast Imports Inc v. Emson Inc

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Key Events
Amended Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:22-cv-08537, S.D.N.Y., 11/21/2025
  • Venue Allegations: Venue is based on Defendant being a New York corporation with a regular and established place of business within the district, where it allegedly committed acts of infringement.
  • Core Dispute: Plaintiff alleges that Defendant’s Bell+Howell brand of consumer swivel lights infringes three of its design patents related to the ornamental appearance of a circular light and its holder.
  • Technical Context: The dispute is in the consumer goods sector for portable, battery-operated accent lighting, a market characterized by product designs intended for versatility and ease of use.
  • Key Procedural History: The complaint alleges Plaintiff provided Defendant with actual notice of infringement of the '646 Patent in December 2021. It further alleges providing notice of infringement of the '111 Patent and notice of the pending application that would become the '098 Patent in September 2024.

Case Timeline

Date Event
2018-11-27 Earliest Priority Date ('646, '111, '098 Patents)
2021-02-02 '646 Patent Issued
Late 2021 Plaintiff became aware of Accused Product
2021-12-29 Plaintiff alleges giving notice of '646 Patent infringement
2024-06-04 '111 Patent Issued
2024-09-09 Plaintiff alleges giving notice of '111 Patent infringement
2024-09-09 Plaintiff alleges giving notice of pending application for '098 Patent
2025-05-13 '098 Patent Issued
2025-11-21 Complaint Filing Date

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

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

  • Patent Identification: D909,646, "Circular Light," issued February 2, 2021 (Compl. ¶12).

The Invention Explained

  • Problem Addressed: The patent document itself does not articulate a problem to be solved, as is typical for design patents. The complaint notes that the inventor identified a market need for a "wireless portable light for various uses" (Compl. ¶9).
  • The Patented Solution: The '646 Patent claims the ornamental design for a stand-alone circular light puck (Compl. ¶14). The design, shown in Figures 1-7 of the patent, features a disc-shaped body with a round central lens, a ridged or textured circumferential edge, and small cylindrical protrusions on opposing sides (Compl. ¶28).
  • Technical Importance: The design pertains to portable, battery-operated lighting, a product category valued for its versatility in consumer applications (Compl. ¶9).

Key Claims at a Glance

  • The patent asserts a single claim: "The ornamental design for a circular light, as shown and described."

U.S. Design Patent No. D1,030,111 - "Circular Light"

  • Patent Identification: D1,030,111, "Circular Light," issued June 4, 2024 (Compl. ¶15).

The Invention Explained

  • Problem Addressed: The patent does not describe a problem. The complaint frames the innovation as a light that can be "secured within a holder and rotated within that holder" (Compl. ¶9).
  • The Patented Solution: The '111 Patent claims the ornamental design for a circular light as part of an assembly with a holder (Compl. ¶17). The design, illustrated in the patent's figures, combines a light puck similar to that in the '646 Patent with a U-shaped cradle that grips the light by its side protrusions, creating a unified aesthetic for a mounted, directable light (Compl. ¶30).
  • Technical Importance: The design provides an integrated mounting and swiveling capability, expanding the utility of the portable light to semi-permanent installations such as wall or under-cabinet lighting (Compl. ¶9).

Key Claims at a Glance

  • The patent asserts a single claim: "The ornamental design for a circular light, as shown and described."

U.S. Design Patent No. D1,075,098 - "Circular Light"

  • Patent Identification: D1,075,098, "Circular Light," issued May 13, 2025 (Compl. ¶18).
  • Technology Synopsis: This design patent protects the ornamental appearance of a circular light and holder combination (Compl. ¶20). The claimed design is visually similar to that of the '111 patent, showing a light puck mounted within a U-shaped holder, and appears to claim a variant of the same product assembly aesthetic (Compl. ¶32).
  • Asserted Claims: The patent asserts a single claim for "The ornamental design for a circular light, as shown and described."
  • Accused Features: The complaint accuses the overall ornamental appearance of the Defendant's Bell+Howell Color Changing Swivel LED Lights, including both the light unit and its holder, of infringing this patent (Compl. ¶32-33).

III. The Accused Instrumentality

  • Product Identification: The "Bell+Howell Color Changing Swivel LED Lights" (the "Accused Product") (Compl. ¶11).
  • Functionality and Market Context: The complaint alleges the Accused Product is a wireless, portable light that can be used independently or secured within a rotating holder, directly copying the features of Plaintiff's patented products (Compl. ¶9, 11). The complaint asserts that Defendant sells these products after having learned of Plaintiff's products at national trade shows and intentionally copying them (Compl. ¶11). The visual evidence provided shows a circular LED light puck that fits into a separate swiveling mount (Compl. p. 10).

IV. Analysis of Infringement Allegations

The complaint does not contain a claim chart, as is common in design patent cases. The infringement theory is based on the "ordinary observer" test, which asks whether an ordinary observer would believe the accused design is the same as the patented design.

For all three patents-in-suit, the complaint alleges that the Accused Product is "so similar, as to be nearly identical" to the patented designs, such that an ordinary observer would be deceived into purchasing the Accused Product believing it to be the same as the protected design (Compl. ¶29, 31, 33). To support these allegations, the complaint provides extensive side-by-side visual comparisons.

  • '646 Patent Allegations: The complaint compares patent figures with photographs of the Accused Product's light puck from six different angles (Compl. p. 6-9). The provided perspective view comparison shows the accused product's circular body, central lens, and side protrusion, which the plaintiff alleges creates a visual impression substantially the same as FIG. 1 of the '646 Patent (Compl. p. 6).
  • '111 Patent Allegations: The complaint presents a similar multi-angle visual comparison, this time for the light-and-holder combination (Compl. p. 10-13). The front view comparison, for example, juxtaposes FIG. 2 of the patent with a photo of the accused light mounted in its holder, alleging a deceptive similarity in their overall appearance (Compl. p. 10).
  • '098 Patent Allegations: A third set of side-by-side images is provided to support the allegation that the Accused Product is substantially similar to the design claimed in the '098 Patent (Compl. p. 14-17).

Identified Points of Contention

  • Scope Questions: The central issue for infringement will be whether an ordinary observer, giving the attention a purchaser usually gives, would find the overall ornamental appearance of the Accused Product to be substantially the same as the respective designs claimed in the patents-in-suit.
  • Technical Questions: Analysis may focus on whether differences between the designs—such as surface textures, proportions, or the prominent "BELL+HOWELL" branding on the Accused Product (Compl. p. 6)—are sufficient to create a visually distinct overall impression that would avoid deceiving an ordinary observer.

V. Other Allegations

  • Indirect Infringement: The complaint does not plead specific facts to support claims of induced or contributory infringement.
  • Willful Infringement: Willfulness is alleged for all three asserted patents. The complaint bases this on Defendant's alleged continued infringement after receiving actual notice from Plaintiff (Compl. ¶39, 45, 51). The notice for the '646 Patent is alleged to have been provided on December 29, 2021 (Compl. ¶25). For the '111 and '098 Patents, notice is alleged to have been provided on September 9, 2024, with the notice for the '098 Patent occurring while its application was still pending (Compl. ¶26, 50).

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

  • A core issue will be one of visual identity: Will an ordinary observer, familiar with the prior art in consumer lighting, find the overall ornamental design of the Bell+Howell light and its holder to be substantially the same as the designs claimed in the '646, '111, and '098 patents, or do differences in branding, surface detail, and proportion create a distinct visual impression?
  • A key question for damages will be willfulness: Does the complaint's allegation that Defendant continued to sell the Accused Product after receiving specific notices of infringement—including notice of a pending application before its patent issued—support a finding of willful infringement, which could lead to enhanced damages and attorneys' fees?