DCT
1:22-cv-08537
West Coast Imports Inc v. Emson Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: West Coast Imports, Inc. (California)
- Defendant: E. Mishan & Sons, Inc. (New York)
- Plaintiff’s Counsel: Culhane Meadows PLLC
- Case Identification: 1:22-cv-08537, S.D.N.Y., 07/17/2023
- Venue Allegations: Venue is alleged to be proper in the Southern District of New York because Defendant has a regular and established place of business in the district and has allegedly committed acts of infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s Bell+Howell branded swivel LED lights infringe two utility patents and one design patent related to portable, rotating light assemblies.
- Technical Context: The technology concerns consumer lighting products, specifically battery-powered, portable "puck" lights designed to be aimable by rotating within a separate holder.
- Key Procedural History: Plaintiff alleges it provided Defendant with actual notice of infringement as early as December 2021. Notably, after the filing of this First Amended Complaint, an Ex Parte Reexamination Certificate was issued for U.S. Patent No. 11,428,390, which cancelled claims 12-21. The complaint asserts infringement of claims 12 and 19 of this patent.
Case Timeline
| Date | Event |
|---|---|
| 2018-11-27 | U.S. Design Patent No. D909,646 Filing Date |
| 2019-02-12 | U.S. Patent Nos. 11,428,390 & 11,692,695 Priority Date |
| 2021-02-02 | U.S. Design Patent No. D909,646 Issue Date |
| 2021-12-29 | Plaintiff alleges providing notice of infringement to Defendant |
| 2022-08-30 | U.S. Patent No. 11,428,390 Issue Date |
| 2023-07-04 | U.S. Patent No. 11,692,695 Issue Date |
| 2023-07-17 | First Amended Complaint Filing Date |
| 2024-10-23 | Reexamination Certificate for '390 Patent Issued (Claims 12-21 Cancelled) |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,428,390 - Rotating Light
- Issued: August 30, 2022
The Invention Explained
- Problem Addressed: The patent addresses a need for portable and stationary accessory lights, such as those used for accent lighting (Compl. ¶9; ’390 Patent, col. 1:23-28). The complaint further specifies this as a need for a "wireless portable light for various uses" (Compl. ¶9).
- The Patented Solution: The invention is a two-part light set: a self-contained, battery-powered "light portion" and a separate "holder." The light portion has diametrically opposed projections that engage with recesses in the holder's "wings," allowing the light to be securely held but also rotated to aim the beam and be easily removed for portable use (Compl. ¶9; ’390 Patent, col. 2:36-58). The holder's wings are described as extending perpendicularly from a rear portion, creating a cradle for the light (Compl. ¶14; ’390 Patent, Fig. 6).
- Technical Importance: This design offers a versatile lighting solution that is both mountable for fixed, aimable illumination and detachable for use as a handheld light (Compl. ¶9).
Key Claims at a Glance
- The complaint asserts independent claim 19 and dependent claim 12 (’390 Patent, col. 10:26-64; Compl. ¶27).
- Independent Claim 19 requires:
- A light portion comprising a body for batteries, a transparent enclosure, a PCB with LEDs, a first projection, and a second diametrically opposite projection.
- A holder comprising a rear portion, a left wing, and a right wing.
- The left wing has an outer wall, an inner wall, and a first opening leading to a first recess that "does not project into the outer wall."
- The right wing has an outer wall, an inner wall, and a second opening leading to a second recess that "does not project into the outer wall."
- The projections are secured in the recesses to hold the light portion, and the openings are configured to allow the light to be easily removable.
- The complaint reserves the right to assert other claims (’390 Patent, col. 9:1-10:67; Compl. ¶27).
U.S. Patent No. 11,692,695 - Rotating Light
- Issued: July 4, 2023
The Invention Explained
- Problem Addressed: The technology addresses the same need for a versatile, portable, and aimable accent light as the ’390 Patent (’695 Patent, col. 2:21-25; Compl. ¶9).
- The Patented Solution: The invention is structurally very similar to that of the ’390 Patent, consisting of a removable light portion that rotates within a holder via a projection-and-recess mechanism (’695 Patent, col. 2:40-58). A distinguishing feature recited in the asserted claim is the holder's structure, which specifically includes "a rear portion having a first cutout at a top portion and a bottom cutout at a bottom portion" (’695 Patent, col. 10:25-27). These cutouts are depicted as arches in the holder's backplate (’695 Patent, Fig. 6, elements 235a, 235b).
- Technical Importance: As with the ’390 Patent, this configuration provides a mountable and detachable light source, with the claimed cutouts potentially reducing material or weight while defining the holder's structure (Compl. ¶9).
Key Claims at a Glance
- The complaint asserts independent claim 15 and dependent claims 1 and 8 (’695 Patent, col. 8:28-10:41; Compl. ¶30).
- Independent Claim 15 requires:
- A light portion comprising a body for batteries, a PCB with LEDs, a first projection, and a second diametrically opposite projection.
- A holder comprising a rear portion, a left wing with a first recess, and a right wing with a second recess.
- The holder's rear portion has "a first cutout at a top portion and a bottom cutout at a bottom portion."
- The projections are secured in the recesses to hold the light portion, and the openings are configured to allow the light to be easily removable.
- The complaint reserves the right to assert other claims (’695 Patent, col. 8:28-10:72; Compl. ¶30).
U.S. Design Patent No. D909,646 - Circular Light
- Issued: February 2, 2021
Technology Synopsis
This patent does not claim any functional features. It protects the ornamental, non-functional visual characteristics of a circular light assembly as depicted in its figures (Compl. ¶20; D’646 Patent, Figs. 1-7).
Asserted Claims
The single claim for the ornamental design for a circular light as shown and described (Compl. ¶48).
Accused Features
The overall visual appearance of the Bell+Howell Accused Product is alleged to be "nearly identical" to the patented design, such that it would deceive an ordinary observer (Compl. ¶¶33, 34, 48). The complaint provides a visual comparison table to support this allegation (Compl. pp. 14-17).
III. The Accused Instrumentality
Product Identification
The "Bell+Howell Color Changing Swivel LED Lights," identified as the "Accused Product" (Compl. ¶11).
Functionality and Market Context
The Accused Product is a battery-operated LED light that can be placed in a separate mounting holder (Compl. ¶28, p. 8). The complaint includes photographs depicting the product's components, including a main "Light Portion" with a transparent lens, a body containing a battery compartment and a printed circuit board with LEDs, and two small projections on its sides (Compl. ¶28, p. 9). The "Holder" is shown as a separate plastic piece with two "wings" and a flat back, designed to cradle the light portion (Compl. ¶28, p. 10). A photograph shows the light portion being removed from the holder, illustrating its two-piece, separable nature (Compl. ¶29, p. 10). The complaint alleges that the Defendant markets and sells this product and that it was "intentionally copied" from Plaintiff's products seen at trade shows (Compl. ¶11, 24).
IV. Analysis of Infringement Allegations
'390 Patent Infringement Allegations
| 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... a printed circuit board... | The complaint identifies the main removable lighting unit as the "Light Portion," and provides photographs showing its internal compartment for batteries, a transparent front lens, and the internal printed circuit board with LEDs (Compl. p. 9). | ¶28 | col. 5:30-36 |
| a first projection extending outward from an outer surface of the body; and a second projection extending outward... diametrically opposite... | Photographs show two small, cylindrical projections on opposite sides of the Accused Product's light portion (Compl. p. 9). | ¶28 | col. 4:37-44 |
| a holder for holding the light portion, comprising: a rear portion; a left wing... and a right wing... | The complaint identifies the mounting bracket as the "Holder" and provides a photograph showing its constituent "Rear Portion," "Left Wing," and "Right Wing" (Compl. p. 10). | ¶28 | col. 6:25-29 |
| the inner wall having a first opening at a top portion leading into a first recess that does not project into the outer wall... | The complaint alleges the Accused Product contains this element by referencing the holder's general structure, but the provided photographs do not show a clear cross-section or detailed view sufficient to confirm or deny that the recess does not project into the outer wall of the wing. | ¶29 | col. 10:48-54 |
| wherein the first and second openings are configured to allow the light portion to be easily removable from the holder. | A photograph depicts the light portion being physically separated from the holder, which the complaint offers as evidence of the "easily removable" configuration (Compl. p. 10). | ¶29 | col. 10:65-67 |
'695 Patent Infringement Allegations
| Claim Element (from Independent Claim 15) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a light portion comprising: a body configured to retain one or more batteries; a printed circuit board... a first projection... and a second projection... | The allegations for the light portion are identical to those for the ’390 Patent, referencing photographs of the Accused Product’s light unit, battery compartment, PCB, and side projections (Compl. p. 12-13). | ¶31 | col. 8:31-41 |
| a holder for holding the light portion, comprising: a rear portion having a first cutout at a top portion and a bottom cutout... | The complaint identifies the holder and its rear portion, and a photograph shows two arc-shaped openings in the backplate of the holder which are alleged to be the claimed "cutouts" (Compl. p. 13). | ¶31 | col. 10:25-27 |
| a left wing extending from... the rear portion, the left wing having a first recess; and a right wing extending from... the rear portion... | Photographs show the left and right wings of the accused holder, which contain slots or recesses that engage the projections on the light portion (Compl. p. 13). | ¶31 | col. 10:28-32 |
| wherein the first and second openings are configured to allow the light portion to be easily removable from the holder. | As with the ’390 Patent, a photograph of the light portion separated from the holder is provided as evidence for this element (Compl. p. 14). | ¶32 | col. 10:39-41 |
Identified Points of Contention
- Validity Question: The primary point of contention for the ’390 Patent is the enforceability of the asserted claims, which were cancelled in an ex parte reexamination proceeding that concluded after the complaint was filed.
- Scope Questions: For the ’390 Patent, a dispute may arise over the negative limitation "a first recess that does not project into the outer wall." The evidence in the complaint is not detailed enough to conclusively show this feature. For the ’695 Patent, the dispute may focus on whether the openings in the accused holder's backplate meet the definition of "a first cutout at a top portion and a bottom cutout at a bottom portion," as defined by the patent's specification and figures.
- Design Patent Question: For the D’646 patent, the dispute will center on the "ordinary observer" test. The complaint presents side-by-side photographic comparisons to argue for substantial similarity (Compl. p. 14). A defense may focus on any perceived visual differences between the patented design and the accused product.
V. Key Claim Terms for Construction
For the ’390 Patent
- The Term: "a first recess that does not project into the outer wall" (Claim 19)
- Context and Importance: This negative limitation is a key structural differentiator of the holder. Infringement will depend on whether the accused holder's internal structure for receiving the light's projection is constructed in a way that avoids projecting into the wing's outer wall. Practitioners may focus on this term as negative limitations can be strictly construed.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term itself is not further defined, which may support giving it a plain and ordinary meaning not limited to a specific geometry beyond what is stated.
- Evidence for a Narrower Interpretation: The figures, particularly the perspective view of the holder in Figure 6, show a specific embodiment where the recess (220a, 220b) is an opening in an inner structure that is distinct from the outer surface of the wing (230a, 230b) (’390 Patent, Fig. 6). A court could limit the claim to this depicted arrangement.
For the ’695 Patent
- The Term: "a rear portion having a first cutout at a top portion and a bottom cutout at a bottom portion" (Claim 15)
- Context and Importance: This term defines a specific feature of the holder's backplate. The infringement analysis will turn on whether the arc-shaped openings in the accused product's holder meet this structural requirement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term "cutout" is not explicitly defined, which could support a broad interpretation covering any type of opening or aperture at the top and bottom of the rear portion.
- Evidence for a Narrower Interpretation: Figure 6 of the patent clearly depicts these "cutouts" (235a, 235b) as two distinct, arch-shaped voids in the rear portion (215) of the holder (’695 Patent, Fig. 6; col. 6:30-32). A party could argue the term should be limited to the shape and placement shown in this preferred embodiment.
VI. Other Allegations
Indirect Infringement
The complaint's prayer for relief seeks an injunction against inducement of infringement, but the factual allegations in the body of the complaint do not provide specific details, such as references to user manuals or advertising, to support a claim for indirect infringement (Compl. ¶¶ D, E, p. 20).
Willful Infringement
Willfulness is alleged based on pre-suit knowledge. The complaint states that Defendant was provided actual notice of infringement "as early as December 2021" (Compl. ¶38, 43, 49). It further alleges that Defendant learned of the patented products at trade shows and "intentionally copied" them (Compl. ¶11, 24).
VII. Analyst’s Conclusion: Key Questions for the Case
- Threshold Validity: A dispositive issue for U.S. Patent No. 11,428,390 is the legal effect of the subsequent reexamination certificate that cancelled the only utility claims asserted in the complaint. The court will need to address whether any cause of action based on these specific claims can proceed.
- Structural Equivalence: A central evidentiary question will be one of structural mapping: do the specific geometries of the accused holder—particularly its internal recesses and backplate openings—fall within the scope of the claims of the ’695 patent? This will likely turn on a detailed, feature-by-feature comparison between the product and the claim language as construed by the court.
- Visual Identity (Design Patent): For the design patent claim, the core question is one of overall appearance: is the design of the accused Bell+Howell light "substantially the same" as the D’646 patent's design from the perspective of an ordinary observer? The outcome will depend on the court's holistic comparison, weighing similarities against any potential visual differences.