DCT
1:23-cv-00811
Bollinger Motors Inc v. Compton
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Bollinger Motors, Inc. (Delaware)
- Defendant: Ross Compton (England); All Terrain All Electric Ltd. (d/b/a Munro Vehicles) (Scotland)
- Plaintiff’s Counsel: Foley & Lardner LLP
- Case Identification: 1:23-cv-00811, S.D.N.Y., 01/31/2023
- Venue Allegations: Venue is alleged based on defendants being subject to personal jurisdiction in the district, and a prior Nondisclosure Agreement between Plaintiff and Defendant Compton that contains a New York choice-of-law provision.
- Core Dispute: Plaintiff alleges that Defendant’s Munro MK_1 electric vehicle infringes two design patents covering the ornamental appearance of a sport utility vehicle and a pickup truck.
- Technical Context: The dispute is situated in the electric vehicle (EV) market, specifically concerning the design of rugged, utilitarian, off-road style vehicles.
- Key Procedural History: The complaint alleges that Defendant Compton previously worked as a designer for Plaintiff under a Nondisclosure Agreement, and subsequently became head of design for Defendant Munro, where he was directly involved in designing the accused vehicle. This alleged history underlies claims for breach of contract and intentional interference, in addition to patent infringement.
Case Timeline
| Date | Event |
|---|---|
| 2015-02-16 | Bollinger and Compton enter Mutual Nondisclosure Agreement |
| 2017 | Bollinger unveils the B1 SUV |
| 2017-07-27 | '027 Patent Priority Date (Application Filing) |
| 2017-07-27 | '487 Patent Priority Date (Application Filing) |
| 2018-12-18 | '027 Patent Issue Date |
| 2018-12-25 | '487 Patent Issue Date |
| 2019 | Bollinger unveils the B2 pickup truck |
| 2022-12-09 | Munro allegedly receives actual notice of patents |
| 2022-12-14 | Compton allegedly receives actual notice of patents |
| 2023-01-31 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D836,027 - "Vehicle," issued December 18, 2018
The Invention Explained
- Problem Addressed: Design patents protect ornamental appearance rather than solving a technical problem. The complaint suggests a market need for "unique and distinctive" EV designs that depart from prevailing aesthetics by featuring a rugged, utilitarian appearance (Compl. ¶¶16-17).
- The Patented Solution: The patent claims the specific ornamental design for a pickup-truck-style vehicle as depicted in its figures ('027 Patent, Claim, FIG. 1). The design is characterized by a boxy, two-door cab, an open bed, flat body panels, and exposed fasteners. The complaint alleges that this design is embodied in its Bollinger B2 vehicle (Compl. ¶¶15-16).
- Technical Importance: The complaint alleges that this design, along with that of the '487 Patent, is "novel and distinctive" and contributed to Bollinger becoming "renowned in the field of electric vehicle design" (Compl. ¶¶13, 16).
Key Claims at a Glance
- The single claim asserted is for "The ornamental design for a vehicle, as shown and described" ('027 Patent, Claim). The scope is defined by the solid lines in Figures 1-6; elements shown in broken lines, such as the wheels and undercarriage, are for illustrative purposes only and not part of the claimed design ('027 Patent, DESCRIPTION).
U.S. Design Patent No. D836,487 - "Vehicle," issued December 25, 2018
The Invention Explained
- Problem Addressed: As with the '027 Patent, the '487 Patent addresses the creation of a novel ornamental vehicle design (Compl. ¶¶11, 13).
- The Patented Solution: The patent claims the ornamental design for a sport-utility-style vehicle, which the complaint alleges is embodied in its Bollinger B1 SUV (Compl. ¶¶14, 16). The design, shown in the patent's figures, features a four-door, fully-enclosed body with the same aesthetic language as the '027 Patent, including flat surfaces, stark geometric lines, and exposed hardware ('487 Patent, Claim, FIG. 1, 4).
- Technical Importance: The complaint positions this design as a core part of the "novel and distinctive designs" that established its brand identity in the EV market (Compl. ¶16).
Key Claims at a Glance
- The single claim asserted is for "The ornamental design for a vehicle, as shown and described" ('487 Patent, Claim). The protected design is depicted in the solid lines of the patent's figures ('487 Patent, DESCRIPTION).
III. The Accused Instrumentality
Product Identification
The accused products are the "Munro MK_1" vehicle and "all other similar appearing vehicles," collectively referred to as the "Infringing Vehicles" (Compl. ¶¶32-33).
Functionality and Market Context
The complaint alleges the Munro MK_1 was designed by Defendant Compton, Plaintiff's former designer, and is being promoted and offered for sale in the United States (Compl. ¶¶28, 32). The infringement allegations focus on the vehicle's ornamental appearance, not its technical operation. The complaint presents multiple images of the Munro MK_1, including a side-by-side comparison with a Bollinger B1 vehicle, to highlight the visual similarities (Compl. ¶¶32, 71). To support its claims of similarity, the complaint also cites several third-party automotive news articles that describe the Munro MK_1 as "Curiously Bollinger-Like" and note that its designer formerly worked for Bollinger (Compl. ¶72).
IV. Analysis of Infringement Allegations
The infringement analysis for a design patent centers on the "ordinary observer" test, which asks whether an ordinary observer, familiar with the prior art, would be deceived into purchasing the accused product thinking it was the patented design. The complaint alleges that the accused Munro MK_1 vehicle has an overall appearance that is "substantially similar" to the patented designs.
D836,027 Infringement Allegations
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a vehicle, as shown and described | The complaint alleges that the Munro MK_1 contains "each and every aspect of the claimed designs" and has an "overall appearance that is substantially similar" to the design claimed in the '027 Patent. A visual provided in the complaint shows a side-by-side comparison of a pickup version of the Munro MK_1 and the Bollinger B2 SUT, which allegedly embodies the patent. | ¶¶54-55, 71 | Claim 1; FIG. 1, 4 |
D836,487 Infringement Allegations
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a vehicle, as shown and described | The complaint alleges that the Munro MK_1's overall appearance is "substantially similar" to the SUV design claimed in the '487 Patent. This allegation is supported by a side-by-side photograph comparing a white Bollinger B1 and a white Munro MK_1. | ¶¶64-65, 71 | Claim 1; FIG. 1, 4 |
Identified Points of Contention
- Scope Questions: The core dispute will be whether the overall visual impression of the Munro MK_1 is "substantially the same" as the patented designs. This analysis will depend on how an ordinary observer weighs the similarities in the overall boxy, utilitarian shape against any potential differences in specific features like the front fascia, lighting configuration, or body panel details.
- Technical Questions: A key factual question will be the comparison of the designs in light of the relevant prior art. A court will have to determine whether the similarities between the Bollinger and Munro vehicles are based on the novel, ornamental features protected by the patents, or on unprotectable, functional, or conventional aspects of off-road vehicle design. The side-by-side comparison of the Bollinger B1 and Munro MK_1 vehicles provided in the complaint will be a central piece of evidence in this analysis (Compl. ¶71).
V. Key Claim Terms for Construction
In design patent litigation, formal claim construction is rare, as the claim is typically for the design "as shown and described." The primary interpretive task is to determine the scope of the claimed design based on the patent's drawings.
- The Term: "The ornamental design for a vehicle, as shown and described."
- Context and Importance: The entire infringement analysis depends on the scope of the claimed design and the overall visual impression it creates. Practitioners may focus on this issue because the outcome of the "ordinary observer" test hinges on whether the observer focuses on the overall aesthetic or on minor differences in individual components.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that the core of the protected design is the overall "look and feel"—a combination of flat body panels, sharp geometric angles, exposed fasteners, and a minimalist, utilitarian aesthetic. The complaint's focus on the "overall appearance" being "substantially similar" supports this view (Compl. ¶¶55, 65).
- Evidence for a Narrower Interpretation: A party could argue the claim is limited to the precise visual details depicted in the solid lines of the patent drawings. The patent itself states the claim is for the design "as shown," and explicitly disclaims the elements in broken lines (e.g., wheels, tires, undercarriage), which narrows the protected design to the vehicle body ('027 Patent, Claim, DESCRIPTION). Any deviation in the specific shape or arrangement of features like headlights, grilles, or door handles could be argued to place the accused product outside this narrower scope.
VI. Other Allegations
- Willful Infringement: The complaint alleges that Defendants' infringement is willful (Compl. ¶¶57, 67). This allegation is supported by two main factual assertions: (1) that Defendants had actual notice of the patents as of December 2022 (Compl. ¶¶56, 66); and (2) that Defendant Compton, who allegedly had access to Plaintiff's confidential designs from a prior contractual relationship, was directly involved in designing the accused Munro MK_1 vehicle (Compl. ¶¶28, 38).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual comparison: Will an ordinary observer, taking into account the prior art, find the overall appearance of the accused Munro MK_1 to be substantially the same as the specific vehicle designs claimed in the '027 and '487 patents, or are the visual differences sufficient to distinguish them?
- A key evidentiary question will be the role of the defendant designer: What evidence exists to show that Plaintiff's confidential design information, allegedly accessed by Defendant Compton under an NDA, was used to create the accused Munro MK_1? The answer will be critical for the claims of willfulness and breach of contract.
- The case will also present a question of overlapping rights: How will the court delineate the scope of protection afforded by the design patents versus the asserted, and potentially broader, common law trade dress? A central issue will be whether the alleged trade dress elements, such as "exposed hardware and hinges" and "flat and parallel body lines," are coextensive with the patented designs or constitute a separate, protectable intellectual property right.