DCT
1:23-cv-05168
Cross Innovations LLC v. Jewell
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Cross Innovations, LLC (Wyoming)
- Defendant: Gwen Jewell and Caroline Tudor (California)
- Plaintiff’s Counsel: Dan B Law PLLC
- Case Identification: 1:23-cv-05168, S.D.N.Y., 06/19/2023
- Venue Allegations: Plaintiff alleges venue is proper because Defendants sell products in the district through distributors like Amazon.com and initiated patent enforcement activities in the district by enlisting Amazon.com to remove Plaintiff's product listing.
- Core Dispute: Plaintiff seeks a declaratory judgment that its medical support pillow does not infringe Defendants' design patent, and further that the patent is invalid due to prior public use and functionality, and is unenforceable due to inequitable conduct.
- Technical Context: The technology at issue involves wedge-shaped cushions designed to support bedridden patients and prevent the formation of pressure ulcers, commonly known as bedsores.
- Key Procedural History: The lawsuit was precipitated by an infringement complaint filed by Defendant Tudor with Amazon.com on May 25, 2023, which resulted in the temporary deactivation of Plaintiff's product page. The complaint also alleges that during prosecution of the patent-in-suit, the inventor's initial drawings were rejected for inconsistencies and subsequently amended, a fact Plaintiff leverages in its invalidity arguments.
Case Timeline
| Date | Event |
|---|---|
| 2012 | Inventor allegedly created and began public disclosure of the cushion design |
| 2015-08-13 | Application for U.S. Design Patent No. D815,859 filed |
| 2018-04-24 | U.S. Design Patent No. D815,859 issued |
| 2023-05-25 | Defendants submitted an infringement complaint to Amazon.com against Plaintiff |
| 2023-06-19 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D815,859 - "Wedge Cushion"
The Invention Explained
- Problem Addressed: While design patents do not contain background sections describing a technical problem, the complaint alleges that the commercial embodiment of the patented design is intended to solve the problem of supporting a patient's body to relieve pressure on bony prominences and prevent bedsores (Compl. ¶¶40-41).
- The Patented Solution: The patent claims the ornamental design for a wedge cushion as depicted in its figures (D’859 Patent, Claim, FIGS. 1-5). The design features a curved, crescent-like or "kidney bean" shape in its top view, with a concave inner edge and a convex outer edge (D’859 Patent, FIG. 2). In profile, the cushion appears to have a varying thickness (D’859 Patent, FIGS. 4, 5). The complaint alleges the Defendants’ own marketing materials describe these features as functional, such as how the "crescent shape" provides a "cradle-like fit" and "lifts from under the scapula and the buttocks" (Compl. ¶41(i)).
- Technical Importance: The complaint asserts, based on the inventor's own statements, that the design's unique shape is important because it allegedly allows the cushion to "lift both the back and hips simultaneously while at the same time circumventing the sacrum, coccyx and spine" (Compl. ¶41(v)).
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is for "The ornamental design for a wedge cushion, as shown and described" (D’859 Patent, Claim).
- The essential visual elements of the claimed design, as depicted in the patent figures, include:
- A crescent-shaped or kidney-bean-shaped top profile.
- An overall shape that varies in thickness.
- Rounded ends or "tips."
- Bands depicted around the top and bottom of the entire product.
III. The Accused Instrumentality
Product Identification
The LUNDERG Bedsore Pillow (the "Accused Product") (Compl. ¶2).
Functionality and Market Context
The Accused Product is a medical support pillow sold by Plaintiff on platforms including Amazon.com and Walmart.com (Compl. ¶2). The complaint asserts that the Accused Product is visually distinct from the patented design (Compl. ¶51). For example, the complaint includes an annotated image of the Accused Product highlighting its "Flat and straight 'tips'," a "Rounded Center," and "No Bands at Bottom and Top" as features that distinguish it from the D'859 Patent's design (Compl. ¶51, p. 18). This image directly contrasts the Accused Product with an annotated image of the patented design (Compl. ¶50, p. 17).
IV. Analysis of Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement. The following table summarizes the key visual differences between the patented design and the Accused Product, as alleged by the Plaintiff, to support its non-infringement position.
D'859 Patent Non-Infringement Allegations
| Claim Element (from D'859 Patent Figures) | Alleged Non-Infringing Feature of Accused Product | Complaint Citation | Patent Citation |
|---|---|---|---|
| Rounded "tips" | The product has "Flat and straight 'tips'" | ¶51 | FIG. 1 |
| Rounded tapering ends | The product has flat and straight ends | ¶51 | FIG. 2 |
| A flat center region between the tips | The product has a "Rounded Center" | ¶51 | FIG. 2 |
| Bands around top and bottom of entire product | The product has "No Bands at Bottom and Top" | ¶51 | FIGS. 1, 4, 5 |
| A profile where the center is almost twice as thick as the ends | The product has "No Thicker Center" relative to its ends | ¶51 | FIG. 4 |
- Identified Points of Contention:
- Scope Questions: A central dispute concerns whether the patented design is primarily ornamental or functional. The complaint argues that features such as the crescent shape and varying thickness are dictated by their function of fitting the human body and relieving pressure, which, if true, would place them outside the scope of design patent protection (Compl. ¶¶39-44). The complaint provides a table from Defendants' marketing materials that explicitly links "Features" like "Patented Crescent Shape" to functional "Benefits" like "Circumvents bony prominences" (Compl. ¶40, p.10).
- Technical Questions: The core factual dispute for infringement will be a visual comparison under the "ordinary observer" test. The court will need to determine whether an ordinary observer would be deceived into purchasing Plaintiff's pillow believing it to be Defendants' product. This analysis will depend on resolving factual questions about the visual impact of the alleged differences, such as the shape of the tips (rounded vs. flat) and the presence or absence of decorative bands (Compl. ¶¶50-51).
V. Key Claim Terms for Construction
In design patent cases, the "claim" is the drawing, but a key legal issue that functions like claim construction is determining which features are ornamental and which are functional.
- The Term: "The ornamental design"
- Context and Importance: The distinction between ornamental and functional features is dispositive. Plaintiff argues that the core elements of the patented design are dictated by function and are therefore invalid under 35 U.S.C. § 171. Practitioners may focus on this term because if the design is found to be primarily functional, the patent is invalid and the infringement analysis is moot.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation (supporting ornamentality): A defendant would typically argue that the overall visual impression of the cushion—the specific combination of curves, proportions, and profiles—is an aesthetic choice and therefore ornamental, even if the product has a function.
- Evidence for a Narrower Interpretation (supporting functionality): The complaint provides extensive evidence, drawn from the inventor’s own public statements and marketing materials, that the design's features are functional. For example, Plaintiff quotes the inventor explaining that the "crescent shape works so much better is that these 'tips' here... actually lift from under the scapula and the buttocks" (Compl. ¶41(i)) and that the "curvatures of The Bedsore Rescue™ fit the curvatures of your person’s body" (Compl. ¶40).
VI. Other Allegations
- Invalidity Based on Prior Public Use: The complaint alleges that the inventor, Ms. Jewell, publicly disclosed, demonstrated, and discussed her support cushion design with various third parties, including hospitals and manufacturers, between 2012 and 2014 (Compl. ¶¶22-23). These alleged activities occurred more than one year before the patent's August 13, 2015 filing date, which may constitute an invalidating public use or on-sale bar under 35 U.S.C. § 102.
- Invalidity Based on Indefiniteness: The complaint alleges the D'859 Patent is invalid under 35 U.S.C. § 112 for failing to provide all required views (lacking a bottom view) and for containing inconsistent drawings (Compl. ¶¶36-37). An image in the complaint highlights a contradiction, suggesting that Figure 1 illustrates ends thicker than the middle, while Figure 4 shows the middle is thicker than the ends (Compl. ¶37, p. 9).
- Unenforceability Due to Inequitable Conduct: Plaintiff alleges that the inventor failed to disclose her own prior public uses and other known prior art to the USPTO during prosecution, with the intent to deceive the office (Compl. ¶¶58-60).
- Bad Faith Enforcement: The complaint alleges that Defendants' infringement complaint to Amazon.com was made in bad faith, with knowledge of the patent's invalidity and non-infringement, forming the basis for claims of tortious interference and unfair competition (Compl. ¶¶65-67, 75).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of patentability and scope: are the key features of the patented design, particularly its crescent shape and tapered profile, primarily functional as alleged by the Plaintiff? The resolution of this question, which relies heavily on Defendants' own marketing statements, could determine the patent's validity under 35 U.S.C. § 171.
- A key factual question will be one of prior public use: did the inventor's activities between 2012 and 2014 constitute an invalidating public use or on-sale bar under 35 U.S.C. § 102? If Plaintiff can prove these early disclosures, the patent would be invalid regardless of any infringement analysis.
- Should the patent survive validity challenges, the case will turn on a question of visual comparison: would an ordinary observer be deceived into purchasing Plaintiff's pillow, given the visual differences alleged in the complaint, such as the shape of the pillow's tips and the absence of decorative bands?