Rachel ADIN LLC v. H&M Hennes & Mauritz LP

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Rachel Adin LLC (d/b/a OX) (New York)
  • Defendant: H&M Hennes & Mauritz LP (New York)
  • Plaintiff’s Counsel: THE ZIA FIRM PLLC
• Case Identification: 1:23-cv-11167, S.D.N.Y., 12/22/2023
• Venue Allegations: Venue is alleged to be proper because the Defendant is headquartered in the Southern District of New York, maintains a regular and established place of business in the District, and has committed alleged acts of infringement in the District.
• Core Dispute: Plaintiff alleges that jewelry from Defendant’s 2023 Holiday collection infringes its design patent covering an ornamental design for an article of jewelry.
• Technical Context: The dispute centers on the ornamental design of fine jewelry, specifically a "double-diamond chain" concept applied to bracelets, necklaces, and earrings.
• Key Procedural History: The complaint notes that on November 10, 2023, Plaintiff sent a letter to Defendant demanding it cease the allegedly infringing activities. The complaint further states that on December 6, 2023, Defendant refused to cease these activities. This pre-suit notice and subsequent alleged continuation of infringement form the basis for the willfulness allegation.

Case Timeline

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

U.S. Design Patent No. D926,617 - "ARTICLE OF JEWELRY"

• Patent Identification: U.S. Design Patent No. D926,617, "ARTICLE OF JEWELRY," issued August 3, 2021.

The Invention Explained

• Problem Addressed: While design patents do not typically articulate a problem-solution narrative, the complaint contextualizes the patented design as an innovation on the "classic style" of traditional diamond tennis bracelets (Compl. ¶20).
• The Patented Solution: The patent claims "the ornamental design for an article of jewelry, as shown and described" (’617 Patent, col. 2:1-3). The design, depicted across several figures, consists of a series of linked, circular elements arranged in two parallel rows to form a single, cohesive article of jewelry such as a bracelet (D'617 Patent, FIG. 1, FIG. 3). The overall visual impression is that of a "double-diamond chain" (Compl. ¶17).
• Technical Importance: The complaint alleges the design is considered "truly original in jewellery" and a "design like you've never seen," suggesting its novelty and distinctiveness in the marketplace (Compl. ¶17).

Key Claims at a Glance

• The single claim of the D'926,617 Patent is for the ornamental design as depicted in the patent's drawings.
• The essential visual features of the asserted design include:
  • A chain-like article of jewelry.
  • The article is composed of two parallel, adjacent rows of repeating elements.
  • Each element is a circular, gem-set unit.
  • The units are linked together to create a continuous, dual-row appearance.

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are jewelry items from Defendant's "2023 Holiday collection," specifically identified as Necklace Article No. 1215535001, Earrings Article No. 1215778001, and Necklace Article No. 1215607001 (collectively, the "Infringing Products") (Compl. ¶29, ¶31). The complaint includes photographs of these articles. An image from the complaint shows the accused necklaces and earrings, which feature a double row of set stones (Compl. p. 8).

Functionality and Market Context

The accused products are necklaces and earrings sold by H&M through its e-commerce website and retail stores (Compl. ¶39). The complaint characterizes them as being made from "cheap and disposable materials" consistent with Defendant's "fast fashion business model," which allegedly "relies on spotting fashion trends...and getting inexpensive copies into their stores as quickly as possible" (Compl. ¶28, ¶31).

IV. Analysis of Infringement Allegations

Design patent infringement is determined by the "ordinary observer" test, which asks whether an ordinary observer, familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented design. The complaint alleges direct infringement through a side-by-side visual comparison. A visual provided in the complaint juxtaposes Figure 1 of the ’617 Patent, the Plaintiff's "OX bracelet," and a "Close-up of Defendant's copy" to support its infringement theory (Compl. p. 8).

D'926,617 Infringement Allegations

Identified Points of Contention

• Scope Questions: The primary question for the court is one of visual scope: Are the designs "substantially the same"? The analysis will turn on whether an ordinary observer would find the overall visual impression of the H&M jewelry to be the same as the ’617 Patent design, or if any differences in proportion, linking mechanism, or setting style are sufficient to differentiate them.
• Technical Questions: The key evidentiary question will be whether the specific visual features of the accused products fall within the scope of the patented design. For example, does the way the links are joined, the ratio of gem size to bezel width, and the overall profile of the H&M products create the same visual effect as that shown in the patent's figures, particularly FIG. 3 (front view) and FIG. 4 (side view)?

V. Key Claim Terms for Construction

Claim construction for design patents involves the court providing a verbal description of the claimed design shown in the figures, rather than construing specific text-based terms.

• The Term: "The ornamental design for an article of jewelry, as shown and described."
• Context and Importance: The court's verbal description of the design in the ’617 Patent will define the scope of protection and guide the infringement analysis. Practitioners may focus on how this description is framed, as it will determine whether the claim covers the general "idea" of a double-row chain or is limited to the specific visual execution in the drawings.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party could argue that the core of the design is its overall visual effect and configuration—two parallel rows of linked, circular, gem-set elements—as depicted in the perspective and top-down views (D'617 Patent, FIG. 1, FIG. 5). This interpretation would de-emphasize minor proportional or stylistic variations.
  • Evidence for a Narrower Interpretation: A party could argue that the design is defined by the precise details and proportions shown in the drawings, such as the specific shape of the bezels, the way the links articulate, and the specific side profile of the joined rows (D'617 Patent, FIG. 3, FIG. 4). This interpretation would treat these specific features as integral limitations of the claimed design.

VI. Other Allegations

• Willful Infringement: The complaint alleges willful infringement. The stated basis for this claim is Defendant's alleged continuation of infringing activities after receiving actual notice of the ’617 Patent and Plaintiff’s infringement claim via a letter dated November 10, 2023 (Compl. ¶3, ¶37, ¶38).

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

• A core issue will be one of visual similarity: Applying the ordinary observer test, are the accused H&M jewelry designs substantially the same as the design claimed in the ’617 Patent? The case will likely depend on a side-by-side comparison and whether any visual differences are significant enough to avoid confusion.
• A related question is the scope of the design's protection: Will the court's description of the patented design characterize it broadly as the general concept of a double-row, gem-set chain, or narrowly, focusing on the specific proportions and stylistic details shown in the patent's figures? The answer will dictate how sensitive the infringement analysis is to minor variations between the patented and accused designs.