DCT
1:24-cv-05450
Omnisec Solutions LLC v. Simply Mossy Art Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Omnisec Solutions LLC (Wyoming)
- Defendant: Simply Mossy Art Inc. d/b/a Mossify (Canada)
- Plaintiff’s Counsel: Dan B Law PLLC
- Case Identification: 1:24-cv-05450, S.D.N.Y., 07/18/2024
- Venue Allegations: Plaintiff asserts that venue is proper because Defendant consented to personal jurisdiction in the district by previously filing a lawsuit there concerning the same design patent.
- Core Dispute: Plaintiff seeks a declaratory judgment that its plant support products do not infringe Defendant's design patent for a "Bendable Moss Pole Assembly," and further alleges the patent is invalid, unenforceable, and has been asserted in a manner constituting false marking, false advertising, and antitrust violations.
- Technical Context: The dispute is in the field of horticultural accessories, specifically supports for climbing epiphyte houseplants that mimic the plants' natural environment.
- Key Procedural History: This action was filed after Defendant allegedly filed an intellectual property complaint with Amazon.com, leading to the deactivation of Plaintiff's product listings. Defendant previously filed a separate lawsuit in the same court asserting the same patent against over 100 other defendants, which was dismissed by the court for lack of service. The complaint notes that Defendant and the USPTO both cited numerous prior art plant poles during the patent's prosecution.
Case Timeline
| Date | Event |
|---|---|
| 1932-01-01 | MOSSER LEE Totem Pole Plant Support first available (approximate) |
| 2008-01-01 | SUPERMOSS brand bendable moss vines first offered (approximate) |
| 2018-01-01 | DIY epiphyte plant supports first described on YouTube (approximate) |
| 2020-05-18 | Defendant Mossify began selling its plant support products |
| 2020-05-19 | DIY flexible and bendable moss poles appear online |
| 2021-05-26 | '355 Patent Priority Date (Application Filing) |
| 2023-06-13 | '355 Patent Issue Date |
| 2023-07-25 | Mossify files "Prior Litigation" in S.D.N.Y. |
| 2024-05-13 | "Prior Litigation" dismissed by the court |
| 2024-06-26 | Mossify files IP complaint with Amazon.com against Plaintiff |
| 2024-07-18 | Complaint Filing Date (Omnisec v. Mossify) |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D989,355 - "Bendable Moss Pole Assembly" (Issued June 13, 2023)
The Invention Explained
- Problem Addressed: The complaint describes the general need for supports for cultivated "epiphyte" plants (e.g., monstera, pothos) to mimic their natural tendency to climb trees using aerial roots to gather water and nutrients (Compl. ¶¶10-12).
- The Patented Solution: The '355 Patent does not claim a functional solution but rather the specific ornamental appearance of a plant pole (Compl. ¶70). The claimed design, as shown in the patent's photographic figures, is for a pole with a textured, fibrous surface wrapped with cordage ('355 Patent, Claim, Figs. 1-10). The complaint emphasizes that a potentially distinguishing feature is the "specific chaotic, overlapping, and seemingly random way in which the cordage is applied" to the pole's exterior (Compl. ¶87). The design is shown in both straight and bent configurations, and the base and stem are disclaimed with broken lines, focusing the claim on the pole's surface appearance ('355 Patent, Description).
- Technical Importance: The complaint alleges that bendable plant supports existed in the prior art, suggesting that the potential novelty of the patented design lies not in its bendability but in its specific aesthetic appearance (Compl. ¶¶14, 16, 39).
Key Claims at a Glance
- The single claim is for "The ornamental design for a bendable moss pole assembly, as shown and described" ('355 Patent, Claim).
- The essential visual elements of the claimed design include:
- An elongated, pole-like structure.
- A surface covered with a fibrous, moss-like texture.
- Cordage wrapped around the fibrous surface in an irregular, crisscrossing pattern.
- The ability to be bent into non-linear shapes, as depicted in Figures 9 and 10 of the patent.
- The design explicitly excludes the base and stem, which are shown in broken lines ('355 Patent, Description).
III. The Accused Instrumentality
Product Identification
The "Accused Products" are identified as "K-BRAND plant supports" sold under Amazon ASINs B0BTT1N8XK and B0C8TZSD82 (Compl. ¶50).
Functionality and Market Context
- The Accused Products are described as plant supports constructed with "coir fiber secured to a flexible and bendable central support by neatly and equally spaced cordage" (Compl. ¶50). An image provided in the complaint shows Plaintiff's 'K-BRAND' accused products, which feature coir fiber wrapped with what appears to be evenly spaced twine (Compl. ¶50, image).
- The complaint alleges that the Accused Products are sold on Amazon.com and were the target of an IP infringement complaint by Defendant to Amazon, which resulted in the deactivation of Plaintiff's product pages, suggesting direct competition between the parties (Compl. ¶¶5, 52-53).
IV. Analysis of Infringement Allegations
As this is a complaint for declaratory judgment of non-infringement, the following table summarizes Plaintiff's key arguments for why its Accused Products do not infringe the asserted patent.
D989,355 Non-Infringement Allegations
| Claimed Design Feature (from '355 Patent) | Alleged Non-Infringing Feature of Accused Product | Complaint Citation | Patent Citation |
|---|---|---|---|
| An ornamental design for a "moss pole assembly". | The Accused Products are made of coconut coir, not moss. | ¶91 | '355 Patent, Title |
| Cordage applied in a "chaotic, overlapping, and seemingly random way". | The Accused Products utilize "neat, orderly, and non-overlapping cordage". | ¶93 | '355 Patent, Fig. 8 |
| The overall visual appearance as depicted in the patent's photographic figures. | The complaint alleges the orderly, spiral-wrapped appearance of the Accused Products is visually distinct from the patented design and is instead similar to prior art products. | ¶¶92, 93 | '355 Patent, Figs. 1-10 |
Identified Points of Contention
- Scope Questions:
- A primary question is whether the patent's title, "Bendable Moss Pole Assembly," limits the protectable design to articles made of "moss." Plaintiff argues its use of "coconut coir" is a distinguishing factor (Compl. ¶91).
- The complaint repeatedly alleges that Defendant seeks to enforce the patent based on the functional characteristic of being "bendable," rather than the specific ornamental design (Compl. ¶¶66, 71, 82). This raises the question of whether the asserted scope is impermissibly functional under 35 U.S.C. § 171.
- Technical (Visual) Questions:
- The central dispute in a visual comparison will be the wrapping pattern. The complaint reproduces Figure 8 from the '355 Patent, an enlarged view highlighting what Plaintiff describes as a "chaotic, overlapping, and seemingly random" cordage pattern (Compl. ¶87, image). The question for the court will be whether the "neat, orderly, and non-overlapping cordage" alleged to be used on the Accused Products creates a substantially different visual impression in the eye of an ordinary observer (Compl. ¶¶92, 93).
V. Key Claim Terms for Construction
In a design patent case, "construction" relates to defining the scope of the claimed visual design rather than interpreting specific text. The dispute centers on which visual features are part of the protected design and how broadly that design should be interpreted in light of the prior art.
- The "Term": The overall ornamental design, specifically the surface material ("moss") and cordage pattern ("chaotic" wrapping).
- Context and Importance: Plaintiff's non-infringement and invalidity arguments depend on a narrow interpretation of the design, limited to the specific combination of a moss-like material and an irregular wrapping pattern. The complaint alleges Defendant is asserting a much broader scope covering any bendable pole, which Plaintiff contends would render the patent invalid over prior art and is an improper assertion of functional claiming (Compl. ¶¶67, 71). Practitioners may focus on this issue because the crowded nature of the prior art for plant poles often results in narrow protection for new designs.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue that the patent's title, "Bendable Moss Pole Assembly," and figures showing bent configurations (Figs. 9-10) establish the overall impression of a flexible, textured pole, and that an ordinary observer would not be deceived by minor differences in fiber type or the precision of the wrapping. The use of photographs, rather than line drawings, could be argued to claim a general textural appearance rather than a precise, repeatable pattern (Compl. ¶74).
- Evidence for a Narrower Interpretation: Plaintiff argues the explicit use of "moss" in the title limits the material scope (Compl. ¶86). Furthermore, the detailed photographic depiction of the wrapping in the enlarged Figure 8 suggests that the "chaotic, overlapping, and seemingly random" pattern is a deliberate and essential feature of the claimed design, distinguishing it from orderly-wrapped prior art poles (Compl. ¶¶87, 88, 93).
VI. Other Allegations
- Unenforceability (Inequitable Conduct): The complaint alleges the '355 patent is unenforceable due to inequitable conduct, asserting that the inventor and patent agent intentionally withheld known, material prior art from the USPTO with an intent to deceive the office into granting the patent (Compl. ¶¶97-99).
- False Patent Marking: Plaintiff alleges Defendant engages in false marking in violation of 35 U.S.C. § 292. The allegations include marking coir-based products as "patent pending" without a corresponding application and marking "thin" moss poles with the '355 patent number, even though those products allegedly do not embody the patented design (Compl. ¶¶106, 109).
- False Advertising: The complaint brings a count for false advertising under the Lanham Act, 15 U.S.C. § 1125, alleging Defendant falsely markets itself as the "first" to create a bendable moss pole and falsely claims its moss is "organic" without the required certification (Compl. ¶¶125-133).
- Antitrust Violations: Plaintiff alleges Defendant's enforcement of the '355 patent constitutes an antitrust violation. The claim is premised on allegations that Defendant procured the patent through fraud on the USPTO (Walker Process claim) and is now engaging in sham enforcement of a knowingly invalid or non-infringed patent to harm competitors (Compl. ¶¶142, 146-147).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of invalidity due to functionality: does the asserted scope of the '355 patent improperly seek to monopolize the functional concept of a "bendable" plant support, or is the claim properly limited to the purely ornamental and non-functional aspects of the design's appearance?
- A key evidentiary question will be one of visual scope in a crowded art field: would an ordinary observer, aware of the many pre-existing plant pole designs, consider the "neat, orderly" wrapping on Plaintiff's coir pole to be substantially the same as the "chaotic, overlapping" moss-and-twine appearance of the patented design?
- The case will also focus significantly on patentee conduct: did the defendant procure the patent through inequitable conduct by withholding material prior art, and do its enforcement activities—including a prior dismissed lawsuit and complaints to Amazon—constitute bad-faith efforts that rise to the level of an antitrust violation or an exceptional case warranting attorney's fees?