DCT

1:24-cv-00243

UMBRA LLC v. Corps Individuals Partnerships Unincorp Associations

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
    • Plaintiff: Umbra LLC
    • Defendant: The Corporations, Individuals, Partnerships and Unincorporated Associations Identified on Schedule "A" (alleged to be foreign entities of unknown makeup)
    • Plaintiff’s Counsel: Rupp Pfalzgraf LLC
  • Case Identification: 1:24-cv-00243, W.D.N.Y., 03/20/2024
  • Venue Allegations: Venue is alleged to be proper because the defendants are aliens and because they purposefully direct sales of allegedly infringing goods to residents of New York through online platforms.
  • Core Dispute: Plaintiff alleges that unidentified defendants are selling products through online marketplaces like Amazon.com that infringe its design patent for a wall-mountable rack.
  • Technical Context: The dispute is in the consumer home goods sector, specifically concerning the ornamental design of functional and decorative items sold through e-commerce channels.
  • Key Procedural History: The complaint notes that the patent-in-suit was assigned to the Plaintiff, with the assignment recorded on November 27, 2019. The lawsuit targets a list of currently unidentified online sellers, a common procedural posture in actions against alleged counterfeiters on large e-commerce platforms.

Case Timeline

Date Event
2019-11-25 Assignment of '511 Patent interest executed
2019-11-27 '511 Patent Priority Date (Application Filed)
2019-11-27 Assignment of '511 Patent interest recorded
2024-01-02 '511 Patent Issued
2024-03-20 Complaint Filed

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

U.S. Design Patent No. D1,009,511 - Wall mountable rack

The Invention Explained

  • Problem Addressed: Design patents protect ornamental appearance rather than solving a technical problem. The objective is the creation of a new, original, and ornamental design for an article of manufacture, in this case, a rack for hanging articles ('511 Patent, DESCRIPTION).
  • The Patented Solution: The patent claims the specific ornamental design for a wall-mountable rack. The design features a series of vertically staggered, cylindrical hooks mounted to a backplate. A key visual feature is that the hooks can pivot from a closed position, where they are parallel to each other, to an open position at an angle to accommodate hanging items ('511 Patent, DESCRIPTION; Figs. 1-2). The various figures define the specific proportions, contours, and overall visual impression of the rack in both its open and closed states ('511 Patent, Figs. 1-12).
  • Technical Importance: The complaint does not provide detail for analysis of this element.

Key Claims at a Glance

  • The patent asserts a single claim: "The ornamental design for a wall mountable rack, as shown and described" ('511 Patent, CLAIM).
  • The scope of this claim is defined by the visual appearance of the article in the patent's drawings. Key ornamental elements include:
    • The overall configuration of multiple, staggered hook elements.
    • The specific cylindrical shape and proportions of the individual hooks.
    • The visual appearance of the rack in a "closed orientation with all cylindrical hooks parallel to one another" ('511 Patent, DESCRIPTION; Fig. 1).
    • The visual appearance of the rack in an "open orientation with some of the cylindrical hooks pivoted at an angle" ('511 Patent, DESCRIPTION; Fig. 2).

III. The Accused Instrumentality

Product Identification

The complaint identifies the accused instrumentalities as "infringing goods" sold by defendants operating under various "Seller IDs" on e-commerce platforms, including Amazon.com (Compl. ¶4). Specific product names are not provided in the body of the complaint.

Functionality and Market Context

The complaint alleges that defendants make, use, sell, and import goods that are "substantially similar" to the design claimed in the '511 patent (Compl. ¶22). These goods are sold through "fully interactive commercial internet websites" to consumers in the United States, including within the Western District of New York (Compl. ¶4, ¶14). The complaint does not provide further technical details about the accused products' construction or specific features. No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint does not contain a claim chart. The infringement theory is articulated narratively. The central allegation is that the defendants are liable for direct infringement of the '511 patent under the "ordinary observer" test (Compl. ¶22). Plaintiff alleges that the accused products are so visually similar to the patented design that an ordinary observer, giving such attention as a purchaser usually gives, would be deceived into purchasing the accused product believing it to be the patented design (Compl. ¶22). The complaint asserts that defendants have manufactured and sold goods containing "one or more elements claimed in the '511 patent" (Compl. ¶32).

Identified Points of Contention

  • Scope Questions: A primary issue will be the scope of the claimed design. The analysis will question whether the "overall ornamental design" is limited to the exact proportions and shapes depicted in the drawings or if it covers the broader concept of a wall rack with pivoting, staggered cylindrical hooks.
  • Technical Questions: The dispositive question will be factual and visual: is the ornamental appearance of the defendants' products, when viewed as a whole, substantially the same as the design shown in the figures of the '511 patent? This comparison will depend on evidence, such as the accused products themselves or high-quality photographs, which is not included in the complaint.

V. Key Claim Terms for Construction

In design patent litigation, the "claim" is the visual design itself, and formal construction of text is rare. The analysis focuses on interpreting the scope of the design as shown in the drawings.

The Term: "The ornamental design for a wall mountable rack, as shown and described."

Context and Importance

The entire infringement analysis depends on the interpretation of the visual scope of the patent's figures. Practitioners may focus on which visual elements constitute the core of the protected design versus those that are merely functional or trivial. The distinction between the design as a whole and its individual features will be critical.

Intrinsic Evidence for Interpretation

  • Evidence for a Broader Interpretation: A party could argue that the core ornamental concept is the combination of a flat backplate with multiple, staggered, pivoting cylindrical dowels, as this overall aesthetic is consistently shown across all figures ('511 Patent, Figs. 1-12). The description of both an "open" and "closed" orientation may support an interpretation where the dynamic, movable nature of the hooks is a key part of the overall visual impression ('511 Patent, DESCRIPTION).
  • Evidence for a Narrower Interpretation: A party could argue that the claim is strictly limited to the precise visual details shown, such as the specific number of hooks, their exact cylindrical shape and aspect ratio, the beveled edges on the hooks, and the particular staggered pattern. The inclusion of front, back, top, bottom, and side views provides a detailed and specific depiction that could be used to argue for a narrow scope, where any significant deviation would place a design outside the claim ('511 Patent, Figs. 3-12).

VI. Other Allegations

Willful Infringement

The complaint alleges that defendants' infringement is and has been "willful[], intentional[], and deliberate[]" (Compl. ¶4), and that they are acting "knowingly" (Compl. ¶20, ¶23). The prayer for relief seeks enhanced damages pursuant to 35 U.S.C. § 284 based on this allegation (Prayer for Relief, ¶H). The complaint does not plead specific facts demonstrating pre-suit knowledge, instead basing the allegation on "information and belief."

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

  1. A threshold procedural question will be identification and jurisdiction: can the plaintiff successfully identify the anonymous foreign entities behind the "Seller IDs" listed in Schedule A and establish that the court has personal jurisdiction over them for their e-commerce activities directed at the forum?
  2. The central substantive issue will be one of visual comparison: once the accused products are produced in discovery, is their overall ornamental design "substantially similar" to the design claimed in the '511 patent in the eyes of an ordinary observer, or do sufficient visual differences exist to place them outside the scope of the patent?
  3. A key evidentiary question will concern damages and profits: if infringement is found, the plaintiff will face the challenge of obtaining discovery from the foreign defendants to prove the amount of defendants' total profits from the infringing sales, as provided for design patent infringement under 35 U.S.C. § 289 (Prayer for Relief, ¶G).