DCT
1:23-cv-01821
Handson Equine LLC v. Boss Pet Products Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Handson Equine, LLC (Texas)
- Defendant: Boss Pet Products, Inc. (Delaware); PetEdge, Inc. (operated by Boss Pet)
- Plaintiff’s Counsel: FisherBroyles, LLP
- Case Identification: 1:23-cv-01821, N.D. Ohio, 09/19/2023
- Venue Allegations: Venue is alleged to be proper in the Northern District of Ohio because Defendant Boss Pet Products, Inc. has its principal place of business in the district, and both Defendants conduct substantial business and have sold the accused products within the district.
- Core Dispute: Plaintiff alleges that Defendants' animal grooming gloves infringe the ornamental designs claimed in two U.S. design patents.
- Technical Context: The dispute centers on the specific aesthetic and ornamental appearance of gloves designed for bathing and grooming animals.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendants with written notice of its patent rights on October 9, 2019. In response, Defendants allegedly promised to discontinue the accused design in favor of a new one but failed to do so, continuing to sell the original accused product. This history forms the basis for the willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 2015-05-28 | Earliest Priority Date for U.S. Patent No. D893,111 |
| 2018-03-12 | Earliest Priority Date for U.S. Patent No. D858,906 |
| 2019-09-03 | U.S. Patent No. D858,906 Issues |
| 2019-10-09 | Plaintiff sends written notice of infringement to Defendants |
| 2020-08-11 | U.S. Patent No. D893,111 Issues |
| 2023-09-19 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D858,906 - "Animal bathing and grooming glove"
The Invention Explained
- Problem Addressed: The patent does not describe a technical problem, as is typical for design patents. The context is providing a product for animal grooming (Compl. ¶9).
- The Patented Solution: The patent claims a specific ornamental design for a five-fingered grooming glove. The design’s key features include a palm covered in an array of circular nodules, finger portions with distinct rectangular pads containing smaller scrubbing nubs, and a wrist cuff with a fastening strap (’906 Patent, Fig. 1). The patent specification explicitly notes that gapped lines on the cuff and strap depict stitching, indicating these elements are part of the claimed ornamental design (’906 Patent, Description).
- Technical Importance: The design provides a unique, non-functional aesthetic for animal grooming gloves intended to be recognizable to consumers (Compl. ¶10, ¶15).
Key Claims at a Glance
- Design patents contain a single claim for the ornamental design as shown in the drawings.
- The core ornamental elements of the claimed design include:
- A specific pattern of raised circular nodules covering the palm surface.
- Raised rectangular pads on the palmar surface of the fingers and thumb, each containing a grid of smaller nubs.
- The overall visual combination of the palm and finger textures.
- A fabric cuff with visible stitching and a fastening strap.
- The complaint does not reserve the right to assert other claims, as is standard for a design patent case.
U.S. Design Patent No. D893,111 - "Animal bathing and grooming glove"
The Invention Explained
- Problem Addressed: Similar to the ’906 Patent, the ’111 Patent addresses the ornamental appearance of a grooming glove (Compl. ¶12).
- The Patented Solution: The ’111 Patent claims an ornamental design for a grooming glove that is visually similar to the ’906 Patent but with a critically different claim scope. The drawings use broken lines to depict the cuff and fastening strap, and the specification explicitly states these broken lines "depict environment and a boundary of the claimed design and, thus, comprise unclaimed subject matter" (’111 Patent, Description, Fig. 1, Fig. 2). Therefore, the claimed design is limited to the ornamental features of the palm and finger surfaces, excluding the cuff and strap.
- Technical Importance: The design protects a specific non-functional aesthetic for the scrubbing surfaces of a grooming glove, independent of the cuff or strap design (Compl. ¶12).
Key Claims at a Glance
- The patent asserts a single claim for the ornamental design as shown in the drawings.
- The core ornamental elements of the claimed design, shown in solid lines, include:
- The array of raised circular nodules on the palm.
- The rectangular pads with smaller nubs on the fingers and thumb.
- The wrist cuff and fastening strap are explicitly disclaimed from the scope of the design claim through the use of broken lines.
III. The Accused Instrumentality
Product Identification
- The complaint identifies the accused instrumentalities as "grooming gloves" offered for sale and sold by Defendants Boss Pet and PetEdge (Compl. ¶16).
Functionality and Market Context
- The accused products are gloves used for animal bathing and grooming (Compl. ¶16). The complaint alleges that the accused gloves were "intentionally copied" and marketed as a "knock off" of Plaintiff's products, creating consumer confusion (Compl. ¶17). The complaint provides a side-by-side photograph comparing the design of the '906 Patent with one of the Accused Products (Compl. p. 5).
IV. Analysis of Infringement Allegations
D858,906 Infringement Allegations
| Claim Element (from the Patented Design) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design for an animal bathing and grooming glove. | The Accused Products incorporate "novel and non-functional designs" that are substantially the same as the patented design. | ¶16 | Fig. 1-2 |
| A palm surface featuring an array of raised, circular nodules for scrubbing. | The accused glove features a palm surface with a visually similar array of raised, circular nodules. The complaint includes a photograph illustrating this similarity. | ¶16; p. 5 | Fig. 1 |
| Finger and thumb surfaces featuring distinct rectangular pads, each containing a grid of smaller nubs. | The accused glove features finger and thumb surfaces with similar rectangular pads containing smaller nubs. | ¶16; p. 5 | Fig. 1 |
| A cuff and fastening strap integrated into the overall design. | The accused glove incorporates a cuff and strap that contributes to the overall visual impression of similarity. | ¶16; p. 5 | Fig. 1-2 |
- Identified Points of Contention:
- Scope Questions: The central question will be whether an "ordinary observer," familiar with the prior art, would be deceived into purchasing the accused glove believing it to be the patented design. The analysis will consider the glove as a whole, including the scrubbing surfaces, cuff, and strap.
- Technical Questions: A key factual question is whether the visual differences between the accused glove and the patented design—such as the color scheme (black and red vs. monochromatic drawing) or minor variations in the shape and spacing of the nubs—are significant enough to avoid a finding of substantial similarity in the overall ornamental appearance.
D893,111 Infringement Allegations
| Claim Element (from the Patented Design) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for the palm and finger surfaces of a glove, excluding the cuff and strap. | The Accused Products incorporate a palm and finger design that is substantially the same as the claimed design. | ¶16 | Fig. 1 |
| A palm surface featuring an array of raised, circular nodules. | The accused glove's palm surface features a visually similar array of raised, circular nodules, as shown in the complaint's comparative image. | ¶16; p. 5 | Fig. 1 |
| Finger and thumb surfaces featuring distinct rectangular pads, each containing a grid of smaller nubs. | The accused glove's finger and thumb surfaces feature similar rectangular pads with smaller nubs. | ¶16; p. 5 | Fig. 1 |
- Identified Points of Contention:
- Scope Questions: For the ’111 Patent, the infringement analysis must disregard the cuff and strap of the accused product, as those elements are disclaimed from the patent's scope. The question for the court will be whether the palm and finger design of the accused product, viewed in isolation, is substantially similar to the claimed design.
- Technical Questions: This raises the question of whether any differences in the unclaimed cuff and strap of the accused product can be considered when assessing the overall impression. Precedent generally dictates they cannot, focusing the inquiry strictly on the claimed elements.
V. Key Claim Terms for Construction
In design patent litigation, the "claim" is understood to be the design itself as depicted in the drawings. Formal claim construction is less common than in utility patent cases, but disputes often arise over the scope of the design and the interpretation of drawing conventions.
- The Term: The ornamental design "as shown and described."
- Context and Importance: The primary interpretive issue will be the difference in scope between the ’906 and ’111 Patents based on the use of solid versus broken lines. Practitioners may focus on this distinction because the infringement test for the ’111 Patent will be applied only to a portion of the accused product (the palm and fingers), whereas the test for the ’906 Patent will be applied to the entire product.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation (Plaintiff's potential view): Plaintiff may argue that the overall aesthetic impression created by the claimed features is what matters and that minor differences in the accused product are trivial. For the ’906 Patent, this means the overall look is the same. For the ’111 Patent, this means the look of the claimed portions is the same.
- Evidence for a Narrower Interpretation (Defendant's potential view): A defendant may highlight the specific language in the patents. For the ’906 Patent, the description of "stitching" on the cuff confirms it is a claimed feature, allowing a defendant to point to differences in the cuff as a basis for non-infringement (’906 Patent, Description). For the ’111 Patent, the specification explicitly states that broken lines depict "unclaimed subject matter," which definitively limits the scope of comparison to the palm and finger surfaces (’111 Patent, Description).
VI. Other Allegations
- Indirect Infringement: The complaint does not plead specific facts to support claims of induced or contributory infringement, focusing instead on allegations of direct infringement (Compl. ¶24, ¶29).
- Willful Infringement: The complaint alleges willful infringement based on pre-suit knowledge. It states that Plaintiff sent written notice to Defendants on October 9, 2019, and that Defendants acknowledged the issue and promised to change their product design but allegedly failed to do so (Compl. ¶19, ¶20, ¶22). These allegations, if proven, may support a finding of willful infringement and a potential award of enhanced damages.
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of visual similarity: Applying the "ordinary observer" test, is the ornamental design of the accused gloves substantially the same as the designs claimed in the ’906 and ’111 Patents? This will likely depend on the court's perception of the side-by-side comparisons provided in the complaint (Compl. p. 5).
- A key legal question will be the impact of claim scope: How will the infringement analysis differ between the ’906 Patent, which claims the entire glove, and the ’111 Patent, which expressly disclaims the cuff and strap? The outcome may turn on whether the accused product is found to infringe the narrower scope of the ’111 Patent even if it is deemed different from the broader design of the ’906 Patent.
- A critical question for damages will be willfulness: Do the facts surrounding the 2019 notice letter and Defendants' alleged promise to cease infringement rise to the level of willful, deliberate, or bad-faith conduct sufficient to declare the case "exceptional" and justify enhanced damages or attorneys' fees?