DCT
5:19-cv-02921
Gold Crest LLC v. Project Light LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Gold Crest, LLC (California)
- Defendant: Project Light, LLC; Prospetto Light, LLC; Prospetto Lighting, LLC; and Sam Avny (Ohio)
- Plaintiff’s Counsel: Tsircou Intellectual Property Law PC; Tucker Ellis LLP
- Case Identification: 5:19-cv-02921, N.D. Ohio, 06/01/2020
- Venue Allegations: Venue is alleged to be proper in the Northern District of Ohio because Defendants conduct business, advertise, offer for sale, and distribute the accused products within the district and maintain regular and established places of business there.
- Core Dispute: Plaintiff alleges that Defendants’ desk lamps infringe two U.S. design patents covering the ornamental appearance of a light assembly.
- Technical Context: The dispute concerns the proprietary aesthetic design of modern, minimalist LED desk lamps, a product category with relevance in both consumer and commercial (e.g., hospitality) markets.
- Key Procedural History: The complaint alleges that Defendants had knowledge of the asserted patents and their infringing activity as early as May 2017, followed by unsuccessful settlement discussions and a second cease-and-desist letter in March 2019. The ’735 Patent is a divisional of the application that resulted in the ’512 Patent, a fact that may be relevant to the scope of the claimed designs.
Case Timeline
| Date | Event |
|---|---|
| 2015-09-08 | Priority Date for U.S. Patent Nos. D769,512 and D787,735 |
| 2016-10-18 | U.S. Patent No. D769,512 Issues |
| 2017-05-04 | Alleged first notice to Defendants of infringing conduct |
| 2017-05-23 | U.S. Patent No. D787,735 Issues |
| 2017 (undated) | Defendants allegedly display and offer infringing lamp for sale |
| 2019-03 | Plaintiff sends second cease and desist letter to Defendant Project Light |
| 2020-06-01 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D769,512 - "LIGHT ASSEMBLY"
- Patent Identification: U.S. Design Patent No. D769,512, "LIGHT ASSEMBLY," issued October 18, 2016.
The Invention Explained
- Problem Addressed: Design patents do not articulate a technical problem in the manner of utility patents. They protect the novel, non-obvious, and ornamental appearance of an article of manufacture (’512 Patent, p. 1, CLAIM).
- The Patented Solution: The patent claims a specific ornamental design for a light assembly. The protected design, shown in the patent’s figures, consists of a slim, rectangular light head extending from a smooth, continuously curved support arm, which connects to a trapezoidal base. The figures show specific ornamental features on the base, including cutouts for what appear to be power and data ports (’512 Patent, FIG. 1, 2).
- Technical Importance: The design represents a specific aesthetic in the competitive field of modern lighting fixtures, where visual appearance is a primary driver of consumer choice (Compl. ¶19).
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is: "The ornamental design for a light assembly, as shown and described." (’512 Patent, p. 1, CLAIM).
- The scope of this claim is defined by the solid lines in the patent's drawings. Key visual elements include:
- A continuous, curved support arm.
- A slender, rectangular light-emitting head.
- A trapezoidal base with specific ornamental features, including port cutouts.
- The patent notes that dashed lines in the figures depict environmental aspects and form no part of the claimed design (’512 Patent, p. 1, DESCRIPTION).
U.S. Design Patent No. D787,735 - "LIGHT ASSEMBLY"
- Patent Identification: U.S. Design Patent No. D787,735, "LIGHT ASSEMBLY," issued May 23, 2017.
The Invention Explained
- Problem Addressed: As with the ’512 Patent, the ’735 Patent protects the ornamental design of an article of manufacture (’735 Patent, p. 1, CLAIM).
- The Patented Solution: The ’735 Patent claims a design for a light assembly that is visually similar to the ’512 Patent but with a critical difference in scope. The drawings in the ’735 Patent depict the base of the lamp entirely in dashed lines, thereby disclaiming it from the protected design (’735 Patent, FIGs. 1-4). The claimed design is therefore focused exclusively on the ornamental appearance of the curved arm and the slim, rectangular light head.
- Technical Importance: By disclaiming the base, this design patent potentially protects the distinctive shape of the lamp's upper portion across various products that might use different base configurations (Compl. ¶25).
Key Claims at a Glance
- The asserted claim is: "The ornamental design for a light assembly, as shown and described." (’735 Patent, p. 1, CLAIM).
- The key visual elements defined by the solid lines in the drawings are:
- A continuous, curved support arm.
- A slender, rectangular light-emitting head.
- The patent explicitly disclaims the base and other environmental aspects by rendering them in dashed lines (’735 Patent, p. 1, DESCRIPTION).
III. The Accused Instrumentality
Product Identification
- The accused products are desk lamps sold by the Defendants, including a model identified by the name "D63" on the website www.projectlightinc.com (Compl. ¶¶23, 27).
Functionality and Market Context
- The complaint describes the accused products through visual comparisons, focusing on their ornamental appearance rather than technical function. These comparisons show a lamp with a curved arm, a flat rectangular light head, and a base (Compl. ¶¶24, 28). The complaint provides a side-by-side comparison depicting the accused product offered for sale at the "HD Expo" in 2017, suggesting it is marketed to the hospitality industry (Compl. ¶¶23-24). Another visual shows the accused product, model "D63," advertised for sale on Defendants' website (Compl. ¶28). The complaint alleges that the various defendant entities market their products through a "Common Website," presenting them as coming from a single source (Compl. ¶15).
IV. Analysis of Infringement Allegations
The central test for design patent infringement is whether an "ordinary observer," familiar with the prior art, would be deceived into believing the accused design is the same as the patented design. The complaint alleges this standard is met (Compl. ¶30).
- D769,512 Infringement Allegations
| Patented Design Feature (from Figures of D'512) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design for a light assembly, including the combination of a curved arm, a rectangular light head, and a trapezoidal base with specific features. | The complaint alleges that the accused product embodies a design that is the same as or a "colorable imitation" of the patented design, such that an ordinary observer would be deceived. | ¶30, 35 | p. 1, CLAIM |
| The specific visual appearance of the continuous curved arm and flat rectangular light head. | The accused product, as shown in photographic evidence, possesses a similarly shaped curved arm and flat rectangular light head. | ¶24, 28 | FIG. 1 |
| The specific ornamental features of the trapezoidal base, including its shape and the arrangement of cutouts shown in solid lines. | The accused product incorporates a base that is visually similar in shape and overall appearance to the claimed base design. The complaint provides a visual comparison of the ’512 Patent drawings and a photograph of the accused product on display. | ¶24 | FIG. 1, 2 |
- D787,735 Infringement Allegations
| Patented Design Feature (from Figures of D'735) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design for the light assembly's arm and head, with the base being explicitly disclaimed. | The complaint alleges the accused product embodies the claimed design, which would deceive an ordinary observer into believing it is the patented design. A side-by-side visual comparison is provided between the patent figures and the accused lamp. | ¶25, 30, 46 | p. 1, CLAIM |
| The specific visual appearance of the continuous curved arm and the flat rectangular light head, irrespective of the base. | The arm and head of the accused product are alleged to be visually identical to the claimed design elements, creating the same overall impression. | ¶25 | FIG. 1 |
- Identified Points of Contention:
- Scope Questions: A central question for the ’512 Patent will be the importance of the claimed base to the overall design. The court may need to consider whether differences between the accused product's base and the specific features shown in the ’512 Patent are significant enough to avoid infringement in the eyes of an ordinary observer.
- Technical Questions: For the ’735 Patent, where the base is disclaimed, the analysis will focus entirely on the arm and head. The question becomes whether the accused product's arm and head are substantially the same as the claimed design, to the point of causing deception, even if its base is different. The complaint's visual evidence, such as the comparison of the '735 patent design and the accused product from the Defendants' website, will be central to this inquiry (Compl. p. 10).
V. Key Claim Terms for Construction
In design patent cases, there are no "terms" to construe as in utility patent litigation. The "claim" is the visual design itself, as depicted in the drawings. The key legal question is the scope of the patented design.
- The "Term": The overall ornamental design as shown in solid lines in the patent figures.
- Context and Importance: The scope of the claimed design is the core of the dispute. Practitioners may focus on the difference in scope between the two patents, as it creates distinct infringement questions. The ’512 Patent presents a narrower design that includes the base, while the ’735 Patent claims a potentially broader design covering only the lamp's "upper" assembly.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The ’735 Patent's use of dashed lines to disclaim the entire base could support an interpretation that the patent covers any lamp incorporating the claimed arm and head, regardless of the base to which they are attached (’735 Patent, FIGs. 1-4).
- Evidence for a Narrower Interpretation: The ’512 Patent's use of solid lines to claim the specific trapezoidal shape and features of the base could support an interpretation that the design is limited to lamps with a substantially similar base. Any significant deviation in the base of an accused product could be argued to fall outside the claim's scope (’512 Patent, FIGs. 1-3).
VI. Other Allegations
- Indirect Infringement: The complaint alleges contributory and vicarious liability against the individual defendant, Sam Avny. It asserts he had knowledge of the infringing activities, was a "moving, acting conscious force" behind the corporate defendants' actions, and had both the right and ability to supervise the illegal activity and a direct financial interest in it (Compl. ¶¶ 62, 68, 72, 78, 82, 88).
- Willful Infringement: The complaint alleges willful infringement based on Defendants’ purported knowledge of the patents since at least May 2017. The allegations cite initial notice, failed settlement talks in 2017, a second cease-and-desist letter in 2019, and Defendants’ continued alleged infringement thereafter (Compl. ¶¶ 26, 27, 33, 36).
VII. Analyst’s Conclusion: Key Questions for the Case
- A primary issue will be the application of the ordinary observer test to two closely related designs. The case will require determining whether an ordinary observer, aware of the prior art, would be deceived by the accused lamp's appearance when compared to the ’512 Patent (which includes the base) and the ’735 Patent (which does not).
- A central question of design scope will arise from the different claiming strategies of the two patents. For the ’512 Patent, the court will consider the weight of the specific base features in the overall design. For the ’735 Patent, the key question is whether disclaiming the base makes the accused product, which has its own base, appear substantially similar to the claimed arm-and-head design.
- A key question for liability and potential damages enhancement will be one of individual culpability: can the Plaintiff produce evidence to establish that the individual defendant, Sam Avny, acted as the "conscious moving force" behind the alleged infringement, sufficient to hold him personally liable for the corporate defendants' actions?