DCT

2:24-cv-04018

Bath & Body Works Inc v. Health & Beyond Health Technology Suzhou Co Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:24-cv-04018, S.D. Ohio, 10/03/2024
  • Venue Allegations: Venue is alleged to be proper because the Defendant is a foreign corporation without a related U.S. entity, making venue appropriate in any judicial district. Plaintiffs also note their principal places of business are within the district, making it a convenient forum.
  • Core Dispute: Plaintiff alleges that Defendant’s personal care products, including hand sanitizers with silicone holders, body lotions, and shower gels, infringe the ornamental designs claimed in five U.S. design patents.
  • Technical Context: The dispute centers on the ornamental appearance of packaging for consumer personal care products, a market where distinctive design and branding are key commercial differentiators.
  • Key Procedural History: Plaintiff alleges it provided Defendant with notice of the asserted patents and infringement allegations via letters on June 17, 2024, and July 19, 2024. Defendant’s only response was allegedly to deny manufacturing the products and to suggest its trademark was being used by an unknown third party.

Case Timeline

Date Event
2013-08-27 D’143 Patent Priority Date
2014-06-09 D’442 Patent Priority Date
2014-11-25 U.S. Design Patent D718,143 Issued
2014-12-19 D’943, D’945, & D’580 Patents Priority Date
2016-03-29 U.S. Design Patent D752,442 Issued
2017-02-28 U.S. Design Patent D779,943 Issued
2017-02-28 U.S. Design Patent D779,945 Issued
2017-03-07 U.S. Design Patent D780,580 Issued
2024-06-17 Plaintiff's first notice letter to Defendant
2024-07-19 Plaintiff's second notice letter to Defendant
2024-10-03 Complaint Filing Date

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

U.S. Design Patent No. D779,943 - Bottle Carrier

Issued February 28, 2017

The Invention Explained

  • Problem Addressed: Design patents do not solve technical problems but instead protect the non-functional, ornamental appearance of an article of manufacture (Compl. ¶37).
  • The Patented Solution: The patent claims the specific ornamental design for a bottle carrier, as depicted in its figures (D’943 Patent, Claim). The design features a flexible, sleeve-like body with a large, rounded rectangular window on its face, designed to hold a small bottle. A key feature is the integrated, adjustable strap, which is characterized by a series of distinct, spherical beads along its length, culminating in a fastener that allows the strap to form a loop (D’943 Patent, Figs. 1-3).
  • Technical Importance: This design provides a distinctive aesthetic for a portable hand sanitizer holder, a popular consumer accessory where appearance can be a primary driver of purchasing decisions (Compl. ¶12).

Key Claims at a Glance

  • The patent contains a single claim for "The ornamental design for a bottle carrier, as shown and described." (D’943 Patent, col. 1:57-58).
  • The core visual elements comprising the design include:
    • A main sleeve-like body with a prominent front-facing window.
    • An adjustable loop strap that is integrated with the main body.
    • Multiple, distinct spherical elements spaced along the strap.
    • A fastening mechanism where one end of the strap is passed through an opening on the other end to form a secure loop.

U.S. Design Patent No. D779,945 - Bottle Carrier

Issued February 28, 2017

The Invention Explained

  • Problem Addressed: The patent protects a specific ornamental design for an article of manufacture (Compl. ¶51).
  • The Patented Solution: This patent also claims an ornamental design for a bottle carrier featuring a sleeve-like body and a beaded, adjustable strap (D’945 Patent, Claim). The overall form is similar to the D’943 patent, including the main body shape and the beaded strap design. The figures illustrate various positions of the strap, including open and closed configurations, to fully disclose the claimed design's appearance (D’945 Patent, Figs. 1-3). Subtle differences in the proportions and curvature of the body and strap may distinguish it from the D’943 design.
  • Technical Importance: The design offers a specific visual identity for a consumer product in a competitive market, contributing to brand recognition (Compl. ¶12).

Key Claims at a Glance

  • The patent contains a single claim for "The ornamental design for a bottle carrier, as shown and described." (D’945 Patent, col. 1:52-53).
  • The essential visual elements include:
    • A main body with a large front opening for displaying a bottle.
    • An integrated, adjustable strap with multiple spherical beads.
    • Broken lines in the figures indicate that the boundaries of the design and certain environmental structures are not part of the claimed design (D’945 Patent, col. 2:3-16).

U.S. Design Patent No. D780,580 - Bottle Carrier

Issued March 7, 2017

  • Technology Synopsis: This patent claims an ornamental design for a bottle carrier. The design features a sleeve-like body and an adjustable strap, but unlike the ’943 and ’945 patents, the strap is smooth and hook-shaped, without any bead-like ornamentation (D’580 Patent, Figs. 1-4; Compl. ¶65).
  • Asserted Claims: The single claim for the ornamental design as shown and described.
  • Accused Features: The design of Defendant's hand sanitizers with silicone holders (Compl. ¶¶ 5-6, 66).

U.S. Design Patent No. D752,442 - Bottle

Issued March 29, 2016

  • Technology Synopsis: This patent claims the ornamental design for a bottle. The design is characterized by a short, wide body with rounded shoulders that taper slightly toward the base, and a prominent flip-top cap that is wider than the bottle's neck and includes an indentation for thumb operation (D’442 Patent, Figs. 1-2; Compl. ¶79).
  • Asserted Claims: The single claim for the ornamental design as shown and described.
  • Accused Features: The design of Defendant's gel antibacterial hand sanitizers (Compl. ¶¶ 5-6, 80).

U.S. Design Patent No. D718,143 - Bottle

Issued November 25, 2014

  • Technology Synopsis: This patent claims the ornamental design for a bottle, featuring a taller, more slender, and generally oval-cylindrical body compared to the D’442 patent. The design has a slightly constricted neck below a flip-top cap. Critically, broken lines in the figures indicate that the precise height of the bottle's central section is not part of the claimed design, broadening its potential scope (D’143 Patent, Figs. 1-2, Description; Compl. ¶93).
  • Asserted Claims: The single claim for the ornamental design as shown and described.
  • Accused Features: The design of Defendant's body lotion and shower gel bottles (Compl. ¶¶ 5-6, 94).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are Defendant H&B's "gel antibacterial hand sanitizers (1 oz.), gel antibacterial hand sanitizers with silicone holders (1 oz), body lotion (8 oz), and shower gel (8 oz)" (Compl. ¶5).

Functionality and Market Context

These are personal care consumer products. The complaint alleges that Defendant supplies these products to a range of customers, including general retailers, grocery and convenience store chains, and online sales entities throughout the United States and within the Southern District of Ohio (Compl. ¶7). The complaint provides a screenshot from an Alibaba.com product listing for "Mini Pocket 1oz alcohol Hand Sanitizer with silicone holder" attributed to the Defendant, which offers delivery throughout the U.S. (Compl. ¶20, p. 7).

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 infringement through side-by-side visual comparisons.

The complaint alleges H&B's products are visually nearly identical to the patented designs. A side-by-side comparison of the D'943 patent design and an accused H&B hand sanitizer holder shows a carrier with a similar body shape, front window, and beaded strap (Compl. p. 3). Similarly, the complaint juxtaposes the D'143 patent design with H&B's body lotion and shower gel, highlighting the resemblance in the bottles' overall shape, proportions, and cap design (Compl. p. 4).

Identified Points of Contention

  • Visual Similarity: The primary question for the court will be whether the accused products are "substantially the same" as the patented designs from the perspective of an ordinary observer. This analysis will focus on the overall visual impression created by the combination of ornamental features.
  • Scope Questions: For the designs that use broken lines, such as the ’143 Patent, a question may arise as to whether the disclaimed portions (e.g., bottle height) create any ambiguity or limitation on the scope of the protected design when compared to accused products of varying dimensions.

V. Key Claim Terms for Construction

In design patent litigation, the "claim" is the design itself as shown in the drawings, and construction of textual terms is rare. However, the interpretation of drawing conventions is critical.

  • The Term: Broken or Dashed Lines
  • Context and Importance: Several of the asserted patents, such as the ’143 Patent, use broken lines. The patent explicitly states, "The broken lines in the drawings represent subject matter that forms no part of the claim." (’143 Patent, col. 2:32-34). Practitioners may focus on this convention because it directly defines the boundaries of the claimed design and, therefore, the scope of the patent owner's rights. It dictates which features of an accused product are relevant to the infringement analysis and which must be ignored.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The plain language of the patent description indicates that any features shown in broken lines are disclaimed and do not limit the claim (’143 Patent, col. 2:32-38). This would suggest, for example, that the ’143 patent covers a bottle of any height, so long as it incorporates the claimed top and bottom ornamental features.
    • Evidence for a Narrower Interpretation: A party could argue that while a specific feature like height is disclaimed, the overall visual impression and the specific proportions of the claimed solid-line portions relative to each other are fixed. This might be used to argue that an accused product with substantially different proportions, even with similar end-caps, does not create the same overall visual impression and therefore does not infringe.

VI. Other Allegations

  • Indirect Infringement: The complaint does not contain specific counts or detailed factual allegations for indirect infringement. The claims are focused on direct infringement by making, using, selling, offering for sale, and importing the Accused Products (Compl. ¶¶ 38, 52, 66, 80, 94).
  • Willful Infringement: The complaint alleges willful infringement for all five asserted patents. The allegations are based on Defendant H&B having received actual notice of the patents and the infringement allegations via letters dated June 17, 2024, and July 19, 2024 (Compl. ¶¶ 41, 55, 69, 83, 97). The complaint alleges that H&B's continued infringement after receiving this notice is deliberate and wanton (Compl. ¶41).

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

  1. A core issue will be one of visual identity: For each of the five asserted design patents, would an ordinary observer, giving such attention as a purchaser usually gives, be deceived into purchasing the Defendant’s product believing it to be the Plaintiff’s? This factual determination, based on a side-by-side comparison of the designs, will be dispositive for infringement.
  2. A key evidentiary question will be one of source and conduct: The court will need to resolve the factual dispute over whether Defendant H&B is the source of the accused products, given its alleged denial and claim that its trademark was stolen (Compl. ¶1, Exhibit C). The resolution of this issue is fundamental to liability and will be a predicate for the claim of willful infringement.
  3. The case may also present a question of design scope: Particularly for patents like D’143 that disclaim portions of the article using broken lines, a legal and factual question will be how those disclaimers affect the "ordinary observer" test when comparing the claimed design to accused products that may differ in the disclaimed areas.