DCT
3:19-cv-01305
Glam Glits Nail Design Inc v. Nguyen
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Glam and Glits Nail Design, Inc. (California)
- Defendant: Nancy Nguyen, d/b/a NW Beauty Supply (Oregon)
- Plaintiff’s Counsel: Markowitz Herbold PC; Lapple Ubell IP Law, LLP
- Case Identification: 3:19-cv-01305, D. Or., 08/19/2019
- Venue Allegations: Venue is alleged to be proper in the District of Oregon because the Defendant resides there, maintains a place of business in Portland, and has allegedly sold and offered for sale the accused infringing products within the judicial district.
- Core Dispute: Plaintiff alleges that Defendant’s "LUNA" brand gel polish bottles infringe two of Plaintiff's U.S. design patents and the trade dress associated with Plaintiff's "KIARA SKY" product line.
- Technical Context: This dispute concerns the ornamental design of packaging in the professional nail products industry, where distinctive bottle shapes can serve as a key source identifier for consumers.
- Key Procedural History: The complaint alleges a prior business relationship between the parties, with Defendant having purchased Plaintiff's products between 2011 and 2016. Plaintiff also alleges it sent a cease and desist letter notifying Defendant of the asserted patents on May 16, 2019, approximately three months before filing the complaint. The second patent-in-suit is a continuation of the application that resulted in the first patent-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2011-07-01 | Defendant allegedly began purchasing products from Plaintiff (approx.) |
| 2014-07-01 | Plaintiff launched its KIARA SKY product line (approx.) |
| 2014-08-14 | Earliest Priority Date for D'737 and D'444 Patents |
| 2014-09-01 | Defendant allegedly began purchasing KIARA SKY products (approx.) |
| 2016-06-14 | U.S. Design Patent No. D758,737 Issued |
| 2017-04-03 | Plaintiff's CEO allegedly sent text message to Defendant regarding debt |
| 2018-12-25 | U.S. Design Patent No. D836,444 Issued |
| 2019-05-01 | Plaintiff's CEO allegedly visited Defendant's store (approx.) |
| 2019-05-16 | Plaintiff's counsel allegedly sent cease and desist letter to Defendant |
| 2019-05-28 | Defendant's counsel allegedly responded to cease and desist letter |
| 2019-08-19 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D758,737, "NAIL POLISH BOTTLE," issued June 14, 2016
The Invention Explained
- Problem Addressed: While not explicitly stated as a problem, the context of a design patent implies a goal of creating a novel, ornamental, and non-functional appearance for a product to distinguish it in the marketplace (Compl. ¶¶ 7, 15).
- The Patented Solution: The patent protects the ornamental design for a nail polish bottle, which is characterized by the visual combination of a cylindrical bottle base, smoothly rounded shoulders, and a cap with a distinctive concave, hourglass-like profile (D'758,737 Patent, Figs. 2-5). The claimed design also includes an embossed "KS" logo on the top surface of the cap (D'758,737 Patent, Fig. 6). The complaint provides representative figures from the patent to illustrate the claimed design (Compl. ¶19).
- Technical Importance: The complaint alleges that this bottle design is "unique and distinctive" and has become "widely recognized within the industry," suggesting its value lies in creating brand identity and goodwill for Plaintiff's KIARA SKY product line (Compl. ¶15).
Key Claims at a Glance
- Design patents contain a single claim, which is for the design as shown in the drawings. The claim of the D'737 Patent is for "The ornamental design for a nail polish bottle, as shown and described" (D'758,737 Patent, Claim).
- The essential visual features shown in solid lines, and therefore claimed, include:
- A cylindrical bottle base with rounded shoulders.
- A cap with a contoured, concave profile.
- An embossed logo on the top surface of the cap.
U.S. Design Patent No. D836,444, "NAIL POLISH BOTTLE," issued December 25, 2018
The Invention Explained
- Problem Addressed: Similar to the D'737 Patent, the goal is to protect a unique ornamental design for a consumer product (Compl. ¶¶ 7, 15).
- The Patented Solution: The D'444 Patent claims the ornamental design for the bottle portion only of a nail polish bottle. The drawings show the cap and applicator brush in broken lines, which explicitly disclaims them from the scope of the protected design (D'836,444 Patent, Description). The claimed design therefore consists solely of the cylindrical base and its rounded shoulders, independent of any particular cap design (D'836,444 Patent, Figs. 2-5). The complaint includes a representative image from the patent showing the claimed bottle portion (Compl. ¶21).
- Technical Importance: By claiming the bottle shape separately from the cap, this patent may provide a different scope of protection, potentially covering products that copy the bottle's distinctive shape but attach a different, non-infringing cap.
Key Claims at a Glance
- The single claim is for "The ornamental design for a nail polish bottle, as shown and described" (D'836,444 Patent, Claim).
- The essential visual features shown in solid lines consist of:
- A cylindrical bottle base.
- Smooth, rounded shoulders transitioning from the base to the bottle's neck.
III. The Accused Instrumentality
- Product Identification: The accused products are gel polish bottles sold under the brand name "LUNA" (Compl. ¶25).
- Functionality and Market Context: The complaint identifies the accused instrumentality as a bottle for gel nail polish that Defendant allegedly imports, markets, and sells (Compl. ¶25). The complaint includes a photograph of the accused "LUNA" bottle, which features a white, contoured cap and a cylindrical base with a logo (Compl. ¶25). Plaintiff alleges that Defendant's sale of the LUNA bottle began "long after" Plaintiff established its own bottle design in the market and that the use of the design is intended to "trade upon the goodwill" of Plaintiff (Compl. ¶¶ 26-27).
IV. Analysis of Infringement Allegations
The standard for design patent infringement is whether an "ordinary observer," familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented design.
D'758,737 Patent Infringement Allegations
| Claim Element (Visual Feature of the Design) | Alleged Infringing Functionality (from Accused "LUNA" Bottle) | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental appearance of the bottle and cap combination. | The complaint alleges the LUNA product has a design that would appear to an ordinary observer to be "substantially similar" to the patented design. | ¶54 | D'758,737 Patent, Figs. 1-3 |
| Cylindrical bottle base with rounded shoulders. | The accused LUNA bottle appears to have a cylindrical base and rounded shoulders visually consistent with the patented design. | ¶25 | D'758,737 Patent, Figs. 2-3 |
| Cap with a contoured, concave profile. | The accused LUNA bottle's cap appears to have a contoured, concave profile that mirrors the shape shown in the patent drawings. | ¶25 | D'758,737 Patent, Figs. 2-3 |
| Embossed logo on the top surface of the cap. | The accused LUNA bottle has a logo on its cap, although the specific logo design differs from the "KS" logo shown in the patent. | ¶25 | D'758,737 Patent, Fig. 6 |
D'836,444 Patent Infringement Allegations
| Claim Element (Visual Feature of the Design) | Alleged Infringing Functionality (from Accused "LUNA" Bottle) | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental appearance of the bottle body, excluding the cap. | The complaint alleges the LUNA product has a design that would appear to an ordinary observer to be "substantially similar" to the patented design. | ¶67 | D'836,444 Patent, Fig. 1 |
| Cylindrical bottle base. | The accused LUNA bottle appears to have a cylindrical base that is visually consistent with the claimed design. | ¶25 | D'836,444 Patent, Figs. 2-3 |
| Smooth, rounded shoulders. | The accused LUNA bottle appears to have smooth, rounded shoulders that are visually consistent with the claimed design. | ¶25 | D'836,444 Patent, Figs. 2-3 |
- Identified Points of Contention:
- Scope Questions: A central question for the D'737 Patent is the legal effect of the different logos on the caps. The court may need to consider whether the different logo on the accused LUNA bottle is a significant enough visual difference to prevent an ordinary observer from being confused, or if the overall similarity in the bottle and cap shapes is dispositive.
- Technical Questions: For the D'444 Patent, which disclaims the cap, the infringement analysis will focus exclusively on the bottle's shape. The key question is whether the accused LUNA bottle body is "substantially the same" as the claimed design, an inquiry that will depend heavily on visual comparison and the introduction of prior art to frame the scope of what is protectable.
V. Key Claim Terms for Construction
In design patent cases, the "claim" is understood to be the visual design itself as depicted in the drawings, rather than a list of text-based limitations. Formal claim construction is rare; instead, the dispute focuses on the scope of the visual claim.
- The Term: "The ornamental design for a nail polish bottle, as shown and described."
- Context and Importance: The core of the dispute is the scope of this visual claim. Practitioners may focus on which elements are part of the claimed design (solid lines) versus which are not (broken lines) and how those claimed features compare to the accused product in the eyes of an ordinary observer.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: For the ’444 Patent, the use of broken lines to disclaim the cap and brush explicitly separates the bottle's shape as the sole claimed feature (D'836,444 Patent, Description). Plaintiff may argue this gives the claim a broader scope, covering any product that copies the bottle's body, irrespective of the cap used.
- Evidence for a Narrower Interpretation: For the ’737 Patent, the use of solid lines for the entire bottle, cap, and the specific "KS" logo could support a narrower interpretation (D'758,737 Patent, Fig. 6). Defendant may argue that the claimed design is limited to the specific combination shown, and that a different logo on the accused product is a material distinction that avoids infringement.
VI. Other Allegations
- Indirect Infringement: The complaint's factual allegations focus on direct infringement by Defendant for "making, using, selling, offering for sale, and/or importing" the accused LUNA products (Compl. ¶¶ 54, 67). The complaint does not plead specific facts to support a separate claim for induced or contributory infringement.
- Willful Infringement: The complaint alleges that Defendant’s infringement was willful and intentional (Compl. ¶¶ 56, 69). This allegation is based on claims of Defendant’s actual knowledge of the patented design through a prior multi-year business relationship, during which Defendant allegedly purchased and sold over 13,000 units of Plaintiff’s KIARA SKY products in the patented bottles (Compl. ¶¶ 32-37). The willfulness claim is further supported by allegations of pre-suit notice via a cease and desist letter sent in May 2019 (Compl. ¶47).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual distinction: For the ’737 Patent, does the different logo on the accused product's cap create a sufficient visual difference to defeat an infringement claim in the eyes of an ordinary observer, or is the identity of the overall bottle and cap shapes controlling?
- A second key issue is the effect of disclaimers: For the ’444 Patent, which claims only the bottle's body, the case will test whether the shape of the bottle alone is distinctive enough to be protected and whether the accused LUNA bottle is substantially similar when the cap is ignored as required by the patent's claim scope.
- Finally, a central question for damages will be willfulness: The court will examine the evidence of the parties' prior business relationship and Defendant's alleged knowledge of the patented designs to determine if any infringement was willful, which could expose Defendant to enhanced damages and attorney's fees.