DCT

2:13-cv-06383

PACCAR Inc v. Dorman Products Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:13-cv-06383, E.D. Pa., 11/01/2013
  • Venue Allegations: Venue is asserted as proper in the Eastern District of Pennsylvania, where Plaintiff Dorman Products, Inc. is a Pennsylvania corporation with its principal place of business.
  • Core Dispute: Plaintiff, an automotive aftermarket parts supplier, seeks a declaratory judgment that Defendant's design patent for a truck headlight bezel is invalid and not infringed by Plaintiff's replacement parts.
  • Technical Context: The dispute concerns the ornamental design of vehicle components in the automotive aftermarket industry, where the form of replacement parts is often constrained by the dimensions of the original vehicle.
  • Key Procedural History: This declaratory judgment action was filed after Defendant PACCAR sent demand letters to Plaintiff Dorman and its customer, O'Reilly Auto Parts, alleging infringement of the patent-in-suit. Significantly, public records post-dating the complaint indicate the patent-in-suit survived an ex parte reexamination where its patentability was confirmed by the USPTO.

Case Timeline

Date Event
1999-10-06 U.S. Patent No. D426,905 Priority Date (Filing Date)
2000-06-20 U.S. Patent No. D426,905 Issue Date
2013-09-24 PACCAR sends infringement notice to Dorman
2013-10-22 PACCAR sends infringement notice to Dorman's customer, O'Reilly
2013-11-01 Complaint for Declaratory Judgment Filed
2015-12-09 Reexamination of U.S. Patent No. D426,905 Requested
2017-07-05 Reexamination Certificate confirms patentability of the claim

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

U.S. Design Patent No. D426,905 - “Exterior Surface Configuration of a Truck Headlight”

The Invention Explained

  • Problem Addressed: Design patents protect the ornamental, non-functional appearance of an article of manufacture. The patent does not describe a technical problem, but instead presents a specific aesthetic design for a component.
  • The Patented Solution: The patent claims the ornamental design for a truck headlight bezel as depicted in its figures (’905 Patent, Claim). The scope of the design is defined by the solid lines in the drawings, which show the specific shape and contour of the bezel. The surrounding environmental structure, such as the truck fender shown in broken lines, is explicitly disclaimed and does not form part of the patented design (’905 Patent, DESCRIPTION; Compl. ¶17). The complaint references the patent's figures to illustrate the claimed design in various perspectives, such as the view provided in Figure 1 (’905 Patent, Fig. 1; Compl. ¶15).
  • Technical Importance: The design provides a distinct aesthetic for the headlight assembly on a particular PACCAR truck model, contributing to the vehicle's overall trade dress.

Key Claims at a Glance

  • The patent contains a single claim for "The ornamental design for an exterior surface configuration of a truck headlight, as shown and described" (’905 Patent, Claim).
  • The "elements" of a design claim are the visual features of the design as a whole. The key visual features of the claimed design, shown in solid lines in the patent's figures, include:
    • An irregularly shaped, elongated perimeter of the headlight bezel.
    • The surface contours and curvature of the bezel within that perimeter.
    • The overall visual impression created by these features when viewed from the front, top, side, and perspective angles as depicted in Figures 1-5.

III. The Accused Instrumentality

Product Identification

The complaint identifies Dorman's aftermarket replacement headlamps, specifically Product Nos. 888-5403 and 888-5404, as the subject of PACCAR's infringement assertions (Compl. ¶9).

Functionality and Market Context

The accused products are automotive replacement parts supplied to the aftermarket and mass merchandise markets, including retailers like O'Reilly Auto Parts (Compl. ¶4). The complaint alleges that the shape of these replacement parts is dictated by the functional requirement to conform to the shape of the truck fender for which they are designed, a point central to Dorman's legal arguments (Compl. ¶¶21, 30).

IV. Analysis of Infringement Allegations

As this is a complaint for declaratory judgment of non-infringement, it does not contain a traditional infringement claim chart. Instead, it presents a narrative argument for why Dorman's products do not infringe. The central argument is that the patent is invalid and/or its scope does not cover Dorman's products because the claimed design is "wholly functional" (Compl. ¶¶ 22-23, 31).

The complaint alleges that the shape of the claimed headlight bezel is "directly dictated and contingent upon the shape of the fender in which it rests," which itself is not part of the claimed design (Compl. ¶21). Dorman's position is that because the design is functional, it is not protectable under design patent law, and therefore its products, which replicate this functional shape, cannot infringe (Compl. ¶¶ 29, 31). The complaint repeatedly references Figures 1-5 of the ’905 Patent to argue that the claimed bezel is only depicted in the context of the truck's fender, which allegedly dictates its shape (Compl. ¶¶ 18, 24, 28). For example, Figure 5 of the patent, which shows the headlight in the context of the entire truck cab, is used to support the argument that the design is inseparable from its functional environment (’905 Patent, Fig. 5; Compl. ¶16).

  • Identified Points of Contention:
    • Legal/Factual Question: The primary point of contention is whether the claimed design is primarily ornamental or primarily functional. The court's analysis will likely focus on whether alternative, aesthetically different bezel designs could fit the same truck fender, which would suggest the specific patented design is ornamental rather than dictated by function. Dorman’s complaint alleges there is "no ornamental feature" and the design is "wholly functional" (Compl. ¶22).
    • Scope Question: A key question is whether the scope of a design patent claim, limited by law to ornamental features, can read on a replacement part whose configuration is allegedly dictated by the functional need to mate with the original product.

V. Key Claim Terms for Construction

In a design patent case, the "claim" is understood to be the design itself as shown in the drawings, and traditional claim construction of written terms is rare. The central dispute here is not over the meaning of a word but over the legal character of the claimed design as a whole.

  • The "Term": "ornamental design ... as shown and described"
  • Context and Importance: The entire dispute hinges on whether the visual appearance of the headlight bezel is "ornamental," as required by 35 U.S.C. § 171, or "functional." The resolution of this issue will likely determine both the patent's validity and the outcome of the infringement analysis. Practitioners may focus on this issue because the functionality doctrine is a complete defense to design patent infringement.
  • Intrinsic Evidence for Interpretation:
    • Evidence for an "Ornamental" Interpretation (PACCAR's likely position): The patent's claim explicitly recites an "ornamental design" (’905 Patent, Claim). The patentee would argue that the specific combination of curves, proportions, and surface treatments shown in the drawings represents a particular aesthetic choice that is not required by function. The use of broken lines to disclaim the surrounding fender could be argued to isolate the bezel's unique appearance as the protected ornamental subject matter (’905 Patent, DESCRIPTION).
    • Evidence for a "Functional" Interpretation (Dorman's position): The complaint argues that the patent drawings themselves demonstrate functionality by showing a design whose shape is dictated by its environment (Compl. ¶¶ 18, 21). Dorman alleges that the bezel's shape is "contingent upon the shape of the fender in which it rests" and that the design shown is "entirely functional" (Compl. ¶¶ 21, 23, 28).

VI. Other Allegations

The complaint includes counts beyond the request for a declaratory judgment of invalidity and non-infringement. These counts are based on PACCAR's act of asserting the ’905 Patent.

  • Unfair Competition and Tortious Interference: Dorman alleges that PACCAR engaged in unfair competition under the Lanham Act and state law, as well as tortious interference with business relations (Compl., Counts II-IV). The basis for these claims is the allegation that PACCAR sent infringement notices to Dorman and its customer, O'Reilly, with the knowledge that the ’905 Patent was invalid and/or not infringed because its subject matter is allegedly functional (Compl. ¶¶ 38, 41, 49, 56).
  • Willful Conduct: The complaint does not allege that Dorman's potential infringement was willful. Instead, it alleges that PACCAR's assertion of the patent constituted a "willful" act of unfair competition, on the basis that PACCAR "knows or should have known" the patent was invalid (Compl. ¶¶ 38, 44).

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

  1. A core issue will be one of functionality: Is the claimed design of the headlight bezel, as shown in the ’905 Patent, primarily dictated by its function of mating with the truck's fender, as Dorman alleges, or does it embody non-functional, ornamental choices that are protectable by a design patent?

  2. A second key question, contingent on the first, will be one of bad faith assertion: If the design is found to be functional, did PACCAR know or should it have known of this invalidity when it sent demand letters to Dorman and its customers, thereby engaging in unfair competition or tortious interference?

  3. Finally, an important evidentiary question will be what weight the court gives to the USPTO's ex parte reexamination certificate—which confirmed the patent's validity after the complaint was filed—when evaluating Dorman’s invalidity defense and its allegations of PACCAR’s bad faith.