DCT
0:17-cv-00482
FAB Fours Inc v. Prestige Off Roads LLC
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Fab Fours, Inc. (Texas)
- Defendant: Prestige Off Roads LLC (Texas)
- Plaintiff’s Counsel: McNair Law Firm, P.A.
- Case Identification: 0:17-cv-00482, D.S.C., 02/17/2017
- Venue Allegations: Venue is alleged to be proper in the District of South Carolina because the defendant is subject to personal jurisdiction and a substantial part of the events giving rise to the claims occurred in the district.
- Core Dispute: Plaintiff alleges that Defendant’s aftermarket vehicle bumper-grille combination infringes two of Plaintiff's design patents.
- Technical Context: The case concerns the market for aftermarket automotive accessories, specifically highly stylized, aggressive-look bumpers and grilles for customizing vehicles like Jeep Wranglers.
- Key Procedural History: The complaint alleges that Plaintiff sent Defendant a cease and desist letter regarding its "GRUMPER" trademark and pending design patents. In response, Defendant allegedly changed its product's name to "GRUMPLER" but continued selling the product. After the patents issued, Plaintiff sent a second cease and desist letter, which also received no response, leading to this lawsuit.
Case Timeline
| Date | Event |
|---|---|
| 2015-04-09 | Plaintiff files "GRUMPER" trademark application. |
| 2015-09-29 | Defendant Prestige Off Roads LLC organized. |
| 2016-03-01 | Plaintiff begins sales of its "GRUMPER" product. |
| 2016-05-05 | Priority Date for D'014 and D'015 Patents. |
| 2016-11-28 | Plaintiff sends first cease and desist letter to Defendant. |
| 2016-12-27 | U.S. Design Patents D775,014 and D775,015 issue. |
| 2017-01-19 | Plaintiff sends second cease and desist letter to Defendant. |
| 2017-02-17 | Complaint filed. |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D775,014 - "Vehicle Bumper with Grille" (issued Dec. 27, 2016)
The Invention Explained
- Problem Addressed: The complaint alleges a market need for "premium aftermarket" steel bumpers and grilles with unique designs that could complement the changing aesthetics of modern luxury trucks and jeeps (Compl. ¶6).
- The Patented Solution: The patent claims the ornamental design for a vehicle bumper and grille combination. The design is characterized by an aggressive, multi-faceted, and angular overall appearance (D’014 Patent, Figs. 1-2). The claim is for the visual appearance of the article itself, as depicted in the patent's drawings (D’014 Patent, Claim).
- Technical Importance: The design represents an effort to create a "highly distinctive new design" in the aftermarket automotive accessory space to meet consumer demand for unique vehicle customization options (Compl. ¶8).
Key Claims at a Glance
- The single claim covers "The ornamental design for a vehicle bumper with grille, as shown and described" (D'014 Patent, Claim).
- The scope of this claim is defined by the solid lines in the patent drawings. Key visual elements include:
- The overall angular and faceted shape of the combined bumper and grille.
- The specific configuration of horizontal slots in the central grille portion.
- The integrated, geometric housings for the vehicle's headlights.
- The patent explicitly states that elements shown in broken lines, such as internal mounting structures, are not part of the claimed design (D'014 Patent, Description).
U.S. Design Patent No. D775,015 - "Vehicle Bumper with Grille" (issued Dec. 27, 2016)
The Invention Explained
- Problem Addressed: As with the '014 Patent, this design addresses the need for unique aftermarket automotive accessories (Compl. ¶6).
- The Patented Solution: This patent claims the ornamental design for a specific portion of the larger bumper-grille assembly: the headlight opening, or cowling (Compl. ¶11). The drawings focus exclusively on the specific, multi-faceted geometric shape surrounding the headlight area (D'015 Patent, Figs. 1-2).
- Technical Importance: By seeking protection on a specific, distinctive sub-element of the overall product, the patent holder may be able to prevent others from copying a key recognizable feature, even if the overall product has some differences (Compl. ¶11).
Key Claims at a Glance
- The single claim covers "The ornamental design for a vehicle bumper with grille, as shown and described" (D'015 Patent, Claim).
- The claim's scope is strictly defined by the drawings. Key visual elements include:
- The multi-faceted, three-dimensional surfaces forming the headlight cowling.
- This patent uses two types of broken lines: "even broken lines" disclaim subject matter entirely, while "dash-dot broken lines" illustrate the boundaries of the claimed design feature, separating it from the unclaimed remainder of the bumper (D'015 Patent, Description). This provides a precise definition of the claimed portion of the design.
III. The Accused Instrumentality
Product Identification
- Defendant's "bumper-grill combination" initially called the "Grumper" and later the "Grumpler" (Compl. ¶¶13, 15).
Functionality and Market Context
- The accused product is an aftermarket accessory for Jeep Wranglers, designed to replace the stock factory bumper and grille (Compl. ¶12). The complaint alleges that the product's design is "substantially similar" and "substantially the same" as the designs protected by the '014 and '015 Patents (Compl. ¶¶13, 19, 24). The complaint provides a side-by-side photographic comparison of Plaintiff's "Grumper" product and Defendant's accused product to support this allegation (Compl. p. 4). A similar visual comparison is provided for the headlight cowling feature specifically (Compl. p. 5).
IV. Analysis of Infringement Allegations
Design patent infringement is determined by the "ordinary observer" test, which asks whether an ordinary observer would believe the accused design is the same as the patented design. The complaint supports its allegations with direct visual comparisons.
D775,014 Infringement Allegations
The complaint provides a side-by-side photographic comparison of the Plaintiff's commercial embodiment and the Defendant's product (Compl. p. 4). This visual evidence shows Defendant's product on the left and right, appearing to have the same overall aesthetic as Plaintiff's product.
| Key Ornamental Feature (from D'014 Patent) | Alleged Infringing Feature (from Complaint) | Complaint Citation |
|---|---|---|
| The overall ornamental design for a vehicle bumper with grille, as shown and described. | Defendant sells bumper-grills with a design "substantially the same as that in Design Patent D775,014," which allegedly creates the same overall visual impression. The provided photos are intended to demonstrate this similarity. | ¶19 |
- Identified Points of Contention: The central question will be whether the overall visual impression of Defendant's "Grumpler" is substantially the same as the claimed design in the '014 Patent to an ordinary observer. The defense may point to any minor differences in angles, proportions, or surface details to argue that the designs are not substantially the same. The relevance and scope of prior art, not discussed in the complaint, will be a critical factor for the court in applying the ordinary observer test.
D775,015 Infringement Allegations
The complaint includes a close-up comparison of the patent drawings for the headlight cowling, a photo of Plaintiff's product, and a photo of Defendant's product (Compl. p. 5). This visual, "Fab Fours" versus "Prestige," purports to show that the specific faceted shape of the accused headlight cowling is substantially the same as the patented design.
| Key Ornamental Feature (from D'015 Patent) | Alleged Infringing Feature (from Complaint) | Complaint Citation |
|---|---|---|
| The ornamental design for the headlight cowling portion of the bumper, as shown and described. | The complaint alleges "the design of the Prestige headlight cowling is substantially the same as that in Design Patent D775,015," supported by a direct photographic comparison to the patent's figures. | ¶24 |
- Identified Points of Contention: For the '015 Patent, the analysis will be more focused. The question is whether the specific, claimed portion of the headlight cowling on the accused product is substantially the same as the design defined by the solid and dash-dot boundary lines in the patent drawings. A potential dispute may arise over whether small variations in the facets and angles of the accused cowling are sufficient to escape infringement of the narrowly-defined claim.
V. Key Claim Terms for Construction
In design patent cases, there are no traditional claim terms to construe. The "claim" is the visual design itself. The central interpretive issue is the scope of the claimed design as defined by the drawings.
- The "Term": The scope of the design as defined by the solid, broken, and dash-dot lines in the patent drawings.
- Context and Importance: The determination of what is included in and excluded from the claimed design is foundational to the infringement analysis. The distinction between solid lines (part of the claim) and broken lines (not part of the claim) defines the battlefield for the "ordinary observer" test.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A court may find that the claim covers the overall visual impression created by the combination of claimed features, and that minor deviations do not avoid infringement if the aesthetic whole is the same.
- Evidence for a Narrower Interpretation: The patents explicitly disclaim subject matter. The '014 Patent states, "The broken lines in the drawings illustrate portions...that forms no part of the claimed design" (D'014 Patent, Description). The '015 Patent goes further, using dash-dot lines to "illustrate boundaries of the claim" (D'015 Patent, Description). A defendant could argue this language strictly limits the claim to the exact geometry shown in solid lines within those boundaries, making any deviation non-infringing.
VI. Other Allegations
- Indirect Infringement: The complaint's prayer for relief seeks a decree that Defendant "has directly or indirectly infringed" (Compl. p. 7, Prayer ¶A). However, the factual allegations in the infringement counts focus exclusively on direct infringement through making, using, and selling the accused products (Compl. ¶¶20, 25).
- Willful Infringement: The complaint alleges a strong basis for willfulness. It pleads that Defendant had pre-suit knowledge of the patents and the alleged infringement based on two separate cease and desist letters (Compl. ¶¶14, 16). The first letter, sent before the patents issued, allegedly notified Defendant of the pending applications (Compl. ¶14). The second letter, sent after issuance, allegedly provided explicit notice of the issued '014 and '015 Patents (Compl. ¶16). The complaint further alleges that Defendant's infringement was and is "willfully and deliberately" done (Compl. ¶¶21, 26).
VII. Analyst’s Conclusion: Key Questions for the Case
- The Ordinary Observer Test: Will an ordinary observer, familiar with the prior art, be deceived into believing Defendant's "Grumpler" product is the same as Plaintiff's patented designs? The case will likely hinge on a visual comparison and arguments over whether differences between the products are trivial or substantial enough to alter the overall visual impression.
- Scope of the "Portion" Claim: For the '015 Patent, a key question will be how the court interprets a claim to a specific portion of a larger article. The infringement analysis will focus tightly on the headlight cowling, and the outcome may depend on whether the accused feature is substantially the same as the very specific geometry claimed within the patent's dash-dot boundaries.
- Evidence of Willfulness: A central issue for damages will be willfulness. The court will examine whether the pre-suit notice letters, particularly the second letter sent post-issuance, are sufficient to prove that any infringement by the Defendant was willful and deliberate, which could expose Defendant to enhanced damages.