DCT
3:19-cv-00120
North Star Technology Intl Ltd v. Latham Pool Products Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: North Star Technology International Limited and North Star Technology Limited (Malta)
- Defendant: Latham Pool Products, Inc. (Delaware)
- Plaintiff’s Counsel: Luedeka Neely Group, P.C.
- Case Identification: 3:19-cv-00120, E.D. Tenn., 07/30/2019
- Venue Allegations: Venue is based on Defendant allegedly committing acts of infringement in the district and maintaining a regular place of business, specifically a manufacturing and sales facility in Fayetteville, Tennessee. The patents' exclusive licensee also has its principal place of business in the district.
- Core Dispute: Plaintiff alleges that Defendant’s fiberglass pool designs infringe two U.S. design patents covering the ornamental appearance of swimming pools.
- Technical Context: The dispute concerns the market for prefabricated fiberglass swimming pools, specifically designs that integrate features such as tanning ledges and spas into a single unit.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with notice of the patents-in-suit and the alleged infringement via a letter dated November 16, 2018, more than eight months before filing suit. The patents are exclusively licensed to a third party, Leisure Pools and Spas Manufacturing North America Inc.
Case Timeline
| Date | Event |
|---|---|
| 2016-01-28 | U.S. Design Patent No. D791,966 Priority Date (Filing) |
| 2016-02-02 | U.S. Design Patent No. D794,213 Priority Date (Filing) |
| 2017-07-11 | U.S. Design Patent No. D791,966 Issued |
| 2017-08-08 | U.S. Design Patent No. D794,213 Issued |
| Late 2018 | Defendant allegedly begins marketing accused products |
| 2018-11-16 | Plaintiff sends notice letter to Defendant |
| 2019-03-01 | Defendant's accused products allegedly become available for sale |
| 2019-07-30 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D791,966 - "Swimming Pool"
- Patent Identification: U.S. Design Patent No. D791,966, "Swimming Pool," issued July 11, 2017.
- The Invention Explained:
- Problem Addressed: Design patents do not include a background section describing a technical problem. The claimed design, however, addresses the aesthetic and functional integration of multiple features into a single, cohesive swimming pool structure.
- The Patented Solution: The patent claims the ornamental design for a swimming pool. The figures depict a generally rectangular pool with a full-width shallow platform or "tanning ledge" at one end, a set of centrally-located steps descending from that ledge into the main swimming area, and two symmetrical benches built into the corners of the deep end (’966 Patent, Figs. 1, 6). The design is characterized by its specific combination of these elements, their proportions, and the resulting overall visual impression.
- Technical Importance: The complaint alleges that this design, licensed as "The Pinnacle™," is an "innovative and widely recognized" and "popular" fiberglass pool design (Compl. ¶2, ¶13).
- Key Claims at a Glance:
- The patent contains a single claim for "The ornamental design for a swimming pool, as shown and described" ('966 Patent, CLAIM).
- The scope of the claim is defined by the visual appearance of the pool depicted in the patent's seven drawing sheets, which includes the following key ornamental features:
- A full-width, shallow tanning ledge at one end.
- A central staircase providing entry from the ledge to the main pool.
- A main swimming area with a sloped bottom.
- Two built-in seating areas in the corners of the deep end.
- The overall rectangular shape and proportions of these integrated elements.
U.S. Design Patent No. D794,213 - "Swimming Pool"
- Patent Identification: U.S. Design Patent No. D794,213, "Swimming Pool," issued August 8, 2017.
- The Invention Explained:
- Problem Addressed: As a design patent, it does not specify a problem. The design addresses the integration of a spa, a tanning ledge, and a swimming area into a unified ornamental form.
- The Patented Solution: The patent claims the ornamental design for a swimming pool that builds upon the features of the ’966 Patent's design. The key difference is the shallow end, which is configured to include both a tanning ledge and an integrated, square-shaped spa section, offset to one side (’213 Patent, Figs. 1, 7). The steps into the main pool are adjacent to this combined spa/ledge area.
- Technical Importance: The complaint alleges this design, licensed as "The Ultimate™," is also an "innovative" and "popular" pool design (Compl. ¶13).
- Key Claims at a Glance:
- The patent contains a single claim for "The ornamental design for a swimming pool, as shown and described" ('213 Patent, CLAIM).
- The scope is defined by the drawings, which show a design distinguished by its combination of:
- A shallow end incorporating an integrated spa and an adjacent tanning ledge.
- A main swimming area.
- Stairs providing access from the shallow end to the main pool.
- The specific layout and visual relationship between the spa, ledge, and stairs within the overall rectangular pool shape.
III. The Accused Instrumentality
- Product Identification: Defendant Latham's "Rectangle with Full Width Tanning Ledge" and "Rectangle Combo Spa with Tanning Ledge" fiberglass pool designs (Compl. ¶14).
- Functionality and Market Context: The complaint alleges these are fiberglass pool designs manufactured and sold by Defendant under its Trilogy Pools, Viking Pools, and Blue Hawaiian brand names (Compl. ¶6, ¶16). Marketing for these products allegedly began in late 2018, with the pools becoming available for sale on March 1, 2019 (Compl. ¶14). The complaint references a promotional flyer for the accused pool designs, which identifies a production facility in Fayetteville, TN (Compl. ¶14, Ex. C).
IV. Analysis of Infringement Allegations
The infringement test for a design patent 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 that Defendant's pools "so closely resemble" the patented designs that this standard is met (Compl. ¶18, ¶26). The complaint provides visual evidence in the form of comparative exhibits. The complaint includes a side-by-side visual comparison of the patented design and the accused "Rectangle with Full Width Tanning Ledge" pool (Compl. ¶18, Ex. D). It also includes a comparative exhibit showing the second patented design alongside the accused "Rectangle Combo Spa with Tanning Ledge" pool (Compl. ¶26, Ex. E).
D791,966 Infringement Allegations
| Claim Element (Key Ornamental Features) | Alleged Infringing Functionality (from Latham's "Rectangle with Full Width Tanning Ledge" Pool) | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design for a swimming pool, as shown and described, comprising a combination of integrated features. | The complaint alleges that Defendant's pool design so closely resembles the patented design that an ordinary observer would be deceived. | ¶18 | Figs. 1-8 |
| A full-width shallow tanning ledge at one end. | The accused pool is described as a "Rectangle with Full Width Tanning Ledge" design. | ¶18 | Fig. 6 |
| Central entry steps descending from the tanning ledge. | The comparison in Exhibit D, as described in the complaint, shows the accused pool has a similar step configuration. | ¶18 | Fig. 6 |
| Two symmetrical seating areas in the corners of the deep end. | The comparison in Exhibit D, as described in the complaint, shows the accused pool incorporates similar deep-end seating features. | ¶18 | Fig. 6 |
D794,213 Infringement Allegations
| Claim Element (Key Ornamental Features) | Alleged Infringing Functionality (from Latham's "Rectangle Combo Spa with Tanning Ledge" Pool) | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design for a swimming pool, as shown and described, comprising a combination of integrated features. | The complaint alleges that Defendant's pool design so closely resembles the patented design that an ordinary observer would be deceived. | ¶26 | Figs. 1-8 |
| A shallow end incorporating an integrated spa and an adjacent tanning ledge. | The accused pool is described as a "Rectangle Combo Spa with Tanning Ledge" design. | ¶26 | Fig. 7 |
| A specific layout of the spa, tanning ledge, and entry steps. | The comparison in Exhibit E, as described in the complaint, shows the accused pool has a similar layout of these features. | ¶26 | Fig. 7 |
- Identified Points of Contention:
- Scope Questions: The central legal question will be the scope of the claimed designs in view of the prior art. The dispute may turn on whether the similarities between the patented and accused designs are ornamental features new to the Plaintiff, or if those features were already common in the prior art for swimming pools. The complaint's allegation is that an observer "familiar with the designs of the prior art" would be deceived, framing this as the core issue (Compl. ¶18, ¶26).
- Technical Questions: A key factual question will be whether the visual differences between the patented designs and the accused products are substantial enough to prevent an ordinary observer from being confused. The analysis will focus on the overall visual impression, rather than a direct comparison of discrete elements.
V. Key Claim Terms for Construction
In a design patent case, claim construction does not focus on interpreting textual terms as it does in utility patent litigation. Instead, the "claim" is the visual design itself, as shown in the patent drawings. The scope of the claim is understood through the eyes of an "ordinary observer." Accordingly, the central dispute is not about the definition of a word, but about the overall scope of the patented design's appearance.
- The "Term": The overall ornamental design as shown in the drawings of the ’966 and ’213 patents.
- Context and Importance: The entire infringement analysis hinges on the scope of the claimed designs. The court's determination of what an ordinary observer would perceive as the core ornamental features of the patented designs, when viewed in the context of prior art pool designs, will be dispositive.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Scope: The claim language "as shown and described" encompasses the entire visual appearance from all depicted angles ('966 Patent, CLAIM; '213 Patent, CLAIM). A party could argue that the overall combination and arrangement of features (ledge, steps, spa, seats) creates a singular, protectable aesthetic impression that is not limited to the exact dimensions shown.
- Evidence for a Narrower Scope: A party could argue that the design is limited to the specific proportions, curvatures, and placement of features as precisely depicted in the patent figures (e.g., '966 Patent, Fig. 6; '213 Patent, Fig. 7). Any deviation in the accused product from these specific visual details could be argued to place it outside the scope of the patent. The numerous prior art patents cited on the face of the patents-in-suit may be used to argue that the claimed designs are only narrow improvements over existing designs.
VI. Other Allegations
- Willful Infringement: The complaint alleges that Defendant's infringement "has been and continues to be willful" (Compl. ¶24, ¶32). This allegation is based on Plaintiff having provided Defendant with actual notice of the patents and the alleged infringement in a letter dated November 16, 2018, which constitutes alleged pre-suit knowledge (Compl. ¶15).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be the application of the ordinary observer test: viewing the patented designs, the accused pools, and the landscape of prior art pool designs, would a typical purchaser be deceived into thinking Defendant's pools are the same as Plaintiff's patented designs? The outcome will depend on whether the shared design features are considered novel and ornamental or merely functional and commonplace.
- A second critical question will concern remedies: if infringement is found, what constitutes Defendant's "total profits" attributable to the infringing designs under the design patent-specific damages statute, 35 U.S.C. § 289? Furthermore, can Plaintiff prove by clear and convincing evidence that Defendant's alleged infringement was willful, which would open the door to an award of enhanced damages and attorneys' fees?