DCT
4:19-cv-00648
Bayco Products Inc v. Tim Goetz Associates LLC
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Bayco Products, Inc. (Texas)
- Defendant: Protorch Company, Inc. (Texas); Suzhou Protorch Co., Ltd. (People's Republic of China); Tim Goetz & Associates LLC (Wisconsin); Hong Huang a/k/a Henry Huang (People's Republic of China)
- Plaintiff’s Counsel: Whitaker Chalk Swindle & Schwartz PLLC
- Case Identification: 4:19-cv-00648, E.D. Tex., 09/09/2019
- Venue Allegations: Venue is alleged based on Defendant Huang's residency in the district, Defendant ProTorch U.S. being incorporated in Texas with a place of business in the district, and both having committed infringing acts in the district. ProTorch China is a foreign corporation, and venue is alleged to be proper in any district.
- Core Dispute: Plaintiff alleges that Defendants’ portable work lights and related products infringe two of its design patents, in addition to claims of trademark and trade dress infringement, trade secret misappropriation, and breach of contract.
- Technical Context: The dispute concerns the ornamental designs of portable and rechargeable work lights, a mature product category used in automotive, industrial, and consumer settings.
- Key Procedural History: The complaint alleges a long-standing business relationship between Plaintiff and companies controlled by Defendant Huang, beginning in 2003 as an original equipment manufacturer (OEM). Plaintiff alleges that in 2010, the parties signed a Memorandum of Understanding in which a company controlled by Huang acknowledged that its prior patenting of Plaintiff's product designs in China infringed Plaintiff's patent rights. The complaint also alleges that Defendant Goetz is a former employee and sales representative for Plaintiff who subsequently began working for Defendants.
Case Timeline
| Date | Event |
|---|---|
| 1998-07 | Tim Goetz begins employment with Bayco |
| 2003 | Bayco establishes OEM relationship with Minghui (controlled by Defendant Huang) |
| 2005-04-07 | '577 Patent Priority Date |
| 2005-12 | Tim Goetz's employment with Bayco terminates |
| 2006-01-01 | Bayco retains Tim Goetz & Associates LLC via Manufacturer's Representative Agreement |
| 2006 | Huang (through Minghui) allegedly begins applying for Chinese patents on Bayco's products |
| 2006-06-20 | U.S. Design Patent No. D523,577 Issues |
| 2010-03-31 | Bayco and Minghui memorialize OEM Agreement |
| 2010-04-26 | Bayco and Minghui sign Memorandum of Understanding regarding Chinese patenting activities |
| 2010-10-28 | '894 Patent Priority Date |
| 2012-12-18 | U.S. Design Patent No. D672,894 Issues |
| 2013-06 | Tim Goetz ceases being Bayco's manufacturer representative |
| 2016-12-22 | Defendant ProTorch U.S. is formed |
| 2017 (Late) | Tim Goetz is allegedly hired by ProTorch U.S. |
| 2018 (First Half) | Goetz allegedly secures sales contract between ProTorch U.S. and Lowe's |
| 2019-08 | Photos taken of accused products on sale at a Lowe's store in the district |
| 2019-09-09 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D672,894 - "Dual Function Rechargeable Work Light"
- Patent Identification: U.S. Design Patent No. D672,894, “Dual Function Rechargeable Work Light,” issued December 18, 2012 (the “’894 Patent”).
The Invention Explained
- Problem Addressed: Design patents do not solve technical problems; they protect the novel, non-functional, ornamental appearance of an article of manufacture. This patent claims the specific ornamental design of a work light (Compl. ¶20; ’894 Patent, Claim).
- The Patented Solution: The patent protects the visual impression of a wand-style work light. Key ornamental features include a long, cylindrical body with a textured or patterned surface, a multi-faceted end cap, a hexagonal collar separating the handle from the light-emitting portion, and a hook at one end (’894 Patent, FIGS. 1-8). The broken lines in the figures indicate subject matter that is not part of the claimed design (’894 Patent, col. 1:49-52).
- Technical Importance: The complaint alleges that the ornamental design is non-functional and that products embodying the design are sold in the U.S. (Compl. ¶59, 97).
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a dual function rechargeable work light, as shown and described" (’894 Patent, Claim).
- The scope of the claim is defined by the ornamental features depicted in Figures 1 through 9.
- The complaint reserves the right to assert additional claims (Compl. ¶102).
U.S. Design Patent No. D523,577 - "Flourescent Task Lamp"
- Patent Identification: U.S. Design Patent No. D523,577, “Flourescent Task Lamp,” issued June 20, 2006 (the “’577 Patent”).
The Invention Explained
- Problem Addressed: The patent protects the ornamental design for a fluorescent task lamp, not a technical solution (Compl. ¶19; ’577 Patent, Claim).
- The Patented Solution: The patent claims the specific visual appearance of a handheld task lamp. Its ornamental features include a transparent or translucent cylindrical cage over the light element, a handle with a distinct cross-hatched or diamond-patterned grip texture, and a flared base (’577 Patent, FIGS. 1-7). The broken line showing of the power cord indicates it is for illustrative purposes only and forms no part of the claimed design (’577 Patent, col. 1:15-17).
- Technical Importance: The complaint alleges the design is non-functional and embodied in task lamps sold in commerce (Compl. ¶60, 108).
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a flourescent task lamp, as shown and described" (’577 Patent, Claim).
- The scope of the claim is defined by the ornamental features depicted in Figures 1 through 7.
- The complaint reserves the right to assert additional claims (Compl. ¶113).
III. The Accused Instrumentality
Product Identification
The accused products include the “PT3214 Slim Rechargable Work Light,” an accused “Task Lamp,” and other portable lighting products and cord reels sold by the Defendants (Compl. ¶59-60, 66-68).
Functionality and Market Context
The complaint alleges Defendants are selling work lights, task lamps, and cord reels that are “virtually identical” in appearance to Plaintiff’s products (Compl. ¶59, 60). The complaint includes a photograph of Defendants' and Plaintiff's products being sold alongside each other in a Lowe's retail store (Compl. ¶84). The image from the Lowe's store shows Bayco and ProTorch products for sale in the same aisle, suggesting they are direct competitors in the same retail channel (Compl. ¶84). The complaint also alleges Defendants secured a sales contract with Lowe's for these products (Compl. ¶49).
IV. Analysis of Infringement Allegations
The standard for design patent infringement is whether an “ordinary observer,” familiar with the prior art designs, would be deceived into purchasing the accused product, believing it to be the patented design. The complaint alleges infringement through side-by-side comparisons.
’894 Patent Infringement Allegations
The complaint provides a side-by-side visual comparison of a figure from the '894 Patent and the accused ProTorch PT3214 work light, alleging they are substantially the same (Compl. ¶59).
| Patented Ornamental Feature (from '894 Patent) | Alleged Infringing Functionality (from ProTorch PT3214) | Complaint Citation | Patent Citation |
|---|---|---|---|
| Overall wand-like configuration with a hook at one end. | The accused PT3214 product is a wand-like light with a hook at one end. | ¶59 | FIG. 1 |
| A hexagonal collar separating the handle from the light element. | The accused product displays a prominent hexagonal collar in the same location. | ¶59 | FIG. 1 |
| A textured or patterned surface on the handle portion. | The handle of the accused product features a visually similar textured pattern. | ¶59 | FIG. 1 |
| A multi-faceted end cap opposite the hook. | The accused product has a multi-faceted end cap of similar shape and proportion. | ¶59 | FIG. 1 |
’577 Patent Infringement Allegations
The complaint provides a side-by-side visual comparison of figures from the '577 Patent and the accused ProTorch Task Lamp, alleging they are substantially the same (Compl. ¶60).
| Patented Ornamental Feature (from '577 Patent) | Alleged Infringing Functionality (from ProTorch Task Lamp) | Complaint Citation | Patent Citation |
|---|---|---|---|
| Overall configuration of a handheld lamp with a cylindrical protective cage. | The accused Task Lamp has the same overall shape and a cylindrical protective cage. | ¶60 | FIGS. 2, 5 |
| A handle with a distinctive cross-hatched or diamond-patterned grip. | The accused product's handle features a visually identical cross-hatched grip pattern. | ¶60 | FIG. 2 |
| A flared base at the bottom of the handle. | The accused product's handle terminates in a similarly flared base. | ¶60 | FIGS. 2, 5 |
| A visible internal structure within the protective cage. | The accused product shows a similar internal bulb structure through its protective cage. | ¶60 | FIGS. 2, 5 |
Identified Points of Contention
- Scope Questions: The primary question for the court will be whether the overall ornamental appearance of each accused product is substantially the same as the claimed designs in the '894 and '577 Patents from the perspective of an ordinary observer.
- Technical Questions: A key factual question, as raised by the complaint, is whether the Defendants used the Plaintiff's own molds to produce the accused products (Compl. ¶59, 60, 79). The complaint provides photographic evidence comparing the internal and external components of the parties' cord reel products side-by-side, alleging they appear to come from the same molds (Compl. ¶79). This allegation, if proven, may strongly support a finding of copying and infringement.
V. Key Claim Terms for Construction
In design patent cases, the claim is typically construed by reference to the drawings. The central "term" is the design itself, viewed as a whole.
- The Term: "the ornamental design for a ... work light, as shown and described"
- Context and Importance: The construction of this "term" involves determining which visual features are part of the protected design and their overall visual effect. The outcome of the "ordinary observer" test depends entirely on the scope of the claimed design as illustrated in the patent figures.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue that the overall visual impression of the work light's shape and configuration is the core of the design, and minor surface details are less important. The consistent depiction of the overall form across multiple figures in both patents could support this view ('894 Patent, FIGS. 1-8; '577 Patent, FIGS. 1-7).
- Evidence for a Narrower Interpretation: A party could argue that specific, detailed features—such as the exact hexagonal shape of the collar in the ’894 Patent or the specific cross-hatch pattern on the handle of the ’577 Patent—are critical limitations of the design. The express disclaiming of the power cords via broken lines in both patents demonstrates an intent to claim only the specific features shown in solid lines, potentially narrowing the scope to the precise ornamental details illustrated (’894 Patent, col. 1:49-52; ’577 Patent, col. 1:15-17).
VI. Other Allegations
- Indirect Infringement: The complaint alleges that the ProTorch Defendants actively induce infringement by "assisting, overseeing, directing, and personally participating in the design, marketing, advertising, and sales" of the infringing work lights (Compl. ¶98, 109).
- Willful Infringement: Willfulness is alleged based on Defendants having been "made aware of and had knowledge of" the '894 and '577 Patents (Compl. ¶101, 112). The complaint provides significant factual context for this allegation, including the parties' prior OEM relationship, a 2010 MOU acknowledging prior infringement of Bayco's IP by Huang's company, and the alleged use of Bayco's own product molds (Compl. ¶33, 52-54, 79).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual identity: From the perspective of an ordinary observer, is the overall ornamental design of the accused ProTorch work lights substantially the same as the designs claimed in the ’894 and ’577 patents? The side-by-side comparisons of the products and packaging in the complaint will be central to this inquiry (Compl. ¶59, 60, 86).
- A key evidentiary question will be one of origin and intent: Can Plaintiff prove its allegation that Defendants used its own proprietary molds and tooling to manufacture the accused products? Evidence supporting this claim, such as the photographic comparisons of disassembled products, could be highly influential in determining not only infringement but also willfulness and damages (Compl. ¶79).
- A central legal and factual question, which bridges the patent, trademark, and trade secret claims, will be the impact of the parties' prior business relationship: How will the alleged prior OEM agreement, the 2010 MOU acknowledging infringement, and the hiring of a former Bayco sales representative affect the analysis of Defendants' knowledge, intent, and potential liability for willful infringement and misappropriation? (Compl. ¶30-35, 44-49, 51-55).