DCT
2:18-cv-00241
SolPals v. Handstands Promo
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: SolPals, LLC (Utah) and C-SLIDE HOLDINGS, LLC (Utah)
- Defendant: Handstands Promo, LLC (Utah)
- Plaintiff’s Counsel: Workman | Nydegger
- Case Identification: 2:18-cv-00241, D. Utah, 03/21/2018
- Venue Allegations: Venue is alleged to be proper in the District of Utah because the Defendant is a Utah corporation with its principal place of business in the district.
- Core Dispute: Plaintiffs allege that Defendant’s "Private Eyes" webcam cover infringes two of Plaintiffs' design patents covering the ornamental appearance of a webcam cover.
- Technical Context: The technology at issue involves physical, sliding covers that are affixed to electronic devices to block the lens of a built-in webcam, a product category addressing consumer and corporate digital privacy concerns.
- Key Procedural History: The complaint states the parties engaged in acquisition discussions under a Mutual Nondisclosure Agreement (NDA) in 2017, during which Plaintiffs shared confidential business information. Plaintiffs allege that after these discussions terminated, Defendant launched the accused product. Plaintiffs sent a formal notice letter alleging infringement of the patents-in-suit on March 13, 2018, prior to filing this lawsuit.
Case Timeline
| Date | Event |
|---|---|
| 2011-02-22 | ’112 Patent Priority Date |
| 2012-10-16 | ’112 Patent Issue Date |
| 2015-12-15 | ’562 Patent Priority Date |
| 2017-03-28 | ’562 Patent Issue Date |
| 2017-08-21 | Parties execute Mutual Nondisclosure Agreement |
| 2018-03-13 | Plaintiffs send pre-suit notice letter to Defendant |
| 2018-03-21 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D782,562
- Patent Identification: U.S. Patent No. D782,562, "WEBCAM COVER," issued March 28, 2017. (’562 Patent, p. 1).
The Invention Explained
- Problem Addressed: While design patents do not formally state a problem, the context of the complaint suggests an effort to create "unique and highly recognizable design features that are not found elsewhere in the webcam cover market" (Compl. ¶10).
- The Patented Solution: The patent claims the ornamental design for a webcam cover, not its function. The claimed design consists of the visual characteristics depicted in solid lines in the patent's figures, which show a two-piece assembly featuring a stationary base frame and a sliding cover. Key visual features include the overall rectangular shape with rounded ends and a prominent, raised semi-circular finger grip on the sliding portion (’562 Patent, DESCRIPTION, FIG. 3, FIG. 8). The patent notes that broken lines in the drawings illustrate the environment (e.g., a laptop) and form no part of the claimed design (’562 Patent, DESCRIPTION).
- Technical Importance: The complaint alleges the value of the design is its uniqueness, which was recognized by the U.S. Patent and Trademark Office through the issuance of the patent (Compl. ¶10).
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is for "The ornamental design for a webcam cover, as shown and described." (’562 Patent, CLAIM).
- The core visual elements protected by the claim include:
- The overall configuration of a base with a sliding element.
- A generally rectangular shape with rounded corners on both the base and slider.
- A raised, D-shaped or semi-circular handle on the sliding element.
U.S. Design Patent No. D669,112
- Patent Identification: U.S. Patent No. D669,112, "WEBCAM COVER," issued October 16, 2012. (’112 Patent, p. 1).
The Invention Explained
- Problem Addressed: As with the '562 Patent, the complaint implies the goal was to create a distinct ornamental design in the webcam cover market (Compl. ¶10).
- The Patented Solution: The patent claims the ornamental design for a webcam cover, characterized by the solid lines in the drawings. This design features a flat, rectangular frame with a central rectangular aperture, through which a webcam lens would be visible. A corresponding rectangular slider moves within the frame to cover or uncover this aperture (’112 Patent, DESCRIPTION, FIG. 5). The design is notable for its simple, geometric, and flat-surfaced appearance.
- Technical Importance: The complaint asserts that this design also possesses "unique and highly recognizable design features" (Compl. ¶10).
Key Claims at a Glance
- The single asserted claim is for "The ornamental design for a webcam cover, as shown and described." (’112 Patent, CLAIM).
- The core visual elements protected by the claim include:
- A thin, planar, rectangular outer frame.
- A rectangular cut-out window within the frame.
- A sliding piece that is captured by and moves laterally within the outer frame.
III. The Accused Instrumentality
Product Identification
The accused instrumentality is the "Private Eyes" webcam cover marketed and sold by Defendant HandStands Promo, LLC (Compl. ¶17).
Functionality and Market Context
The "Private Eyes" product is described as a "privacy lens cover for the web cam on your computer" that attaches via a "large adhesive area" and is "easy to slide open" (Compl. Ex. F, p. 44). The complaint alleges the product is sold through Defendant's website and promotional product organizations like the Advertising Specialty Institute (ASI) and SAGE (Compl. ¶17). The complaint also presents an image comparing Plaintiffs' and Defendant's product packaging, alleging that Defendant's packaging "mirrors SolPals' distinctive packaging" (Compl. ¶24).
IV. Analysis of Infringement Allegations
The standard for infringement of a design patent is the "ordinary observer" test, which 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 makes its case primarily through side-by-side visual comparisons.
D782,562 Infringement Allegations
The complaint provides a side-by-side visual comparison of the '562 Patent drawings and photographs of the Accused Product to support its claim of substantial similarity (Compl. ¶18).
| Claim Element (from the single claim) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a webcam cover as a whole, as shown and described. | The complaint alleges the Accused Product's design is "substantially the same" as the patented design, such that an "ordinary observer" would be deceived into believing they were purchasing the patented product. The visual evidence provided shows a product with a similar overall elongated shape, rounded ends, and a sliding mechanism. | ¶¶18, 19, 31 | ’562 Patent, DESCRIPTION, Figs. 1-10 |
Identified Points of Contention
- Scope Questions: The primary dispute will be whether the visual differences between the patented design and the accused product are significant enough to avoid infringement under the ordinary observer test.
- Technical Questions: A key visual question will be the treatment of the finger grip. The ’562 Patent drawings appear to show a raised, solid semi-circular element (’562 Patent, FIG. 3), whereas the photograph of the accused product suggests a recessed or indented area for the finger (Compl. ¶18). The court may need to determine if this difference alters the overall visual impression. Another potential point of contention is the presence of branding on the accused product, which is absent from the patented design.
D669,112 Infringement Allegations
The complaint includes a visual comparison between a drawing from the '112 Patent and a photograph of the Accused Product to allege infringement (Compl. ¶20).
| Claim Element (from the single claim) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a webcam cover as a whole, as shown and described. | The complaint alleges the design of the Accused Product is "substantially the same as the claim of the '112 patent," sufficient to deceive an ordinary observer. The comparison image shows a similar thin, rectangular frame and a sliding cover piece. | ¶¶20, 21, 40 | ’112 Patent, DESCRIPTION, Figs. 1-7 |
Identified Points of Contention
- Scope Questions: As with the '562 patent, the central issue is whether the overall visual appearances are substantially similar.
- Technical Questions: A potential visual distinction is the treatment of the corners. The drawings in the ’112 Patent depict sharp, 90-degree corners on the frame and slider (’112 Patent, FIG. 5), while the photographs of the accused product appear to show slightly rounded corners (Compl. ¶20). The analysis may turn on whether this difference is trivial or noticeable enough to an ordinary observer to avoid a finding of similarity.
V. Key Claim Terms for Construction
In design patent litigation, the "claim" is understood to be the design as a whole, as depicted in the patent's drawings. Formal construction of written claim terms is generally not a central issue, as the focus is on the overall visual impression of the patented design. The complaint does not identify any specific terms or features of the drawings as requiring judicial construction. The analysis will likely proceed directly to comparing the overall appearance of the patented designs to the accused product.
VI. Other Allegations
- Willful Infringement: The complaint alleges that Defendant's infringement of both the '562 and '112 patents has been willful (Compl. ¶¶33, 42). This allegation is supported by the assertion that Defendant had pre-suit knowledge of the patents. The complaint includes as an exhibit a letter dated March 13, 2018, sent to Defendant, which explicitly identifies the patents-in-suit and accuses the "Private Eyes" product of infringement (Compl. ¶26; Ex. E). The complaint further alleges that Defendant has continued its infringing activities despite receiving this notice (Compl. ¶27).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual similarity: For the "ordinary observer," are the visual differences between the accused "Private Eyes" cover and the patented designs—such as the contour of the finger grip on the '562 design and the corner radius on the '112 design—sufficient to create distinct overall visual impressions, or are they minor variations on a substantially similar design?
- A central question concerns intent and causation: The complaint intertwines the patent claims with allegations of breach of contract and trade dress misappropriation stemming from prior acquisition talks. A key issue for the court will be to determine what role, if any, the confidential information allegedly disclosed under the NDA played in the design, packaging, and marketing of the accused product.
- A significant question for damages will be one of willfulness: Given the complaint's allegation that Defendant received a detailed notice letter identifying the specific patents and the accused product before the suit was filed, the court will have to consider whether any continued infringing conduct rises to the level of willful infringement, which could expose the Defendant to enhanced damages.