2:19-cv-00461
Datafly Commerce v. Wellax Gear SRL
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Datafly Commerce LLC (Utah)
- Defendant: WellaX Gear SRL (Romania)
- Plaintiff’s Counsel: Nadesan Beck P.C.
- Case Identification: 2:19-cv-00461, D. Utah, 07/01/2019
- Venue Allegations: Venue is alleged to be proper on the basis that the defendant is a foreign corporation with no principal place of business in the United States. The complaint also alleges specific personal jurisdiction in Utah based on the defendant's business transactions, supply of goods into the state, and having caused injury within the state.
- Core Dispute: Plaintiff alleges that Defendant’s "Sandfree Beach Blanket" infringes a design patent covering the ornamental design of an outdoor blanket.
- Technical Context: The dispute is in the consumer outdoor gear market, where the visual appearance and distinct ornamental features of products like portable blankets can be a significant market differentiator.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with notice of the alleged infringement on May 5, 2019, approximately two months before filing the suit. It further alleges that after this notice, Defendant continued to sell the accused product and altered marketing materials in an attempt to conceal the infringement.
Case Timeline
| Date | Event |
|---|---|
| 2016-09-30 | '598 Patent Priority Date (Filing Date) |
| 2018-08-28 | '598 Patent Issued |
| 2019-05-05 | Plaintiff allegedly notified Defendant of infringement |
| 2019-07-01 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D826,598 - "OUTDOOR BLANKET"
- Patent Identification: U.S. Design Patent No. D826,598, "OUTDOOR BLANKET," issued August 28, 2018.
The Invention Explained
- Problem Addressed: Design patents protect ornamental appearance rather than solving a technical problem. The implicit goal is to create a new, original, and ornamental design for an article of manufacture—in this case, an outdoor blanket—that is visually distinct from prior art designs.
- The Patented Solution: The patent claims a specific ornamental design for an outdoor blanket, the key features of which are depicted in solid lines in the patent's figures (’598 Patent, Description). The design consists of a generally rectangular blanket body featuring four rectangular pockets at the corners, a centrally located, integrated stuff sack on its bottom surface, and a single, centrally located storage pocket on its top surface directly opposite the stuff sack (’598 Patent, FIG. 2, FIG. 3). The design also includes parallel lines of stitching across the blanket's surface.
- Technical Importance: In the consumer goods market, a unique and recognizable product design can be a key driver of commercial success and brand identity, which the complaint alleges occurred with its "top selling" blanket (Compl. ¶11).
Key Claims at a Glance
- Design patents contain a single claim for the ornamental design as shown in the drawings (’598 Patent, Claim).
- The core ornamental features that constitute the claimed design include:
- The overall configuration and shape of the blanket.
- Four rectangular pockets located at the corners.
- A centrally located stuff sack on one surface.
- A centrally located rectangular storage pocket on the opposite surface.
- Decorative stitching patterns.
III. The Accused Instrumentality
Product Identification
The "Wellax Sandfree Beach Blanket" (also referred to as the "WellaX Blanket") (Compl. ¶14). A photograph of the WellaX Blanket is referenced in the complaint as Exhibit C (Compl. ¶14).
Functionality and Market Context
The accused product is described as a line of beach blankets that competes directly with Plaintiff's "Datafly Blanket" (Compl. ¶15). The complaint alleges the products are similar, marketed to the same customers, and sold through the same channels (Compl. ¶15). A photograph of the Plaintiff's commercial embodiment, the "Datafly Blanket," is referenced as Exhibit A (Compl. ¶10).
IV. Analysis of Infringement Allegations
The standard for design patent infringement is 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 this standard is met (Compl. ¶24).
D826598 Infringement Allegations
| Claimed Ornamental Feature (from the '598 Patent Drawings) | Alleged Infringing Feature of the WellaX Blanket | Complaint Citation | Patent Citation |
|---|---|---|---|
| A stuff sack positioned in the center of the blanket. | A stuff sack is positioned in the center, between two sand anchor pockets. | ¶23a | FIG. 3 |
| Decorative stitching. | The blanket has "identical decorative stitching." | ¶23b | FIG. 2 |
| Four rectangular sand anchor pockets attached at the corners. | The blanket has four rectangular sand anchor pockets attached at the same corner locations. | ¶23c | FIG. 2; FIG. 3 |
| A single rectangular storage pocket attached in the center of the blanket. | The blanket has a single rectangular storage pocket attached in the center, directly opposite the stuff sack. | ¶23d | FIG. 2 |
Identified Points of Contention
- Scope Questions: The central issue will be whether the overall visual impression of the WellaX Blanket is "substantially the same" as the design claimed in the '598 Patent. The analysis will focus on the patented design as a whole, not on a simple checklist of features.
- Factual Questions: The complaint alleges "identical" decorative stitching (Compl. ¶23b). A key factual question will be whether the stitching and other features of the accused product are, in fact, identical or merely similar. The court will also need to address the allegation that Defendant "photo-shopped" marketing materials to alter the product's appearance, which may raise questions about which version of the accused product is the proper basis for comparison (Compl. ¶18).
V. Key Claim Terms for Construction
Claim construction for a design patent does not involve interpreting textual terms but rather describing the claimed ornamental design as shown in the patent's drawings. The scope of the claim is defined by the visual appearance of the design in its entirety. The '598 Patent states that "Elements illustrated in broken lines form no part of the claimed design," which serves to define the boundaries of the claimed subject matter (’598 Patent, Description). Therefore, any analysis will focus on the features depicted in solid lines in Figures 1-7.
VI. Other Allegations
Indirect Infringement
The complaint's infringement count focuses on direct infringement by Defendant for its own acts of making, using, and selling the accused blanket (Compl. ¶22). However, the prayer for relief includes a request to enjoin Defendant from "contributing in any manner to the infringement of the '598 Patent" (Relief Requested ¶2).
Willful Infringement
The complaint alleges willful infringement based on Defendant's continuation of infringing activities after receiving actual notice from Plaintiff on or about May 5, 2019 (Compl. ¶16-17, ¶26). The allegation that Defendant altered marketing photos to "conceal its continuing infringement" is presented as further evidence of willfulness (Compl. ¶18).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this dispute will likely depend on the court's findings on three central questions:
- The Ordinary Observer Test: Is the overall ornamental design of the accused WellaX Blanket substantially the same as the design claimed in the '598 Patent, such that an ordinary observer would be confused? This visual comparison is the ultimate test for design patent infringement.
- Evidence of Willfulness: Do the facts surrounding the May 2019 notice and the alleged subsequent alteration of marketing materials demonstrate that Defendant’s infringement, if any, was willful, thereby exposing it to potential enhanced damages?
- Impact of Individual Features: How will the similarities and any potential differences in specific features—such as the precise pattern of the "decorative stitching" or the exact construction of the pockets—weigh in the overall comparison of the designs in the eyes of the ordinary observer?