Viniello v. Amazon.com Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Over Active Imaginations, Inc. (California)
  • Defendant: Amazon.com, Inc. (Delaware)
  • Plaintiff’s Counsel: Murthy Patent Law Inc.
• Case Identification: 2:23-cv-01866, W.D. Wash., 03/20/2024
• Venue Allegations: Plaintiff alleges venue is proper in the Western District of Washington because Defendant's principal place of business is located in the district and it allegedly committed acts of patent infringement by selling the accused products to customers within the district.
• Core Dispute: Plaintiff alleges that Defendant’s sale of "Mermaid shaped sleeping bags" on its e-commerce platform infringes three U.S. design patents covering the ornamental appearance of such products.
• Technical Context: The dispute is in the consumer goods sector and concerns the ornamental design, rather than the functional utility, of novelty sleeping bags or wearable blankets.
• Key Procedural History: The complaint alleges that Plaintiff provided Defendant with pre-suit notice of the asserted patents on November 11 and November 28, 2023, through Amazon's online infringement reporting portal. U.S. Patent No. D751,792 is identified as a divisional of the application that resulted in U.S. Patent No. D743,669, indicating they share a common design disclosure.

Case Timeline

Date	Event
2013-02-25	Priority Date for ’669 and ’792 Patents
2015-10-30	Priority Date for ’055 Patent
2015-11-24	’669 Patent Issued
2016-03-22	’792 Patent Issued
2017-07-18	’055 Patent Issued
2023-11-11	Plaintiff alleges first pre-suit notice sent to Defendant
2023-11-28	Plaintiff alleges second pre-suit notice sent to Defendant
2024-03-20	Second Amended Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Design Patent No. D743,669 - "Sleeping Bag"

• Patent Identification: U.S. Design Patent No. D743,669, "Sleeping Bag," issued November 24, 2015.

The Invention Explained

• Problem Addressed: Design patents do not articulate a technical problem; instead, they protect the novel, non-functional, ornamental appearance of an article of manufacture.
• The Patented Solution: The patent claims the specific ornamental design for a sleeping bag as depicted in its figures (’669 Patent, Claim). The design consists of a wearable bag shaped to resemble a mermaid's tail, characterized by a main body portion with an overlapping, scale-like surface pattern on the front, a horizontally stitched pattern on the back, and a distinct two-lobed tail fluke at the bottom (’669 Patent, Figs. 1-2).
• Technical Importance: The design provides a unique and fanciful aesthetic for a consumer product, differentiating it in the marketplace based on its visual appearance rather than its function.

Key Claims at a Glance

• The single claim asserted is for "The ornamental design for a sleeping bag, as shown and described" (Compl. ¶27; ’669 Patent, Claim).
• The scope of the claim is defined by the six figures illustrating the design from the front, back, top, bottom, and side views (’669 Patent, Figs. 1-6).

U.S. Design Patent No. D751,792 - "Sleeping Bag"

• Patent Identification: U.S. Design Patent No. D751,792, "Sleeping Bag," issued March 22, 2016.

The Invention Explained

• Problem Addressed: As a design patent, the ’792 Patent protects a novel ornamental appearance for an article of manufacture.
• The Patented Solution: The patent claims an alternative ornamental design for a sleeping bag, which is a divisional of the application leading to the ’669 Patent (’792 Patent, Related U.S. Application Data). While sharing a similar overall mermaid-tail silhouette, this design is distinguished by a diamond-quilted stitch pattern on its front surface, contrasting with the scale pattern of the ’669 Patent (’792 Patent, Fig. 1). The back surface features a horizontally stitched pattern similar to that in the parent design (’792 Patent, Fig. 2).
• Technical Importance: This patent protects a second, distinct visual embodiment of the mermaid-tail concept, securing rights to a different surface ornamentation.

Key Claims at a Glance

• The single claim asserted is for "The ornamental design for a sleeping bag, as shown and described" (Compl. ¶27; ’792 Patent, Claim).
• The scope is defined by the patent's drawings, which illustrate a design with a diamond-quilted front pattern (’792 Patent, Figs. 1-6).

U.S. Design Patent No. D792,055 - "Mermaid Sleeping Bag"

• Patent Identification: U.S. Design Patent No. D792,055, "Mermaid Sleeping Bag," issued July 18, 2017.
• Technology Synopsis: The ’055 Patent protects the ornamental design for a "mermaid sleeping bag" across two depicted embodiments (’055 Patent, DESCRIPTION). Both embodiments feature a main body with a scale-like pattern formed by broken stitch lines, but they are distinguished by different shapes for the tail fluke and the inclusion of a cross-hatched fabric pattern in one embodiment (’055 Patent, Figs. 1, 7).
• Asserted Claims: The single design claim is asserted (Compl. ¶27).
• Accused Features: The complaint alleges that the overall ornamental appearance of the "Mermaid shaped sleeping bag" products sold by Defendant infringes the claimed design (Compl. ¶27).

III. The Accused Instrumentality

Product Identification

• The accused instrumentalities are "Mermaid shaped sleeping bag[s]" and other related products sold by Defendant on its websites (Compl. ¶27).

Functionality and Market Context

• The complaint describes the accused products as sleeping bags or similar articles having the ornamental appearance of a mermaid's tail (Compl. ¶¶6, 12). The complaint alleges these products are sold on Amazon.com and third-party websites (Compl. ¶¶7, 27). The complaint references an "Exhibit 4" as containing examples of the accused products, but this exhibit was not included with the filed complaint document (Compl. ¶28).

IV. Analysis of Infringement Allegations

The complaint does not contain claim charts in its body but alleges that a claim chart is attached as Exhibit 4, which was not available for review (Compl. ¶9). The infringement theory is therefore based on the narrative allegations. The core allegation is that Defendant directly infringes claim 1 of each of the three asserted design patents by making, using, and selling the Accused Products, whose overall ornamental appearance is alleged to be substantially the same as the patented designs (Compl. ¶¶27, 31, 41, 52). No probative visual evidence provided in complaint.

• Identified Points of Contention:
  • Scope Questions: A central issue will be whether the accused products are "substantially the same" as the patented designs in the eyes of an "ordinary observer." This raises the question of whether the patents' scope covers the general concept of a mermaid-tail-shaped bag or is limited to the specific combination of features shown, including the precise surface ornamentation (e.g., overlapping scales vs. diamond quilting) and tail fluke shape of each design.
  • Technical Questions: The infringement analysis will depend on a visual comparison between the accused products and the patent drawings. A key factual question will be whether the specific ornamental features of the accused products—such as their textures, stitching patterns, and tail shapes—are close enough to the claimed designs to cause an ordinary observer, familiar with the prior art, to be deceived.

V. Key Claim Terms for Construction

In design patent litigation, the "claim" is understood to be the design as a whole, depicted in the drawings. The dispute centers on the scope of the claimed design rather than the definition of specific text-based terms.

• The "Term": The overall ornamental design for a "sleeping bag" or "mermaid sleeping bag."
• Context and Importance: The determination of infringement will depend entirely on the visual comparison between the claimed designs and the accused products. Practitioners may focus on defining the scope of the claimed design by identifying its novel ornamental features in light of the prior art. The existence of three separate patents by the same inventors for similar articles with different surface treatments may become a focal point in arguments over the scope of each individual design.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party may argue that the core novelty is the overall visual impression of a wearable, soft-goods mermaid tail, and that specific surface patterns are merely exemplary embodiments of that broader protected design.
  • Evidence for a Narrower Interpretation: A party could argue that the patents are narrowly limited to the exact ornamental features shown. The fact that the inventor sought and obtained separate patents for a design with a scale pattern (’669 Patent), a diamond-quilted pattern (’792 Patent), and a stitched-scale pattern (’055 Patent) may suggest that each pattern is a distinct, non-interchangeable element of its respective claimed design.

VI. Other Allegations

• Indirect Infringement: The complaint alleges both induced and contributory infringement for all three patents. The factual basis asserted for inducement is Defendant "knowingly induced customers to use its Accused Products, including, for example, by promoting such products online (e.g., www.PotteryBarn.com)" (Compl. ¶¶35, 46, 57). The complaint further alleges the Accused Products are not staple articles of commerce suitable for substantial noninfringing use (Compl. ¶¶36, 47, 58).
• Willful Infringement: Willfulness is alleged for all three patents based on pre-suit knowledge. The complaint alleges that Defendant was specifically put on notice of the patents and the alleged infringement on November 11 and November 28, 2023, via submissions to Amazon's online reporting tool, and that Defendant continued to infringe despite this notice (Compl. ¶¶26, 33, 44, 55).

VII. Analyst’s Conclusion: Key Questions for the Case

• A core issue will be one of design scope: Will the court, in applying the "ordinary observer" test, determine that the patents protect the general visual impression of a mermaid-tail sleeping bag, or will protection be narrowly construed to the specific surface ornamentations (e.g., overlapping scales, diamond quilting, stitched patterns) and fluke shapes depicted in each respective patent?
• A second key question will relate to prior art: The ultimate test for design patent infringement requires assessing the designs from the perspective of an ordinary observer familiar with the prior art. The case will likely turn on what the relevant prior art reveals about existing mermaid-tail designs and whether, in that context, the accused products are substantially similar to the novel aspects of the patented designs.
• An evidentiary question will concern willfulness: Will the Plaintiff’s alleged pre-suit notices, submitted through Defendant's automated online reporting portal, be sufficient to prove the requisite knowledge and intent for a finding of willful infringement for sales occurring after the notice dates?