2:23-cv-01866
Viniello v. Amazon.com Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Mark Viniello (California) and 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., 01/24/2024
- Venue Allegations: Venue is alleged to be proper because Defendant's principal place of business is in the district (Seattle, Washington), it has committed acts of infringement in the district, and it has regular and established places of business there. The complaint also contains a conflicting allegation that Defendant's principal place of business is in San Francisco, California.
- Core Dispute: Plaintiffs allege that Defendant’s sale of "Mermaid shaped sleeping bags" 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 design patents, which protect the unique, ornamental, and non-functional appearance of an article of manufacture.
- Key Procedural History: The complaint alleges that Plaintiffs informed Defendant of the infringement on two occasions in November 2023 via Amazon's online infringement reporting tool, prior to filing suit. The complaint states these notices did not result in the removal of the accused products.
Case Timeline
| Date | Event |
|---|---|
| 2013-02-25 | Priority Date ('669 and '792 Patents) |
| 2015-10-30 | Priority Date ('055 Patent) |
| 2015-11-24 | U.S. Design Patent No. D743,669 Issued |
| 2016-03-22 | U.S. Design Patent No. D751,792 Issued |
| 2017-07-18 | U.S. Design Patent No. D792,055 Issued |
| 2023-11-11 | Plaintiff submitted first infringement report to Amazon |
| 2023-11-28 | Plaintiff submitted second infringement report to Amazon |
| 2024-01-24 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D743,669 - "SLEEPING BAG," issued November 24, 2015
The Invention Explained
- Problem Addressed: Design patents address the appearance of an object, not a technical problem. The existence of the patent presupposes a desire for a new, original, and ornamental design for a sleeping bag beyond purely functional shapes.
- The Patented Solution: The patent claims "the ornamental design for a sleeping bag, as shown and described" ('669 Patent, Claim). The design consists of a sleeping bag shaped like a mermaid's tail. Key visual features depicted include a body portion with a repeating, overlapping scale-like surface pattern on the front, horizontal seams on the back, and a bifurcated, two-lobed tail fluke at the bottom ('669 Patent, Figs. 1-2).
- Technical Importance: The patent protects a specific aesthetic expression in the novelty consumer goods market, aiming to distinguish the product's appearance from conventional sleeping bags.
Key Claims at a Glance
- Design patents contain a single claim, which is for the ornamental design as shown in the drawings.
- The essential visual elements of the claimed design are:
- The overall configuration of a human-sized sleeping bag shaped like a mermaid's tail.
- A surface ornamentation on the front of the body consisting of a pattern of repeating, rounded scales.
- A distinct, two-lobed tail fluke.
U.S. Design Patent No. D751,792 - "SLEEPING BAG," issued March 22, 2016
The Invention Explained
- Problem Addressed: This patent, like the '669 patent, addresses the need for a new and distinct ornamental design for a sleeping bag.
- The Patented Solution: The patent claims the ornamental design for a sleeping bag as depicted in its figures ('792 Patent, Claim). This design also features the overall shape of a mermaid's tail. Its distinguishing feature, compared to the '669 Patent, is a different surface pattern on the front of the body, which consists of a diamond-patterned, quilted-style stitching ('792 Patent, Fig. 1). The back view shows horizontal seams, and the design terminates in a two-lobed tail fluke similar in general shape to that of the '669 Patent ('792 Patent, Fig. 2).
- Technical Importance: This patent protects a different aesthetic variation of the mermaid-tail sleeping bag concept, suggesting the specific surface pattern is a key part of the design's novelty.
Key Claims at a Glance
- The patent asserts a single claim for the ornamental design shown.
- The essential visual elements of the claimed design are:
- The overall configuration of a human-sized sleeping bag shaped like a mermaid's tail.
- A surface ornamentation on the front of the body consisting of a diamond-shaped, quilted stitching pattern.
- A distinct, two-lobed tail fluke.
Multi-Patent Capsule
- Patent Identification: U.S. Design Patent No. D792,055, "MERMAID SLEEPING BAG," issued July 18, 2017.
- Technology Synopsis: This design patent protects the ornamental appearance of a mermaid sleeping bag characterized by specific claimed features, including broken lines indicating stitching that forms a scalloped or scale-like pattern on the body and different textures on the tail ('055 Patent, DESCRIPTION). The design also features a scalloped upper opening and claims two different embodiments, primarily distinguished by the shape of the tail fluke—one with pointed tips and the other with a concave bottom edge ('055 Patent, Figs. 1, 7).
- Asserted Claims: The single claim for the ornamental design as shown and described.
- Accused Features: The overall shape and ornamental features of "Mermaid shaped sleeping bag" products sold by Defendant (Compl. ¶¶ 28, 54).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are "Mermaid shaped sleeping bag" products (the "Accused Products") (Compl. ¶ 28).
Functionality and Market Context
The complaint describes the Accused Products as sleeping bags or blankets designed in the shape of a mermaid tail, which are made, used, sold, or offered for sale by Defendant and its affiliates on Amazon.com and other third-party websites (Compl. ¶ 28). The complaint alleges that these products match the shape of one or more of the Asserted Patents (Compl. ¶ 29).
IV. Analysis of Infringement Allegations
The complaint alleges that the Accused Products infringe the asserted patents but does not include the referenced claim chart exhibit (Exhibit 4) that purportedly shows the infringing products (Compl. ¶ 29). Therefore, a detailed element-by-element comparison is not possible based on the complaint alone. No probative visual evidence provided in complaint.
The narrative infringement theory is that Defendant makes, uses, sells, and offers for sale "Mermaid shaped sleeping bag" products whose overall ornamental design is substantially the same as the designs claimed in the '669, '792, and '055 patents (Compl. ¶¶ 28, 33, 43, 54). The legal test 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 asserts infringement both directly and under the doctrine of equivalents, which for design patents is embodied in the ordinary observer test (Compl. ¶¶ 32, 44, 55).
Identified Points of Contention
- Scope Questions: A central question will be how broadly the claimed designs are interpreted. The dispute may turn on whether the patents are construed to cover the general concept of a mermaid-tail sleeping bag or are limited to the specific surface patterns (scales vs. quilting vs. specific stitching) and tail fluke shapes depicted in each patent's drawings.
- Technical Questions: A key factual question will be the actual appearance of the Accused Products. The court will need to compare the specific visual details—such as surface texture, proportions, stitching patterns, and tail fluke shape—of the accused bags to the drawings of each of the three asserted patents to determine if they are "substantially the same" in the eyes of an ordinary observer.
V. Key Claim Terms for Construction
In design patent litigation, claim construction focuses on the scope of the claimed design as a whole, rather than on specific text.
- The Term: "The ornamental design for a sleeping bag"
- Context and Importance: The entire dispute hinges on the scope of this term as defined by the patent drawings. Practitioners may focus on whether the scope is limited to the exact visual details shown or covers minor variations. The existence of three separate patents by the same inventor for similar articles with different surface treatments may be used to argue that the scope of each design is narrow and tied to its specific pattern.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue that the overall visual impression of a "mermaid-tail sleeping bag" is the dominant feature and that minor variations in the scale or quilting pattern do not change the fundamental design captured by the patents.
- Evidence for a Narrower Interpretation: A party could argue that the specific surface patterns are explicitly shown and described and are therefore critical, limiting features of each design. The fact that the inventor secured separate patents for a scale pattern ('669 Patent, Fig. 1), a quilted pattern ('792 Patent, Fig. 1), and a stitched pattern ('055 Patent, Fig. 2) suggests that these patterns are not interchangeable and define the narrow scope of each respective patent.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement, stating Defendant encourages customers and retailers to use the Accused Products by promoting them online (Compl. ¶¶ 35-36, 46-47, 57-58). It further alleges contributory infringement, asserting that the Accused Products are not staple articles of commerce suitable for substantial non-infringing use (Compl. ¶¶ 37, 48, 59).
- Willful Infringement: The willfulness claim is based on alleged pre-suit knowledge. The complaint states that Plaintiffs notified Amazon of the infringement via its dedicated reporting portal on November 11, 2023, and November 28, 2023, and that Defendant continued to sell the Accused Products thereafter (Compl. ¶¶ 27, 34, 45, 56).
VII. Analyst’s Conclusion: Key Questions for the Case
A core issue will be one of infringement scope: Applying the "ordinary observer" test, is the overall ornamental design of the accused products substantially the same as the specific designs claimed in the '669 patent (with its scale pattern), the '792 patent (with its quilted pattern), and the '055 patent (with its specific stitching), or are the differences significant enough to avoid confusion?
A key evidentiary question will be one of visual comparison: As the complaint lacks visual evidence of the accused products, discovery will be critical to establish their actual appearance. The case will likely depend on a side-by-side comparison of the accused products with the patent drawings to determine if their aesthetic appeal is effectively the same.
A central question for damages will concern willfulness: Did the infringement notices submitted through Amazon's reporting portal provide knowledge of infringement sufficiently specific to make continued sales of the accused products an act of objectively reckless infringement, potentially justifying enhanced damages?