DCT
2:24-cv-00763
RBW Studio LLC v. Weinstein Au PLLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: RBW Studio, LLC (Delaware/New York)
- Defendant: Weinstein AU, PLLC; THE RUSHING COMPANY, L.L.C.; Eitel Associates, LLC; Columbia Hospitality, Inc.; and Lake Union Partners Seattle, LLC (all Washington)
- Plaintiff’s Counsel: Christensen O'Connor Johnson Kindness; Saidman DesignLaw Group, LLC
- Case Identification: 2:24-cv-00763, W.D. Wash., 05/31/2024
- Venue Allegations: Venue is alleged to be proper as all Defendants maintain a regular and established place of business in the district and have allegedly imported, used, or sold the accused product within the district.
- Core Dispute: Plaintiff alleges that a group of architecture, design, and hotel management firms infringed two of its design patents by commissioning, installing, and using a "knockoff" of its proprietary chandelier design in a Seattle hotel.
- Technical Context: The case concerns the field of high-end, designer lighting fixtures, where the unique ornamental appearance of a product is a primary driver of its market value and brand identity.
- Key Procedural History: The complaint alleges that certain Defendants first inquired with Plaintiff about purchasing the authentic chandelier in 2017. After receiving a quote, they allegedly declined and instead engaged a third-party manufacturer to create the accused copy. Plaintiff alleges it sent cease and desist letters with notice of the asserted patents in October 2023 and January 2024, which were rejected by Defendants.
Case Timeline
| Date | Event |
|---|---|
| 2016-01-01 | Plaintiff began development of the "Cinema" chandelier design |
| 2017-03-09 | Earliest priority date for '806 and '180 Patents (application filed) |
| 2017-11-09 | Plaintiff provided a price quote for its chandelier to Defendants |
| 2019-06-18 | U.S. Design Patent No. D851,806 ('806 Patent) issued |
| 2022-12-31 | Approximate date Plaintiff discovered the Accused Light Fixture (late 2022) |
| 2023-10-05 | Plaintiff sent cease and desist letter to Defendants with '806 Patent |
| 2023-11-07 | U.S. Design Patent No. D1,004,180 ('180 Patent) issued |
| 2023-12-22 | Defendants' counsel rejected Plaintiff's infringement claim |
| 2024-01-03 | Plaintiff sent Defendants' counsel notice of the newly issued '180 Patent |
| 2024-05-31 | Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D851,806 - Light
- Patent Identification: U.S. Patent No. D851,806, titled "Light," issued June 18, 2019. (Compl. ¶28).
The Invention Explained
- Problem Addressed: The complaint suggests the patent protects a "unique" and "distinctive" ornamental design in the competitive market for high-end lighting fixtures. (Compl. ¶¶9, 23).
- The Patented Solution: The patent claims the ornamental design for a chandelier. The design, as shown in the patent's figures, consists of a multi-tiered structure with three concentric rings suspended in a conical arrangement. (D'851,806 Patent, FIG. 1). Spherical light elements are positioned around the periphery of each ring, creating a specific visual aesthetic. (Compl. ¶23). The complaint alleges this is the design for its "Cinema™" chandelier. (Compl. ¶28).
- Technical Importance: The design's importance lies in its aesthetic contribution, creating a visually distinct product for a market of architects and designers who seek out "high quality light fixtures." (Compl. ¶22).
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a light, as shown and described." (D'851,806 Patent, CLAIM).
- The key ornamental features shown in the patent's drawings include:
- A three-tiered configuration of concentric rings of decreasing diameter from top to bottom.
- A plurality of spherical light-emitting bulbs attached to the exterior of each ring.
- A suspension structure of thin lines creating a conical shape from a ceiling mount to the largest, uppermost ring.
U.S. Design Patent No. D1,004,180 - Light
- Patent Identification: U.S. Patent No. D1,004,180, titled "Light," issued November 7, 2023. (Compl. ¶29).
The Invention Explained
- Problem Addressed: The patent protects the ornamental design of a specific component part of a larger fixture. The complaint states it protects the "unique spherical bulb of the Cinema™ chandelier." (Compl. ¶29).
- The Patented Solution: The patent claims the ornamental design for an individual light element. The figures show a spherical bulb joined to a collar-like base. (D'1,004,180 Patent, FIGS. 1-2). The surrounding ring structure is depicted in broken lines, indicating it provides context but is not part of the claimed design. (D'1,004,180 Patent, DESCRIPTION).
- Technical Importance: This patent protects a key visual component of the overall chandelier design, which may prevent others from copying the signature bulb assembly for use in other fixtures.
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a light, as shown and described." (D'1,004,180 Patent, CLAIM).
- The key ornamental features shown in solid lines in the patent's drawings include:
- A spherical bulb element.
- A short, cylindrical collar or base element attached to the bulb.
- The specific proportional and aesthetic relationship between the bulb and its base.
III. The Accused Instrumentality
Product Identification
The "Accused Light Fixture" is a chandelier installed and used in the Ben Paris restaurant, located within The State Hotel in Seattle, Washington. (Compl. ¶¶18, 43).
Functionality and Market Context
The complaint alleges the Accused Light Fixture is an unauthorized "knockoff" or "colorable imitation" of Plaintiff's patented Cinema™ chandelier. (Compl. ¶¶18, 45). It is alleged to have been specified by Defendants Weinstein and Rushing, manufactured by non-party iWorks, and installed at the direction of the Defendants as a "cheaper substitute" for Plaintiff's authentic product. (Compl. ¶¶34-35, 70). The complaint includes a photograph of the installed Accused Light Fixture. This photograph shows a multi-tiered chandelier with spherical bulbs hanging in a hotel lobby/restaurant entrance. (Compl. p. 9).
IV. Analysis of Infringement Allegations
The complaint alleges that the Accused Light Fixture is "substantially the same in overall appearance as the design claimed" in the asserted patents, such that an ordinary observer would be deceived. (Compl. ¶¶39, 44). The complaint presents a side-by-side visual comparison of the patent drawings and a photograph of the accused product to support its allegations. (Compl. pp. 8-9).
'806 Patent Infringement Allegations
| Claim Element (from the claim for the design "as shown") | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A multi-tiered chandelier design comprising three concentric rings arranged in a conical suspension. | The Accused Light Fixture is a multi-tiered chandelier with three concentric rings suspended in a similar conical fashion. | ¶39; p. 9 | D'851,806 Patent, FIG. 1 |
| A plurality of spherical light-emitting bulbs attached to the exterior of each ring. | The Accused Light Fixture features multiple spherical bulbs attached around the circumference of its three rings. | ¶39; p. 9 | D'851,806 Patent, FIG. 7 |
| The overall ornamental appearance of the light fixture. | The overall visual impression of the Accused Light Fixture is alleged to be "substantially the same" as and a "colorable imitation" of the patented design. | ¶¶39, 45 | D'851,806 Patent, CLAIM |
'180 Patent Infringement Allegations
| Claim Element (from the claim for the design "as shown") | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An ornamental design for a light element consisting of a spherical bulb and an attached collar-like base. | The individual light elements on the Accused Light Fixture each consist of a spherical bulb with an attached base. | ¶29; p. 9 | D'1,004,180 Patent, FIG. 2 |
| The overall ornamental appearance of the individual light element. | The individual light elements on the Accused Light Fixture are alleged to be "substantially the same" in appearance as the design claimed in the '180 Patent. | ¶39 | D'1,004,180 Patent, CLAIM |
- Identified Points of Contention:
- Scope Questions: The central issue for design patent infringement is the "ordinary observer" test. The dispute will likely focus on whether the overall visual impression of the Accused Light Fixture is substantially the same as the patented designs. The defense may point to any perceived differences in proportion, materials, finish, or construction between the patent drawings and the physical product to argue that an ordinary observer would not be deceived.
- Evidentiary Questions: The complaint alleges an instance of actual confusion, where an electrical contractor supposedly contacted Plaintiff RBW to obtain a replacement part for the Accused Light Fixture. (Compl. ¶38). The substantiation of this claim could be a significant piece of evidence regarding the similarity of the designs.
V. Key Claim Terms for Construction
The complaint does not provide a basis for analysis of claim term construction. In design patent litigation, formal claim construction is uncommon, as the claim is generally understood to be coextensive with the visual depiction in the patent's drawings. The claim language, "The ornamental design for a light, as shown and described," does not contain technical terms that, based on the complaint, appear to be a point of dispute. The central analysis is expected to be a direct visual comparison of the accused product to the patent figures.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendants Weinstein and Rushing actively induced infringement by "directing iWorks to copy, manufacture, import, offer to sell, and sell the Accused Light Fixture." (Compl. ¶44). This allegation of direct instruction to a third-party manufacturer forms the basis for a potential induced infringement claim.
- Willful Infringement: The complaint alleges facts that may support a finding of willful infringement. It claims Defendants had pre-suit knowledge of Plaintiff's proprietary design by requesting and receiving a quote for the authentic product in 2017, before allegedly commissioning a copy. (Compl. ¶¶30, 34). It further alleges that infringement continued after Plaintiff provided actual notice of both the '806 Patent (October 5, 2023) and the '180 Patent (January 3, 2024). (Compl. ¶¶46, 48-49).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual comparison: Applying the "ordinary observer" test, is the overall ornamental appearance of the Accused Light Fixture substantially the same as the designs protected by the '806 and '180 Patents? The complaint’s allegation of actual confusion by a third-party contractor may be a critical evidentiary factor in this analysis.
- A second key question will concern willfulness and damages: Do the complaint’s allegations—that Defendants were aware of the proprietary design from a 2017 price quote and continued to use the accused product after receiving two explicit notices of infringement—rise to the level of egregious conduct required for enhanced damages?
- Finally, if infringement is found, a question of liability allocation will arise: How should liability for the infringer's "total profit," available under 35 U.S.C. § 289 for design patent infringement, be apportioned among the various defendants, which include architectural firms, designers, owners, and operators?