DCT
3:18-cv-05076
Oak Avenue Engineering LLC v. Denver Outfitters Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Oak Avenue Engineering, LLC (Washington)
- Defendant: Denver Outfitters, Inc (Colorado)
- Plaintiff’s Counsel: Kolisch Hartwell, P.C.
- Case Identification: 3:18-cv-05076, W.D. Wash., 01/30/2018
- Venue Allegations: Plaintiff alleges that venue is proper in the Western District of Washington pursuant to 28 U.S.C. § 1391(c).
- Core Dispute: Plaintiff seeks a declaratory judgment that its vehicle-mounted fishing rod storage products do not infringe Defendant’s design patent, and further alleges the patent is invalid and unenforceable due to functionality and anticipation by prior art.
- Technical Context: The technology concerns the ornamental design of vehicle-mounted carriers used to transport and protect fishing rods and reels.
- Key Procedural History: The action was precipitated by a demand letter sent by Defendant’s counsel on January 8, 2018, alleging that Plaintiff’s products infringe the patent-in-suit. The complaint also alleges that Defendant’s assertion of infringement was made in bad faith and notes that Plaintiff has filed its own provisional patent application for its storage systems.
Case Timeline
| Date | Event |
|---|---|
| 2010-08-10 | ’446 Design Patent Priority Date (Filing Date) |
| 2012-02-07 | ’446 Design Patent Issue Date |
| 2017-10-01 | Plaintiff filed a provisional patent application (approximate date) |
| 2018-01-08 | Defendant’s counsel sent infringement demand letter to Plaintiff |
| 2018-01-30 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D653,446 - "Fishing Rod Storage Device"
The Invention Explained
- Problem Addressed: Design patents do not contain a background section describing a technical problem; they protect the novel, ornamental, and non-obvious appearance of an article of manufacture ('446 Patent, Claim). The patent is directed to providing a specific ornamental design for a fishing rod storage device.
- The Patented Solution: The patent claims the ornamental design as depicted in its figures ('446 Patent, Claim). The visual appearance is characterized by an elongated body composed of three distinct and physically separated cylindrical tubes, which connect to a larger, flared housing at one end designed to accommodate a fishing reel ('446 Patent, Figs. 1, 3, 7). The complaint emphasizes this multi-tube construction as a key feature of the claimed design (Compl. ¶19).
- Technical Importance: The design provides a specific aesthetic for vehicle-mounted fishing rod carriers, a product category where both function and appearance can be market differentiators.
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is for: "The ornamental design for a fishing rod storage device, as shown and described."
- The essential ornamental elements comprising the design include:
- An elongated body.
- The body being composed of multiple, parallel, and physically separate tubes.
- A flared housing at one end of the body, shaped to accommodate a fishing reel.
III. The Accused Instrumentality
Product Identification
- The "Olympian" and "CRC System" vehicle-mounted fishing rod storage devices, sold by Plaintiff under the brand name "Trxstle" (Compl. ¶10, ¶12).
Functionality and Market Context
- The accused products are vehicle-mounting systems for storing and securing fishing rods and reels (Compl. ¶9).
- A key functional aspect highlighted by the Plaintiff is a telescoping feature that allows the devices to store rods of different lengths (Compl. ¶9). The Olympian model holds a single rod, while the CRC System holds two (Compl. ¶12).
- The complaint alleges the accused products are visually distinct from the patented design, arguing that the CRC System, for example, features a "contiguous rectangular outer case" instead of separate tubes (Compl. ¶19). The complaint includes a photograph comparing the accused CRC System, which has a solid, non-tubular body, with a figure from the patent. This image shows the accused product with a shoulder strap, suggesting portability is a feature (Compl. p. 4). Another image shows the CRC system mounted on a vehicle roof rack, illustrating its intended use (Compl. p. 5).
IV. Analysis of Infringement Allegations
As this is a complaint for declaratory judgment of non-infringement, the following table summarizes the Plaintiff's allegations regarding the differences between the patented design and the accused products. The standard for design patent infringement is whether an ordinary observer would find the two designs substantially the same, such that the observer would be deceived into purchasing one thinking it was the other.
| Patented Design Feature (per '446 Patent) | Alleged Non-Infringing Feature of Accused Products | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a fishing rod storage device, as shown and described. | The design of Plaintiff's products is "plainly dissimilar" from the claimed design. | ¶17, ¶18 | Claim |
| A body composed of "three distinct and physically separated cylindrical tubes." | The accused CRC System has a "contiguous rectangular outer case." | ¶19 | Figs. 1, 3, 7 |
| The overall ornamental appearance created by the specific combination of shapes and contours shown in the figures. | The only correspondence between the designs is the "purely functional characteristic of a shape that accommodates the shape of a rod and reel." | ¶21 | Figs. 1-8 |
- Identified Points of Contention:
- Overall Visual Impression: The central dispute is whether the overall visual appearance of the accused Trxstle products is "substantially the same" as the patented design in the eyes of an ordinary observer. The complaint uses side-by-side photographic comparisons to argue for dissimilarity (Compl. pp. 4-6). A provided image juxtaposes the accused Olympian system against a patent figure to support this point (Compl. p. 6).
- Functionality vs. Ornamentality: The complaint raises the question of whether the claimed design is dictated by function. It alleges that any similarities are purely functional and therefore outside the scope of design patent protection (Compl. ¶21). This argument, if successful, could defeat the infringement claim and also potentially invalidate the patent.
- Impact of Prior Art: The complaint asserts that an ordinary observer, viewing the designs in light of the prior art, would not find them to be substantially the same (Compl. ¶22). It provides an image from a prior art patent, U.S. Patent 6,760,994, to argue that the claimed design is not novel or non-obvious (Compl. p. 7, ¶23).
V. Key Claim Terms for Construction
In design patent litigation, there are no "terms" to construe in the traditional sense; the claim is defined by the drawings. The analysis focuses on the scope of the claimed design and the importance of its constituent visual features.
- The Feature: The multi-tube body construction.
- Context and Importance: Plaintiff's non-infringement argument hinges on the visual difference between its single-body, rectangular products and the patent's depiction of three separate cylindrical tubes (Compl. ¶19). The court's infringement analysis will likely turn on whether this multi-tube feature is an essential part of the design's overall ornamental impression, or a detail that can be varied without escaping the design's scope.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party arguing for a broader scope might contend that the overall impression is that of an elongated, multi-rod carrier with a flared end, and that the specific use of three separate tubes is just one embodiment of that overall design. The perspective views (Figs. 1, 2) could be argued to convey a holistic shape where the separation between tubes is a secondary detail.
- Evidence for a Narrower Interpretation: The patent drawings consistently and unambiguously depict three separate tubes from all angles, including the top-down (Fig. 3) and bottom (Fig. 7) views. This consistent depiction across all figures provides strong intrinsic evidence that the multi-tube construction is a fundamental, non-trivial element of the claimed ornamental design, supporting a narrower interpretation of the patent's scope.
VI. Other Allegations
- Willful Infringement: This section is not applicable as this is a declaratory judgment action. However, the complaint alleges the inverse: that Defendant engaged in a "bad faith assertion of a U.S. design patent" (Compl. ¶1, ¶25). The complaint alleges this bad faith is evidenced by a demand letter that makes infringement allegations based solely on the product's function and without a competent comparison of the designs (Compl. ¶14, ¶37, ¶39).
VII. Analyst’s Conclusion: Key Questions for the Case
- The Ordinary Observer Test: Will an ordinary observer, viewing the accused Trxstle products and the '446 patented design in the context of the prior art, find their overall ornamental appearances to be substantially the same? This analysis will likely focus on the visual impact of the Trxstle products' single, contiguous housing versus the distinct multi-tube structure shown in the patent.
- Functionality as a Defense: A key question for the court will be whether the similarities between the products are driven by ornamental choices or, as Plaintiff alleges, are dictated by the shared function of holding a fishing rod and reel. A finding that the patented design is primarily functional would undermine both the infringement allegation and the validity of the patent itself.
- Bad Faith Assertion: Does the evidence, particularly the pre-suit demand letter, support Plaintiff's claim that Defendant's infringement allegations were objectively baseless and made in bad faith? This could expose Defendant to liability under Washington state law and potentially lead to an award of attorney's fees under 35 U.S.C. § 285.