Opinion
CASE NO. 2:21-cv-00581
2022-11-21
MCP IP, LLC, Plaintiff, v. .30-06 OUTDOORS, LLC and Daibow Inc., Defendants.
Jeremy Young, Roetzel & Andress LPA, Columbus, OH, Christopher W. Tackett, Bailey Cavalieri LLC, Columbus, OH, Kadie M. Jelenchick, Pro Hac Vice, Michelle A. Moran, Pro Hac Vice, Foley & Lardner LLP, Milwaukee, WI, for Plaintiff.
Jeremy Young, Roetzel & Andress LPA, Columbus, OH, Christopher W. Tackett, Bailey Cavalieri LLC, Columbus, OH, Kadie M. Jelenchick, Pro Hac Vice, Michelle A. Moran, Pro Hac Vice, Foley & Lardner LLP, Milwaukee, WI, for Plaintiff. ORDER ALGENON L. MARBLEY, CHIEF UNITED STATES DISTRICT JUDGE
I. INTRODUCTION
This matter comes before the Court on Plaintiff MCP IP, LLC's Motion for Clarification (ECF No. 47) regarding this Court's August 16, 2022 Opinion and Order (ECF No. 42) granting in part and denying in part Plaintiff's Motion for Default Judgment (ECF No. 39). In that Opinion and Order, this Court granted default judgment against Defendants .30-06 Outdoors, LLC and Daibow Inc. on all counts. This Court then indicated that an evidentiary hearing would be scheduled to determine an appropriate damages award for the Defendants' infringement of two of MCP's patents (the "Asserted Design Patents"). Plaintiff's Motion seeks clarification from this Court confirming the relevant article of manufacture for the two patents upon which damages can be determined at the upcoming evidentiary hearing. This Court GRANTS Plaintiff's Motion and CLARIFIES that the relevant article of manufacture for the '818 patent is the infringing Navi Stabilizer in its entirety, while the '888 patent is limited to the infringing grip design as a component of the Daibow M1/Topoint M1 bows.
This Court uses the term "Asserted Design Patents" to refer to U.S. Design Patent Nos. D884,818 ("the '818 patent") and D639,888 ("the '888 patent").
II. BACKGROUND
On February 9, 2021, Plaintiff MCP IP, LLC ("MCP") filed a lawsuit alleging that Defendants .30-06 Outdoors, LLC and Daibow, Inc. infringed upon several of its patents and trademarks related to archery equipment. (ECF No. 1). MCP asserts ownership of twelve utility patents (the "Asserted Utility Patents") and two design patents (the "Asserted Design Patents"). Further, MCP IP asserts common-law trademark rights in the marks "EHS" and "NANO" (the "Asserted Trademarks"), which are used to identify the source of MCP IP's stabilizer technology on its compound bows. (Id. ¶ 26). According to the Complaint, the EHS and NANO marks have "remained in continuous and widespread use in commerce in the United States since at least as early as November 2, 2017." (Id. ¶¶ 27-28).
In Counts I through XIV of its complaint, MCP alleges Defendants "have imported, offered for sale, sold[,] and continue to import, offer for sale, and sell certain hunting, target, and/or competition bows" that infringe claims of the Asserted Utility Patents and Asserted Design Patents. (Id. ¶¶ 44-144). Defendants' infringing products include the "Daibow Acuity bow" (Counts I-II & XII-XIV), the "Topoint TP640 stabilizer" and "6/9 Navi Carbon stabilizer" (Count III), the "Topoint M1 / Daibow M1 bow" (Counts IV-VI & X-XI), and the "Daibow Trigon bow" (Counts VII-IX). In Counts XV through XVIII of the Complaint, MCP alleges that .30-06 Outdoors "has offered for sale and sold and continues to offer for sale and sell certain hunting, target, and/or competition bow accessories including, without limitation, stabilizers sold under the Navi Stabilizer brand, which infringe and unfairly compete" with the EHS and NANO marks. (Id. ¶¶ 145-178). MCP does not allege any trademark claims against Daibow.
On August 16, 2022, this Court granted default judgment against Defendants on all counts. (EFC No. 42 at 22). In its Order, this Court considered damages for patent infringement as governed by 35 U.S.C. § 284, applying the applicable two-step test devised by the Supreme Court: "First, identify the 'article of manufacture' to which the infringed design has been applied. Second, calculate the infringer's total profit made on that article of manufacture." ((Id. at 16-17) (citing Samsung Elecs. Co. v. Apple Inc., 580 U.S. 53, 137 S. Ct. 429, 434, 196 L.Ed.2d 363 (2016)). This Court determined that the record contained a lack of supporting documentation to permit the Court to assess damages with sufficient certainty thus requiring a damages hearing to be held. (See id. at 17). On September 12, 2022, Plaintiff filed a Motion to Clarify asking that this Court determine the relevant article of manufacture, asserting that the determination is a necessary precondition to holding the damages hearing. (ECF No. 47).
III. LAW AND ANALYSIS
Under 35 U.S.C. § 289, an infringer may be held liable for all the profit she made from "the manufacture or sale of the article of manufacture to which the patented design or colorable imitation has been applied." Samsung Elecs. Co., 137 S. Ct. at 434 (internal quotation marks omitted) (alterations adopted). The term "article of manufacture" can constitute either the finished product sold to consumers or a component of that product. Id. Courts have developed a four-factor test to determine the article of manufacture:
(1) the scope of the design claimed in the patent, including the drawing and written description; (2) the relative prominence of the design within the product as a whole; (3) whether the design is conceptually distinct from the product as a whole; and (4) the physical relationship between the patented design and the rest of the product.Apple Inc. v. Samsung Elecs. Co., No. 11-CV-01846-LHK, 2017 WL 4776443, at *19 (N.D. Cal. Oct. 22, 2017) (remanded from Samsung Elecs. Co. v. Apple Inc., 580 U.S. 53, 137 S. Ct. 429, 434, 196 L.Ed.2d 363 (2016)); Red Carpet Studios v. Midwest Trading Grp., Inc., No. 1:12CV501, 2021 WL 1172218, at *4 (S.D. Ohio Mar. 29, 2021) (citing Nordock, Inc. v. Sys., Inc., No. 11-CV-118, 2017 WL 5633114, at *4 (E.D. Wis. Nov. 21, 2017)).
The plaintiff bears the burden of persuasion with regard to identifying the article of manufacture and proving the infringer's total profit resulting from that article of manufacture. Apple Inc., 2017 WL 4776443, at *12. Once the plaintiff has met its initial burden, "if the defendant contends that the article of manufacture is something else, the defendant has the burden to produce evidence as to this alternative article of manufacture." Red Carpet Studios, 2021 WL 1172218, at *4. The defendant also carries the burden of producing evidence showing that a deduction from the total profit identified by the plaintiff is warranted. Id.
In its Motion for Clarification, MCP contends that the relevant article of manufacture is the entire product for both Asserted Design Patents, a finding that would entitle MCP to obtain full profits from Defendants' sales. See Samsung Elecs. Co., 137 S. Ct. at 434. This Court considers each patent in turn.
A. The '818 Patent
MCP first argues that Defendant .30-06, LLC infringed its '818 patent (entitled the "Archery Bow Stabilizer") such that Defendant's infringing Navi Stabilizer in its entirety is the relevant article of manufacture. As to the first factor of the Samsung test, MCP explains that the figures that it attached to its complaint define the scope of the ornamental designs claimed in the '818 patent. The record contains a visual illustration of the '818 patent and the infringing work which this Court shares for reference:
U.S. Patent No. D884,818
| Claim | Exemplary Stabilizer(Topoint TP640) |
|---|---|
| FIG. 1Image materials not available for display. | Image materials not available for display. |
Image materials not available for display. (ECF No. 1-37).
This Court does not note any apparent difference between the two works such that there is any appreciable distinction between them at all. The design is, in other words, synonymous with the infringing work. As such, the patented work and the infringing work are effectively one and the same giving rise to this Court's conclusion that the relevant "article of manufacture" is the Navi Stabilizer in its entirety. MCP is thus entitled to Defendants' total profits resulting from the Navi Stabilizer as a finished product. See Apple Inc., 2017 WL 4776443, at *12.
B. The '888 Patent
MCP next argues that Defendants collectively infringed its '888 patent (entitled the "Archery Bow Grip") such that Defendants' infringing Daibow M1/Topoint M1 bow in its entirety is the relevant article of manufacture. Although MCP concedes the third factor of the Samsung test, MCP argues that the first, second, and fourth factors weigh in favor of this Court finding that the relevant article of manufacture is the Daibow/Topoint M1 bow in its entirety.
As to the first factor of the Samsung test, Apple Inc., 2017 WL 4776443, at *19, MCP explains that the figures that it attached to its complaint indicate the scope of the designs claimed in the patent. The record contains a visual illustration of the '888 patent and the infringing work which this Court shares for reference:
U.S. Patent No. D639,888
| Claim | Exemplary Bow Grip(Topoint M1/Daibow M1 Grip) |
|---|---|
| Image materials not available for display.FIG.1 | Image materials not available for display. |
Image materials not available for display. (ECF No. 47 at 7). As to the second factor, MCP argues that the '888 patent is "slightly prominent" as used in the infringing product and is key to handling and operating the bow effectively as indicated here:
Image materials not available for display.
(Brace Condition)
Image materials not available for display.
(Drawn Condition)
(Id.). As to the fourth factor, MCP contends that the physical relationship of '888 patent grip design to the rest of the bow is a strong one given that "an absence of a grip . . . would render the M1 bow incapable of being drawn." (Id.). To this point, MCP offers further argument that the '888 patent grip is integrated into the bow and that there is no evidence that the infringing grip design ever was or could be sold separately from the Daibow M1/Topoint M1 bow.
Using the Samsung four-factor test, this Court concludes that the relevant article of manufacture for the '888 patent is limited to the patented grip design as a component of the Daibow M1/Topoint M1 bow. In its consideration, this Court is persuaded by the analyses of two other courts to have articulated and applied the Samsung test to determine relevant articles of manufacture: Red Carpet Studios v. Midwest Trading Grp., Inc., No. 1:12CV501, 2021 WL 1172218 (S.D. Ohio Mar. 29, 2021), and Nordock, Inc. v. Sys., Inc., No. 11-CV-118, 2017 WL 5633114 (E.D. Wis. Nov. 21, 2017).
In Red Carpet Studios, Plaintiff Red Carpet Studios argued that the relevant article of manufacture was the entire Solar Spinner product sold by the defendants. 2021 WL 1172218, at *1. The defendants countered that the relevant article of manufacture was instead limited to the decorative outer blades present on the Solar Spinner. Id. The Red Carpet Studios court found that the application of the Samsung four-factor test supported the plaintiff. As to the first factor, the court held that the patented design indicated that it was intended to be applied to a kinetic sculpture of the type sold by the defendants as the Solar Spinner product. Id. at *5. As to the second factor, the court found that, although another feature was also prominent on the marketing and packaging of the Solar Spinner, "it is the four-blade sculpture [at issue] which predominates when viewing the Solar Spinner in its entirety." Id. As to the third factor, the court found in the plaintiff's favor because, irrespective of how the product was primarily packaged, marketed, or sold, "[i]f the four-blade design was divorced from the Solar Spinner product, the product would lose all of its sculptural qualities, would no longer 'spin' and would only be a spherical ornament lit by the sun." Id. As to the fourth and final factor, the court was convinced by its finding that, even though the patented ornament can be separated from the product as a whole, the ornament is not sold separately. Id. The plaintiff also showed that "the name of the product emphasizes its "spinning" nature and prior to assembly, there is no capability of spinning because it is the blades that create the capability for spinning." Id. Accordingly, the court there found, in the plaintiff's favor, that the article of manufacture was the Solar Spinner in its entirety. Id.
In Nordock, Plaintiff Nordock, Inc. sued Defendant Systems, Inc. for infringement of its design patent regarding a "lip and hinge plate for a dock level" via the defendant's use of the design in its dock leveler. 2017 WL 5633114, at *1. Plaintiff argued that the relevant article of manufacture for the purposes of assessing damages was the defendant's entire dock leveler. Id. The Nordock court, however, denied the plaintiff summary judgment. Contrary to the plaintiff's argument, the Nordock court found that the patented work could be found conceptually distinct from the final product although the components were inseparable due to being welded together. Id. at *7. Although all components of the dock leveler were required to function together for it to perform its intended purpose, the Nordock court found that "that does not mean that it is not a system of conceptually distinct components in much the same way the components of an automobile are distinct but must work together to achieve the object's intended function." Id. Providing another analogy, the Nordock court reasoned that, even if the patented work were distinctive, this alone did not make the entire dock level the relevant article of manufacture just as, in an example case, "the distinct design of a piano case did not make the entire piano the article of manufacture." Id. at *8 (citing Bush & Lane Piano Co. v. Becker Bros., 222 F. 902, 904 (2d Cir. 1915)). Ultimately, the Nordock court denied the plaintiff's motion for summary judgment as to the article of manufacture because it failed to provide record evidence as to the Defendant's manufacturing methods used for its dock leveler. Id.
Against the backdrop of Red Carpet Studios and Nordock, this Court must determine the relevant article of manufacture in the instant case using the four-factor test articulated in Apple Inc., 2017 WL 4776443, at *19. The first Samsung factor is satisfied by MCP's presentation of the scope of the design claimed in the '888 patent. (See ECF No. 1-28). As to the second factor, this Court finds MCP's acknowledgement even that the '888 patent grip design is only "slightly prominent" to be unduly generous. In its analysis of the second prong of the Samsung test, the court in Red Carpet Studios considered whether "the patented design . . . dominates the . . . product" or was otherwise prominent. 2021 WL 1172218, at *5. This Court finds that MCP has presented no evidence showing that the '888 patent grip design is in any way distinctive, prominent, or otherwise necessary for the effective use of the Daibow/Topoint M1 bows. To the contrary, in this Court's view, the structure of the '888 patent grip itself (See ECF No. 1-28) and the depiction of a sample bow entered into the record (See ECF No. 1-5) suggest that the metal structure of the bow is placed into the grip. As such, the bow appears to be functional even in the absence of the '888 patent grip design. As such, the second favor weighs against MCP.
MCP does not argue that the third Samsung factor weighs in its favor. As such, given the plaintiff's burden of persuasion with regard to identifying the article of manufacture, Apple Inc., 2017 WL 4776443, at *12, this Court considers MCP to have conceded this point. Here, there is no indication that the bow would lose its key functionality in the absence of MCP's '888 patent grip design; in this way, it is quite unlike the four-blade design in Red Carpet Studios the absence of which the infringing Solar Spinner product would have "los[t] all of its sculptural qualities, would no longer 'spin' and would only be a spherical ornament lit by the sun." Indeed, MCP does not provide evidence tending to show that the patented grip design is necessary or material to the functionality or concept of the Daibow/Topoint M1 bow at all. As such, the third favor weighs against MCP.
As to the fourth factor, this Court finds that the physical relationship between the '888 patent grip design and the Daibow M1/Topoint M1 bows are limited and thus weighs against MCP. Part of this analysis includes considerations of "whether the design pertains to a component that a user or seller can physically separate from the product as a whole, and whether the design is embodied in a component that is manufactured separately from the rest of the product, or if the component can be sold separately." Apple Inc., 2017 WL 4776443, at *19. Several of these considerations weigh in MCP's favor: there is no evidence that the infringing grip design was ever sold separately from the bow, and the infringing grip design is likely an important component of the product's marketability. While the infringing grip design does not appear to be necessary for the operation of the Daibow M1/Topoint M1 bow based on MCP's evidence, its absence would undoubtedly interfere with the usefulness of the final product. This Court nonetheless finds it problematic that MCP has not submitted any evidence demonstrating how the Daibow M1/Topoint bow as finished products are manufactured. See Nordock, 2017 WL 5633114, at *6 ("In identifying an 'article of manufacture,' it would seem obvious that a significant factor would be how the product is manufactured.").
Relatedly, although MCP merely argues that the infringing grip component is not sold separately, it does not present evidence negating the Court's intimation that "the component can be sold separately." Apple Inc., 2017 WL 4776443, at *19. The '888 patent grip design appears relevant only to the infringing grip itself and lacks any discernible relevance to any other functional component of the bow; this consideration also counts against any finding that the Daibow M1/Topoint M1 bow in its entirety is the relevant article of manufacture. See, e.g., Nordock, 2017 WL 5633114, at *8 (denying summary judgment to Plaintiff on the basis of the relevant article of manufacture based in part on the finding that "the design element [was] relevant only to the lip and hinge plate; it ha[d] no relevance to any other component of the dock leveler."). As such, this Court cannot conclude that MCP has met its burden of demonstrating that the infringing grip design is physically inseparable from the final product or that it is manufactured separately from the rest of the final product. After all, "[a] finished product might appear to be a unitary structure, but if considered in light of how it was manufactured it might be recognizable as a collection of components." Nordock, Inc., 2017 WL 5633114, at *6. This Court thus concludes that this fourth factor favors Plaintiff.
Accordingly, this Court concludes that the article of manufacture for the '888 patent grip consists solely of the infringing grip design as sold by Defendants.
IV. CONCLUSION
Based on the foregoing, this Court GRANTS Plaintiff's Motion and CLARIFIES that the relevant article of manufacture for the '818 patent is the Navi Stabilizer as a whole, while the '888 patent is limited to the infringing grip design as a component of the Daibow M1/Topoint M1 bows. Having made this determination, this Court will schedule an evidentiary hearing to determine an appropriate damages award for the Defendants' infringement of two of MCP's patents.
IT IS SO ORDERED.