Eagle Eyes Traffic Industry USA Holding LLC v. E-Go Bike LLC

Background

Eagle Eyes Traffic Industry USA Holding LLC sued E-Go Bike LLC and others for allegedly infringing U.S. Design Patent No. D790,763 (the D763 Patent) and U.S. Design Patent No. D785,838 (the D838 Patent). The parties disputed the meaning and scope of the patent claims. The court held oral argument on July 13, 2023.

A design patent protects a new, original, and ornamental design for an article of manufacture. The court explained that design-patent claims generally are understood by looking at the drawings, because words may not adequately describe an ornamental design. The court must distinguish ornamental features from features dictated by function, but it should not place undue emphasis on individual features instead of the design as a whole.

D763 Patent

The D763 Patent is titled “Exterior Surface Configuration of a Vehicle Headlight Reflector.” Eagle Eyes proposed a construction covering the design’s visual appearance as a whole, including matter shown in solid lines, while excluding broken-line features described as disclaimed. E-Go Bike proposed a similar construction but also sought to exclude the outer edge and measurements of the headlight and the point at which the reflector connects to the electrical circuit because those features were limited by the original vehicle design.

The court considered prior art, including a patent for the headlamp design of a 2004–2017 Volvo VNX vehicle and another patent application. It found differences in ornamentation between the D763 Patent and those earlier designs, including the shape of the central lid, and concluded that the patented reflector was not a copy of the original equipment manufacturer’s design.

The court concluded that the coupling points were already excluded because the patent used broken lines for those portions. It found ornamental aspects in the central lid, the top and bottom notches, and the number of grooves. Although the central lid served a functional purpose related to light, its exact contours still had ornamental aspects. The court also found no showing that the challenged features represented the best design or that alternative designs would reduce utility.

The court therefore construed the D763 claim as: “The ornamental design for a vehicle headlight reflector, as shown in the solid lines and associated claimed surfaces of Figures 1-5 and described in the specification of the D763 patent. The broken lines in Figures 1-5 form no part of the claimed design.”

D838 Patent

The D838 Patent is titled “Vehicle Headlight.” Eagle Eyes proposed a construction covering the headlight’s visual appearance as a whole while excluding certain features, and E-Go Bike proposed excluding the outer edge and electrical-coupling point as features limited by the original vehicle design.

Eagle Eyes conceded that three categories should be excluded: the exterior parameter of the headlight design, the exterior surface shape of the headlight lens, and the arrangement of the reflectors relative to one another and to the headlight’s general layout. The court agreed, reasoning that the patent covered a replacement headlamp whose exterior parameters and reflector locations necessarily had to match the original design.

E-Go Bike also argued that the shapes of the top, inner bottom, and outer bottom lights were entirely functional. The court declined to eliminate those structural elements completely, explaining that a feature may serve a functional purpose while still having ornamental aspects. The court found support for ornamentality because some of those shapes differed from the prior-art design. It reached the same conclusion about the bridge dividing the top and bottom lights, noting that its claimed function was unclear and that its shape differed from the prior art.

The court therefore construed the D838 claim as: “The ornamental design for a vehicle headlight, as shown in the solid lines and associated claimed surfaces of Figures 1-4 and described in the specification of the D838 patent,” excluding the exterior parameter of the headlight design, the exterior surface shape of the headlight lens, and the arrangement of the reflectors relative to one another and to the general layout. The broken lines in Figures 1–4 form no part of the claimed design.

Disposition

The court construed the claims of the D763 and D838 Patents as stated in the order. It ordered the parties to submit proposed jury instructions consistent with those constructions within 14 days. The court did not decide the factual question of infringement. The judge’s name is not readable in the supplied opinion text.