Delta T, LLC v. Dan's Fan City, Inc.

Filing 194

ORDER: The Report and Recommendation (Doc. # 181) is accepted and adopted in part and rejected in part. Plaintiff Delta T, LLC's Limited Objection to Report and Recommendation (Doc. # 184) is sustained. Defendants Dan's Fan City, In c., and TroposAir, LLC's Objection to Report and Recommendation (Doc. # 183) is overruled. Plaintiff Delta T, LLC's Motion for Summary Judgment (Doc. # 129) is denied. Defendants Dan's Fan City, Inc., and TroposAir, LLC's Motion for Summary Judgment (Doc. # 124) is denied. Signed by Judge Virginia M. Hernandez Covington on 6/4/2021. (AR)

UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
TAMPA DIVISION
DELTA T, LLC d/b/a
BIG ASS FAN COMPANY,
Plaintiff,
v.

Case No. 8:19-cv-1731-VMC-SPF

DAN’S FAN CITY, INC.,
and TROPOSAIR, LLC,
Defendants.
_______________________________/
ORDER
This matter comes before the Court upon consideration of
United States Magistrate Judge Sean P. Flynn’s Report and
Recommendation

(Doc.

#

181),

filed

on

May

10,

2021,

recommending that Plaintiff Delta T, LLC’s Motion for Summary
Judgment (Doc. # 129) be denied and that Defendants Dan’s Fan
City, Inc., and TroposAir, LLC’s Motion for Summary Judgment
(Doc. # 124) be granted in part and denied in part. On May
17, 2021, both Delta T and Defendants filed objections to the
Report and Recommendation. (Doc. ## 183; 184). Delta T and
Defendants responded to the objections on May 25, 2021. (Doc.
## 189; 192).
The Court accepts in part and rejects in part the Report
and Recommendation, sustains Delta T’s objection, overrules

1

Defendants’

objection,

and

denies

both

Delta

T

and

Defendants’ Motions for Summary Judgment.
I.

Legal Standard
After conducting a careful and complete review of the

findings and recommendations, a district judge may accept,
reject

or

modify

recommendation.

28

the

magistrate

U.S.C.

§

judge’s

636(b)(1);

report

and

Williams

v.

Wainwright, 681 F.2d 732 (11th Cir. 1982). If a party files
a timely and specific objection to a finding of fact by the
magistrate judge, the district court must conduct a de novo
review

with

respect

to

that

factual

issue.

Stokes

v.

Singletary, 952 F.2d 1567, 1576 (11th Cir. 1992). The district
judge reviews legal conclusions de novo, even in the absence
of an objection. See Cooper-Houston v. S. Ry. Co., 37 F.3d
603, 604 (11th Cir. 1994); Castro Bobadilla v. Reno, 826 F.
Supp. 1428, 1431-32 (S.D. Fla. 1993), aff’d, 28 F.3d 116 (11th
Cir. 1994).
II.

Report and Recommendation
The Magistrate Judge entered detailed Factual Findings

in the Report and Recommendation. (Doc. # 181 at 2-11). The
Court finds no reason to challenge the accuracy of those

2

facts, nor do the parties appear to object to the Magistrate
Judge’s summary of the facts. (Doc. ## 183; 184).
In the Report and Recommendation, the Magistrate Judge
recommends entering judgment in favor of Defendants as to
Count I and IV, Delta T’s claims for infringement of the ‘757
Patent. (Doc. # 181 at 19-20). The Magistrate Judge recommends
denying judgment in either of the parties’ favor as to Counts
II, III, V, and VI, Delta T’s claims for infringement of the
‘027 and ‘004 Patents. (Id. at 24, 26). The Magistrate Judge
also recommends denying Delta T’s Motion to the extent it
seeks a determination of willful infringement. (Id. at 27).
As to the conclusion that the Vogue fan does not infringe
on the ‘757 Patent, the Magistrate Judge reasoned:
Applying the [Egyptian Goddess, Inc. v. Swisa,
Inc., 543 F.3d 665 (Fed. Cir. 2008),] ordinary
observer test, the Court concludes that a side-byside comparison reveals there is no genuine dispute
that the claimed and accused designs are plainly
dissimilar. No reasonable juror could find that a
consumer might be deceived into purchasing the
Vogue fan believing it to be the patented design.
They simply do not look alike other than they are
both residential fans with three airfoils with
rounded edges and a central hub (the part of the
fan that houses the motor).
(Id. at 16). Because the Magistrate Judge found that the ‘757
Patent and accused Vogue fan are plainly dissimilar such that
“[n]o

reasonable

juror

could
3

fail

to

see

[their]

differences,” the Magistrate Judges recommends denying Delta
T’s Motion for Summary Judgment as to the ‘757 Patent (Counts
I

and

IV),

and

granting

Defendants’

Motion

for

Summary

Judgment as to the ‘757 Patent. (Id. at 19-20). Delta T does
not object to the Magistrate Judge’s recommendation that its
Motion be denied. (Doc. # 184 at 3). But, Delta T does object
to the Magistrate Judge’s recommendation that Defendants’
Motion for Summary Judgment be granted as to Counts I and IV.
(Id.). Defendants do not object to this portion of the Report
and Recommendation. (Doc. # 183).
Regarding Defendants’ alleged infringement of the ‘027
and ‘004 Patents, the Magistrate Judge reasoned that the
patented

designs

and

accused

Vogue fan

“are not

plainly

dissimilar” and that “reasonable jurors could disagree as to
how an ordinary observer would perceive the . . . designs
overall.” (Doc. # 181 at 20, 24-26). The Magistrate Judge
determined that “an ordinary observer’s perception[s] of the
overall designs [of the ‘027 and ‘004 Patents are] question[s]
of fact for the jury.” (Id. at 23, 26). Thus, the Magistrate
Judge recommends denying both parties’ Motions as to Counts
II, III, V, and VI. (Id. at 2). Defendants object to this
aspect of the Report and Recommendation, arguing that they

4

are entitled to judgment in their favor as to Delta T’s claims
for infringement of the ‘027 and ‘004 Patents. (Doc. # 183 at
1-2). Delta T does not object to this portion of the Report
and Recommendation. (Doc. # 184 at 3).
Finally, the Magistrate Judge recommends that Delta T’s
Motion be denied to the extent it seeks a judgment that
Defendants willfully infringed on its patents. (Doc. # 181 at
26-27). Neither party appears to object to this portion of
the Report and Recommendation. (Doc. # 183; Doc. # 184 at 3).
III.

Analysis
The

Court

will

begin

by

addressing

the

Magistrate

Judge’s recommendations as to the ‘757 Patent, followed by
the ‘027 and ‘004 Patents, and the issue of willfulness.
A.

‘757 Patent

Regarding
disagrees

with

Counts
the

I

and

IV,

Magistrate

the
Judge

Court
that

respectfully
that

“[n]o

reasonable juror could fail to see [the] differences” between
the ‘757 Patent and the accused Vogue fan. (Doc. # 181 at 1920). While the Magistrate Judge’s analysis of the differences
between the ‘757 Patent and Vogue fan is well-taken, the Court
finds that a reasonable juror could conclude that the overall
effect of the ‘757 Patent and Vogue fan are substantially the

5

same. See Richardson v. Stanley Works, Inc., 597 F.3d 1288,
1295

(Fed.

Cir.

2010)

(“In

evaluating

infringement,

we

determine whether ‘the deception that arises is a result of
the similarities in the overall design, not of similarities
in ornamental features in isolation.’” (citation omitted)).
As seen in the side-by-side comparisons of the designs from
five

different

perspectives

below,

the

‘757

Patent

and

accused Vogue fan are both ceiling fans with three sleek,
curved airfoils that appear to protrude widest near the center
of the airfoil. Both designs contain a circular hub. The tip
of each airfoil appears blunt, rather than tapered. And, the
side views of the ‘757 Patent and the accused Vogue fan
feature a single swooped plane with a central hub that is
slightly downward-curved.

6

Drawing all reasonable inferences in Delta T’s favor,
the Court does not find that the noted differences between
the ‘757 Patent and Vogue fan, such as the size of the vent
hole,

the

exact

bulging

of

the

blades,

or

the

precise

protrusion of the hub, are such that no reasonable juror could
find

the

two

designs

substantially

the

same

or

that

no

reasonable juror could deem those differences minor. See
Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233,
1243 (Fed. Cir. 2009) (“The mandated overall comparison is a
comparison

taking

into

account
7

significant

differences

between the two designs, not minor or trivial differences
that necessarily exist between any two designs that are not
exact copies of one another.”); see also MRC Innovations,
Inc. v. Hunter Mfg., LLP, 747 F.3d 1326, 1333 n.1 (Fed. Cir.
2014)

(“[W]e

concluded

that

all of

the accused

products

infringed the asserted design patents despite the fact that
two of the infringing products . . . contained a wider shoe
front with an additional row of holes, and another infringing
product . . . contained square holes on the top of the shoe
rather than round ones.” (citations omitted)).
Because the Court has determined that the ‘757 Patent
and accused fan are not necessarily plainly dissimilar, it
turns to the prior art. See Super-Sparkly Safety Stuff, LLC
v. Skyline USA, Inc., 836 F. App’x 895, 898 (Fed. Cir. 2020)
(“When the designs are not plainly dissimilar, the analysis
will benefit from a comparison of the claimed and accused
designs with the prior art.” (internal quotation marks and
citations

omitted)).

“When

the

differences

between

the

claimed and accused designs are viewed in light of the prior
art, the attention of the hypothetical ordinary observer may
be drawn to those aspects of the claimed design that differ
from the prior art.” Crocs, Inc. v. Int’l Trade Comm’n, 598

8

F.3d 1294, 1303 (Fed. Cir. 2010) (internal quotation marks
and citation omitted). “And when the claimed design is close
to

the

accused

prior

art designs,

design

and

the

small

claimed

differences between
design

are

likely

to

the
be

important to the eye of the hypothetical ordinary observer.”
Lanard Toys Ltd. v. Dolgencorp, LLC, 958 F.3d 1337, 1344 (Fed.
Cir. 2020) (quoting Egyptian Goddess, 543 F.3d at 676).
Here,

for

similar

reasons

noted

in

the

Magistrate

Judge’s analysis of the ‘027 and ‘004 Patents, a reasonable
juror could find that an ordinary observer, familiar with the
prior art, would be deceived into believing that the accused
Vogue fan is the same as the ‘757 Patent. (Doc. # 181 at 2026); see Park B. Smith, Inc. v. CHF Indus., Inc., 811 F. Supp.
2d 766, 779 (S.D.N.Y. 2011) (“Assuming that these examples
are prior art, a review of these images reveals that an
ordinary observer, familiar with these designs, could still
be deceived into believing that the accused product is the
same as the patented design.”).
Accordingly,

the

Court

sustains

Delta

T’s

objection

regarding Counts I and IV and denies both parties’ Motions
for Summary Judgment as to those claims. See Sun-Mate Corp.
v.

Koolatron

Corp.,

No.

CV

10-4735-JST

9

(JCGx),

2011

WL

3322597, at *10 (C.D. Cal. Aug. 1, 2011) (“The Court finds
that there remain genuine issues of material fact as to
whether

under

the

ordinary observer

test

the designs

of

Koolatron’s coolers and Plaintiff’s patents are substantially
the same. Thus, summary judgment is inappropriate.”).
B.

‘027 and ‘004 Patents and Willfulness

The Court next turns to Counts II, III, V, VI, and the
issue of willfulness. Upon due consideration of the record,
including the Magistrate Judge’s Report and Recommendation as
well as Defendants’ objection thereto, the Court overrules
the objection and adopts the Report and Recommendation. The
Court agrees with the Magistrate Judge’s detailed and wellreasoned conclusions of law. The Report and Recommendation
thoughtfully addresses the issues presented, and Defendants’
objection does not provide a basis for rejecting the Report
and Recommendation. Thus, both parties’ Motions are denied as
to Counts II, III, V, and VI, and the Court declines determine
the issue of willfulness at this juncture.
Accordingly, it is now
ORDERED, ADJUDGED, and DECREED:
(1)

The Report and Recommendation (Doc. # 181) is ACCEPTED
and ADOPTED in part and REJECTED in part.

10

(2)

Plaintiff Delta T, LLC’s Limited Objection to Report and
Recommendation (Doc. # 184) is SUSTAINED. Defendants
Dan’s Fan City, Inc., and TroposAir, LLC’s Objection to
Report and Recommendation (Doc. # 183) is OVERRULED.

(3)

Plaintiff Delta T, LLC’s Motion for Summary Judgment
(Doc. # 129) is DENIED.

(4)

Defendants Dan’s Fan City, Inc., and TroposAir, LLC’s
Motion for Summary Judgment (Doc. # 124) is DENIED.
DONE and ORDERED in Chambers in Tampa, Florida, this 4th

day of June, 2021.

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