RBW Studio LLC v. Weinstein AU PLLC
2:24-cv-00763
W.D. Wash.Dec 17, 2024Background
- RBW Studio, LLC owns patents for the "Cinema" chandelier, a triple-tiered light fixture with spherical bulbs.
- Defendants redeveloped the State Hotel and, instead of purchasing RBW's chandelier, installed a replica (the "Accused Light Fixture").
- RBW alleged defendants infringed its design patents and engaged in unfair competition under the Washington Consumer Protection Act (WCPA) by installing and visually promoting the replica.
- Rushing, an interior design firm, used photos that included the Accused Light Fixture to promote its services but did not manufacture or sell the fixture.
- After reviewing the pleadings, the court granted the defendant's motion for judgment on the pleadings, dismissing RBW's claims without prejudice and granting leave to amend.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Rushing's use of photos with the replica is patent infringement | Rushing’s promotion using the Accused Light Fixture is an infringing "use" or "offer to sell" | Mere display in promotional materials is not "use" or "offer to sell" under patent law | Dismissed: No adequate allegation of "use" or "offer to sell" by Rushing |
| Whether WCPA unfair competition claim is preempted by federal patent law | Defendants' copying and conduct are "unfair" or "deceptive" under state law | WCPA claim merely restates the patent claim and is preempted | Dismissed: WCPA claim preempted unless properly pleads independent unfairness |
| Whether conclusory allegations of bad faith/misappropriation support a WCPA claim | Defendants acted in "bad faith" and “misappropriated” RBW info | Allegations are conclusory and fail to plead necessary elements | Dismissed: Conclusory allegations insufficient; leave to amend granted |
| Whether leave to amend should be granted | New facts could bolster allegations about misuse of confidential info | Court should not consider new facts outside the pleadings | Leave to amend granted (for both claims) |
Key Cases Cited
- Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 (state law prohibiting reverse engineering preempted by federal patent law)
- Aronson v. Quick Point Pencil Co., 440 U.S. 257 (federal patent law balances competition and patent protection)
- Mars Inc. v. Kabushiki-Kaisha Nippon Conlux, 24 F.3d 1368 (state law claims must require proof of elements beyond those needed for patent law to avoid preemption)
- Hangman Ridge Training Stables, Inc. v. Safeco Title Ins. Co., 719 P.2d 531 (Washington Consumer Protection Act elements)