Honwell v. Perch Acquisition: 22 Design Patents, Voluntary Dismissal in 124 Days
Honwell Products (HK) Limited sought a declaratory judgment in California’s Northern District against Perch Acquisition Co 12, LLC across a portfolio of 22 US design patents covering lighting and sound devices and their accessories. The action was voluntarily dismissed without prejudice after just 124 days — leaving all patent rights and future claims unresolved on the merits.
A 22-patent design portfolio dispute dropped before any ruling
On 14 August 2024, Honwell Products (HK) Limited — alongside co-plaintiff Dongguan Honwell Electronics Industrial Co., Ltd. — filed a declaratory judgment action in the US District Court for the Northern District of California (Case No. 5:24-cv-05156) against Perch Acquisition Co 12, LLC. The dispute centred on an unusually broad portfolio of 22 US design patents, all directed to the ornamental appearance of lighting and sound devices and their accessories.
The case closed on 16 December 2024 when plaintiffs filed a voluntary dismissal without prejudice pursuant to Federal Rule of Civil Procedure 41(a)(1)(A)(i). This procedural mechanism — available before the defendant serves an answer or a motion for summary judgment — allows a plaintiff to exit litigation unilaterally. Critically, dismissal without prejudice means Honwell retains the right to re-file the same claims, and no finding was made on validity, infringement, or enforceability of any of the 22 design patents.
A resolution in just 124 days, before any substantive court ruling, is consistent with early-stage settlement negotiations, a change in commercial strategy, or a licensing arrangement reached privately. The public record does not confirm which factor drove the dismissal. What remains unclear is whether any agreement between the parties accompanied the dismissal, and whether Perch Acquisition’s design patent rights over these product categories now pose an ongoing risk to Honwell’s US market access.
Filing to Voluntary dismissal in 124 days
124 days — resolved before any substantive merits ruling
Voluntarily dismissed: what Rule 41 without prejudice means for both parties
Rule 41(a)(1)(A)(i): plaintiff’s unilateral exit right
Under Federal Rule of Civil Procedure 41(a)(1)(A)(i), a plaintiff may dismiss an action without a court order — and without the defendant’s consent — before the defendant has served an answer or a motion for summary judgment. This is a purely procedural exit: no judge rules on the merits, and the dismissal does not constitute a judicial finding on any substantive issue, including patent validity or infringement.
No merits adjudicationWithout prejudice: the distinction the public record confirms
A dismissal ‘without prejudice’ explicitly preserves the plaintiff’s right to re-file the same claims in a future action. A dismissal ‘with prejudice’ would bar refiling permanently. The verdict text in this case expressly states ‘without prejudice,’ meaning Honwell retains its legal options. Whether a private agreement or licence shapes what Honwell will actually do next is not determinable from the public record.
Refiling right preservedHonwell exits without conceding — but no declaration obtained
Honwell filed seeking a declaration — most likely of non-infringement or invalidity — against Perch Acquisition’s design patent portfolio. By dismissing voluntarily, Honwell neither won nor lost on the merits. The 22 design patents remain valid and enforceable on their face. If Honwell’s underlying commercial need was to neutralise those patents, that objective was not achieved through this litigation.
No declaration obtainedPerch Acquisition’s design patents remain intact
Perch Acquisition faces no adverse ruling. Its portfolio of 22 design patents covering lighting and sound device aesthetics survives this challenge untested. The dismissal without prejudice does, however, leave open the possibility of renewed litigation if commercial tensions re-emerge. Companies operating in the lighting and sound accessories space should treat this portfolio as live enforcement risk until patents expire or are separately invalidated.
Portfolio enforcement risk persistsFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | Honwell Products (HK) Limited | Individual | Hong Kong-based electronics manufacturer — declaratory judgment plaintiff across 22 design patentsSearch in Eureka ↗ |
| Defendant | Perch Acquisition Co 12, LLC | Company | Perch Acquisition Co 12, LLC — US-based entity asserting design patent rights in lighting and sound devicesSearch in Eureka ↗ |
| Plaintiff counsel | Kevin C. Viau | Attorney | Counsel for Honwell Products (HK) LimitedSearch in Eureka ↗ |
| Plaintiff counsel | Otto Oswald Lee | Attorney | Counsel for Honwell Products (HK) LimitedSearch in Eureka ↗ |
| Plaintiff law firm | Intellectual Property Law Group, LLP | Law Firm | Representing Honwell Products (HK) LimitedSearch in Eureka ↗ |
| Defendant counsel | Terrell Richard Miller | Attorney | Counsel for Perch Acquisition Co 12, LLCSearch in Eureka ↗ |
| Defendant counsel | Tiffany Kim Sung | Attorney | Counsel for Perch Acquisition Co 12, LLCSearch in Eureka ↗ |
| Defendant counsel | Tyler Dever | Attorney | Counsel for Perch Acquisition Co 12, LLCSearch in Eureka ↗ |
| Defendant law firm | Foley & Lardner, LLP | Law Firm | Representing Perch Acquisition Co 12, LLCSearch in Eureka ↗ |
| Presiding judge | Judge Eumi K Lee | Judge | California Northern District CourtSearch in Eureka ↗ |
Official order — verbatim text
The dismissal was filed by plaintiffs invoking Rule 41(a)(1)(A)(i) — the most permissive form of voluntary dismissal, requiring no court approval and no opposing consent. The explicit ‘without prejudice’ language is legally significant: it forecloses any argument that the dismissal operates as a final judgment on the merits. For Perch Acquisition, this means none of its 22 design patents were invalidated, narrowed, or otherwise adjudicated. For Honwell, it means the declaratory relief sought — likely non-infringement or invalidity — was never obtained, and the underlying commercial dispute may remain live.
USD0851789S and 21 co-asserted design patents — lighting and sound device ornamental designs
All 22 patents in this dispute are US design patents — identified by the ‘USD’ prefix — meaning each protects the ornamental, non-functional appearance of a product rather than its technical operation. Design patents are granted under 35 U.S.C. § 171 and typically have a 15-year term from grant. The application numbers (US29/XXXXXX series) confirm these are design applications filed across multiple years, suggesting Perch Acquisition built this portfolio incrementally to cover evolving product aesthetics in the lighting and sound accessories category.
A portfolio of 22 design patents across a single consumer product category is a substantial enforcement asset. Design patent infringement under Egyptian Goddess v. Swisa (Fed. Cir. 2008) is assessed by the ‘ordinary observer’ test — whether an ordinary buyer would be deceived into thinking the accused product is the same as the patented design. This lower threshold, combined with the potential for significant damages or injunctive relief, makes dense design patent portfolios a potent tool against competing importers and OEM suppliers. For companies in the consumer lighting and sound sector — particularly those sourcing from Chinese manufacturers — these patents represent material commercial risk.
Should your product team run an FTO against Perch Acquisition’s design patent portfolio?
If your business manufactures, imports, distributes, or sells lighting devices, sound equipment, or their accessories in the US market, Perch Acquisition’s 22-patent design portfolio warrants direct attention. The fact that a substantial Hong Kong electronics manufacturer filed a declaratory judgment action — rather than waiting to be sued — strongly suggests these patents have been actively asserted or threatened in the market. An FTO analysis scoped to the ornamental features of your specific product lines is the appropriate first step.
PatSnap Eureka’s FTO Search Agent enables R&D and product teams to map their device designs against the full USD portfolio held by Perch Acquisition, identify which specific design patents present the highest similarity risk, and surface prior art that could support invalidity arguments. Given that all 22 patents remain valid and enforceable following this dismissal, proactive clearance analysis is considerably less costly than reactive litigation defence.
Run a freedom-to-operate analysis on USD0851789S to assess your product’s exposure
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What this case signals for the lighting and sound device design IP landscape
A 22-patent declaratory judgment action dropped in four months suggests the design patent landscape in consumer lighting and sound is both contested and unsettled.
Design patent portfolios in consumer electronics are growing enforcement tools
The scale of this dispute — 22 design patents in a single action — reflects an increasingly common strategy of building dense ornamental IP portfolios in consumer hardware categories. Companies importing or selling lighting and sound devices in the US should audit design patent exposure proactively, not reactively.
Voluntary dismissal without prejudice is not resolution — monitor for re-filing
Honwell’s Rule 41 exit preserves all options. Parties in adjacent product categories should watch for re-filed declaratory actions or new infringement suits from Perch Acquisition. The absence of a merits ruling means the commercial tension that triggered this case may resurface in a different legal form.
Limited v Perch — key questions answered
It means Honwell Products filed to end the case under Rule 41(a)(1)(A)(i) before any substantive ruling. ‘Without prejudice’ confirms Honwell may re-file the same declaratory judgment claims in the future. No court found the 22 design patents valid, invalid, infringed, or not infringed. Perch Acquisition’s patent rights are legally unaffected by the dismissal.
Twenty-two US design patents were named in the complaint — all in the USD series, covering ornamental designs for lighting and sound devices and their accessories. Design patents protect the appearance of a product, not its function. The portfolio spans multiple application years, suggesting Perch Acquisition assembled these rights across successive product generations.
Declaratory judgment actions allow a party facing imminent infringement allegations to take the offensive — choosing a preferred venue and framing the legal issues before a suit is filed against them. Honwell’s choice of N.D. California and the breadth of patents challenged suggests it anticipated enforcement action from Perch Acquisition and sought to preempt or neutralise that risk through litigation.
Yes. The dismissal without prejudice does not bar Perch Acquisition from bringing an infringement action against Honwell based on any of the 22 design patents. Equally, Honwell may re-file its declaratory judgment claims. Neither party is precluded from future litigation. The case did not produce any injunction, consent decree, or licensing agreement visible in the public record.
Under Egyptian Goddess v. Swisa (Fed. Cir. 2008), design patent infringement is assessed by whether an ordinary observer, familiar with the prior art, would be deceived into thinking the accused product is the patented design. For lighting and sound devices, this means the overall ornamental impression matters — not functional features. This test is generally considered more plaintiff-friendly than utility patent infringement analysis, which increases the commercial leverage of a large design patent portfolio like Perch Acquisition’s.
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