DCT

2:17-cv-04279

Herman Miller Inc v. Blumenthal Distributing Inc

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:17-cv-04279, W.D. Mich., 03/21/2017
  • Venue Allegations: Venue is alleged to be proper as Defendants have transacted business in the district and it is where Plaintiff Herman Miller is headquartered and the alleged harms are felt.
  • Core Dispute: Plaintiff alleges that Defendants' office chairs infringe four design patents and the associated trade dress for Plaintiff’s iconic "Caper" and "Mirra" chair designs.
  • Technical Context: The dispute is in the field of industrial design for office furniture, where the ornamental appearance of a product can be a significant driver of commercial success and brand identity.
  • Key Procedural History: The complaint alleges that certain Defendants have a history of copying Plaintiff's designs, citing a 2016 jury verdict that found Defendant Office Star had willfully infringed on Plaintiff's rights related to a different chair design. This prior litigation is presented to support allegations of a pattern of knowing infringement.

Case Timeline

Date Event
2000-05-22 Priority Date for ’938 and ’571 Patents
2000-XX-XX Plaintiff's Caper chair introduced
2001-11-06 ’938 Patent Issued
2002-04-16 ’571 Patent Issued
2002-10-15 Priority Date for ’994 and ’792 Patents
2003-XX-XX Plaintiff's Mirra chair introduced
2004-06-08 ’994 Patent Issued
2004-08-24 ’792 Patent Issued
2010-XX-XX Defendants allegedly begin copying Plaintiff's Eames chairs
2016-XX-XX Jury verdict in prior litigation finds willfulness by Defendant Office Star
2017-03-21 Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Design Patent No. D449,938 - "Chair"

  • Patent Identification: U.S. Patent No. D449,938, titled "Chair," issued November 6, 2001.

The Invention Explained

  • Problem Addressed: The complaint states that Plaintiff sought to develop a "distinctive-looking, inexpensive stacking chair" (Compl. ¶12).
  • The Patented Solution: The '938 Patent claims the ornamental design for a chair as depicted in its figures ('938 Patent, Claim). The design features a contoured backrest with a pattern of circular perforations and an opening at the top, a corresponding perforated seat pan, thin armrests extending from the seat, and a four-legged frame ('938 Patent, Fig. 1). The complaint characterizes the design's core visual elements as a "seat pan coupled with a distinctive bowler-hat-like backrest" (Compl. ¶17).
  • Technical Importance: The resulting "Caper" chair design "became an immediate success" and is described as "ubiquitous in the marketplace," indicating its aesthetic was commercially significant (Compl. ¶12, ¶22).

Key Claims at a Glance

  • The single claim is for "The ornamental design for a chair, as shown" ('938 Patent, Claim).
  • The essential elements are the visual features depicted in the patent's drawings, including the overall shape and configuration of the chair, the specific contours of the backrest and seat, the design of the armrests and legs, and the surface ornamentation of perforations.

U.S. Design Patent No. D455,571 - "Office Chair"

  • Patent Identification: U.S. Patent No. D455,571, titled "Office Chair," issued April 16, 2002. A certificate of correction amended the claim to be for "a chair as shown."

The Invention Explained

  • Problem Addressed: As with the '938 Patent, this patent relates to the creation of the distinctive "Caper" chair design (Compl. ¶12).
  • The Patented Solution: The '571 Patent claims the ornamental design for a chair that is visually almost identical to the design in the '938 Patent, but without the surface perforations on the seat and backrest ('571 Patent, Fig. 1). This patent protects the shape and configuration of the chair design, independent of the perforated surface treatment ('571 Patent, Claim).
  • Technical Importance: This patent provides broader design protection for the successful Caper chair by covering an embodiment with solid surfaces, thereby preventing competitors from avoiding infringement of the '938 Patent simply by omitting the perforations.

Key Claims at a Glance

  • The single claim is for "The ornamental design for a chair, as shown and described" ('571 Patent, Claim).
  • The essential elements are the visual features shown in solid lines in the drawings, which define the shape of the chair, its backrest, seat, and frame. The armrests are shown in broken lines, indicating they are not part of the claimed design in this patent ('571 Patent, Description).

U.S. Design Patent No. D494,792 - "Back for a Seating Structure"

  • Patent Identification: U.S. Patent No. D494,792, titled "Back for a Seating Structure," issued August 24, 2004.

Technology Synopsis

The patent protects the ornamental design for just the backrest component of a chair. The complaint states this design was created as part of a project to be a "lower cost alternative" to the successful Aeron chair while having its own "distinctive design" (Compl. ¶27). The design is described as a "butterfly-shaped backrest whose surface is covered by a large number of elongated perforations" (Compl. ¶32).

Asserted Claims

The single claim for the ornamental design of the chair back.

Accused Features

The backrests of chair models 88-33BB918P, 88-Y22BP91A8, and 88-Y33BP91A8 are accused of infringing the '792 Patent (Compl. ¶88, ¶89, ¶91).

U.S. Design Patent No. D490,994 - "Task Chair"

  • Patent Identification: U.S. Patent No. D490,994, titled "Task Chair," issued June 8, 2004.

Technology Synopsis

This patent protects the ornamental design for the entire "Mirra" task chair, which incorporates the "butterfly-shaped" backrest from the '792 Patent into a complete chair with a specific seat, armrests, and a five-star caster base ('994 Patent, Fig. 1). Like the '792 patent, this design originated from a commission to create a distinctive, lower-cost alternative to another of Plaintiff's products (Compl. ¶27).

Asserted Claims

The single claim for the ornamental design of the task chair.

Accused Features

The overall design of chair models 88-33BB918P, 88-Y22BP91A8, and 88-Y33BP91A8 are accused of infringing the '994 Patent (Compl. ¶99, ¶100, ¶102).

III. The Accused Instrumentality

Product Identification

The complaint identifies two families of accused chairs sold by Defendant Office Star and allegedly manufactured by Defendants King Hong and Jorng Well (Compl. ¶23, ¶38).

  • Caper-style chairs: Models including 8610, 8620, 82710, 86710, STC865, and STC866, among others (Compl. ¶19).
  • Mirra-style chairs: Models 88-33BB918P, 88-Y22BP91A8, and 88-Y33BP91A8 (Compl. ¶34).

Functionality and Market Context

The complaint alleges that the accused products are office chairs that copy the "unique and distinctive" appearance of Herman Miller's Caper and Mirra chairs (Compl. ¶48, ¶93). They are allegedly sold through a "vast network of dealers, distributors and eCommerce retailers" into the same market as Plaintiff's chairs (Compl. ¶23, ¶38). The complaint provides a grid of thirteen accused Caper-style chair models to illustrate their appearance (Compl. p. 7). Images of three accused Mirra-style chair models are also provided (Compl. p. 13).

IV. Analysis of Infringement Allegations

The complaint does not contain or reference a claim chart. The infringement theory is presented through narrative allegations that the accused products are "copies" or "knock-offs" that are visually and aesthetically the same as the patented designs.

For a design patent, the legal test for infringement is whether, in the eye of an ordinary observer, the resemblance between the patented design and the accused design is such as to deceive such an observer into purchasing one supposing it to be the other. The complaint alleges that this standard is met for all asserted patents. For the Caper-style chairs, the complaint alleges infringement of both the '938 Patent (with perforations) and the '571 Patent (solid surfaces) by various accused models, suggesting the core infringing feature is the overall shape and configuration (Compl. ¶45, ¶54). The complaint's visual evidence shows accused chairs that appear to have both perforated and solid backs (Compl. p. 7). For the Mirra-style chairs, the complaint alleges infringement of the '792 Patent for the backrest design and the '994 Patent for the overall chair design (Compl. ¶88, ¶99). The allegation is that Defendants copied the "iconic look" of the Caper and Mirra chairs to capitalize on their market success (Compl. ¶48, ¶93).

  • Identified Points of Contention:
    • Scope Questions: A central question will be the scope of the patented designs in light of the prior art. The court's application of the "ordinary observer" test will require determining the overall visual impression of the patented designs and what aspects are novel and non-obvious.
    • Technical Questions: The analysis will involve a visual comparison of the products. A question for the fact-finder will be whether any minor differences in proportion, curvature, or specific features between the accused chairs and the patent drawings are significant enough to avoid a finding of infringement, or if they are trivial distinctions that do not change the overall visual impression.

V. Key Claim Terms for Construction

In design patent litigation, there are typically no textual claim terms to construe as in utility patent cases. The claim is for the design "as shown" in the drawings. The "construction" is therefore an analysis of what the drawings depict as the protected design.

  • The Term: "the ornamental design for a chair, as shown" (and similar phrasings).
  • Context and Importance: The scope of protection is defined by the visual elements depicted in solid lines within the patent's figures. Practitioners may focus on this issue because the distinction between solid lines (claimed subject matter) and broken lines (unclaimed environment) is dispositive of the claim's scope. For example, the '571 Patent shows armrests in broken lines, explicitly disclaiming them from the scope of that particular patent's protection ('571 Patent, Description).
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A party may argue that the claim protects the overall visual impression or aesthetic essence of the design, and that an accused product with the same overall appearance infringes even if there are minor differences in specific details.
    • Evidence for a Narrower Interpretation: A party may argue that protection is limited to the precise article and its specific ornamental features as shown in the solid lines of the drawings. Any deviation in form, proportion, or ornamentation from what is explicitly illustrated in the patent figures could support an argument of non-infringement.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that the foreign manufacturers (King Hong, Jorng Well) and the sourcing agent (Nova) induced infringement by Office Star. This is based on allegations that they knew of Plaintiff’s patents and supplied the accused chairs to Office Star for importation and sale in the U.S. (Compl. ¶47, ¶56, ¶90, ¶101).
  • Willful Infringement: The complaint alleges willful infringement against all Defendants. The allegations are based on purported actual knowledge of the asserted patents and a "pattern of objective recklessness" (Compl. ¶25, ¶40). A key fact supporting this claim is a 2016 jury verdict that found Office Star and King Hong liable for willful infringement for copying a different Herman Miller chair design (Compl. ¶24, ¶39).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of visual comparison: Will an ordinary observer, after being properly informed of the prior art, find the overall visual appearance of the various accused chair models to be substantially the same as the specific ornamental designs protected by the '938, '571, '792, and '994 patents?
  • A key evidentiary question will concern intent and willfulness: How will the prior litigation and 2016 willfulness verdict against certain Defendants for copying another of Plaintiff's designs affect the analysis of their conduct in this case? This history may be presented as powerful evidence of a deliberate pattern of copying, potentially leading to enhanced damages.
  • Finally, the case presents a question of cumulative intellectual property: The complaint asserts both design patents and trade dress rights in the same chair designs. A question for the court will be how these overlapping rights are analyzed, particularly with respect to the non-functionality requirement for trade dress and its relationship to the ornamental nature of a design patent.