DCT
2:20-cv-11177
Mentor Group LLC v. Hogue Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Mentor Group, LLC (Oregon) and Benchmade Knife Co., Inc. (Oregon)
- Defendant: Hogue, Inc. (Nevada) and Hogue Tool & Machine, Inc. (California)
- Plaintiff’s Counsel: Lewis Roca Rothgerber Christie LLP; Schwabe, Williamson & Wyatt, P.C.
- Case Identification: 2:20-cv-11177, C.D. Cal., 11/23/2021
- Venue Allegations: Venue is alleged to be proper because Defendant Hogue Tool & Machine, Inc. is a California corporation residing in the district, and Defendant Hogue, Inc. allegedly has a regular and established place of business and sells the accused products within the district.
- Core Dispute: Plaintiffs allege that the ornamental design of Defendants’ "TRAUMA" line of knives infringes a design patent covering the appearance of a knife blade.
- Technical Context: The dispute is in the market for high-quality folding knives, where unique blade shapes can be a significant brand differentiator and element of product identity.
- Key Procedural History: Plaintiff Mentor Group, LLC, the patent owner, has granted an exclusive license to co-Plaintiff Benchmade Knife Co., Inc. The complaint alleges that Plaintiffs provided Defendants with notice of the patent and the alleged infringement on July 21, 2020, prior to filing the initial complaint.
Case Timeline
| Date | Event |
|---|---|
| 2011-06-20 | Earliest Priority Date (U.S. App. No. 29/394,650) |
| 2013-07-30 | U.S. Design Patent No. D686,900 Issues |
| 2020-07-21 | Plaintiffs allegedly notify Defendants of infringement |
| 2021-11-23 | Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D686,900 - "Knife Blade"
The Invention Explained
- Problem Addressed: In the competitive knife market, creating a visually distinctive and recognizable product is a key goal. The complaint asserts that Plaintiffs are industry leaders whose products are a "benchmark for innovation and quality" (Compl. ¶¶ 14-15).
- The Patented Solution: The D'900 Patent protects the specific ornamental, non-functional appearance of a knife blade. The design is defined by its visual characteristics as depicted in the patent's figures, including the blade's overall profile, the specific curvature of the cutting edge, a distinctive angled swedge on the spine near the tip, and the shape of the tang. (’900 Patent, Figs. 1, 3). The patent specification explicitly states that elements shown in broken lines, such as the pivot hole, "are for illustrative purposes only, and form no part of the claimed design," thereby defining the protected design by the solid lines only. (’900 Patent, Description).
- Technical Importance: The patented design provides a unique aesthetic that contributes to the overall appearance and brand identity of the knife on which it is used. (Compl. ¶¶ 10, 14).
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a knife blade, as shown and described." (’900 Patent, Claim).
- The scope of this claim is defined by the visual features depicted in the patent's drawings. The essential ornamental elements include:
- The overall profile and proportions of the blade.
- The specific curvature of the primary cutting edge.
- The angled, unsharpened swedge along the spine.
- The contours of the blade, as indicated by surface shading.
- The specific shape of the blade's tang (the portion that connects to a handle).
III. The Accused Instrumentality
Product Identification
A line of knives sold by Defendants under the "TRAUMA" mark, including models with both plain and partially-serrated blades (e.g., SKUs 34760 and 34764). (Compl. ¶¶ 21-22).
Functionality and Market Context
The complaint identifies the accused instrumentalities as knives manufactured, marketed, and sold by Defendants. (Compl. ¶¶ 21, 23). The complaint alleges infringement by the final products sold to consumers, as well as by non-serrated blades that are allegedly "identical" to the patented design and created as an "intermediate step" in the manufacturing process for the partially-serrated versions. (Compl. ¶ 22). The complaint includes a side-by-side visual comparison of an accused TRAUMA knife and Figure 3 of the patent. (Compl. ¶ 21). This image shows a photograph of the accused TRAUMA knife blade positioned directly adjacent to the drawing from Figure 3 of the D'900 Patent, facilitating a direct visual comparison of their profiles. (Compl. ¶ 21).
IV. Analysis of Infringement Allegations
D686,900 Infringement Allegations
The central allegation is that the design of the accused knives is "so close[]" to the patented design that it would deceive an ordinary observer. (Compl. ¶ 29).
| Patented Design Feature (from Figures) | Alleged Infringing Feature | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental profile and shape of the knife blade as shown in solid lines. | The accused TRAUMA knife blade is alleged to have a nearly identical overall profile and shape, as depicted in a side-by-side comparison image. | ¶21 | Fig. 3 |
| The distinctive angled swedge on the spine of the blade. | The accused blade is alleged to feature a visually identical angled swedge on its spine. | ¶21 | Fig. 1 |
| The specific curvature of the primary cutting edge. | The accused blade's cutting edge is alleged to follow the same curvature as the patented design, with some models adding serrations to this edge. | ¶¶21-22 | Fig. 3 |
| The shape of the tang portion of the blade. | The tang of the accused blade is alleged to conform to the shape shown in the patent's solid-line drawings. | ¶21 | Fig. 3 |
Identified Points of Contention
- Scope Questions: The complaint alleges that knife models with a partially-serrated edge infringe because their "overall appearance... is substantially the same" as the patented design. (Compl. ¶ 22). This raises the question of whether the addition of serrations creates a sufficiently different visual impression to an ordinary observer to avoid infringement.
- Factual Questions: The complaint alleges infringement based on the manufacture of non-serrated blades as an "intermediate step" before serrations are applied. (Compl. ¶ 22). This presents a factual question as to whether Defendants' manufacturing process actually involves the creation of a non-serrated blade that is identical to the patented design, and a legal question of whether such an intermediate, unsold component constitutes an infringing "use" under 35 U.S.C. § 271.
V. Key Claim Terms for Construction
In design patent cases, there are typically no terms to construe in the manner of utility patents. The "claim" is the visual design itself. However, analysis of the claim's scope will center on the interpretation of the patent's drawings.
- The "Term": The scope of "the ornamental design... as shown and described."
- Context and Importance: The central issue in any design patent case is the scope of the protected design. Practitioners will focus on which visual elements are part of the claimed design and which are not. The patent's explicit disclaimer regarding broken lines will be a critical point of analysis.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specification explicitly states, "The broken lines shown in the Figures are for illustrative purposes only, and form no part of the claimed design." (’900 Patent, Description). This language suggests that the design is not limited by the specific features shown in broken lines (e.g., the pivot hole), potentially allowing the design to read on blades that use different attachment mechanisms but have the same claimed blade shape.
- Evidence for a Narrower Interpretation: The solid lines in the figures are precise and detailed, defining a very specific blade profile, swedge angle, and set of contours. (’900 Patent, Figs. 1-8). An argument for a narrower construction would emphasize that any significant deviation from these precise, solid-line features would create a different overall visual impression.
VI. Other Allegations
Willful Infringement
The complaint alleges that Defendants' infringement has been and continues to be willful. (Compl. ¶ 33). This allegation is based on Plaintiffs having "promptly notified Defendants of the patent and the infringement on July 21, 2020," including providing an image of the accused product. (Compl. ¶ 24). The complaint includes a photograph of the full accused knife, which was allegedly part of the pre-suit notice provided to Defendants. (Compl. ¶ 24). Plaintiffs allege that Defendants continued to sell the accused knives after receiving this notice. (Compl. ¶ 25).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central question for the court will be one of ornamental similarity: in applying the "ordinary observer" test, does the addition of serrations to the cutting edge on certain accused models alter the overall visual impression of the knife blade sufficiently to distinguish it from the patented design?
- A key evidentiary and legal issue will be the temporal scope of infringement: can infringement liability attach to non-serrated blades that allegedly exist only as an intermediate product during manufacturing, and what evidence will be required to prove both their existence and their "use" under 35 U.S.C. § 271?
- A third question will concern willfulness: did the pre-suit notice provided by Plaintiffs give Defendants actual knowledge of infringement such that their continued sales of the TRAUMA knives constituted "egregious" conduct sufficient to support an enhancement of damages?