DCT
1:19-cv-02979
Karcher North America Inc v. FNA Group Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Kärcher North America, Inc. ("KNA") (Delaware)
- Defendant: FNA Group, Inc. ("FNA") (Illinois)
- Plaintiff’s Counsel: Sheridan Ross P.C.; Husch Blackwell LLP
- Case Identification: 1:19-cv-02979, D. Colo., 10/18/2019
- Venue Allegations: Plaintiff KNA asserts that venue is proper in the District of Colorado because a substantial part of the events occurred there, as KNA's principal place of business and corporate headquarters are located in Denver, Colorado.
- Core Dispute: Plaintiff KNA seeks a declaratory judgment that its pressure washer pumps do not infringe Defendant FNA's design patent and that the patent is invalid.
- Technical Context: The dispute centers on the ornamental design of high-pressure pumps, a key component in the competitive market for gas-powered pressure washers sold to residential and commercial customers.
- Key Procedural History: This declaratory judgment action follows pre-suit communications initiated by FNA's CEO in March 2018, asserting patent rights over pumps KNA had purchased from a third-party supplier, a former partner of FNA. The complaint alleges that FNA's recent threats to sue for patent infringement are a tactical maneuver related to separate, ongoing litigation where KNA has sued a former employee who is now employed by FNA.
Case Timeline
| Date | Event |
|---|---|
| 2012-10-09 | ’762 Patent Priority Date |
| 2014-02-18 | ’762 Patent Issue Date |
| 2018 | KNA purchases JLPEM Pumps |
| 2018-03-21 | FNA CEO contacts KNA, alleging patent coverage of the pumps |
| 2018-08 | Patent infringement discussions between the parties cease |
| 2019-04 | Former KNA employee Eric Loucks begins working for FNA |
| 2019-10-18 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D699,762 - "Pump"
Issued February 18, 2014
The Invention Explained
- Problem Addressed: Design patents do not solve technical problems; they protect the novel, non-functional, ornamental appearance of an article of manufacture. The patent does not describe a problem, but instead claims a particular visual design for a pressure washer pump.
- The Patented Solution: The patent claims the specific ornamental design for a pump as depicted in its eight figures (’762 Patent, Claim, FIGS. 1-8). The design is characterized by the overall configuration and combination of its constituent visual features, including the shape of the main body, the arrangement of attached valves and fittings, and surface contours (’762 Patent, FIG. 1). The patent explicitly disclaims portions shown in broken lines, indicating they are not part of the claimed design (’762 Patent, Description, col. 1:65-68).
- Technical Importance: The complaint alleges that FNA's pump designs are "distinctive" and that FNA has patent rights in these designs both in the United States and abroad (Compl. ¶14).
Key Claims at a Glance
- The patent asserts a single claim: "The ornamental design for a pump, as shown and described." (’762 Patent, col. 1:57-58).
III. The Accused Instrumentality
Product Identification
- The complaint identifies two classes of accused products: the "JLPEM Pumps" as originally sourced from a Chinese manufacturer, and the "Modified JLPEM Pumps," which KNA altered before incorporating them into pressure washers sold in the U.S. (Compl. ¶¶ 10, 16, 26).
Functionality and Market Context
- KNA alleges it "materially altered" the appearance of the original JLPEM pumps to make them look "very different" from the design shown in the ’762 Patent (Compl. ¶15). These modifications are described as functional improvements to enhance usability, safety, and durability (Compl. ¶16).
- The modifications include:
- Adding a permanent shroud to protect the user's hand from hot surfaces and protruding components (Compl. ¶17).
- Adding a permanent plastic cover over the unloader valve adjustment screw to prevent user tampering (Compl. ¶18).
- Adding four notches to the pump's attachment flange to act as stress relievers (Compl. ¶19).
- The complaint alleges that some pressure washers containing these "Modified JLPEM Pumps" were sold in the United States (Compl. ¶20).
IV. Analysis of Infringement Allegations
Design patent infringement is determined by the "ordinary observer" test, which asks whether an ordinary observer, familiar with the prior art, would be deceived into believing the accused design is the same as the patented design. The complaint seeks a declaration of non-infringement, arguing that its modifications create a different overall visual impression.
D699,762 Infringement Allegations
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a pump, as shown and described. | Original JLPEM Pumps: KNA acknowledges that after purchasing these pumps, it discovered they "could possibly be implicated" by the ’762 Patent. These pumps were not sold in the U.S. | ¶13 | col. 1:57-58 |
| Modified JLPEM Pumps: KNA alleges these pumps do not infringe because their outward appearance was "materially and permanently changed" to be "very different looking" from the patented design. The changes include adding a safety shroud, an unloader valve cover, and flange notches. | ¶¶13, 15-20 | col. 1:57-58 |
Identified Points of Contention
- Scope Questions: A central question is whether the overall visual impression of the "Modified JLPEM Pump" is "substantially the same" as the design claimed in the ’762 Patent. KNA's position is that the addition of the shroud, valve cover, and notches creates a distinct design (Compl. ¶20). A court would compare the modified product to the patent's figures, such as the perspective view shown in FIG. 1 (’762 Patent, FIG. 1).
- Technical Questions: KNA alleges its modifications serve functional purposes like safety and durability (Compl. ¶¶16-19). This raises the question of whether the features of the patented design that KNA altered or covered are themselves primarily functional. If a design is dictated by function, it is not protected by a design patent, which could limit the scope of the ’762 Patent's claim and support KNA's non-infringement argument.
V. Key Claim Terms for Construction
In design patent cases, "claim construction" involves determining the scope of the claimed design, including distinguishing ornamental features from functional ones.
- The Term: The scope of "the ornamental design for a pump."
- Context and Importance: The entire non-infringement case rests on whether KNA's modifications are sufficient to place its pumps outside the scope of the claimed design as viewed by an ordinary observer. Defining which aspects of the patent's figures are ornamental and protected, versus functional and unprotected, is therefore critical.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The solid lines in FIGS. 1-8 of the ’762 Patent define the entirety of the claimed ornamental design (’762 Patent, FIGS. 1-8). FNA would argue that the overall visual impression of the pump, even with KNA's additions, remains substantially the same as this claimed design.
- Evidence for a Narrower Interpretation: The patent itself disclaims matter shown in broken lines, narrowing the claim's scope (’762 Patent, col. 1:65-68). More significantly, KNA's complaint repeatedly characterizes its modifications as providing functional benefits (e.g., safety from hot surfaces, preventing user adjustment) (Compl. ¶¶ 17, 18). Practitioners may focus on this, as it implicitly raises the argument that the underlying features of the original pump design that were covered or altered are themselves functional and therefore should be given little weight in the infringement analysis.
VI. Other Allegations
Willful Infringement
- While this is a complaint for declaratory judgment of non-infringement, KNA's own pleadings address the issue of knowledge, which is central to a willfulness claim. The complaint states that KNA became aware of the ’762 Patent in March 2018 (Compl. ¶12). It further alleges that upon this discovery, KNA took proactive steps to avoid infringement by "directing that the outward appearance of the pipeline pump inventory be materially and permanently changed" and seeking to qualify a new pump design (Compl. ¶13, p. 5). These allegations may be intended to preemptively rebut a future claim of willful infringement by FNA.
VII. Analyst’s Conclusion: Key Questions for the Case
- A question of design scope: Is the overall ornamental appearance of KNA’s "Modified JLPEM Pump," with its added shroud and covers, substantially the same as the design claimed in the ’762 patent from the perspective of an ordinary observer familiar with prior art pumps?
- A question of functionality: To what extent are the visual features of the patented design dictated by the pump's mechanical function? The court's determination of which elements are purely ornamental versus primarily functional will be critical in defining the scope of protection and assessing KNA's non-infringement defense.