DCT
1:24-cv-00261
Dynamite Marketing Inc v. Hit Promotional Products Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Dynamite Marketing, Inc. (New York)
- Defendant: HIT Promotional Products, Inc. (Delaware)
- Plaintiff’s Counsel: Panitch Schwarze Belisario & Nadel LLP; McGeary Cukor, LLC
- Case Identification: 1:24-cv-00261, D. Del., 02/27/2024
- Venue Allegations: Venue is asserted in the District of Delaware on the basis that Defendant is a Delaware corporation.
- Core Dispute: Plaintiff alleges that Defendant’s promotional multi-tool product infringes its design patent covering the ornamental appearance of a credit-card-shaped multi-tool.
- Technical Context: The technology resides in the field of compact, portable multi-tools, specifically those designed to fit in a wallet and often customized for use as promotional products.
- Key Procedural History: The complaint notes that the patent-in-suit, U.S. Design Patent No. D751,877, was previously found valid and willfully infringed in a 2023 jury trial against a different defendant, Sherman Specialty, Inc., in the Eastern District of New York.
Case Timeline
| Date | Event |
|---|---|
| 2014-02-26 | Priority Date for U.S. Design Patent No. D751,877 |
| 2016-03-22 | U.S. Design Patent No. D751,877 Issues |
| 2023 | '877 Patent found valid and willfully infringed in separate lawsuit |
| 2023-04-28 | Alleged date of Defendant's response to a cease and desist letter |
| 2024-02-27 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D751,877 - "WALLET CARD MULTI TOOL"
The patent-in-suit is U.S. Design Patent No. D751,877, issued March 22, 2016 (the "’877 Patent").
The Invention Explained
- Problem Addressed: The complaint suggests the inventor sought to create a "unique, novel and distinct design of a credit card sized 18-part tool" (Compl. ¶8). In design patents, the "problem" is primarily aesthetic—to create a new, original, and ornamental appearance for an article of manufacture.
- The Patented Solution: The ’877 Patent protects the specific visual, ornamental characteristics of a wallet-sized multi-tool as depicted in its figures ('877 Patent, Figs. 1-4). The protected design consists of the tool's overall shape, and the specific two-dimensional shape, arrangement, and proportions of the various cutouts and edge contours shown in solid lines. Features shown in broken lines, such as the "WALLET NINJA" text, are disclaimed and do not form part of the patented design ('877 Patent, DESCRIPTION).
- Technical Importance: The complaint alleges the resulting product, the "WALLET NINJA," became a "number one selling flat multitool on Amazon and Groupon" and a "highly desirable product in the promotional products market" (Compl. ¶21-22).
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is for "The ornamental design for a wallet card multi tool, as shown and described." ('877 Patent, CLAIM).
- The scope of this claim is defined by the solid lines in Figures 1-4 of the patent, which depict features including:
- A generally rectangular, credit-card-like peripheral shape.
- Four corner cutouts shaped as flat-head screwdrivers.
- A series of hexagonal wrench cutouts arranged along one of the long edges.
- A bottle opener cutout on one of the short edges.
- A curved "letter opener" slot and a "can opener/peeler" blade cutout along the other short edge.
- An interior, irregularly shaped "cell phone stand" cutout.
III. The Accused Instrumentality
Product Identification
The accused product is Defendant's "#7237 - 10-IN-1 TOOL CARD" (Compl. ¶34, ¶44).
Functionality and Market Context
The complaint alleges the accused product is a "credit card sized multi tool" offered for sale on Defendant’s website (Compl. ¶33, ¶44). Images provided in the complaint show the product is a flat, wallet-sized tool with various cutouts and is marketed as a promotional item that can be customized with a customer's logo. A screenshot from Defendant's website shows the accused tool offered with a wire loop and a branded sleeve (Compl. ¶34).
IV. Analysis of Infringement Allegations
The infringement test for a design patent is whether, in the eye of an ordinary observer familiar with the prior art, the accused design is substantially the same as the patented design. The complaint alleges that this standard is met (Compl. ¶45).
'877 Patent Infringement Allegations
| Key Ornamental Feature (from '877 Patent, as shown in Figs. 1-4) | Alleged Infringing Feature (from Accused Product) | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design for a wallet card multi tool, as shown. | The overall ornamental design of the "#7237 - 10-IN-1 TOOL CARD" is alleged to be substantially the same as the patented design. The complaint includes a side-by-side visual comparison to support this allegation. | ¶45, ¶34 | Figs. 1-4 |
| A generally rectangular, credit-card-like overall shape. | A generally rectangular, credit-card-like overall shape. | ¶34 | Figs. 1-2 |
| A series of hexagonal wrench cutouts arranged along one long edge. | A series of hexagonal wrench cutouts arranged along one long edge. | ¶34 | Fig. 1 |
| A bottle opener cutout integrated into one edge. | A bottle opener cutout integrated into one edge. | ¶34 | Fig. 1 |
| Screwdriver tips formed as cutouts at the corners. | Screwdriver tips formed as cutouts at the corners. | ¶34 | Fig. 1 |
Identified Points of Contention
- Scope Questions: The central question is whether the visual differences between the accused product and the patented design are significant enough to prevent an ordinary observer from finding them substantially similar. The accused product, as depicted in the complaint, appears to lack the patented design's curved "letter opener" slot and has a different configuration of interior cutouts (Compl. ¶17, ¶34). A court will have to determine if these differences, viewed in the context of the design as a whole, are minor or substantial.
- Technical Questions: A key issue in design patent cases is functionality. A design patent only protects ornamental, non-functional aspects of an article. The complaint itself describes the utility of the various features, such as "screw-drivers, a ruler, a bottle opener, a box opener," etc. (Compl. ¶26). This raises the question of which aspects of the claimed design are dictated by their function—and are therefore unprotectable—and which are ornamental. For example, a hexagonal cutout's shape may be considered dictated by its function as a wrench. The infringement analysis will depend on how the court separates the protectable ornamental design from these functional elements.
V. Key Claim Terms for Construction
In a design patent case, claim construction focuses on the scope of the claimed design as a whole rather than on specific text. The primary legal question analogous to claim construction is determining the boundary between protected ornamental features and unprotected functional features.
- The "Term": The overall "ornamental design" for the wallet card multi tool.
- Context and Importance: The scope of patent protection hinges on this determination. If many features are deemed functional, the scope of the protected design narrows, making it more difficult for the Plaintiff to prove that the two designs are "substantially the same." Practitioners may focus on this issue because it is often dispositive in design patent litigation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation (more ornamental): Plaintiff may argue that while the individual tools have functions, the specific aesthetic choices—the particular shape, arrangement, and combination of those tools on a single credit-card-like platform—create a unique and ornamental overall appearance that is not dictated by function. The complaint alleges the "selection and placement of the various tools" creates a distinct "look and feel" (Compl. ¶28).
- Evidence for a Narrower Interpretation (more functional): Defendant may argue that the shape of many elements is dictated by their utility (e.g., wrench cutouts, screwdriver tips, can opener blade). Defendant could cite the plaintiff's own description of the product as an "18-part tool" and its list of functional components as evidence that the design is primarily functional, not ornamental (Compl. ¶8, ¶26).
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement to infringe by "encouraging and promoting the use and/or sale by others of the infringing tool on various websites" (Compl. ¶49). It further alleges intent that customers and resellers will use and sell the products in the United States in a manner that infringes the ’877 Patent (Compl. ¶51).
- Willful Infringement: Willfulness is alleged based on both pre-suit and post-suit knowledge. The complaint alleges pre-suit knowledge based on the "fame of the WALLET NINJA product" and the allegation of "substantial copying" (Compl. ¶47). It also alleges explicit post-suit knowledge based on Defendant’s response to a cease-and-desist letter on or about April 28, 2023 (Compl. ¶50). The prior jury verdict finding the patent valid and willfully infringed in another case may also be used to support the assertion of willfulness (Compl. ¶32).
VII. Analyst’s Conclusion: Key Questions for the Case
- The "Ordinary Observer" Test: A core issue will be a factual one of visual comparison: are the designs, when viewed as a whole, "substantially the same"? The case may turn on whether the noted differences in specific cutouts are sufficient to distinguish the accused product from the patented design in the eyes of an ordinary observer who is aware of the relevant prior art.
- The Functionality Doctrine: A critical legal question will be the scope of the patent itself: to what extent are the features of the "WALLET NINJA" design considered ornamental and protectable, versus being dictated by their mechanical function and thus unprotectable? The court's filtering of functional elements will define the scope of the design against which the accused product is compared.
- Impact of Prior Litigation: A significant strategic question is what weight the court and a future jury will give to the 2023 jury verdict that found the ’877 Patent valid and willfully infringed. While not binding on this Defendant, it may influence settlement discussions and perceptions of the patent's strength.