DCT
8:23-cv-02396
SAJ Group LLC v. Davidoff Of Geneva USA Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: SAJ Group LLC (Illinois)
- Defendant: Oettinger Davidoff AG (Switzerland) and Davidoff of Geneva USA Inc (Delaware)
- Plaintiff’s Counsel: Hitestone Law
- Case Identification: 8:23-cv-02396, M.D. Fla., 10/23/2023
- Venue Allegations: Venue is alleged to be proper as to Defendant Davidoff USA based on its principal place of business being located within the district. For Defendant Davidoff AG, a foreign entity, venue is alleged to be proper based on its acts of infringement within the district.
- Core Dispute: Plaintiff alleges that Defendant’s "Winston Churchill Cigar Spirit Glass" infringes two design patents for a glass with integrated rests for tobacco products.
- Technical Context: The dispute is in the field of consumer beverage and tobacco accessories, concerning the ornamental design of a drinking glass that incorporates features for holding a cigar.
- Key Procedural History: The complaint alleges that Plaintiff first notified Defendant of potential infringement of its pending patent applications in August 2017. Plaintiff previously filed a lawsuit against Defendant in the Northern District of Illinois in April 2019 asserting one of the two patents-in-suit, which was later voluntarily dismissed without prejudice in September 2019.
Case Timeline
| Date | Event |
|---|---|
| 2016-11-18 | Earliest Priority Date for '884 and '184 Patents |
| 2017-08-23 | Plaintiff sends notice letter to Defendant regarding designs |
| 2018-06-05 | U.S. Design Patent No. D819,884 ('884 Patent) Issues |
| 2019-04-16 | U.S. Design Patent No. D846,184 ('184 Patent) Issues |
| 2019-04-17 | Plaintiff files prior lawsuit in N.D. Illinois ('884 Patent) |
| 2019-09-12 | Prior lawsuit voluntarily dismissed without prejudice |
| 2023-04-30 | Date of photograph of advertisement at Houston store |
| 2023-10-23 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D819,884 - Glass with integrated rests for tobacco products
- Patent Identification: U.S. Design Patent No. D819,884, issued on June 5, 2018. (Compl. ¶1).
The Invention Explained
- Problem Addressed: Design patents protect new, original, and ornamental designs for an article of manufacture. The patent does not describe a technical problem but instead presents a novel aesthetic appearance for a functional item. (D'884 Patent, Claim).
- The Patented Solution: The patent claims the ornamental design for a glass that features two opposing, downward-curving notches integrated into the rim, creating built-in rests for a cigar. The claimed design, depicted in solid lines in the patent's figures, encompasses the entire glass, including its slightly tapered body and smooth, unadorned base. (’884 Patent, Figs. 1-7). Figure 8 illustrates the intended use, showing a tobacco product resting in the notches, though the tobacco product itself is in broken lines and not part of the claim. (’884 Patent, Fig. 8).
- Technical Importance: The design provides a novel visual appearance for an article that combines the functions of a drinking glass and a cigar rest.
Key Claims at a Glance
- The complaint asserts the sole claim of the patent. (Compl. ¶38).
- The single claim is for: "The ornamental design for a glass with integrated rests for tobacco products, as shown and described." (’884 Patent, Claim).
- The key visual features defining the claimed design include the overall shape of the tumbler, the specific curvature and placement of the two opposed rim notches, and the particular proportions of the glass body and its solid-line base. (’884 Patent, Figs. 1-7).
U.S. Design Patent No. D846,184 - Glass with integrated rests for tobacco products
- Patent Identification: U.S. Design Patent No. D846,184, issued on April 16, 2019. (Compl. ¶1).
The Invention Explained
- Problem Addressed: As with the ’884 Patent, this patent protects a new, original, and ornamental design for an article of manufacture. (’184 Patent, Claim).
- The Patented Solution: The ’184 Patent claims an ornamental design for a glass with integrated cigar rests that is visually similar to the ’884 Patent design. However, a critical distinction is that the base of the glass is depicted in broken lines, indicating that the base is not part of the claimed design. (’184 Patent, Description; Figs. 1-8). The claim is therefore directed to the ornamental appearance of the upper portion of the glass, including the tapered walls and the dual rim notches, irrespective of the specific design of the base.
- Technical Importance: This design provides a novel aesthetic for the upper portion of a combination drinking glass and cigar rest, while disclaiming the specific form of the base, potentially broadening its application to various base styles.
Key Claims at a Glance
- The complaint asserts the sole claim of the patent. (Compl. ¶44).
- The single claim is for: "The ornamental design for a glass with integrated rests for tobacco products, as shown and described." (’184 Patent, Claim).
- The key visual features defining the claimed design include the shape of the glass's upper body and the configuration of the two opposed rim notches. The base of the glass is explicitly disclaimed from the scope of the design. (’184 Patent, Description).
III. The Accused Instrumentality
Product Identification
- The accused product is the "Davidoff Winston Churchill Cigar Spirit Glass," also referred to as the "Cigar Glass." (Compl. ¶18, ¶23).
Functionality and Market Context
- The complaint describes the product as a spirit glass "equipped with two notches that are designed to rest your cigar." (Compl. ¶19). Images from the defendant's website show a tumbler-style glass with a heavy, faceted base and two notches on the rim for holding a cigar. (Compl. ¶18). This image, taken from the Davidoff USA website, shows the accused product both empty and with a cigar resting across the notches. (Compl. ¶18). The complaint alleges the Cigar Glass is featured prominently in advertisements, including at a "flagship store in Houston Texas," and is bundled in gift sets with premium cigars to "bolster sales." (Compl. ¶35, ¶36). A photo provided in the complaint shows a large digital billboard advertisement for Oettinger Davidoff featuring the accused glass. (Compl. ¶35).
IV. Analysis of Infringement Allegations
The complaint alleges that an "ordinary observer or purchaser" would find the overall design of the accused Cigar Glass to be "substantially similar" to the patented designs, leading to mistaken purchases. (Compl. ¶22).
D819,884 Patent Infringement Allegations
| Patented Design Feature (from Claim 1) | Alleged Infringing Feature (from Accused Product) | Complaint Citation | Patent Citation |
|---|---|---|---|
| A glass with a slightly tapered body and a smooth, unadorned base. | The accused Cigar Glass has a tapered body and a heavy, faceted base. | ¶18, ¶20 | ’884 Patent, Fig. 1 |
| Two opposing, downwardly-curved notches integrated into the rim of the glass. | The accused Cigar Glass has "two notches that are designed to rest your cigar," which are alleged to be "virtually identical." | ¶19, ¶21 | ’884 Patent, Fig. 1 |
| The overall ornamental appearance as shown in the patent figures. | The overall design of the accused Cigar Glass is alleged to be "substantially similar" to the patented design. | ¶22 | ’884 Patent, Claim |
D846,184 Patent Infringement Allegations
| Patented Design Feature (from Claim 1) | Alleged Infringing Feature (from Accused Product) | Complaint Citation | Patent Citation |
|---|---|---|---|
| The upper portion of a glass with tapered side walls. | The accused Cigar Glass has a tapered upper body. | ¶18, ¶20 | ’184 Patent, Fig. 1 |
| Two opposing, downwardly-curved notches integrated into the rim. | The accused Cigar Glass has "two notches that are designed to rest your cigar," which are alleged to be "virtually identical." | ¶19, ¶21 | ’184 Patent, Fig. 1 |
| The design of the glass's upper portion, with the base being explicitly disclaimed (shown in broken lines). | The accused Cigar Glass embodies the claimed upper portion, and its specific base design is irrelevant to the claimed design. | ¶18, ¶21 | ’184 Patent, Claim, Figs. 1-8 |
- Identified Points of Contention:
- Scope Questions: The primary dispute for the ’884 Patent will likely concern the visual effect of the accused product's faceted, decorative base compared to the smooth, unadorned base claimed in the patent. The question for the court will be whether this difference is substantial enough to make the overall designs not "substantially similar" in the eye of an ordinary observer.
- Technical Questions: For the ’184 Patent, because the base is disclaimed, the analysis will focus more narrowly on the claimed upper portion. The key question will be whether the shape, taper, and notch design of the accused glass's upper body are substantially similar to those depicted in the ’184 Patent's figures. The complaint's allegation that the rests are "virtually identical" suggests this will be a central point of argument. (Compl. ¶21).
V. Key Claim Terms for Construction
Formal claim construction is less common in design patent cases, as the claim is defined by the drawings rather than words. The analysis focuses on the overall visual impression of the claimed design.
- The Term: "The ornamental design for a glass... as shown and described," particularly as defined by the solid and broken lines in the figures of each patent.
- Context and Importance: The distinction between the scope of the two patents, defined by the use of solid versus broken lines, is critical. For the ’884 Patent, the entire glass, including the base, is claimed. For the ’184 Patent, the base is disclaimed. Practitioners may focus on this distinction because it determines whether the design of the accused product's base is a relevant factor for infringement of each patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation (’184 Patent): The specification of the ’184 Patent explicitly states, "The broken lines in FIGS. 1 through 8 depict a portion of the glass... that form no part of the claimed design." (’184 Patent, Description). This language supports an interpretation where the claim covers any glass with the patented upper portion, regardless of its base design.
- Evidence for a Narrower Interpretation (’884 Patent): The ’884 Patent uses solid lines for the entire object, including the base, across all relevant figures. (’884 Patent, Figs. 1-7). This evidence supports an interpretation where the patented design is limited to the specific overall shape shown, including the smooth, unadorned base, making any significant difference in the base of an accused product a potential basis for a non-infringement argument.
VI. Other Allegations
- Indirect Infringement: The complaint does not allege indirect or induced infringement.
- Willful Infringement: The complaint alleges that Defendants' infringement has been "knowing, intentional, and willful." (Compl. ¶40, ¶46). The allegations are based on asserted pre-suit knowledge, stemming from a notice letter sent to Defendant's CEO on August 23, 2017, which allegedly contained figures from the patent applications and identified the accused product. (Compl. ¶25-27). The complaint further alleges that the filing of a prior lawsuit in 2019 put Defendant on notice of the issued ’884 Patent. (Compl. ¶32).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual comparison under the ordinary observer test: Are the accused "Cigar Glass" and the patented designs "substantially the same"? This will require a side-by-side comparison, considering the similarities in the cigar rests and the potential differences in the overall shape and, particularly, the base design.
- A key question of design scope will differentiate the analysis for the two patents: Does the faceted, decorative base of the accused glass create a sufficiently different overall visual impression to avoid infringement of the '884 patent, which claims a specific smooth base? Conversely, how does the '184 patent's disclaimer of any specific base design affect the infringement analysis, focusing the inquiry almost entirely on the similarity of the products' upper portions?