DCT
1:20-cv-03941
Merrill Mfg Co v. Simmons Mfg Co
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Merrill Manufacturing Company (Iowa)
- Defendant: Simmons Manufacturing Company (Georgia)
- Plaintiff’s Counsel: Hill, Kertscher & Wharton, LLP; THE LAW OFFICES OF BRETT J. TROUT, P.C.
- Case Identification: 1:20-cv-03941, N.D. Ga., 10/01/2021
- Venue Allegations: Venue is alleged to be proper as Defendant is a Georgia corporation residing in the district, has a regular and established place of business in the district, and a substantial part of the events giving rise to the action occurred there.
- Core Dispute: Plaintiff alleges that Defendant’s pressure switch wire connectors infringe two of its design patents, and further asserts claims for trade dress infringement and unfair competition based on the same product design.
- Technical Context: The dispute concerns the ornamental design of wire connectors, which are components used in pressure switches for applications such as water well systems.
- Key Procedural History: The current action is a consolidated case. Plaintiff Merrill originally filed suit for infringement of the ’817 Patent on July 10, 2020. A separate suit for infringement of the later-issued ’575 Patent was filed on July 8, 2021. The court subsequently consolidated these actions. The complaint alleges that Defendant was put on notice of each patent shortly after the respective suits were filed.
Case Timeline
| Date | Event |
|---|---|
| 2018-12-03 | Defendant allegedly viewed Plaintiff's trade dress at an expo |
| 2019-03-05 | Priority Date for D881,817 and D919,575 Patents |
| 2020-04-21 | U.S. Design Patent No. D881,817 Issues |
| 2020-07-10 | Original lawsuit filed alleging infringement of the '817 Patent |
| 2020-07-15 | Defendant allegedly had knowledge of the '817 Patent |
| 2021-05-18 | U.S. Design Patent No. D919,575 Issues |
| 2021-07-08 | Second lawsuit filed alleging infringement of the '575 Patent |
| 2021-10-01 | Consolidated Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D881,817
- Patent Identification: U.S. Design Patent No. D881,817, “WIRE CONNECTOR,” issued April 21, 2020.
The Invention Explained
- Problem Addressed: Design patents protect the non-functional, ornamental appearance of an article of manufacture rather than solving a technical problem (Compl. ¶ 21).
- The Patented Solution: The patent claims the specific ornamental design for a wire connector as depicted in the patent's figures ('817 Patent, Claim, FIGS. 1-7). The design consists of a cylindrical body for receiving a wire and a set screw, which is joined at a right angle to a flat, rectangular mounting bracket ('817 Patent, FIG. 1). All features shown in the drawings, including the mounting holes and screw holes, are rendered in solid lines, making them part of the claimed design.
- Technical Importance: The complaint alleges that this ornamental design is a key component of the distinctive trade dress for Merrill's pressure switches, serving to identify the source of the product in the marketplace (Compl. ¶ 14, 22).
Key Claims at a Glance
- The patent asserts a single claim for "The ornamental design for a wire connector, as shown and described" ('817 Patent, Claim).
- The claimed design encompasses the overall visual appearance created by its constituent elements, which include:
- A cylindrical body joined perpendicularly to a flat bracket.
- Openings in the cylindrical body and the bracket, all shown in solid lines.
U.S. Design Patent No. D919,575
- Patent Identification: U.S. Design Patent No. D919,575, “WIRE CONNECTOR,” issued May 18, 2021.
The Invention Explained
- Problem Addressed: As with the '817 Patent, this patent protects the non-functional, ornamental appearance of an article of manufacture (Compl. ¶ 21).
- The Patented Solution: The patent claims an ornamental design for a wire connector that is visually similar to the '817 Patent but with a critical difference: the circular openings in the cylindrical body and the mounting bracket are shown in broken lines ('575 Patent, FIGS. 1-7). In design patent practice, broken lines disclaim the depicted subject matter, meaning the holes are not part of the claimed design. The claim therefore covers the overall shape of the connector, independent of the specific configuration of its openings ('575 Patent, Description).
- Technical Importance: By disclaiming the functional openings, this patent seeks broader protection for the core shape of the wire connector, a strategic choice that may cover variations with different hole sizes or placements (cf. '817 Patent, FIGS. 1-3 and '575 Patent, FIGS. 1-3).
Key Claims at a Glance
- The patent asserts a single claim for "The ornamental design for a wire connector, as shown and described" ('575 Patent, Claim).
- The claimed design encompasses the overall visual appearance created by its solid-line elements, which include:
- The exterior shape of a cylindrical body joined perpendicularly to a flat bracket.
- The circular openings are explicitly disclaimed and do not form part of the claimed design.
III. The Accused Instrumentality
- Product Identification: The accused products are wire connectors incorporated into the "Simmons Quick Set Wire Connections Pressure Switch," including model numbers SIMPS2040, SIMPS3050, and SIMPS4060, among others (Compl. ¶41, 47, 52).
- Functionality and Market Context: The accused wire connector is a component part of a pressure switch, alleged to be used for the same purpose and sold through identical channels of trade as Merrill's products (Compl. ¶30, 41). The complaint provides a photograph showing the accused wire connector, a brass-colored component with a cylindrical end and a flat, bent mounting tab (Compl. p. 12).
IV. Analysis of Infringement Allegations
The complaint alleges that the design of the Simmons wire connectors is "substantially the same" as the patented designs in the eye of an "ordinary observer" (Compl. ¶55, 64).
D881,817 Patent Infringement Allegations
| Claim Element (from Figures) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design of the wire connector, including its general shape, proportions, and surface configuration | The accused wire connector is alleged to have a "substantially the same" design as that claimed in the patent | ¶55 | See FIGS. 1-7 |
| A cylindrical body joined at a right angle to a flat, rectangular bracket | The accused wire connector, as depicted in a photograph, features a cylindrical body joined to a perpendicular flat bracket | ¶42, p. 12 | See FIG. 1 |
| Circular openings in the cylindrical body and bracket, shown in solid lines | The accused wire connector incorporates openings in its cylindrical body and bracket that are alleged to contribute to the overall visual similarity | ¶42, p. 12 | See FIGS. 2, 3 |
- Identified Points of Contention:
- Scope Questions: The primary question is whether an ordinary observer, giving the attention a purchaser usually gives, would be deceived into believing the Simmons product is the same as the patented design. The analysis will compare the overall visual impression, not just discrete features.
- Technical Questions: A factual dispute may arise over whether minor differences in proportions, curvatures, or surface finish between the accused product and the patent drawings are significant enough to alter the overall visual impression.
D919,575 Patent Infringement Allegations
| Claim Element (from Figures) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for the exterior shape of the wire connector, excluding the disclaimed openings | The accused wire connector is alleged to have a "substantially the same" design as that claimed in the patent | ¶64 | See FIGS. 1-7 |
| The overall shape of a cylindrical body joined perpendicularly to a flat bracket | The accused wire connector's exterior shape, as depicted in a photograph, is alleged to be substantially the same as the claimed shape | ¶42, p. 12 | See FIG. 1 |
- Identified Points of Contention:
- Scope Questions: The key question is whether the overall shape of the accused product, without regard to its functional holes, is substantially the same as the claimed design. The disclaimer in the '575 Patent broadens the claim's scope compared to the '817 Patent.
- Technical Questions: The court may need to determine how the disclaimed (un-claimed) features on the accused product impact the ordinary observer's perception of the claimed (solid-line) features. The question is whether the overall impression of the accused product is dictated by the claimed shape or by the unclaimed holes.
V. Key Claim Terms for Construction
In design patent litigation, the "claim" is understood to be the drawings themselves, and formal construction of verbal terms is rare. The central interpretive issue will be the legal effect of the solid and broken lines in the patent drawings.
- The Term: "The ornamental design... as shown and described," particularly the distinction between features depicted in solid lines versus broken lines.
- Context and Importance: The scope of protection afforded by the two patents hinges on this distinction. The '817 Patent claims the entire object, including the holes (solid lines), while the '575 Patent claims only the external shape, disclaiming the holes (broken lines). Practitioners may focus on this difference, as the '575 Patent's broader scope could be easier to prove infringed, while the '817 Patent's more specific claim is narrower.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation (re '575 Patent): The patent explicitly states, "The broken line portion of the figure drawings is included to show portions of the wire connector that form no part of the claimed design" ('575 Patent, Description). This language directly supports an interpretation where infringement is assessed based only on the overall shape shown in solid lines.
- Evidence for a Narrower Interpretation (re '817 Patent): The '817 Patent depicts all features, including the holes, in solid lines ('817 Patent, FIGS. 1-7). This supports an interpretation that the specific size, shape, and placement of the holes are integral parts of the claimed design, and any deviation in an accused product could be a basis for a non-infringement argument.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement for both patents, based on Simmons selling the accused connectors to customers with the knowledge and intent that the customers would use them in an infringing manner (Compl. ¶46, 51, 58, 67).
- Willful Infringement: Willfulness is alleged based on Defendant’s continued infringement after receiving alleged actual notice of the patents and the infringement claims. For the '817 Patent, notice was allegedly provided via letter on July 10, 2020 (Compl. ¶57). For the '575 Patent, notice was allegedly provided via email to counsel on July 8, 2021 (Compl. ¶66).
VII. Analyst’s Conclusion: Key Questions for the Case
A core issue will be one of visual similarity: Applying the ordinary observer test, is the overall ornamental appearance of the accused Simmons wire connector substantially the same as the designs claimed in the '817 and '575 patents, and would an observer be deceived by the resemblance?
A critical legal question will be the impact of the disclaimer: How does the '575 Patent’s use of broken lines to disclaim the functional openings affect the infringement analysis? Can the plaintiff demonstrate that the accused product's overall shape, viewed in isolation from its holes, creates an impression of substantial similarity to the claimed design?
The case also presents a question of overlapping rights: Given the parallel claims for design patent and trade dress infringement based on the same product features, a key issue will be whether the asserted design is purely ornamental and non-functional, as required for both forms of protection, and whether it has acquired the secondary meaning necessary to function as an indicator of source for the trade dress claim.