DCT
2:19-cv-00439
Fam NV v. Urschel Laboratories Inc
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Fam NV. (Belgium)
- Defendant: Urschel Laboratories, Inc. (Delaware)
- Plaintiff’s Counsel: Holland & Knight LLP
- Case Identification: 2:19-cv-00439, N.D. Ind., 09/11/2020
- Venue Allegations: Venue is alleged to be proper in the Northern District of Indiana because Defendant has its principal place of business in Chesterton, Indiana, and allegedly manufactures the infringing products within the district.
- Core Dispute: Plaintiff alleges that Defendant’s industrial knife holders for food slicing equipment infringe a U.S. design patent covering the ornamental appearance of a knife holder.
- Technical Context: The technology relates to components for industrial food processing machinery, a market where equipment manufacturers compete on factors including design and performance.
- Key Procedural History: The operative pleading is a First Amended Complaint. The complaint alleges the patent-in-suit was duly examined and issued by the USPTO. No prior litigation, licensing, or post-grant proceedings are mentioned.
Case Timeline
| Date | Event |
|---|---|
| 2014-05-07 | '703 Patent application filed / Priority Date |
| 2015-06-02 | '703 Patent issues |
| 2019-03-01 | Earliest date Defendant's advertisement is alleged to have been published |
| 2020-09-11 | First Amended Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D730,703 - "Knife Holder"
- Patent Identification: U.S. Design Patent No. D730,703, "Knife Holder," issued June 2, 2015.
The Invention Explained
- Problem Addressed: Design patents protect the ornamental appearance of an article of manufacture rather than a technical problem. The complaint alleges Plaintiff "has distinguished itself from its competitors through its innovative designs" (Compl. ¶11), suggesting the goal was to create a visually distinct product in the marketplace.
- The Patented Solution: The patent claims the specific, "non-functional ornamental design for a knife holder" (Compl. ¶13). The design, as depicted in the patent's figures, consists of an elongated, comb-like body with a distinct head portion. Key visual features include a repeating series of V-shaped notches along one edge, a specific pattern of circular cutouts on the main face, and beveled surfaces on the head ('703 Patent, FIG. 1, FIG. 2). The claim itself is simply for "The ornamental design for a knife holder, as shown" ('703 Patent, Claim).
- Technical Importance: The asserted value of the design lies in its aesthetic differentiation in the market for industrial cutting solutions (Compl. ¶10-11).
Key Claims at a Glance
- Design patents contain a single claim, which is pictorial rather than textual. The complaint asserts this claim (Compl. ¶18).
- The claim protects the overall ornamental visual appearance of the knife holder as illustrated in the patent's drawings, which includes the combination of:
- An elongated body with a head portion at one end.
- A serrated edge comprising a series of uniform, V-shaped notches.
- A linear pattern of circular apertures on the primary face.
- The specific shape and beveling of the head portion.
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are "knife holders" manufactured and sold by Urschel (Compl. ¶17). A specific product identified is marked as "25883 Urschel® USA" (Compl. ¶18). These knife holders are components of Urschel's "SL-14 Slicing Head" (Compl. ¶15).
Functionality and Market Context
- The accused products are components for industrial food cutting and slicing machines (Compl. ¶15). The complaint alleges that Urschel is a direct competitor to FAM in this market and has published promotional materials comparing its products to FAM's products, suggesting the products serve the same customers and applications (Compl. ¶15). The complaint includes a side-by-side photographic comparison of the accused product and the patented design. (Compl. ¶18). The photograph provided in the complaint shows the accused product, an industrial knife holder with a serrated edge and circular cutouts (Compl. ¶18, "Infringing Products").
IV. Analysis of Infringement Allegations
The complaint alleges that the accused product's "overall visual appearance... is substantially the same as the overall visual appearance of the design claimed in the '703 Patent" to an ordinary observer (Compl. ¶18).
D730,703 Infringement Allegations
| Visual Feature (from '703 Patent Drawings) | Alleged Infringing Feature (from Complaint Photo) | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design for a knife holder, as shown. | The overall visual appearance of the accused knife holder, which includes a similar elongated shape, serrated edge, pattern of holes, and head design. | ¶18 | col. 1:50-50 |
| An isometric view showing an elongated body with a beveled head portion and a serrated edge formed by V-shaped notches. | A photograph of an accused knife holder showing an elongated body with what appears to be a beveled head and a serrated edge with similar notches. | ¶18 | col. 1:51-53 |
| A top view showing a specific linear arrangement of circular apertures along the face of the holder. | The photograph shows a similar linear arrangement of circular apertures along the face of the accused product. | ¶18 | col. 1:54-55 |
- Identified Points of Contention:
- Scope Questions: The central question for the court will be whether an "ordinary observer," familiar with prior art knife holders, would be deceived into thinking the accused Urschel product is the same as the patented FAM design. The outcome will depend on a comparison of the overall designs, not just a feature-by-feature analysis.
- Technical Questions: A potential defense may be that any similarities between the products are dictated by functional constraints. The court would then need to determine which aspects of the design are ornamental and which are purely functional, as functional elements are not protected by a design patent. The complaint preemptively asserts the claimed design is "non-functional" (Compl. ¶13).
V. Key Claim Terms for Construction
In design patent litigation, formal claim construction is rare, as the claim is defined by the drawings rather than words. However, the scope of the article of manufacture to which the design is applied can provide context.
- The Term: "knife holder"
- Context and Importance: The term "knife holder" defines the article of manufacture to which the ornamental design is applied. While the meaning of the term itself is unlikely to be in dispute, its scope sets the context for the "ordinary observer" analysis and the consideration of relevant prior art. Practitioners may focus on this as it frames the field of art for the infringement test.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The title "Knife Holder" is general and does not, on its face, limit the design to a specific type of industrial slicer, which could suggest a broader application.
- Evidence for a Narrower Interpretation: The detailed drawings in the '703 Patent depict a very specific type of knife holder designed for a particular industrial application ('703 Patent, FIG. 1-6). A court may find that the design is implicitly limited to the context provided by these specific visual embodiments.
VI. Other Allegations
- Willful Infringement: The complaint alleges that Urschel's infringement has been "willful, deliberate, and objectively reckless" (Compl. ¶25). The basis for willfulness is alleged to begin, "at the latest," upon service of the complaint, indicating a claim for post-filing willfulness (Prayer for Relief ¶iii). The complaint does not allege facts to support pre-suit knowledge of the '703 Patent.
VII. Analyst’s Conclusion: Key Questions for the Case
- Visual Similarity: The case will primarily turn on the core design patent question: is the overall ornamental appearance of the accused Urschel knife holder "substantially the same" as the design claimed in the '703 Patent from the perspective of an ordinary observer in this specific industry? The side-by-side comparison provided in the complaint will be a central piece of evidence in this analysis (Compl. ¶18).
- The Role of Prior Art: A key question for the defense will be the scope and appearance of prior art knife holders. If significant aspects of the patented design are present in the prior art, the scope of protection afforded to the '703 Patent may be narrowed, and small differences between the accused product and the patent drawings could be sufficient to avoid infringement.
- Functionality vs. Ornamentation: A likely point of contention will be whether the similarities in appearance are driven by functional necessity. The court may need to decide if the shared design elements (e.g., the shape of the notches, the placement of holes) are ornamental choices protected by the patent or are dictated by the mechanical requirements of an industrial food slicer.