DCT
0:19-cv-01758
Fey Industries Inc v. Kitchendao Information Technology Co Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Fey Industries, Inc. (Minnesota)
- Defendant: KitchenDao Information Technology Co., Ltd. (China)
- Plaintiff’s Counsel: MERCHANT & GOULD P.C.
- Case Identification: 0:19-cv-01758, D. Minn., 07/02/2019
- Venue Allegations: The complaint alleges that because the Defendant is a foreign corporation not resident in any U.S. judicial district, venue is proper in any district pursuant to 28 U.S.C. § 1391(c)(3).
- Core Dispute: Plaintiff alleges that Defendant’s pizza cutter infringes its U.S. design patent for an ornamental pizza cutter design.
- Technical Context: The dispute concerns the ornamental design of a common kitchen utensil, a handheld pizza cutter with an integrated blade cover.
- Key Procedural History: The complaint notes that the patent-in-suit was originally issued to an inventor, assigned to a third party, and subsequently assigned to Plaintiff Fey Industries in 2013. The complaint also states that Plaintiff has complied with patent marking requirements.
Case Timeline
| Date | Event |
|---|---|
| 2005-02-28 | D519,334 Patent Priority Date |
| 2006-04-25 | D519334 Patent Issue Date |
| 2013-06-07 | D519334 Patent Assigned to Plaintiff |
| 2019-07-02 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. D519,334, “Pizza Cutter” (Issued April 25, 2006)
The Invention Explained
- Problem Addressed: Design patents protect the ornamental appearance of an object rather than its utilitarian features. The patent does not articulate a functional problem but instead presents a novel ornamental design for a pizza cutter, an otherwise common article of manufacture.
- The Patented Solution: The patent claims the specific ornamental design for a pizza cutter as depicted in its seven figures (D'334 Patent, CLAIM; FIGS. 1-7). The design consists of a circular cutting wheel partially encased within a smooth, curved, palm-held housing that acts as both a handle and a blade guard. A key visual feature is the semi-circular shape of the housing that mirrors the curve of the cutting wheel, with a cutout on the front face that exposes a portion of the blade and provides a space for gripping (D'334 Patent, FIG. 2).
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is: "The ornamental design for a pizza cutter, as shown and described" (D'334 Patent, Claim). The scope of this claim is defined by the visual depictions in Figures 1 through 7 of the patent.
III. The Accused Instrumentality
Product Identification
- The accused products are identified as Defendant's "Pizza Cutter Roller" and "Swing Pizza Cutter" (Compl. ¶¶12, 17, 18).
Functionality and Market Context
- The complaint alleges the accused product is a functional pizza cutter offered for sale and sold in the United States through Defendant's website and retail partners, including Amazon.com (Compl. ¶12). The core of the case rests on the visual similarity of this product to the patented design, which the complaint supports with a side-by-side visual comparison (Compl. ¶20). This comparison includes a photograph of the accused product showing the brand name "KitchenDao" on the handle (Compl. p. 5).
IV. Analysis of Infringement Allegations
The standard for design patent infringement is the "ordinary observer" test, which asks whether an ordinary observer, familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented design. The complaint alleges the designs are "so similar as to be nearly identical" (Compl. ¶19). The complaint provides a detailed side-by-side comparison of the patented design figures and photographs of the accused product to support its infringement claim.
The complaint includes a table comparing patent figures to photographs of the accused product from multiple angles (Compl. ¶20, pp. 5-7). A photograph from this table showing a front view of the accused product is described as corresponding to Figure 2 of the patent (Compl. p. 5). Another photograph shows a side profile of the accused product, corresponding to Figure 3 of the patent (Compl. p. 5). A third photograph provides a top-down view of the accused product, which the complaint compares to Figure 6 of the patent (Compl. p. 6).
| Patented Design Feature (from D'334 Patent) | Alleged Infringing Feature (from Accused Product) | Complaint Citation | Patent Citation |
|---|---|---|---|
| Overall ornamental design for a pizza cutter, as shown and described. | The complaint alleges the overall ornamental design of the accused "Swing Pizza Cutter" is the same or substantially the same as the patented design. | ¶19 | Claim |
| The front elevational view showing a semi-circular housing over a circular blade with a finger cutout. | The front view of the accused product, which features a similarly shaped semi-circular housing, circular blade, and finger cutout. | ¶20, p. 5 | FIG. 2 |
| The right side elevational view showing the slim profile of the housing and the edge of the cutting wheel. | The side view of the accused product, which shows a slim profile and the edge of the cutting wheel. | ¶20, p. 5 | FIG. 3 |
| The top plan view showing the ovular shape and contours of the top of the housing. | The top view of the accused product, which presents a similar ovular shape and contours. | ¶20, p. 6 | FIG. 6 |
Identified Points of Contention
- Substantial Similarity: The central dispute will be whether the accused design and the patented design are substantially the same. The analysis will focus on the overall visual impression rather than a side-by-side comparison of minor details.
- Impact of Branding: The photographs of the accused product clearly show the "KitchenDao" brand name on the housing (Compl. p. 5). A potential point of contention is whether the presence of this branding is sufficient to differentiate the products in the mind of an ordinary observer, or if the overall design similarity is so strong that such a surface-level change is immaterial to the infringement analysis.
V. Key Claim Terms for Construction
Claim construction for design patents is a matter of law, but it does not typically involve construing textual terms. The "claim" is the design itself, as depicted in the patent's drawings. The scope of the design is understood from the figures as a whole. Therefore, the dispute is less likely to center on the definition of a particular term and more likely to focus on the application of the "ordinary observer" test to the visual evidence.
VI. Other Allegations
- Infringement under 35 U.S.C. § 289: In addition to general infringement under § 271, the complaint specifically alleges that Defendant has "applied the patented design" to an article of manufacture for the purpose of sale, in violation of 35 U.S.C. § 289 (Compl. ¶18). This section provides a unique remedy for design patent infringement, allowing the patent owner to recover the infringer's total profits from the sale of the infringing articles.
- Willful Infringement: The complaint does not contain an explicit allegation of "willful" infringement. However, the prayer for relief requests enhanced damages under 35 U.S.C. § 284 and attorney's fees under § 285, remedies that are typically awarded in cases of willful infringement or other exceptional circumstances (Compl. p. 8). The complaint does allege that Plaintiff has marked its products with the patent number, which could be used to establish notice (Compl. ¶22).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual comparison: Applying the ordinary observer test, are the overall ornamental designs of the patented pizza cutter and the accused product substantially the same, such that an observer would be deceived into purchasing one thinking it was the other?
- A key legal question will concern the materiality of differences: What legal weight, if any, will the court give to minor differences between the designs, particularly the presence of the "KitchenDao" brand name on the accused product's handle, in the context of the overall visual impression?
- A significant question regarding remedies will be whether Plaintiff can successfully prove infringement and elect to recover Defendant's total profits under 35 U.S.C. § 289, a powerful remedy unique to design patents.