DCT
1:17-cv-01204
Tristar Products Inc v. E Mishan & Sons Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Tristar Products, Inc. (Pennsylvania)
- Defendant: E. Mishan and Sons Inc. (New York)
- Plaintiff’s Counsel: Bakos & Kritzer
- Case Identification: 1:17-cv-01204, D.N.J., 02/21/2017
- Venue Allegations: Venue is based on allegations that Defendant conducts business in New Jersey, including sales through multiple retailers, marketing to New Jersey customers, and maintaining a website accessible in the state.
- Core Dispute: Plaintiff alleges that Defendant’s "GOTHAM STEEL" square pan infringes two design patents that protect the ornamental appearance of Plaintiff's "COPPER CHEF" pan.
- Technical Context: The dispute concerns the specific ornamental design of consumer cookware, a competitive market where product appearance is a significant factor in purchasing decisions.
- Key Procedural History: The complaint was filed days after the asserted patents issued. It notes a contemporaneously filed case by the same Plaintiff against a different defendant, Telebrands Corp. Although not mentioned in the complaint, public records from the U.S. Patent and Trademark Office indicate that subsequent ex parte reexamination proceedings resulted in the cancellation of the single claim of both asserted patents (U.S. Patent No. D778,664 in December 2019 and U.S. Patent No. D778,103 in January 2020), which would typically render the patents unenforceable.
Case Timeline
| Date | Event |
|---|---|
| 2015-12-01 | Priority Date for '664 and '103 Patents |
| 2016-06-XX | Plaintiff's "COPPER CHEF" pan introduced |
| 2017-02-07 | U.S. Patent No. D778,103 Issued |
| 2017-02-14 | U.S. Patent No. D778,664 Issued |
| 2017-02-21 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D778,664 - "Pan,"
- Patent Identification: U.S. Design Patent No. D778,664, "Pan," issued February 14, 2017.
The Invention Explained
- Problem Addressed: Design patents do not solve technical problems; they protect new, original, and ornamental designs for an article of manufacture (Compl. ¶7).
- The Patented Solution: The patent protects the specific ornamental appearance of a cooking pan body. The claimed design features a generally square shape with rounded corners, high and slightly flared side walls, and a plain, flat bottom surface ('664 Patent, FIGs. 1, 7). The patent explicitly states that the pan's handles, shown in broken lines, are for environmental purposes only and do not form part of the claimed design ('664 Patent, DESCRIPTION).
- Technical Importance: The design represents a specific aesthetic for consumer cookware, which the complaint alleges has been commercially successful (Compl. ¶7).
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a pan, as shown and described" ('664 Patent, CLAIM). The scope of this claim is defined by the visual characteristics of the pan body depicted in solid lines in the patent's drawings.
U.S. Design Patent No. D778,103 - "Pan,"
- Patent Identification: U.S. Design Patent No. D778,103, "Pan," issued February 7, 2017.
The Invention Explained
- Problem Addressed: Like the '664 patent, the '103 patent protects an ornamental design for a pan (Compl. ¶7).
- The Patented Solution: The patent claims an ornamental design for a pan body that is very similar to that of the '664 patent but is distinguished by a specific feature on its bottom surface. The design includes a circular plate with a pattern of concentric rings composed of dots ('103 Patent, FIG. 7). As with the '664 patent, the handles depicted in broken lines are not part of the protected design ('103 Patent, DESCRIPTION).
- Technical Importance: This design provides an alternative aesthetic to the '664 patent, differentiated by the detailed pattern on the pan's exterior bottom surface (Compl. ¶7).
Key Claims at a Glance
- The patent asserts a single claim for "The ornamental design for a pan, as shown and described" ('103 Patent, CLAIM). The protected design encompasses the pan body's shape and the specific circular, dotted pattern on its bottom, as depicted in the patent's figures.
III. The Accused Instrumentality
Product Identification
- The accused product is the "GOTHAM STEEL" square pan (Compl. ¶8).
Functionality and Market Context
- The complaint alleges the GOTHAM STEEL pan is used for cooking and directly competes with Plaintiff's COPPER CHEF pan (Compl. ¶15). The infringement allegations are based on the product's ornamental appearance, which Plaintiff alleges is a "colorable imitation" of its patented designs and "copies the look and feel" of its own product (Compl. ¶13, ¶23). The complaint includes a photograph showing the accused product, which is a square pan with a dark exterior, copper-colored interior, a long handle, and a shorter helper handle (Compl. ¶9, p. 4). Another photograph shows the bottom of the accused pan, which features a circular metallic plate with a surface pattern (Compl. ¶9, p. 5).
IV. Analysis of Infringement Allegations
D'664 Patent Infringement Allegations
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a pan, as shown and described, characterized by a square body with rounded corners, high walls, and a plain bottom surface. | The complaint alleges that the overall ornamental design of the GOTHAM STEEL square pan is "substantially the same as Plaintiff's patented design" in the eyes of an ordinary observer. A visual comparison provided in the complaint shows the accused pan having a similar square shape and high-walled body. | ¶19 | '664 Patent, FIGs. 1-7 |
D'103 Patent Infringement Allegations
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a pan, as shown and described, characterized by a square body... and a circular, patterned bottom plate. | The complaint alleges the GOTHAM STEEL pan's design is substantially the same as the patented design. The complaint provides a photograph of the bottom of the accused product, which depicts a circular metallic plate with a textured pattern. | ¶29 | '103 Patent, FIGs. 1-7 |
Identified Points of Contention
- Scope Questions: A central question for the court would be how an "ordinary observer" compares the designs. The analysis would require disregarding the handles of the accused product, as they are explicitly disclaimed from the patent protection, which may differ from how a consumer perceives the product as a whole.
- Technical Questions: For the '103 patent, a factual question is whether the surface pattern on the bottom of the accused GOTHAM STEEL pan is visually, substantially the same as the specific dotted pattern shown in the patent's drawings. The photograph of the accused product's bottom in the complaint shows a circular patterned plate, raising the question of its similarity to the claimed design (Compl. ¶9, p. 5).
V. Key Claim Terms for Construction
In design patent litigation, claim construction is typically not a central issue, as the claim is defined by the patent's drawings rather than textual limitations. The analysis focuses on a comparison of the claimed design as a whole to the accused design. However, the scope of the design as defined by the drawings is a critical interpretive issue.
- The Term: "the ornamental design for a pan, as shown and described"
- Context and Importance: The scope of this term is defined by what is shown in solid versus broken lines in the patent figures. Practitioners may focus on this distinction because the exclusion of the handles from the claimed design is central to a proper infringement analysis. The comparison must be made between the claimed pan body and the accused pan body, not the products as a whole.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The complaint argues for a broad comparison of overall appearance, stating an ordinary observer would find the designs "substantially the same" (Compl. ¶19, ¶29).
- Evidence for a Narrower Interpretation: Both patents contain an explicit disclaimer: "The elements depicted in broken lines in the various figures are included for environmental purposes only, and form no part of the claimed design" ('664 Patent, DESCRIPTION; '103 Patent, DESCRIPTION). This language provides a clear basis for limiting the scope of the protected design to only the features shown in solid lines (the pan body and, for the '103 patent, the bottom pattern).
VI. Other Allegations
- Indirect Infringement: The complaint makes a conclusory allegation of active inducement by alleging Defendant induces others to "make, use, sell, or offer to sell pans" that embody the design (Compl. ¶18, ¶27). It does not plead specific facts, such as instructional materials, demonstrating intent to encourage infringement by third parties beyond the general sale of the product.
- Willful Infringement: The complaint alleges that Defendant’s infringement continued with "knowledge of the '664 patent" and "'103 patent," constituting reckless disregard (Compl. ¶25, ¶34). Given that the patents issued only days before the complaint was filed, any alleged pre-suit knowledge would have been very recent.
VII. Analyst’s Conclusion: Key Questions for the Case
A central, and likely dispositive, issue is the legal status of the patents-in-suit. Subsequent to the filing of this complaint, the USPTO cancelled the single claim of both the '664 and '103 patents in ex parte reexamination proceedings. This post-filing development would ordinarily be expected to terminate the patent infringement claims, as there are no longer valid patent rights to enforce.
Setting aside the patent cancellations, a core infringement question would have been one of visual comparison: Would an ordinary observer, after mentally filtering out the functional and unclaimed handles, find the overall ornamental design of the accused GOTHAM STEEL pan body to be substantially the same as the specific designs protected by the '664 patent (with its plain bottom) and the '103 patent (with its distinct patterned bottom)?
A secondary question for the '103 patent would have been one of design detail: Is the specific texture on the bottom plate of the accused GOTHAM STEEL pan, as depicted in the complaint, confusingly similar to the specific pattern of dots claimed in the '103 patent, or is it a discernibly different design?