1:17-cv-01206
Tristar Products Inc v. Telebrands Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Tristar Products, Inc. (Pennsylvania)
- Defendant: Telebrands Corp. (New Jersey) and Bulbhead.com, LLC (Delaware)
- Plaintiff’s Counsel: Bakos & Kritzer
- Case Identification: 1:17-cv-01206, D.N.J., 02/21/2017
- Venue Allegations: Venue is alleged to be proper in the District of New Jersey because Defendants are residents of the state, have regularly engaged in business in the district, and the alleged acts of infringement arise from those activities.
- Core Dispute: Plaintiff alleges that Defendants’ "RED COPPER" square pan infringes three of its design patents covering the ornamental appearance of its "COPPER CHEF" pan.
- Technical Context: The dispute centers on the intellectual property protecting the aesthetic and ornamental design of consumer cookware in the competitive "as seen on TV" market segment.
- Key Procedural History: The complaint notes that the matter in controversy is the subject of other district court cases involving the Plaintiff against different defendants. Subsequent to the filing of this complaint, all three patents-in-suit underwent ex parte reexamination at the USPTO. The claims of U.S. Design Patents D778,103 and D778,664 were cancelled. The claim of U.S. Design Patent D772,641 was confirmed as patentable. These post-filing events may significantly alter the scope and viability of the litigation.
Case Timeline
| Date | Event |
|---|---|
| 2015-12-01 | Priority Date for ’641, ’103, and ’664 Patents |
| 2016-06-01 | Plaintiff introduces its "COPPER CHEF" pan (approximate) |
| 2016-11-29 | U.S. Design Patent D772641 Issues |
| 2017-02-07 | U.S. Design Patent D778103 Issues |
| 2017-02-14 | U.S. Design Patent D778664 Issues |
| 2017-02-21 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D778,664, "Pan," issued February 14, 2017
The Invention Explained
- Problem Addressed: Design patents do not articulate a technical problem but instead seek to protect a "new, original and ornamental design for an article of manufacture." The patent protects a specific aesthetic appearance for a cooking pan, distinguishing it from other pans in the market.
- The Patented Solution: The patent claims the ornamental design of a square pan body with slightly rounded corners and a plain, unadorned bottom (D’664 Patent, Fig. 7). A key feature of the claim scope is the use of broken lines to depict the long handle and the helper handle, which indicates that the handles themselves are not part of the protected design (D’664 Patent, DESCRIPTION, col. 2:6-12). The protected design is therefore limited to the appearance of the pan body itself.
- Technical Importance: The complaint alleges this design is embodied in its "highly successful 'COPPER CHEF' square pan," which has "attained immense success in the marketplace" (Compl. ¶10).
Key Claims at a Glance
- The single asserted claim is for "The ornamental design for a pan, as shown and described" (D'664 Patent, col. 2:14-15).
- The essential visual elements of the claimed design are:
- A pan body with a generally square shape and high vertical sides.
- Slightly rounded corners and top rim.
- A flat, unadorned bottom surface.
- The complaint reserves the right to assert other claims, although design patents typically have only one (Compl. ¶21).
U.S. Design Patent No. D778,103, "Pan," issued February 7, 2017
The Invention Explained
- Problem Addressed: As with the ’664 patent, this patent protects a specific ornamental design for a cooking pan.
- The Patented Solution: The design is for a square pan body, nearly identical in shape to the ’664 patent. The distinguishing feature is the bottom surface, which shows a circular stippling or dotted pattern (D’103 Patent, Fig. 7). As with the ’664 patent, the handles are depicted in broken lines and are not part of the claimed ornamental design (D’103 Patent, DESCRIPTION, col. 2:6-12).
- Technical Importance: The complaint links this design to the commercial success of its "COPPER CHEF" pan (Compl. ¶10).
Key Claims at a Glance
- The single asserted claim is for "The ornamental design for a pan, as shown and described" (D'103 Patent, col. 2:14-15).
- The essential visual elements of the claimed design are:
- A pan body with a generally square shape.
- A bottom surface featuring a circular region with a pattern of dots.
- The complaint reserves the right to assert other claims (Compl. ¶30).
U.S. Design Patent No. D772,641, "Pan," issued November 29, 2016
Technology Synopsis
This patent protects the ornamental design of a square pan, shown in photographic figures rather than line drawings. Crucially, and in contrast to the other asserted patents, the claimed design shown in solid lines includes the specific forms of the long handle and the helper handle, as well as a circular induction plate on the bottom (D’641 Patent, Figs. 1-7).
Asserted Claims
The single design claim (Compl. ¶39).
Accused Features
The overall ornamental design of the "RED COPPER" pan, including its body and handles, is accused of infringement (Compl. ¶39).
III. The Accused Instrumentality
Product Identification
The "RED COPPER" square pan (Compl. ¶11).
Functionality and Market Context
The accused product is a piece of cookware sold by Defendants. The complaint focuses on its ornamental appearance, alleging it "copies the look and feel" of Plaintiff's "COPPER CHEF" trade dress and infringes the patented designs (Compl. ¶16). The complaint includes a side-by-side visual comparison showing the accused "RED COPPER" product next to drawings from the '664 patent (Compl. p. 5). This image depicts a square pan with a reddish exterior, a long metallic handle, and a smaller helper handle. The complaint alleges Defendants purposefully adopted this appearance to compete with Plaintiff's product (Compl. ¶18).
IV. Analysis of Infringement Allegations
The standard for design patent infringement is whether an "ordinary observer," giving such attention as a purchaser usually gives, would be deceived into purchasing the accused article thinking it was the patented one.
D778,664 Patent Infringement Allegations
| Claim Element (The ornamental design for a pan as shown and described) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A pan body with a square shape, high walls, and rounded corners, excluding handles. | The complaint alleges the overall design of the "RED COPPER" square pan is "substantially the same" as the patented design. A visual provided in the complaint compares a drawing from the patent with a photo of the accused product (pictured). | ¶22, ¶12 | col. 2:14-15 |
D778,103 Patent Infringement Allegations
| Claim Element (The ornamental design for a pan as shown and described) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A square pan body featuring a circular region with a dotted pattern on its bottom surface, excluding handles. | The complaint alleges the overall design of the "RED COPPER" square pan is "substantially the same" as the patented design. The complaint's visual comparison shows the bottom of the accused product has a solid metallic induction plate. | ¶31, ¶12 | col. 2:14-15 |
Identified Points of Contention
- Scope Questions: For the ’664 and ’103 patents, a central question is how the "ordinary observer" test applies when the claimed design explicitly excludes the handles (via broken lines), while the accused product has prominent handles. The court's analysis must filter out the visual effect of the unclaimed handles, which may significantly influence whether the remaining pan bodies appear "substantially the same."
- Technical Questions: A factual question for the ’103 patent is whether the accused product’s solid, circular induction plate, as depicted in the complaint (Compl. p. 5), is ornamentally similar to the claimed design's circular dotted pattern (D’103 Patent, Fig. 7). The same question arises for the ’641 patent concerning the specific photographic appearance of its claimed induction plate versus the accused product's plate.
V. Key Claim Terms for Construction
In design patents, claim construction focuses on the visual scope of the claim as depicted in the drawings.
- The Term: "The ornamental design for a pan"
- Context and Importance: The scope of this term is the central issue. Its construction defines which features of the pan are protected and which are not. Practitioners may focus on this issue because the use of solid versus broken lines in the different patents creates distinct scopes of protection, which is critical for the infringement analysis of each patent.
- Intrinsic Evidence for Interpretation (’664 and ’103 Patents):
- Evidence for a Broader Interpretation: A party might argue that while the specific handle designs are disclaimed, the pan's overall impression as a handled object should be considered.
- Evidence for a Narrower Interpretation: The patent specifications explicitly state that "The elements depicted in broken lines ... form no part of the claimed design" (D’664 Patent, col. 2:9-12; D’103 Patent, col. 2:9-12). This provides strong evidence that the claim is limited strictly to the visual features of the pan body.
- Intrinsic Evidence for Interpretation (’641 Patent):
- Evidence for a Broader Interpretation: The use of solid lines for the pan body and both handles indicates that the claim covers the overall visual impression of the complete pan as an integrated unit (D’641 Patent, Figs. 1-7).
- Evidence for a Narrower Interpretation: The claim is limited to the specific design shown in the photographs. Any significant deviation in the shape, proportion, or surface appearance of the handles or pan body in the accused product could support a finding of non-infringement.
VI. Other Allegations
- Indirect Infringement: The complaint makes general allegations of inducing infringement by "inducing others to make, use, sell, or offer to sell pans that embody" the claimed designs (Compl. ¶21, ¶30, ¶39). It does not plead specific facts, such as references to marketing materials or instructions, to support the required element of intent.
- Willful Infringement: The complaint alleges that Defendants' activities "have continued and are continuing with knowledge of the" patents, constituting "intentional, deliberate and willful" infringement (Compl. ¶28, ¶37, ¶46). The complaint does not specify whether this alleged knowledge was obtained pre- or post-suit.
VII. Analyst’s Conclusion: Key Questions for the Case
Impact of Claim Scope: A core issue will be one of design scope. For the ’103 and ’664 patents, can the accused pan be found infringing when the analysis must legally ignore the handles, which are a visually significant part of the accused product but are disclaimed from the patent claims? For the ’641 patent, is the specific design of the accused pan's handles substantially the same as the claimed design?
Visual Feature Mismatch: A key evidentiary question will be one of ornamental similarity. Does the accused product's solid metallic induction plate create a substantially similar visual impression to the '103 patent's dotted pattern or the '641 patent's specific photographic depiction of an induction plate in the eyes of an ordinary observer?
Effect of Reexamination: A dispositive procedural question will be the viability of the claims. Given the subsequent cancellation of the claims of the '103 and '664 patents during reexamination, the case will likely narrow to focus exclusively on the infringement and validity of the sole remaining patent, the '641 patent, whose claim was confirmed.