DCT
1:17-cv-01767
Tristar Products Inc v. Ocean State Jobbers Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Tristar Products, Inc. (Pennsylvania)
- Defendant: Ocean State Jobbers, Inc. (Rhode Island) and Zhejiang Cooker King Cooker Co., Ltd. (China)
- Plaintiff’s Counsel: Bakos & Kritzer
- Case Identification: 1:17-cv-01767, D.N.J., 03/16/2017
- Venue Allegations: Venue is based on Defendant Ocean State's business and sales in New Jersey through at least three retail stores, and Defendant Cooker King's business conduct within the state, including sales to New Jersey retailers.
- Core Dispute: Plaintiff alleges that Defendants’ "COPPER SQUARE PAN" infringes three design patents covering the ornamental appearance of a square cooking pan, and further alleges trademark and trade dress infringement.
- Technical Context: The dispute centers on the ornamental design of non-stick square cookware, a product category with significant consumer market presence driven by direct-response television advertising.
- Key Procedural History: The complaint identifies several other contemporaneous lawsuits filed by the Plaintiff against other parties concerning related products. Subsequent to the filing of this complaint, all three patents-in-suit underwent ex parte reexamination. U.S. Design Patent No. D772,641 survived with its claim confirmed. However, the sole claims of U.S. Design Patent Nos. D778,664 and D778,103 were canceled. This development suggests that the validity of the '664 and '103 patent designs was successfully challenged, likely based on prior art, and effectively terminates the infringement claims for those two patents, focusing the dispute on the surviving '641 patent.
Case Timeline
| Date | Event |
|---|---|
| 2015-12-01 | Priority Date for '664, '103, and '641 Patents |
| 2016-06-01 | Plaintiff's "COPPER CHEF" pan introduced (approx. date) |
| 2016-11-29 | U.S. Patent No. D772,641 ('641 Patent) Issued |
| 2017-02-07 | U.S. Patent No. D778,103 ('103 Patent) Issued |
| 2017-02-14 | U.S. Patent No. D778,664 ('664 Patent) Issued |
| 2017-03-03 | Reexamination of '664 Patent Requested |
| 2017-03-16 | Complaint Filed |
| 2017-05-03 | Reexamination of '103 and '641 Patents Requested |
| 2019-06-17 | Reexamination Certificate for '641 Patent Issued (Claim Confirmed) |
| 2019-12-16 | Reexamination Certificate for '664 Patent Issued (Claim Canceled) |
| 2020-01-02 | Reexamination Certificate for '103 Patent Issued (Claim Canceled) |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. D778,664 - "Pan," Issued February 14, 2017
The Invention Explained
- Problem Addressed: The complaint does not specify a technical problem, as is typical for design patents. The implicit goal is the creation of a new, original, and ornamental design for a cooking pan to distinguish it aesthetically in the marketplace (Compl. ¶10).
- The Patented Solution: The patent protects the specific visual appearance of a square pan. Key ornamental features include the deep, square body with rounded corners and straight sides; a long, metallic primary handle attached to one side; and a U-shaped "helper" handle attached to the opposite side ('664 Patent, Figs. 1, 6). The bottom surface is depicted as being smooth and unadorned ('664 Patent, Fig. 7). The design as a whole creates a particular visual impression.
- Technical Importance: The complaint alleges that Plaintiff utilizes this design in its "highly successful 'COPPER CHEF' square pan," which has been subject to extensive promotion and attained "immense success in the marketplace" (Compl. ¶10).
Key Claims at a Glance
- The patent contains a single claim: "The ornamental design for a pan, as shown and described." ('664 Patent, CLAIM).
- The essential elements are the visual characteristics depicted in the patent's nine drawing figures, including the pan's overall shape, proportions, and handle configurations.
U.S. Patent No. D778,103 - "Pan," Issued February 7, 2017
The Invention Explained
- Problem Addressed: Similar to the '664 Patent, this patent seeks to protect a new, original, and ornamental design for a cooking pan (Compl. ¶10).
- The Patented Solution: This design is very similar to the '664 Patent, claiming the overall appearance of a deep, square pan with two distinct handles ('103 Patent, Figs. 1, 6). The primary distinguishing feature appears to be the bottom of the pan, which includes a circular region with a pattern of raised dots, likely corresponding to an induction heating plate ('103 Patent, Fig. 7). This textured circular element is a key part of the claimed ornamental design.
- Technical Importance: The complaint groups this patent with the others as protecting the design utilized in the successful "COPPER CHEF" pan (Compl. ¶10).
Key Claims at a Glance
- The patent contains a single claim: "The ornamental design for a pan, as shown and described." ('103 Patent, CLAIM).
- The essential elements are the visual features shown in the drawings, which largely overlap with the '664 Patent but are distinguished by the inclusion of the circular, dotted pattern on the pan's bottom surface.
U.S. Patent No. D772,641 - "Pan," Issued November 29, 2016
Technology Synopsis
The '641 Patent protects an ornamental design for a square pan that is visually similar to the '664 and '103 patents. It features a square body, a long primary handle, and a U-shaped secondary handle ('641 Patent, Figs. 1, 6). Its bottom surface design, featuring a circular induction plate with a distinct pattern of concentric rings and dots, differentiates it from the other asserted patents ('641 Patent, Fig. 7).
Asserted Claims
The complaint asserts the patent's single design claim (Compl. ¶¶57-65).
Accused Features
The complaint alleges that the overall ornamental design of the "COPPER SQUARE PAN" infringes the design claimed in the '641 Patent (Compl. ¶58).
III. The Accused Instrumentality
Product Identification
The accused products are pans sold under the brand name "COPPER SQUARE PAN" (Compl. ¶11).
Functionality and Market Context
- The complaint describes the accused product as a "copper-colored square pan" (Compl. ¶20). Visual evidence provided in the complaint shows a pan with a square body, a long primary handle, and a U-shaped secondary handle. A photograph of the bottom of the accused pan shows a circular metallic plate with a pattern of dots, designed for use on induction stovetops (Compl. ¶12, p. 5; Compl. ¶19).
- The complaint alleges that Defendants manufacture, import, and sell these pans, including in New Jersey retail locations (Compl. ¶¶6, 22). The packaging for the accused product includes a "LIKE SEEN ON TV" logo, which Plaintiff alleges is intended to improperly benefit from Plaintiff's television advertising campaigns (Compl. ¶¶31-32). The side-by-side comparison provided in the complaint juxtaposes figures from the patents with photographs of the accused COPPER SQUARE PAN, highlighting the alleged visual similarities (Compl. ¶12, p. 5-6).
IV. Analysis of Infringement Allegations
The complaint does not contain a traditional claim chart exhibit. The infringement theory is based on the "ordinary observer" test for design patents, alleging that the accused product's design is "substantially the same" as the patented designs (Compl. ¶41, ¶50, ¶59). The core allegations are summarized below, based on the visual evidence provided in the complaint.
D778,664 Infringement Allegations
| Claim Element (from '664 Patent Figures) | Alleged Infringing Feature (from Complaint Photos) | Complaint Citation | Patent Citation |
|---|---|---|---|
| A deep, generally square pan body with rounded corners and vertical sides. | The accused product has a deep, generally square body with rounded corners and vertical sides. | ¶12, p. 5 | Fig. 1; DESCRIPTION |
| A long, straight primary handle affixed to one side of the pan body. | The accused product has a long, straight primary handle of a similar shape and proportion. | ¶12, p. 5 | Fig. 4; DESCRIPTION |
| A U-shaped secondary "helper" handle affixed to the side opposite the primary handle. | The accused product has a U-shaped secondary handle of a similar shape and proportion. | ¶12, p. 5 | Fig. 2; DESCRIPTION |
| A generally smooth, unadorned exterior bottom surface. | The complaint's visual for the '664 patent comparison does not show the bottom of the accused pan, but a separate photo does, revealing it is not smooth. | ¶19 | Fig. 7; DESCRIPTION |
D778,103 Infringement Allegations
| Claim Element (from '103 Patent Figures) | Alleged Infringing Feature (from Complaint Photos) | Complaint Citation | Patent Citation |
|---|---|---|---|
| A deep, generally square pan body with associated primary and secondary handles. | The accused product possesses the same overall shape and handle configuration. | ¶12, p. 5 | Fig. 1; DESCRIPTION |
| A circular plate on the exterior bottom surface containing a pattern of raised dots. | The accused product has a circular induction plate on its bottom containing a pattern of raised dots. | ¶12, p. 5 | Fig. 7; DESCRIPTION |
Identified Points of Contention
- Dispositive Procedural Issue: For the '664 and '103 patents, the primary issue is the subsequent cancellation of their respective claims during ex parte reexamination. As an invalid claim cannot be infringed, the infringement analysis for these two patents is likely moot.
- Scope Questions (for '641 Patent): The central dispute for the surviving '641 patent will be the "ordinary observer" test. The court will need to compare the patented design to the accused product in light of the prior art. The fact that the closely related '664 and '103 patent claims were canceled suggests the prior art is crowded, which could lead a court to focus on finer differences between the '641 design and the accused product.
- Technical Questions: A key question is whether the similarities between the designs are dictated by function rather than ornament. Defendants may argue that features like the square shape (for space efficiency), the induction plate, and the presence of two handles are functional and thus should be discounted in the infringement analysis, leaving only minor ornamental differences.
V. Key Claim Terms for Construction
This section is not applicable, as design patent claims consist of drawings rather than text with construable terms. The claim is simply for the "ornamental design for a pan, as shown and described."
VI. Other Allegations
Indirect Infringement
The complaint alleges that Defendants contributorily infringe and actively induce infringement by "making, using, selling, and/or offering to sell, or inducing others to make, use, sell or offer to sell pans that embody" the patented designs (Compl. ¶40, ¶49, ¶58). This is primarily directed at Defendant Cooker King, the alleged manufacturer, for supplying the accused products to Defendant Ocean State, the retailer.
Willful Infringement
The complaint alleges that Defendants' infringement was and is "intentional, deliberate and willful" (Compl. ¶47, ¶56, ¶65). The basis for this allegation is that Defendants' commercial activities continued "with knowledge of the ['664, '103, and '641] patent[s]" and in "reckless disregard of Tristar Products' rights" (Compl. ¶47, ¶56, ¶65).
VII. Analyst’s Conclusion: Key Questions for the Case
Given the subsequent cancellation of the '664 and '103 patent claims during reexamination, the patent portion of this case now centers exclusively on the surviving '641 patent. The key questions are:
- Infringement under the Ordinary Observer Test: The central issue will be one of visual comparison: when viewed in the context of the prior art, would an ordinary observer be deceived into believing the accused "COPPER SQUARE PAN" is the same as the specific design claimed in the '641 patent? The cancellation of the two related patents suggests the protectable scope of any such design is narrow, and small differences may be sufficient to avoid infringement.
- The Role of Functional Elements: A critical question will be the functionality of the design: how much of the visual similarity between the '641 patent and the accused pan is attributable to functional features (e.g., the square shape, the induction plate, the handle configuration)? The court will need to determine the scope of the claimed ornamental design by filtering out these functional aspects before performing the infringement comparison.
- Willfulness and Damages: If infringement of the '641 patent is found, a key evidentiary question will be whether Defendants had knowledge of this specific patent and engaged in conduct that was "objectively reckless," which would be necessary to support the claim for willful infringement and enhanced damages.