DCT
1:17-cv-02067
Tristar Products Inc v. Penn LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Tristar Products, Inc. (Pennsylvania)
- Defendant: Penn LLC d/b/a PULSETV.COM (Illinois) and Pulse Direct, Inc. d/b/a PULSETV.COM (Illinois)
- Plaintiff’s Counsel: Bakos & Kritzer
- Case Identification: 1:17-cv-02067, D.N.J., 03/29/2017
- Venue Allegations: Venue is asserted based on Defendants allegedly soliciting and conducting business in New Jersey through their website, www.pulsetv.com.
- Core Dispute: Plaintiff alleges that Defendant’s “COPPER SQUARE CASSEROLE PAN” infringes three design patents that protect the ornamental appearance of a square cooking pan.
- Technical Context: The lawsuit concerns the ornamental design of consumer cookware, a market where visual appearance and branding are significant drivers of commercial success.
- Key Procedural History: The complaint notes Plaintiff’s related “COPPER CHEF” pan has achieved sales exceeding $200 million. Subsequent to the filing of this complaint, all three patents-in-suit underwent ex parte reexamination. The U.S. Patent and Trademark Office issued certificates cancelling the sole claim of both the D778,664 and D778,103 patents. The sole claim of the D772,641 patent was confirmed as patentable. These post-filing developments effectively terminate the infringement counts related to the '664 and '103 patents, leaving the '641 patent as the sole remaining subject of the patent dispute.
Case Timeline
| Date | Event |
|---|---|
| 2015-12-01 | Earliest Priority Date for all Patents-in-Suit |
| 2016-06-01 | Plaintiff's "COPPER CHEF" pan introduced (approximate) |
| 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 |
| 2017-03-29 | Complaint Filed |
| 2019-06-17 | Reexamination Certificate for '641 Patent Issued (Claim Confirmed) |
| 2019-12-16 | Reexamination Certificate for '664 Patent Issued (Claim Cancelled) |
| 2020-01-02 | Reexamination Certificate for '103 Patent Issued (Claim Cancelled) |
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 solve technical problems but rather protect the novel, ornamental, and non-obvious appearance of an article of manufacture (Compl. ¶9). The patent provides a new ornamental design for a cooking pan.
- The Patented Solution: The '664 Patent claims the ornamental design for a pan as depicted in its figures ('664 Patent, Claim). The design features a deep, square-shaped body with rounded corners, an elongated primary handle, and a C-shaped "helper" handle on the opposite side. The features are shown in solid lines, indicating that the overall shape and configuration of the pan constitute the claimed design ('664 Patent, Figs. 1-7).
- Technical Importance: The design is embodied in Plaintiff's "highly successful 'COPPER CHEF' square pan," which the complaint asserts has achieved "immense success in the marketplace" (Compl. ¶9).
Key Claims at a Glance
- The patent asserts a single claim for "The ornamental design for a pan, as shown and described."
- The key ornamental features shown in solid lines in the drawings include:
- A substantially square pan body with rounded vertical corners and a slightly flared upper rim.
- An elongated, contoured primary handle affixed to one side of the pan body.
- A smaller, C-shaped helper handle affixed to the side opposite the primary handle.
- Note: The claim of this patent was cancelled during an ex parte reexamination proceeding concluded on December 16, 2019 (D778,664 C1).
U.S. Design Patent No. D778,103 - "Pan"
Issued February 7, 2017
The Invention Explained
- Problem Addressed: This patent protects a new, ornamental design for an article of manufacture, as is the purpose of a design patent (Compl. ¶9).
- The Patented Solution: The '103 Patent claims "The ornamental design for a pan, as shown and described" ('103 Patent, Claim). The drawings in the patent use broken lines to depict the pan's overall shape, including its body and handles, indicating these elements are not part of the claimed design ('103 Patent, Figs. 1-6). The claimed design, shown in solid lines, consists solely of an ornamental pattern on the exterior bottom of the pan, which includes a central disc surrounded by concentric circles of dots ('103 Patent, Fig. 7).
- Technical Importance: This specific bottom pattern is alleged to be part of the design of Plaintiff's commercially successful "COPPER CHEF" pan (Compl. ¶9).
Key Claims at a Glance
- The patent asserts a single claim for "The ornamental design for a pan, as shown and described."
- The key ornamental feature shown in solid lines is a specific pattern on the exterior bottom surface of a pan, consisting of:
- A circular pattern composed of a solid central disc and multiple concentric rings of individual dots.
- Note: The claim of this patent was cancelled during an ex parte reexamination proceeding concluded on January 2, 2020 (D778,103 C1).
U.S. Design Patent No. D772,641 - "Pan"
Issued November 29, 2016
- Technology Synopsis: This design patent protects the ornamental design for a pan, as shown in a series of color photographs ('641 Patent, DESCRIPTION). The claimed design consists of a copper-colored, square-shaped pan with a textured interior cooking surface, a specific circular pattern on the exterior bottom, a long primary handle, and a C-shaped helper handle ('641 Patent, Figs. 1-7). The patent's claim was confirmed as patentable during an ex parte reexamination proceeding ('641 Patent C1).
- Asserted Claims: The single design claim for "The ornamental design for a pan, as shown and described."
- Accused Features: The complaint alleges that the overall ornamental design of the "COPPER SQUARE CASSEROLE PAN," including its shape, color, and handle configuration, infringes the '641 patent (Compl. ¶¶11, 44).
III. The Accused Instrumentality
Product Identification
- The accused product is the "COPPER SQUARE CASSEROLE PAN" (Compl. ¶10).
Functionality and Market Context
- The product is a piece of cookware. The complaint alleges that Defendants market this product on their website within an "AS SEEN ON TV" section (Compl. ¶15). Plaintiff alleges this is an attempt to "confuse consumers and to improperly benefit from Tristar's extensive television advertising" for its own "COPPER CHEF" pan, which has sales exceeding $200 million (Compl. ¶¶9, 17). The complaint provides a side-by-side visual comparison of drawings from the '664 Patent and photographs of the accused product (Compl. ¶11, p. 5).
IV. Analysis of Infringement Allegations
The standard for design patent infringement is whether an ordinary observer, familiar with the prior art, would be deceived into believing the accused design is the same as the patented design. The analysis below is based on the allegations in the complaint, notwithstanding the subsequent cancellation of the '664 and '103 patent claims.
D778,664 Infringement Allegations
| Claim Element (from '664 Patent Drawings) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A deep, square-shaped pan body with rounded corners and a flared upper lip. | The accused product is a deep, square-shaped pan with rounded corners and a flared upper lip. | ¶11 | '664 Patent, Fig. 1 |
| An elongated, contoured primary handle riveted to one side of the pan body. | The accused product features an elongated, contoured primary handle riveted to one side. | ¶11 | '664 Patent, Fig. 4 |
| A C-shaped "helper" handle riveted to the side opposite the primary handle. | The accused product features a C-shaped "helper" handle riveted to the opposite side. | ¶11 | '664 Patent, Fig. 2 |
D778,103 Infringement Allegations
| Claim Element (from '103 Patent Drawings) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An ornamental circular pattern on the exterior bottom of a pan, comprising a solid central disc and concentric rings of dots. | The accused product features a circular induction plate on its exterior bottom that creates a visually similar pattern. | ¶11 (p. 6) | '103 Patent, Fig. 7 |
Identified Points of Contention
- Scope Questions: For the '641 patent, a central question is the scope imparted by the use of color photographs. A court may need to determine if the claim is limited to the specific copper color and texture shown, or if it covers a broader range of similar appearances.
- Technical Questions: A key evidentiary question for the '641 patent infringement claim will be a detailed comparison of the surface textures. The complaint's photographs suggest visual similarities, but the degree to which the accused product's texture replicates the patented design shown in the '641 patent figures will be a matter for factual determination (Compl. ¶11, p. 6).
- Functionality Defense: A potential defense is that certain shared features, such as the square shape (for maximizing cooking area) and dual handles (for stability), are primarily functional and thus should be discounted from the infringement analysis. The court would then focus on whether the remaining ornamental aspects of the designs are substantially similar.
V. Key Claim Terms for Construction
In design patent cases, construction focuses on the scope of the claimed design as a whole, as depicted in the drawings, rather than on discrete textual terms.
- The Term: "The ornamental design for a pan" (as shown in the '641 Patent).
- Context and Importance: The central issue is defining the scope of the visual impression protected by the '641 patent. Practitioners may focus on this "term" because the outcome of the infringement analysis depends entirely on what an ordinary observer would perceive as the patented design, particularly concerning the weight given to color, shape, and surface texture when compared to the accused product.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Plaintiff may argue that the claim covers the overall visual gestalt created by the combination of the square shape, handle configuration, copper color, and surface patterns, and that minor differences do not negate the overall similarity of the aesthetic impression ('641 Patent, Figs. 1-7).
- Evidence for a Narrower Interpretation: Defendant may argue the use of color photographs in the '641 patent limits the design to the specific copper coloration and metallic finish depicted ('641 Patent, DESCRIPTION). Further, Defendant could argue that functional elements (e.g., the square shape, helper handle) must be excluded from the comparison, narrowing the scope of what is protectably "ornamental."
VI. Other Allegations
- Indirect Infringement: The complaint makes boilerplate allegations of induced and contributory infringement, stating Defendants induce others to make, use, or sell the infringing pans (Compl. ¶¶26, 35, 44). The complaint does not plead specific facts to support these allegations beyond the act of selling the product itself.
- Willful Infringement: Willfulness is alleged for all patents based on Defendants' commercial activities continuing with alleged knowledge of Plaintiff's patent rights (Compl. ¶¶33, 42, 51). The complaint also alleges Defendants knew of Plaintiff's "COPPER CHEF" trade dress prior to selling the accused product, which may be used to argue pre-suit knowledge of Plaintiff's commercial products and related intellectual property (Compl. ¶22).
VII. Analyst’s Conclusion: Key Questions for the Case
The post-filing cancellation of the '664 and '103 patent claims radically narrows this dispute. The case will now turn entirely on the alleged infringement of the single remaining patent.
The Overriding Question: With the '664 and '103 patents invalidated, the sole issue is infringement of the '641 patent. A threshold question is whether Plaintiff's case, which was built on a family of three designs, can succeed based on the single design that survived reexamination.
A Question of Visual Scope: The core remaining issue will be one of definitional scope and similarity: is the overall ornamental design of the accused pan, when viewed by an ordinary observer, substantially the same as the specific design claimed in the '641 patent? This will require the court to weigh the combined effect of the pan's distinctive copper color, square shape, handle configuration, and surface patterns, as depicted in the patent's color photographs.
A Key Evidentiary Challenge: A central question will be one of functionality versus ornament: to what extent are the shared features between the '641 patent and the accused product (e.g., deep square body, dual handles) dictated by utilitarian function? The outcome may depend on whether the court finds that the protectable, purely ornamental features of the '641 patent are, by themselves, substantially similar to those on the accused pan.