Kinekt Design LLC v. Sears Holdings Corp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Kinekt Design, LLC (New Jersey)
  • Defendant: Sears Holdings Corporation (Illinois); Sears Roebuck and Co.; Kmart Corporation; Helen Andrews, Inc. (New York); Norman Kelapire
  • Plaintiff’s Counsel: Angela Jupin, Esq.
• Case Identification: 2:17-cv-03496, D.N.J., 05/16/2017
• Venue Allegations: Venue is based on Defendants’ alleged sales of infringing products to consumers within the District of New Jersey through interactive commercial websites and physical brick-and-mortar store locations.
• Core Dispute: Plaintiff alleges that Defendants’ "Stainless Steel Men's Gear Spinner Ring" infringes a design patent and a utility patent covering Plaintiff’s “Gear Ring®” product, which features a system of interlocking, rotatable gears.
• Technical Context: The technology concerns wearable jewelry, specifically a finger ring, that incorporates a functional mechanical gear system for aesthetic, entertainment, or therapeutic purposes.
• Key Procedural History: The complaint alleges that Plaintiff provided Defendants with pre-suit notice of infringement, first via direct contact with Sears on November 19, 2016, and subsequently via a formal cease and desist letter on November 21, 2016. These events are foundational to the complaint's allegations of willful infringement.

Case Timeline

Date	Event
2010-04-14	Earliest Priority Date for D'199 and '624 Patents
2011-06-07	U.S. Design Patent No. D639,199 Issued
2014-01-28	U.S. Patent No. 8,636,624 Issued
2016-10-19	Accused Product allegedly first listed for sale on Sears.com
2016-11-19	Plaintiff notifies Defendant Sears of alleged infringement
2016-11-21	Plaintiff faxes cease and desist letter to Defendant SHC
2017-05-16	Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Design Patent No. D639,199 - GEAR RING

The Invention Explained

• Patent Identification: U.S. Design Patent No. D639,199, issued June 7, 2011.
• Problem Addressed: The patent does not address a technical problem; as a design patent, it protects a new, original, and ornamental design for an article of manufacture (Compl. ¶4; D'199 Patent, p. 23).
• The Patented Solution: The patent claims the specific visual appearance of a finger ring. The design features a wide central band with two outer toothed rims that flank several smaller, planetary-style gears, creating the ornamental appearance of an exposed, functional gear system (D'199 Patent, Figs. 1, 3). The portions of the gears depicted in broken lines are not part of the claimed design (D’199 Patent, Description).
• Technical Importance: The design merges industrial, mechanical aesthetics with personal ornamentation, creating a distinctive look for wearable jewelry (D’199 Patent, Fig. 1).

Key Claims at a Glance

• Design patents contain a single claim. The asserted claim is for "The ornamental design for a gear ring, as shown and described" (D'199 Patent, p. 23).

U.S. Patent No. 8,636,624 - ROTATIONAL EDUCATIONAL ENTERTAINMENT AND THERAPEUTIC DEVICE

The Invention Explained

• Patent Identification: U.S. Patent No. 8,636,624, issued January 28, 2014.
• Problem Addressed: The patent identifies a need for devices that are simultaneously wearable as jewelry and functional as educational, therapeutic, or entertainment tools. Existing inventions were noted as not being "wearable or portable by design" ('624 Patent, col. 1:58-59).
• The Patented Solution: The patent describes a "cylindrical gear ring assembly" designed to be worn on a finger. The assembly includes a base structure, two outer "annular gear wheels" with inward-facing teeth, and a plurality of "drive gear mechanisms" (e.g., planetary gears) mounted on the base between the outer wheels. When one outer wheel is rotated, the drive gears engage both outer wheels, causing them to rotate in opposite directions ('624 Patent, Abstract; col. 4:60-65).
• Technical Importance: The invention provides a self-contained, portable gear mechanism in the form factor of a ring, which can serve as a tool for demonstrating mechanical principles or for therapeutic purposes such as stress relief ('624 Patent, col. 2:25-29, 50-54).

Key Claims at a Glance

• The complaint asserts the "'624 Patent" generally without specifying claims; analysis is based on independent claim 1.
• Essential elements of Independent Claim 1 include:
  • A cylindrical ring assembly with a smooth inner diameter and holes for fasteners.
  • The assembly base is comprised of two sides of different diameters that fit together to form an "integrated single unit."
  • The sides have "annular lips" extending perpendicularly from the outer surface.
  • Two "outer annular gear wheels" are held in position by the annular lips.
  • These outer wheels have teeth that face "inward across the outer surface of the cylindrical ring assembly."
  • A plurality of "drive gear mechanisms" engage the teeth of the outer wheels, causing them to turn in unison when one is rotated.

III. The Accused Instrumentality

Product Identification

• The accused product is the "Stainless Steel Men's Gear Spinner Ring" (Model #4R22857-ST 10), also marketed as the "Helen Andrews Stainless Steel Men's Gear Spinner Ring" (Compl. ¶¶30, 36).

Functionality and Market Context

• The complaint alleges the accused product is an "exact duplicate of Plaintiff's patented Gear Ring® design" and appears to "function identically to Plaintiff's Gear Ring®" (Compl. ¶30). The product's online advertisement described it as "featuring gears embedded within a highly polished band, the ring actually spins and the gears turn!" (Compl. ¶31). Exhibit A provides a photographic exemplar of the Plaintiff's authentic Gear Ring®, which the complaint alleges the accused product copies (Compl. ¶4, Ex. A).
• The product is positioned as a low-cost alternative to Plaintiff's product, allegedly sold for $33.99 versus the $165.00 price of the authentic Gear Ring® (Compl. ¶¶19, 32). The complaint alleges Defendant Helen Andrews, Inc. acts as the wholesaler, purchasing "counterfeit" products from China and supplying them to retailers like Defendants Sears and Kmart (Compl. ¶¶38, 44).

IV. Analysis of Infringement Allegations

For the D'199 Patent, infringement will be determined by the "ordinary observer" test, comparing the patented design to the accused product's design. The complaint's core allegation is that the accused ring is an "exact duplicate" of the patented ornamental design (Compl. ¶30).

'624 Patent Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
a cylindrical ring assembly comprising a central axis and an inner diameter that is substantially smooth with holes for accepting a fastening mechanism	The accused product is a ring designed to be worn, and is alleged to be an "exact duplicate" of Plaintiff's product, which has these features. The complaint does not provide sufficient detail for analysis of the holes for a fastening mechanism.	¶30	col. 7:6-10
the cylindrical ring assembly further comprising a first side of a larger diameter than a second side so that the larger diameter first side fits firmly on top of the second side creating an integrated single unit	The complaint alleges identical function, which may support an inference that the internal construction is the same, but provides no specific allegations or evidence regarding the internal two-part construction of the accused product's base.	¶30	col. 7:11-14
the first and second sides each comprising an annular lip extending perpendicular to an outer surface of the cylindrical ring assembly	The complaint does not provide specific allegations or evidence regarding the presence of annular lips in the accused product.	¶30	col. 7:15-17
a first and second outer annular gear wheel of a larger diameter than the cylindrical ring assembly...held in position by the annular lips...	The product is described as a "Gear Spinner Ring" with a "band," consistent with the presence of outer gear wheels (Compl. ¶30). The visual in Exhibit A, showing Plaintiff's product, depicts these outer wheels (Compl. Ex. A).	¶30	col. 7:18-23
the first and second annular gear wheels comprising a plurality of teeth facing inward across the outer surface of the cylindrical ring assembly	The allegation that "the gears turn!" implies a functional meshing that requires inward-facing teeth on the outer wheels to engage the drive gears (Compl. ¶31). This configuration is visible on the authentic product shown in Exhibit A (Compl. Ex. A).	¶31	col. 7:24-27
a plurality of drive gear mechanisms with...gear teeth capable of engaging the first and second outer annular gear wheels where the gears turn in unison...	The product is described as having "gears embedded" that "turn," which directly alleges the presence and function of the drive gear mechanisms (Compl. ¶31). The visual in Exhibit A shows these gears on the authentic product (Compl. Ex. A).	¶31	col. 7:28-33

• Identified Points of Contention:
  • Technical Question: The complaint's allegations of infringement of the '624 patent rely heavily on the assertion that the accused product is a "duplicate" that "function[s] identically" (Compl. ¶30). A central question will be whether discovery produces evidence that the accused ring contains the specific internal structures recited in claim 1, such as the two-part base assembly and the annular lips, which are not visible from the exterior.
  • Scope Questions: For the D'199 patent, the infringement analysis will turn on a visual comparison. The key question is whether an ordinary observer would find the accused ring's design to be substantially the same as the design claimed in the patent. The complaint's allegation of an "exact duplicate" frames this as a direct factual dispute (Compl. ¶30).

V. Key Claim Terms for Construction

• The Term: "drive gear mechanisms"

• Context and Importance: This term from claim 1 of the '624 Patent defines the intermediate gears that create the counter-rotation of the outer wheels. The structure and function of these components are central to the invention's operation. Practitioners may focus on this term because any difference in the number, type, or mounting of these gears in the accused product could be a basis for a non-infringement argument.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification suggests flexibility, stating that while the embodiment uses spur gears, an artisan "could use other gears and gear assemblies" and that the inventor "has contemplated any other similar type of gear that can drive the device" ('624 Patent, col. 3:35-37; col. 4:5-7). This language may support a construction covering any intermediate gear that transmits the claimed motion.
  • Evidence for a Narrower Interpretation: The figures and detailed description consistently depict a plurality of separate, rotating spur gears fastened to the base ('624 Patent, Fig. 1, 4; col. 5:46-51). A defendant could argue this limits the term to the specific arrangement of multiple, individually-rotating planetary gears, and not, for example, a single integrated component that performs a similar function.

• The Term: "cylindrical ring assembly...creating an integrated single unit"

• Context and Importance: This term from claim 1 of the '624 Patent describes the foundational structure of the ring. Its construction is critical because infringement requires the accused product to meet this structural limitation, not just achieve a similar result.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The abstract describes the invention more generally as a "cylindrical gear ring assembly" for use as a "decorative wearable ornamental device," which might support a reading that focuses on the overall form and function rather than a specific method of construction ('624 Patent, Abstract).
  • Evidence for a Narrower Interpretation: Claim 1 explicitly requires the assembly to have "a first side of a larger diameter than a second side so that the larger diameter first side fits firmly on top of the second side." This detailed recitation, illustrated in Figure 5, could be used to argue that the term is limited to this specific two-part, press-fit construction ('624 Patent, col. 7:11-14; Fig. 5).

VI. Other Allegations

• Indirect Infringement: The complaint does not contain a separate count for indirect infringement but alleges facts that may support it. It claims Defendant Andrews purchased counterfeit products and sold them wholesale to Defendants SHC, Sears, and Kmart, who then sold them to consumers (Compl. ¶44, 48, 49). The prayer for relief seeks to enjoin those "contributing to the infringement of, and/or inducing the infringement of the Patents" (Prayer for Relief ¶d).
• Willful Infringement: The complaint makes explicit allegations of willful infringement. The basis is Defendants' alleged continued sale of the accused products after receiving actual notice from the Plaintiff on November 19, 2016, and a cease and desist letter on November 21, 2016 (Compl. ¶¶40, 42). The complaint further alleges that instead of ceasing sales, Defendants "dropped the price of the products online from $33.99 to $29.74, presumably to sell as many units as possible," which is presented as evidence of intentional and willful conduct (Compl. ¶¶41, 51, 57).

VII. Analyst’s Conclusion: Key Questions for the Case

• A key evidentiary question will be one of factual identity: can Plaintiff prove that the accused "Stainless Steel Men's Gear Spinner Ring" is, as alleged, an "exact duplicate" of its product, thereby embodying not only the ornamental design of the D'199 patent but also the specific internal mechanical structures claimed in the '624 patent?
• A central issue will be willfulness and damages: did Defendants' alleged conduct after receiving pre-suit notice—specifically, continuing to sell the accused products and reducing their price—constitute the sort of "egregious" conduct required to support a finding of willful infringement and a potential award of enhanced damages?
• The case will also present a question of liability apportionment: how will the court untangle the roles of and apportion damages between the alleged upstream wholesaler (Helen Andrews, Inc.) and the downstream, direct-to-consumer retailers (Sears, Kmart)?