2:17-cv-13508
Contaldi v. Schmidt
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Walter Contaldi and Endo Razors, LLC d/b/a Half-Time Razors (New Jersey)
- Defendant: Kevin Schmidt, Cody Schmidt, and Speed Razor LLC (New Jersey)
- Plaintiff’s Counsel: PERI & STEWART, LLC
- Case Identification: 2:17-cv-13508, D.N.J., 04/19/2018
- Venue Allegations: Venue is alleged to be proper as Plaintiffs reside and conduct business in the district, and Defendants are subject to personal jurisdiction and have committed the alleged acts of infringement within the judicial district.
- Core Dispute: Plaintiff alleges that Defendants' "Speed Razor" product infringes a design patent for an ergonomic razor handle, and further alleges that the product and business were developed through misappropriation of confidential information disclosed under a non-disclosure agreement.
- Technical Context: The technology relates to ergonomic razors, particularly those with a handle designed to be held between the fingers for shaving one's own head or body.
- Key Procedural History: The complaint alleges that Plaintiff Walter Contaldi disclosed his razor concept, designs, prototypes, and business plans to Defendant Kevin Schmidt under a Non-Disclosure Agreement. After business negotiations failed, Defendants allegedly launched a competing company and product that mimics Plaintiff's design and marketing. The '213 Patent was issued after the alleged misappropriation and after the launch of the accused product. The complaint asserts claims for patent infringement alongside state and federal claims for trade secret misappropriation, breach of contract, and unfair competition.
Case Timeline
| Date | Event |
|---|---|
| 2015-01-01 | Plaintiff engages patent counsel (approximate) |
| 2016-03-04 | U.S. Patent No. D802,213 application filed |
| 2016-07-12 | Plaintiff and Defendant Kevin Schmidt execute NDA |
| 2016-11-01 | Plaintiff's "Half-Time Razors" website launches (approximate) |
| 2016-12-05 | Defendant Speed Razor, LLC is formed |
| 2017-08-13 | Plaintiff discovers Defendants' "Speed Razor" website (approximate) |
| 2017-08-15 | Plaintiff transmits cease-and-desist correspondence |
| 2017-11-07 | U.S. Patent No. D802,213 issues |
| 2018-04-19 | First Amended Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D802,213 - RAZOR HANDLE (Issued Nov. 7, 2017)
The Invention Explained
- Problem Addressed: The complaint asserts that in 2000, plaintiff Walter Contaldi found existing shaving products "unsatisfactory" for the purpose of head shaving and sought to design a razor he could "easily use for shaving his head" (Compl. ¶¶ 15-16).
- The Patented Solution: As a design patent, the '213 Patent does not describe a technical problem or solution in its text. It protects the purely ornamental, non-functional appearance of a razor handle as depicted in its drawings ('213 Patent, Figs. 1-7). The design consists of a central, arched bridge intended to be gripped by the user's fingers, which connects to two downward-extending arms that terminate in platforms for attaching razor blade cartridges ('213 Patent, Fig. 1). The complaint characterizes this as a "unique and distinctive razor handle" (Compl. ¶18).
- Technical Importance: The complaint alleges the design's importance stems from its "specific and unique technical aspects and uses" for head shaving, which differs from conventional face shaving (Compl. ¶27(b)-(c)).
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a razor handle, as shown and described" ('213 Patent, CLAIM).
- The key ornamental features defining the claimed design include:
- A central, arched handle with a smooth, curved upper surface.
- Two leg-like structures extending downward and outward from the ends of the arched handle.
- Platforms at the base of each leg for mounting razor cartridges.
- The specific proportions, curvatures, and overall visual impression created by the combination of these elements as shown in Figures 1-7.
- The patent specification explicitly states that the broken lines illustrating razor cartridges depict environmental structure and "form no part of the claimed design" ('213 Patent, DESCRIPTION).
III. The Accused Instrumentality
Product Identification
The "Speed Razor" products sold and advertised by Defendants on websites including www.speedrazor.com (Compl. ¶¶ 47, 49, 58).
Functionality and Market Context
The complaint alleges the accused product is a "Head and Body shaver" that "replicate[s] the Half-Time Razor" (Compl. ¶¶ 49, 50(d)). The complaint provides visual evidence, including a side-by-side comparison of the patented design and photographs of the accused product, to support the allegation of similarity (Compl. ¶59). A photograph from the accused product's website shows it being held with two fingers through an arched handle for use. (Compl. p. 18). The complaint alleges Defendants copied numerous marketing elements, including the phrase "Ergonomic grip" and the use of similar imagery (Compl. ¶50).
IV. Analysis of Infringement Allegations
The complaint alleges that the accused product infringes the '213 Patent under the "ordinary observer" test, stating that the resemblance between the designs is "such as to deceive such an ordinary observer, inducing him to purchase one supposing it to be the other" (Compl. ¶67). The central evidence presented is a multi-page visual comparison.
D802,213 Infringement Allegations
| Key Ornamental Feature (from '213 Patent) | Alleged Infringing Functionality (from Accused Product) | Complaint Citation | Patent Citation |
|---|---|---|---|
| A central, arched handle forming a grip for the user's fingers, shown from a perspective view. | The accused product features a central, arched handle of a similar shape and proportion, also forming a finger grip. | ¶59, p. 15 | Fig. 1 |
| A front/back view showing the specific curvature and profile of the arched handle. | The accused product, shown in a photograph from a similar front/back angle, allegedly possesses a nearly identical arched profile. | ¶59, p. 16 | Fig. 2-3 |
| A top view illustrating the width of the central bridge and the flared shape of the leg structures. | A top-down photograph of the accused product allegedly shows a substantially similar silhouette, including the width of the handle and shape of the connecting structures. | ¶59, p. 17 | Fig. 6 |
| A bottom view showing the underside of the handle and the two platforms for cartridge attachment. | A photograph of the accused product's underside allegedly shows the same configuration of an arched bridge connecting two cartridge attachment points. | ¶59, p. 18 | Fig. 7 |
- Identified Points of Contention:
- Scope Questions: A central question is whether the overall visual impression of the accused Speed Razor handle is "substantially the same" as the claimed design. A defense may focus on any minor differences in the specific angles of the legs, the thickness of the arch, or surface texturing to argue that an ordinary observer would not be deceived.
- Technical Questions: The infringement analysis for a design patent is visual, not technical. The primary question is not one of function but of appearance. The court's analysis will likely involve a direct visual comparison between the patent figures and the physical accused product (or high-quality photographs thereof).
V. Key Claim Terms for Construction
In design patent litigation, claim construction focuses on the scope of the claimed design as a whole, as depicted in the drawings, rather than on construing specific text-based terms.
- The Term: "The ornamental design for a razor handle."
- Context and Importance: The interpretation of the overall visual scope of the design is dispositive for infringement. The key issue is what specific features are part of the protected design and how much variation is permissible in an accused product before it is no longer considered "substantially the same."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party arguing for broader protection may assert that the core novelty of the design lies in the overall configuration—an arched finger-grip handle with two outwardly-splayed razor heads—and that minor variations in surface details or proportions do not change the overall visual impression. The clean, unadorned lines in Figures 1-7 could support an argument that the claim is not limited to a specific texture or minor ornamentation.
- Evidence for a Narrower Interpretation: A party arguing for a narrower scope would emphasize the precise curvatures, proportions, and transitions between surfaces as shown in the patent's seven figures. Crucially, they would point to the patent’s express disclaimer that the razor blade cartridges shown in broken lines "form no part of the claimed design" ('213 Patent, DESCRIPTION). This limits the claim to the handle itself, meaning the infringement analysis must focus exclusively on the shape of the handle, not the attached blades.
VI. Other Allegations
- Indirect Infringement: The First Count of the complaint alleges direct infringement under 35 U.S.C. § 271(a) but does not contain allegations of indirect or induced infringement for the patent claim (Compl. ¶66).
- Willful Infringement: The complaint contains extensive allegations that may support a finding of willfulness. It alleges that Defendant Kevin Schmidt was given access to Plaintiffs' confidential information, prototypes, and business plans under an NDA before the patent issued (Compl. ¶¶ 27, 31, 33). The complaint further alleges that Plaintiffs provided Defendants with "actual notice" of infringement on "repeated occasions" beginning in August 2017, prior to the patent's issuance and continuing after (Compl. ¶63). It is alleged this conduct demonstrates awareness of an "objectively high likelihood" that the actions constituted infringement of the '213 Patent (Compl. ¶64).
VII. Analyst’s Conclusion: Key Questions for the Case
A central issue will be one of visual identity: In applying the "ordinary observer" test, will a court find that the overall ornamental design of the accused "Speed Razor" handle is substantially the same as the design claimed in the '213 Patent, or are there sufficient visual differences to distinguish them in the eyes of a consumer?
A second key question will relate to willfulness and the timeline of events: Given that the alleged misappropriation of the design concept and the launch of the accused product occurred before the '213 Patent issued, how will the court weigh the detailed allegations of pre-issuance knowledge, bad faith, and post-issuance notice in determining whether any infringement was willful?
The case will also involve the interplay of patent and non-patent claims: How will the evidence and findings related to the claims for trade secret misappropriation and breach of contract (which are based on pre-patent-issuance conduct) influence the analysis and potential remedies for the post-issuance patent infringement claim?