DCT
2:18-cv-00803
Slice Inc v. Acme United Corp
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Slice, Inc. (Delaware)
- Defendant: Acme United Corporation (Connecticut); Westcott (Delaware); Office Depot, Inc. (Delaware)
- Plaintiff’s Counsel: James M. Smedley, LLC
- Case Identification: 2:18-cv-00803, D.N.J., 01/19/2018
- Venue Allegations: Venue is alleged to be proper based on Defendants transacting business, operating retail outlets, and offering the accused products for sale within the District of New Jersey, where Plaintiff also sells its products and claims to have been harmed.
- Core Dispute: Plaintiff alleges that Defendants’ Westcott-branded utility cutters infringe a utility patent covering an auto-retracting blade mechanism and a design patent for the ornamental appearance of the utility blade itself.
- Technical Context: The technology concerns hand-held cutting tools, a market where product safety features, such as the automatically retracting blade at issue, are a key differentiator.
- Key Procedural History: The complaint details a prior business relationship between the parties, alleging that in January 2015, Slice and Acme executed a non-disclosure agreement (NDA) under which Slice provided product samples and confidential information. The complaint alleges that after receiving this information, Acme ceased communications and subsequently launched the accused product, which forms the basis for the allegations of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2011-04-26 | U.S. Design Patent No. D636,646 Issued |
| 2012-08-01 | Plaintiff begins marketing its "Slice Mini Cutter" (approx.) |
| 2012-12-19 | Priority Date for U.S. Patent No. 9,579,808 |
| 2013-01-01 | Plaintiff begins offering its "Slice Mini Cutter" for sale (approx.) |
| 2015-01-21 | Plaintiff and Defendant Acme execute a mutual non-disclosure agreement (approx.) |
| 2016-01-01 | Defendant Acme allegedly first sold the Accused Product (approx.) |
| 2017-02-28 | U.S. Patent No. 9,579,808 Issued |
| 2018-01-19 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,579,808 - "Pocket Cutter", issued February 28, 2017
The Invention Explained
- Problem Addressed: The patent’s background section identifies a safety concern with conventional pocket cutters where the blade can be left unnecessarily exposed, increasing the risk of injury. It notes that users may find it "cumbersome and time consuming to securely retract the blade" after each use (’808 Patent, col. 2:29-34).
- The Patented Solution: The invention is a pocket cutter with an automatically retracting blade to improve safety ('808 Patent, col. 2:45-47). As described in the abstract and detailed description, the cutter uses a thumb-operated slider switch connected to a blade carrier. A tension component, such as a spring, is configured to automatically pull the blade back into the housing when the user releases the thumb slider ('808 Patent, Abstract; Fig. 7).
- Technical Importance: This design provides an integrated safety mechanism that automatically shields the blade when not in active use, addressing a known hazard in hand-held cutting tools ('808 Patent, col. 2:45-49).
Key Claims at a Glance
- The complaint asserts independent claim 1 and reserves the right to assert others (Compl. ¶43).
- The essential elements of asserted independent claim 1 include:
- A housing.
- A blade carrier within the housing to hold a retractable blade.
- A thumb slider switch connected to the blade carrier to move it along a transverse groove.
- The thumb slider switch includes a connector post with an aperture, with the post extending through the groove and a slot in the blade carrier.
- A spring with a long arm that extends through the connector post aperture, which secures the switch to the carrier and provides a biasing force that both resists forward movement and automatically retracts the blade carrier.
U.S. Design Patent No. D636,646 - "Utility Blade", issued April 26, 2011
The Invention Explained
- Problem Addressed: Not applicable for a design patent.
- The Patented Solution: The patent protects the non-functional, ornamental design of a utility blade (D’646 Patent, Claim). The key visual features depicted in the patent's figures include the blade's overall trapezoidal shape, a distinctive concave notch on the top (non-cutting) edge, and the angled, pointed tip (D’646 Patent, Figs. 1, 3).
- Technical Importance: The patent protects the unique aesthetic appearance of a consumable component, the blade itself, which may contribute to the overall branding and trade dress of the plaintiff's product line (Compl. ¶13).
Key Claims at a Glance
- The complaint asserts infringement of the patent's single claim (Compl., Count II).
- The claim covers "the ornamental design for a utility blade, as shown and described" (D’646 Patent, Claim).
III. The Accused Instrumentality
- Product Identification: The accused products are the "Westcott Mini Cutter" and "Westcott Utility Cutter," which the complaint collectively terms the "Accused Product" (Compl. ¶36).
- Functionality and Market Context: The Accused Product is a cutting tool featuring a ceramic blade (Compl. ¶36). The complaint provides a photograph of the product's packaging, which advertises a "RETRACTABLE," "CERAMIC SAFETY BLADE" (Compl. ¶40). This visual shows a tool with an outer housing and a thumb-actuated slider, consistent with the technology area of the patents-in-suit. The complaint alleges the Accused Product is sold through various channels, including Office Depot retail stores (Compl. ¶37). The complaint provides a side-by-side photograph comparing the packaging and appearance of the accused Westcott Utility Cutter with the plaintiff's Slice Mini Cutter (Compl. ¶40).
IV. Analysis of Infringement Allegations
’808 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a housing | The Accused Product includes a housing that contains the internal components. | ¶45 | col. 9:18-20 |
| a blade carrier disposed within said housing... configured to retain a retractable blade on its interior side | The Accused Product's housing contains a blade carrier configured to retain a retractable blade. | ¶45 | col. 11:7-9 |
| a thumb slider switch operably connected to said blade carrier and configured to move said blade carrier transversely along a transverse groove in said housing | The Accused Product includes a thumb slider switch connected to the blade carrier, allowing the blade to move along a groove in the housing. | ¶46 | col. 10:33-35 |
| said thumb slider switch comprising a connector post... said connector post aperture extends beyond said blade carrier slot to the interior side of said blade carrier | The Accused Product includes a thumb slider switch with a connector post that connects to the blade carrier and travels along the transverse groove. | ¶47 | col. 10:59-65 |
| a spring mounted to a wall of said housing wherein... said long arm extends through the connector post aperture... imparting a biasing force... and biases the blade carrier to a retract position | The Accused Product includes a spring with a short and long arm, where the long arm extends through the connector post aperture. | ¶48 | col. 12:62-13:2 |
Identified Points of Contention:
- Scope Questions: The infringement analysis for the '808 patent may depend on whether the internal mechanism of the Accused Product meets the very specific structural limitations recited in claim 1. A key question is whether the Accused Product's spring mechanism has a "long arm" that "extends through the connector post aperture" to impart the claimed dual-function biasing force, or if it achieves a similar result through a different mechanical arrangement.
- Technical Questions: The complaint alleges the presence of the claimed internal components but does not provide visual or documentary evidence (such as a teardown analysis) of the Accused Product's internal workings. A central evidentiary question will be whether discovery confirms that the accused internal spring and slider assembly operate in the precise manner required by the claim language.
- Design Patent Questions: For the D'646 patent, the dispute will be adjudicated under the "ordinary observer" test. The core question is whether the overall visual appearance of the accused Westcott blade is substantially the same as the patented design, considering elements like the blade's profile and the distinctive top-edge notch. The complaint offers a visual comparison of the accused blade and a patent drawing to support its allegation (Compl. ¶58).
V. Key Claim Terms for Construction
- The Term: "long arm extends through the connector post aperture" (’808 Patent, Claim 1)
- Context and Importance: This term defines a specific mechanical interaction at the heart of the claimed invention's assembly and function. The infringement analysis will likely turn on whether the accused device's spring and connector are arranged in this precise manner. Practitioners may focus on this term as it presents a clear potential basis for a non-infringement defense if the accused device's structure differs.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not explicitly define "through" or "extends," which could allow for an argument that any interaction where the spring arm enters the aperture to apply force meets the limitation.
- Evidence for a Narrower Interpretation: The specification and figures appear to disclose a specific physical arrangement. The description of the long arm of the spring (105) passing through the connector post attachment point (132) to secure the components suggests a literal physical passage is required ('808 Patent, col. 10:63-65; Fig. 8).
- The Term: "imparting a biasing force... that provides resistance against moving the blade carrier forward... and biases the blade carrier to a retract position" (’808 Patent, Claim 1)
- Context and Importance: This limitation describes the dual functionality of the spring, which is central to the invention's safety feature. An infringement finding requires the accused spring to perform both functions: resisting extension and powering retraction.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue that any spring mechanism creating tension upon extension and causing retraction upon release satisfies the claim, regardless of how the force is applied.
- Evidence for a Narrower Interpretation: The specification links this function directly to the claimed structure, stating that when the user releases the slider, "the tension in the spring 105 causes the blade carrier 103 and the cutting blade 106 to be automatically retracted" ('808 Patent, col. 11:24-27). This could support an interpretation where the function is tied to the specific spring-and-carrier assembly shown.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement, stating that Defendants sell the Accused Product with the specific intent that customers will use it in an infringing manner and distribute "instructional materials" that encourage such use (Compl. ¶¶49, 51).
- Willful Infringement: The willfulness allegation is based on alleged pre-suit knowledge. The complaint asserts that Defendants engaged in business discussions with Plaintiff, executed an NDA, received product samples and confidential information, and then launched the Accused Product, suggesting Defendants had "turned a willfully blind eye" to an "objectively high likelihood" of infringement (Compl. ¶53).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of technical proof: does the internal mechanism of the accused Westcott cutter, particularly its spring and slider assembly, embody the highly specific structural and functional limitations recited in claim 1 of the '808 patent, or is there a material difference in its design and operation?
- The design patent claim will turn on a question of visual identity: under the "ordinary observer" test, is the overall ornamental appearance of the accused utility blade substantially the same as the design claimed in the D'646 patent, focusing on features like its profile and distinctive top-edge notch?
- A key factual dispute influencing potential damages and a finding of willfulness will concern the parties' pre-suit conduct: to what extent can Plaintiff prove that Defendants used confidential information obtained under the NDA to develop and launch the accused product, as the complaint alleges?