DCT
2:18-cv-12507
New Generation Devices Inc v. Veterinary Orthopedic Implants Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: New Generation Devices, Inc. (New Jersey)
- Defendant: Veterinary Orthopedic Implants, Inc. (Florida) and Claude Gendreau (Illinois)
- Plaintiff’s Counsel: McCarter & English, LLP
- Case Identification: 2:18-cv-12507, D.N.J., 08/07/2018
- Venue Allegations: Venue is asserted based on Defendant VOI’s shipping, distribution, and sales of accused products into New Jersey, as well as the parties' prior consent to jurisdiction in the District of New Jersey through a Settlement Agreement and Consent Permanent Injunction entered in a prior case.
- Core Dispute: Plaintiff alleges that Defendants’ veterinary bone plates infringe its design patent and associated trade dress, and that this conduct violates a prior settlement agreement and court-ordered injunction between the parties.
- Technical Context: The dispute centers on orthopedic implants, specifically metal bone plates used in Tibial Plateau Leveling Osteotomy (TPLO) surgery, a common procedure to repair cruciate ligament injuries in dogs.
- Key Procedural History: The complaint is heavily predicated on a prior lawsuit between the same parties over the same design patent (07-cv-3197, D.N.J.). That case concluded with a 2008 Settlement Agreement and a 2009 Consent Permanent Injunction, which enjoined Defendants from selling specific infringing plates and using certain branding. The current complaint alleges new acts of infringement and breach of the prior settlement and injunction.
Case Timeline
| Date | Event |
|---|---|
| 2004-03-25 | '453 Patent Priority Date (filing of parent application) |
| 2004 | Plaintiff NGD begins selling its TPLO plates |
| 2007-02-06 | U.S. Patent No. D536,453 Issues |
| 2007-07-10 | Plaintiff files prior lawsuit against Defendants |
| 2008-11-24 | Settlement Agreement in prior lawsuit becomes effective |
| 2009-03-09 | Court enters Consent Permanent Injunction in prior lawsuit |
| 2018-08-07 | Current Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D536,453 - "Bone Plate"
- Patent Identification: U.S. Design Patent No. D536,453, "Bone Plate", issued February 6, 2007.
The Invention Explained
- Problem Addressed: As a design patent, the '453 Patent does not describe a technical problem and solution. It protects the purely ornamental, non-functional visual characteristics of a bone plate (Compl. ¶13, ¶16).
- The Patented Solution: The patent claims the specific aesthetic appearance of a bone plate as depicted in its drawings ('453 Patent, Claim). Key visual features include its overall "T" shape, a generally triangular head containing a triangular pattern of three screw holes, and an elongated body with a series of longitudinally aligned screw holes, all with specific contours and shaping ('453 Patent, FIG. 1-2).
- Technical Importance: The complaint alleges that the distinctive, non-functional design serves to identify Plaintiff NGD as the source of the TPLO plates in the veterinary surgery market (Compl. ¶16).
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a bone plate, as shown and described" ('453 Patent, col. 2:6-8). The scope of this claim is defined by the visual representations in the patent's figures. The key ornamental features subject to protection include:
- The overall T-shaped configuration with a distinct triangular head and an elongated body.
- The specific triangular arrangement of three apertures in the head portion.
- The linear arrangement, shape, and spacing of the apertures along the body portion.
- The particular beveled edges and surface curvature of the plate as a whole.
III. The Accused Instrumentality
Product Identification
- The accused products are various models of veterinary bone plates sold by Defendant VOI, identified by product codes such as "L ST 3.5 L," "L ST 3.5 Mini DKLC L," and others (Compl. ¶27). The complaint notes these products are marketed in a catalogue under the heading "TPLO - New Jersey Style" (Compl. ¶26, ¶32; Compl. Ex. E).
Functionality and Market Context
- The accused plates are orthopedic implants used by veterinarians for TPLO surgery (Compl. ¶14, ¶55). The complaint alleges that by marketing these products as "New Jersey Style," Defendants are wrongfully suggesting an affiliation with the Plaintiff, which is a well-known creator of TPLO plates located in New Jersey (Compl. ¶32, ¶54). The complaint provides a screenshot from Defendant's website showing a product category for "New Jersey Style Implants" (Compl. Ex. E, p. 48).
IV. Analysis of Infringement Allegations
The complaint alleges that the design of the Accused Plates is substantially the same as the patented design, such that an ordinary observer would be deceived (Compl. ¶29). The core of this allegation is presented in a side-by-side visual comparison. This comparison juxtaposes Figure 2 of the '453 Patent with images of three different models of the Accused Plates (Compl. ¶28).
| Ornamental Feature (from '453 Patent figures) | Alleged Infringing Feature of the Accused Plates | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a bone plate | The overall visual appearance of the Accused Plates, which allegedly embodies the patented design or a colorable imitation of it | ¶28, ¶29 | '453 Patent, Claim |
| Overall T-shaped configuration | The Accused Plates allegedly feature the same T-shape, with a similarly proportioned triangular head and elongated body as shown in the patent figures | ¶28, ¶30 | '453 Patent, FIG. 2 |
| Arrangement of apertures in head and body | The Accused Plates allegedly replicate the patented placement and grouping of apertures in both the head and body sections | ¶28, ¶30 | '453 Patent, FIG. 2 |
- Identified Points of Contention:
- Visual Similarity: The central question for the court will be whether an ordinary observer, likely a veterinarian familiar with such devices, would find the overall visual appearance of the accused "New Jersey Style" plates to be substantially the same as the design claimed in the '453 Patent. The side-by-side comparison provided in the complaint will be a primary piece of evidence in this analysis (Compl. ¶28).
- Functionality: The recitals in the prior Settlement Agreement indicate that Defendants previously argued the patented design was invalid for being functional (Compl. Ex. C, p. 30-31). It is possible Defendants will again argue that the similarities between the products are dictated by surgical necessity rather than ornamental choice, raising the question of whether the '453 Patent protects a valid, non-functional design.
V. Key Claim Terms for Construction
In a design patent case, there are typically no claim terms to be construed in the manner of a utility patent. The claim's scope is defined by the patent's drawings as a whole. The analysis will not focus on the definition of a specific word but on a comparison of the overall visual impression of the accused products against the patented design. Practitioners will focus on the holistic visual comparison mandated by the "ordinary observer" test rather than the construction of any particular term.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendant VOI and Defendant Claude Gendreau individually induced and contributed to infringement by others (Compl. ¶38, ¶44). The factual basis alleged for Mr. Gendreau's personal liability is his role as the "incorporator, founder, owner and secretary of VOI" and his direct involvement in the infringing activities (Compl. ¶43).
- Willful Infringement: The willfulness allegation is based on Defendants' alleged knowledge of the '453 Patent stemming from the prior 2007 lawsuit, the 2008 Settlement Agreement, and the 2009 Consent Permanent Injunction, which specifically involved the same patent and parties (Compl. ¶19-¶23, ¶41, ¶47). The complaint also alleges Defendants' use of the "New Jersey Style" branding is further evidence of intentional copying and an attempt to trade on Plaintiff's goodwill (Compl. ¶32, ¶54).
VII. Analyst’s Conclusion: Key Questions for the Case
- Contempt of Court: A threshold issue will be whether the Defendants' alleged conduct constitutes a violation of the 2009 Consent Permanent Injunction. This question focuses not only on patent infringement but also on potential contempt of a court order, which carries distinct legal consequences.
- Infringement via the Ordinary Observer Test: The core patent question will be one of visual identity: from the perspective of an ordinary observer in the field of veterinary surgery, is the overall ornamental design of Defendants' "New Jersey Style" plates substantially the same as the design protected by the '453 Patent?
- Validity and the Functionality Doctrine: A likely defense will resurrect a key issue from the parties' prior dispute: are the visual features of the patented plate dictated by their orthopedic function, or are they truly ornamental? The court may need to decide whether the design is invalid for being functional, a determination that could resolve the entire patent infringement claim.