2:21-cv-20023
Best Brands Consumer Products Inc v. Kitchinventions LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Best Brands Consumer Products, Inc. and Best Brands Sales Company, LLC (New Jersey)
- Defendant: Kitchinventions, LLC (Florida)
- Plaintiff’s Counsel: Goldberg Cohen LLP
- Case Identification: 2:21-cv-20023, D.N.J., 11/04/2022
- Venue Allegations: Plaintiff alleges venue is proper in the District of New Jersey because Defendant transacts business in the state, has directed communications to Plaintiff in the state, and because it is the district where Plaintiff (the accused infringer) resides.
- Core Dispute: Plaintiff seeks a declaratory judgment that its "Cuisinart Suction Spoon Rest" product does not infringe Defendant's design patent for a utensil rest, and further that the patent is invalid and unenforceable.
- Technical Context: The dispute concerns the design of kitchen accessories, specifically a rest for holding utensils like spoons and spatulas during cooking.
- Key Procedural History: The complaint states that Defendant sent Plaintiff a cease-and-desist letter and previously sued Plaintiff's customer, Walmart, over the same accused product. The complaint also makes significant allegations of inequitable conduct, asserting that the patentee intentionally failed to name co-inventors and concealed from the U.S. Patent and Trademark Office (PTO) that the patented design was primarily functional, based on admissions made during the prosecution of a related utility patent.
Case Timeline
| Date | Event |
|---|---|
| 2017-05-12 | Priority date for related U.S. Patent 10,561,279 |
| 2018-05-02 | Filing date for U.S. Design Patent D886,547 |
| 2020-02-18 | Issue date for U.S. Patent 10,561,279 |
| 2020-06-09 | Issue date for U.S. Design Patent D886,547 |
| 2021-09-14 | Kitchinventions sends cease-and-desist letter to Best Brands |
| 2021-11-12 | Kitchinventions sues Walmart, alleging infringement by Best Brands' product |
| 2022-05-27 | Kitchinventions files counterclaim in the present matter |
| 2022-08-01 | Date of Amazon.com purchase used as evidence for false advertising claim |
| 2022-08-XX | Alleged attempt by named inventor to retroactively obtain assignment from alleged co-inventor |
| 2022-11-04 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. D886,547 - “Utensil Rest”
The Invention Explained
Problem Addressed: Design patents do not contain a background section describing a problem. The related utility patent, U.S. Patent No. 10,561,279, describes the problem of cooks needing a secure, hygienic, and convenient place to rest utensils during cooking to avoid placing them on messy or unhygienic countertops (U.S. 10,561,279 Patent, col. 1:12-23).
The Patented Solution: The D'547 patent claims the ornamental design for a utensil rest. The design, as depicted in the patent's figures, consists of a bowl-like main body with an integrated, upward-angled handle rest on one side and a small tab on the opposite rim, all situated atop a flared base (D’547 Patent, Figs. 1, 4). The broken lines in the figures indicate that the bottom portion of the base is not part of the claimed design (D’547 Patent, Description, p. 1).
Technical Importance: The complaint alleges that the design's features are not merely ornamental but are dictated by their function, an argument central to its invalidity claims (Compl. ¶¶38-41).
Key Claims at a Glance
The patent contains a single claim: "The ornamental design for a utensil rest, as shown and described" (D’547 Patent, Claim). This claim protects the overall visual appearance of the article depicted in the patent's drawings.
III. The Accused Instrumentality
Product Identification
The "Cuisinart Suction Spoon Rest" (Compl. ¶9).
Functionality and Market Context
The complaint identifies the product as a consumer good sold in the United States for use as a spoon rest (Compl. ¶¶8-9). The complaint includes an image of the accused product attached as Exhibit 1, though the exhibit itself was not filed with the public version of the complaint document (Compl. ¶9). The plaintiff, Best Brands, is a direct competitor to the defendant, Kitchinventions (Compl. ¶67). A central part of the complaint focuses on Defendant's marketing of its own "Spoon Buddy" product, which embodies the patented design, as being "FDA Approved" (Compl. ¶47). A screenshot from a promotional video shows a spoon in the product with large text stating "FDA APPROVED!" superimposed over the image (Compl. p. 9).
IV. Analysis of Infringement Allegations
This is a declaratory judgment action where the plaintiff, Best Brands, seeks a judgment of non-infringement. The standard for design patent infringement is the "ordinary observer" test, which asks whether an ordinary observer, familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented design (Compl. ¶16).
The complaint asserts that Best Brands' product does not infringe because it is not "substantially the same as the figures in the patent" (Compl. ¶17). However, the complaint does not provide a detailed, element-by-element comparison of the accused product's design versus the patented design. The core of the complaint focuses on arguments for invalidity and unenforceability rather than a detailed non-infringement analysis. Therefore, a claim chart summary cannot be constructed from the provided information.
V. Key Claim Terms for Construction
In a design patent case, the "claim" consists of the drawings, and disputes typically center on the overall visual similarity and the scope of protection rather than the definition of specific text-based terms. The central dispute identified in the complaint is not one of claim construction but rather one of validity, specifically whether the claimed design is invalid because it is dictated by its function.
Practitioners may focus on the legal doctrine of functionality. The complaint alleges that statements made by the inventor during the prosecution of the related '279 utility patent constitute an admission that the design's structures "were dictated by their function" (Compl. ¶38). This raises the question of whether the design is primarily functional, which would render the D'547 design patent invalid, as design patents may only protect ornamental, non-functional features (Compl. ¶¶40-41). The outcome of this functionality analysis, rather than the construction of a particular term, appears to be dispositive.
VI. Other Allegations
- Unenforceability / Inequitable Conduct: The complaint makes extensive allegations that the D'547 patent is unenforceable due to inequitable conduct before the PTO.
- Incorrect Inventorship: It is alleged that the named inventor, Derek Monk, was not the sole inventor. The complaint claims Joseph Michael Teets conceived the idea of attaching a separate suction cup and that Joaquin Prendes conceived the shape of the handle rest (Compl. ¶¶22, 26). The complaint alleges Mr. Monk intentionally and deceptively omitted them as inventors (Compl. ¶¶27-28).
- Failure to Disclose Material Information: The complaint alleges that the inventor and his counsel admitted to the PTO during prosecution of the related '279 utility patent that the design's structures were "dictated by their function" but then "concealed the information regarding the functionality of his design" from the different examiner reviewing the '547 design patent application (Compl. ¶¶38, 42). This omission is alleged to be material and made with an intent to deceive the PTO (Compl. ¶¶43-44).
- Statutory Bar: The complaint alleges the inventor disclosed the subject matter to Mr. Teets without a confidentiality agreement more than one year prior to the patent's filing date, which could constitute an invalidating public disclosure (Compl. ¶¶31-33).
- False Advertising: The complaint includes counts for false advertising under the Lanham Act, alleging that Defendant marketed its "Spoon Buddy" product as "FDA Approved" in promotional materials and on product packaging (Compl. ¶¶47-49). Plaintiff alleges these statements are literally false, as a search of the FDA website shows no such approval, and that the claims have deceived customers and damaged Plaintiff's business (Compl. ¶¶51, 68, 83).
VII. Analyst’s Conclusion: Key Questions for the Case
This case appears to present several critical questions for the court that go beyond a standard design patent infringement analysis:
- A core issue will be one of validity based on functionality: Is the ornamental design claimed in the D'547 patent dictated by its functional purpose? The court will likely have to weigh evidence from the related '279 utility patent prosecution history, where the inventor allegedly admitted the design's features were functional, to determine if the design patent improperly protects function over ornament.
- A second key issue is one of enforceability based on patent prosecution: Did the named inventor engage in inequitable conduct by intentionally concealing the contributions of alleged co-inventors or by failing to disclose admissions of functionality made to the PTO in a related case? This will require an inquiry into the materiality of the alleged omissions and the inventor's intent.
- Separate from the patent claims, a significant question will be one of liability for false advertising: Did the defendant's marketing of its own product as "FDA Approved" constitute a literally false statement under the Lanham Act, and if so, what damages has the plaintiff suffered as a direct competitor?