DCT
3:17-cv-11321
Discovery Inc v. Kennedy Intl Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Discovery Inc. (California)
- Defendant: Kennedy International Inc. (New Jersey)
- Plaintiff’s Counsel: Law Office of Angela Foster; Medley, Behrens & Lewis LLC
- Case Identification: 3:17-cv-11321, D.N.J., 11/06/2017
- Venue Allegations: Venue is alleged to be proper in the District of New Jersey because the Defendant is incorporated, headquartered, and maintains a regular and established place of business within the district.
- Core Dispute: Plaintiff alleges that Defendant’s line of "KITCHEN BASICS®" storage baskets infringes two of Plaintiff's U.S. design patents for houseware baskets.
- Technical Context: The dispute involves the ornamental design of consumer houseware products, specifically clear plastic storage baskets used for home organization.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with actual notice of infringement via letters on July 24, 2017, and August 23, 2017, prior to filing the lawsuit.
Case Timeline
| Date | Event |
|---|---|
| 2012-06-08 | U.S. Patent No. D688,870 Priority Date |
| 2013-09-03 | U.S. Patent No. D688,870 Issue Date |
| 2014-02-04 | U.S. Patent No. D720,931 Priority Date |
| 2015-01-13 | U.S. Patent No. D720,931 Issue Date |
| 2016 (approx.) | Accused Product Launch Date (based on copyright notice) |
| 2017-07-24 | First Notice of Infringement Sent to Defendant |
| 2017-08-23 | Second Notice of Infringement Sent to Defendant |
| 2017-11-06 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D720,931 - "BASKET," issued January 13, 2015
The Invention Explained
- Problem Addressed: The complaint suggests a market need for distinctive and functional storage solutions, describing Plaintiff's "HANDI BASKETS®" as designed to improve the organization and storage of goods in kitchens, pantries, and bathrooms (Compl. ¶8).
- The Patented Solution: The patent protects the unique ornamental appearance of a storage basket, not its functional aspects. The claimed design, particularly the embodiment shown in Figure 13, features a rectangular basket with a grid-like texture on its side walls and an integrated handle extending from one of the short sides ('931 Patent, Fig. 13; Compl. ¶9).
- Technical Importance: The complaint asserts that the basket designs are a significant commercial success, constituting "one of its hottest selling product lines, amounting to nearly 50% of sales" (Compl. ¶8).
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a basket, as shown and described" ('931 Patent, CLAIM).
- The scope of the claim is defined by the visual representations in the patent's drawings, with broken lines indicating aspects that are not part of the claimed design ('931 Patent, DESCRIPTION).
U.S. Design Patent No. D688,870 - "BASKET," issued September 3, 2013
The Invention Explained
- Problem Addressed: As with the '931 patent, the invention addresses the market for aesthetically distinct home organization products (Compl. ¶¶7-8).
- The Patented Solution: This patent protects the ornamental design for a basket that shares the overall aesthetic of the '931 patent's design—including the handle and textured walls—but incorporates an internal divider that bisects the basket's interior ('870 Patent, Fig. 1; Compl. ¶10). This creates a multi-compartment configuration.
- Technical Importance: This design is part of the same commercially successful "HANDI BASKETS®" product line mentioned in the complaint (Compl. ¶¶7-8).
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a basket, as shown and described" ('870 Patent, CLAIM).
- The claim's scope is defined by the solid lines in the drawings, with disclaimers for elements shown in broken lines ('870 Patent, DESCRIPTION).
III. The Accused Instrumentality
- Product Identification: The accused products are "storage baskets under the name KITCHEN BASICS®" (Compl. ¶11). The complaint includes photographs of the products and their packaging, one of which identifies a "Style# 22953" and a copyright notice of "©2016 KENNEDY INTERNATIONAL INC." (Compl. p. 5).
- Functionality and Market Context: The accused products are described as "HANDLE GRIP PANTRY ORGANIZER[s]" made of clear plastic and intended for storing pantry items or kitchen gadgets (Compl. p. 5). The complaint alleges these products are sold at retail stores in the United States, such as T.J. Maxx (Compl. p. 5). The complaint provides photographs of both a single-compartment basket and a multi-compartment basket allegedly sold by the Defendant (Compl. p. 5).
IV. Analysis of Infringement Allegations
The infringement analysis for a design patent centers on the "ordinary observer" test, which asks whether an ordinary observer would be deceived into purchasing the accused product believing it to be the patented design. The complaint supports its allegations primarily through visual comparisons.
'931 Patent Infringement Allegations
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a basket, as shown and described. | The accused single-compartment KITCHEN BASICS® basket is alleged to embody a design substantially the same as the patented design, including its overall rectangular shape, integrated handle, and surface texture. A photograph of this accused product is provided for comparison. | ¶18; p. 5 | '931 Patent, Fig. 13 |
'870 Patent Infringement Allegations
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a basket, as shown and described. | The accused multi-compartment KITCHEN BASICS® basket is alleged to embody a design substantially the same as the patented design, including its overall shape, handle, surface texture, and internal divider. A photograph of this accused product is also provided. | ¶25; p. 5 | '870 Patent, Fig. 1 |
- Identified Points of Contention:
- Scope Questions: The central question will be whether the overall visual impression of the accused KITCHEN BASICS® baskets is substantially the same as the claimed designs. The dispute may focus on whether any minor differences in proportions, handle shape, or the specific pattern of the wall texture are sufficient to distinguish the products in the eyes of an ordinary observer. The complaint presents a side-by-side visual juxtaposition of a patent figure and a photograph of the accused product, suggesting this comparison will be a focal point (Compl. pp. 4-5).
- Design Questions: A key question for the fact-finder will be whether the combination of features in the accused products creates a deceptive similarity to the patented designs. Defendant may argue that differences in the products' labels, packaging, or points of sale are relevant to whether a consumer would actually be confused, although the legal test focuses on the similarity of the designs themselves.
V. Key Claim Terms for Construction
In design patent litigation, claim construction is generally not a central issue, as the claim is defined by the drawings rather than by textual limitations. The analysis focuses on the overall visual appearance of the design as shown in the patent figures.
- The Term: The design as a whole, as depicted in the patent drawings.
- Context and Importance: The scope of protection is determined by the visual elements shown in solid lines in the patent figures. Both the '931 and '870 patents explicitly state that "broken line showings... are for illustrative purposes only and form no part of the claimed design" ('931 Patent, DESCRIPTION; '870 Patent, DESCRIPTION). The court's primary task is not to construe words, but to determine the visual scope of the design claimed.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim covers the overall ornamental design. Plaintiff may argue that the key protectable features are the general shape, the distinctive handle integration, and the grid-like texture, and that minor variations do not change the overall visual impression.
- Evidence for a Narrower Interpretation: The protection is limited to the specific ornamental design "as shown and described." Defendant may argue that the precise proportions, curvature, and texture depicted in the patent figures define the design's narrow scope, and that any deviation in the accused product is a material difference.
VI. Other Allegations
- Indirect Infringement: The prayer for relief seeks to enjoin Defendant from "Assisting, inducing, or aiding and abetting" infringement (Compl. p. 9, ¶2.c). However, the factual allegations in the body of the complaint focus on direct infringement by Defendant's own acts of importing, selling, and offering for sale (Compl. ¶¶18, 25).
- Willful Infringement: The complaint alleges willful infringement of both patents. It asserts that Defendant had actual knowledge of the patents as of July 24, 2017, and August 23, 2017, from pre-suit notice letters (Compl. ¶¶12-13, 21, 28). The complaint further alleges that the infringement was "so obvious that it should have been known" and, on information and belief, that Defendant "copied the features of Plaintiff's patented baskets" (Compl. ¶¶21, 28).
VII. Analyst’s Conclusion: Key Questions for the Case
- Deceptive Similarity: The dispositive issue will be a factual one: is the overall ornamental design of Defendant's KITCHEN BASICS® baskets substantially the same as the designs claimed in the '931 and '870 patents? The outcome will depend on the fact-finder's application of the "ordinary observer" test to the visual evidence presented.
- Willfulness and Damages: A second key question concerns willfulness. Given the allegations of copying and continued infringement after receiving specific notice, the court will need to determine whether Defendant's conduct was egregious. This finding will be critical to Plaintiff's request for enhanced damages or a disgorgement of Defendant's total profits, a remedy specifically available for design patent infringement under 35 U.S.C. § 289.