DCT
1:18-cv-06175
Godinger Silver Art Ltd v. Liran Hirschkorn
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Godinger Silver Art Ltd. and P&W Gifts LLC (New York)
- Defendant: Liran Hirschkorn (New York)
- Plaintiff’s Counsel: Cozen O'Connor
- Case Identification: 1:18-cv-06175, E.D.N.Y., 09/26/2019
- Venue Allegations: Venue is alleged to be proper as the Defendant resides in the judicial district.
- Core Dispute: Plaintiffs allege that Defendant committed tortious interference with business relations by knowingly making baseless patent infringement allegations to Amazon regarding Plaintiffs' decanter products, and they seek to have the case declared exceptional to recover attorneys' fees under 35 U.S.C. § 285.
- Technical Context: The dispute centers on the ornamental designs of novelty liquor decanters, a market segment that includes globe-shaped and other uniquely-shaped beverage containers and stands.
- Key Procedural History: The current complaint follows a prior declaratory judgment action initiated by the Plaintiffs. That action sought declarations of invalidity and non-infringement of Defendant’s U.S. Design Patents D824,263 and D826,640 after Defendant used Amazon's "take-down" process to remove Plaintiffs' products from sale. Defendant subsequently provided Plaintiffs with a covenant not to sue, leading to the dismissal of the patent-specific counts. This Second Amended Complaint continues the action on grounds of tortious interference and seeks attorneys' fees, alleging Defendant's patent enforcement actions were taken in bad faith and based on an unenforceable and non-infringed patent. The complaint also alleges the '263 patent is unenforceable due to inequitable conduct, asserting Defendant failed to disclose known, material prior art to the U.S. Patent and Trademark Office during prosecution.
Case Timeline
| Date | Event |
|---|---|
| 2008 | "Stylish Whisky Decanter" allegedly first offered for sale |
| 2015-07-16 | "BarMe Decanter" allegedly first offered for sale on Amazon |
| 2016-06-22 | "Atterstone Decanter" allegedly first offered for sale on Amazon |
| 2016-08-12 | "Haitral Decanter" allegedly first offered for sale on Amazon |
| 2016-08-31 | "Flybold Decanter" allegedly first offered for sale on Amazon |
| 2016-12-15 | "DDRPL" and "Eravino" Decanters allegedly first offered for sale |
| 2017-02-22 | U.S. Design Patent Application No. 29/594,784 ('263 patent) filed |
| 2017-12-13 | PTO issues indefiniteness rejection for '263 patent application |
| 2017-12-19 | Plaintiffs begin selling "Original Globe Decanter" on Amazon |
| 2018-03-09 | Defendant amends drawings in '263 patent application |
| 2018-07-31 | U.S. Design Patent D824,263 issues |
| 2018-07-31 | Defendant requests Amazon remove Plaintiffs' Original Globe Decanter |
| 2018-08-01 | Amazon removes Plaintiffs' Original Globe Decanter from sale |
| 2018-08-08 | Plaintiffs' counsel notifies Defendant's counsel of alleged prior art |
| 2018-10-13 | Plaintiffs begin selling "Modified Globe Decanter" on Amazon |
| 2018-10-21 | Defendant requests Amazon remove Plaintiffs' Modified Globe Decanter |
| 2018-12-05 | Defendant provides Plaintiffs with a covenant not to sue |
| 2019-09-26 | Plaintiffs file Second Amended Complaint |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D824,263 - “DECANTER AND BASE”
- Patent Identification: U.S. Design Patent No. D824,263, “DECANTER AND BASE,” issued July 31, 2018.
The Invention Explained
- Problem Addressed: As a design patent, the '263 Patent does not articulate a technical problem but instead seeks to protect a new, original, and ornamental design for an article of manufacture.
- The Patented Solution: The patent claims the specific ornamental design for a decanter and base combination ('263 Patent, "CLAIM"). The claimed design, depicted in solid lines in the patent's figures, consists of a globe-shaped decanter held in a tilted position by an arcuate support arm. This arm connects to a square wooden base that features sharp corners, a beveled top edge, and four circular recesses for holding glasses ('263 Patent, Figs. 1, 8). The patent explicitly states that elements shown in broken lines, such as the map etching on the globe and a ship figurine inside, "form no part of the claimed design" ('263 Patent, "DESCRIPTION").
- Technical Importance: The complaint alleges that such globe-shaped decanters are part of a competitive market for novelty barware and that multiple similar designs existed prior to the patent application filing date (Compl. ¶¶ 21-48, 111).
Key Claims at a Glance
- The complaint focuses on the single claim of the '263 Patent.
- The sole claim is for "The ornamental design for a decanter and base, as shown and described" ('263 Patent, "CLAIM"). The key visual features comprising this design, as articulated in the complaint, include:
- A globe-shaped decanter supported at either end by an arcuate arm.
- A semi-spherical mount connecting the arm to the base.
- A square base with sharp corners and edges.
- A bevel extending completely about the upper edge of the base.
- Four circular recesses on the upper surface of the base.
- A spherical stopper in the neck of the decanter (Compl. ¶84).
III. The Accused Instrumentality
Product Identification
- Plaintiffs' "Original Globe Decanter" and "Modified Globe Decanter" (Compl. ¶¶ 1, 13, 19). The complaint's non-infringement arguments focus primarily on the "Modified Globe Decanter."
Functionality and Market Context
- The products are described as globe-shaped gift decanters sold on Amazon.com (Compl. ¶¶ 13, 19). The complaint alleges that the "Modified Globe Decanter" was created specifically to "further distinguish" the product from the design claimed in the '263 Patent (Compl. ¶18). A key modification alleged is a change to the product's base, which is described as an "irregular, curved shape with rounded off corners and edges, and no bevel" (Compl. ¶98). The complaint includes a side-by-side photograph comparing the base of the patented design with the base of the Plaintiffs' "Modified Globe Decanter" (Compl. ¶99, Figure 7). These products are alleged to be in direct competition with the Defendant's decanters also sold on Amazon (Compl. ¶119).
IV. Analysis of Infringement Allegations
The complaint does not assert infringement but rather argues that Defendant's prior infringement allegations were baseless. The following table summarizes the Plaintiffs' non-infringement theory for its "Modified Globe Decanter" by comparing the visual elements of the claimed design to the features of that product.
D824,263 Infringement Allegations
| Claim Element (from the design "as shown and described") | Alleged Non-Infringing Functionality (of Modified Globe Decanter) | Complaint Citation | Patent Citation |
|---|---|---|---|
| A square base with sharp corners and a bevel extending completely about the upper edge. | The base is an "irregular, curved shape with rounded off corners and edges, and no bevel." | ¶98 | Figs. 1, 8 |
| A semi-spherical mount in the center of the base which attaches to and supports an arcuate arm. | The product has a mount supporting an arm, but the overall visual impression of the base is alleged to be different. | ¶98 | Figs. 1, 6 |
| A globe-shaped decanter having an extension at the bottom attached to one end of the arcuate arm and a neck at the top supported by the other end. | The product has a globe-shaped decanter supported by an arm, a feature the complaint alleges is common in the prior art. | ¶93 | Fig. 1 |
| A spherical stopper in the neck of the globe-shaped decanter. | The product features a stopper, but the complaint argues the key distinguishing feature in light of the prior art is the base design. | ¶¶97-98 | Fig. 1 |
Identified Points of Contention
- Scope Questions: The central issue raised by the complaint is how the existence of a crowded field of prior art impacts the scope of the '263 Patent. The complaint alleges that numerous prior art decanters feature the same general globe-on-a-stand configuration (Compl. ¶¶ 93, 95). This raises the question of whether the patent's protectable scope is limited only to the specific details that differ from that prior art, such as the square, beveled base. The complaint provides a four-way visual comparison to support its assertion that the field is crowded with similar designs (Compl. ¶92).
- Visual Questions: The dispute centers on the test for design patent infringement: whether an "ordinary observer," familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented one. The complaint argues that such an observer would focus on the base design—the primary difference between the patent and the prior art—and would find the "irregular, curved" base of the "Modified Globe Decanter" to be plainly dissimilar to the claimed square, beveled base (Compl. ¶¶ 97-98).
V. Key Claim Terms for Construction
In design patent cases, analysis focuses on the overall visual appearance as depicted in the drawings, rather than on textual claim terms. The central dispute here concerns the interpretation of the design's base.
- The "Term": The ornamental design for a "base as shown" in the patent figures.
- Context and Importance: The complaint's arguments for both non-infringement of its "Modified Globe Decanter" and the invalidity of the '263 patent hinge on the features of the base. Practitioners may focus on this element because, in a crowded art field, small differences between an accused design and a patented design can be sufficient to avoid infringement. The complaint alleges the base of the patented design is the main point of novelty over the prior art, making the different base of the accused product critically important (Compl. ¶¶ 97-98).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party seeking a broader scope might argue that the "overall visual impression" of a globe held in an arcuate stand is the core of the design and that the specific shape of the base is a minor component that does not substantially alter that overall impression.
- Evidence for a Narrower Interpretation: The patent's drawings unambiguously depict a base that is square in its top profile, has sharp, right-angle corners, and a distinct bevel around its top perimeter ('263 Patent, Figs. 1, 2, 8). The complaint leverages these clear depictions, arguing that they define the specific appearance of this element and that any design lacking these features, such as the "Modified Globe Decanter," is visually distinct (Compl. ¶98). The complaint also presents a side-by-side comparison of the patented design and a prior art decanter to argue their similarity, suggesting the patent's scope must be narrow (Compl. ¶83).
VI. Other Allegations
Bad Faith and Inequitable Conduct
- The complaint makes extensive allegations that serve as the basis for its tortious interference and exceptional case claims. It alleges that Defendant acted in bad faith because he knew or should have known that the '263 patent was:
- Unenforceable: The complaint alleges Defendant knew of at least seven similar prior art decanters before filing his patent application but intentionally withheld this "material" information from the PTO with an intent to deceive, constituting inequitable conduct (Compl. ¶¶ 66-74, 78).
- Invalid: The complaint alleges the patented design is obvious in light of prior art designs, such as the "Stylish Whisky Decanter," and that the differences are trivial (Compl. ¶¶ 85-86). It further alleges Defendant was put on notice of this invalidating prior art before sending his second take-down request to Amazon (Compl. ¶87).
- Not Infringed: The complaint alleges Defendant knew that the "Modified Globe Decanter," with its different base, did not infringe the '263 patent, particularly when viewed in light of the crowded prior art field (Compl. ¶¶ 100-101).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this dispute, which centers on claims of tortious interference and a request for exceptional case fees, appears to depend on the answers to several underlying patent law questions.
- A central question will be one of objective baselessness: Did the Defendant’s infringement allegations, which prompted the Amazon take-down notices, lack such an objective foundation that a reasonable litigant could not have believed in their success? The answer may depend on how the court views the significance of the design differences in the context of a crowded prior art field.
- A key evidentiary issue will be one of inequitable conduct: Can Plaintiffs produce sufficient evidence to establish that the Defendant knew of the cited prior art decanters, that this prior art was material to patentability, and that it was intentionally withheld from the patent office with an intent to deceive?
- The case may also turn on the scope of design patent protection: How will the court define the scope of the '263 patent’s ornamental design? A determination that the patent's novelty lies only in the specific details of its square, beveled base would strengthen the Plaintiffs' argument that their "Modified Globe Decanter" with its irregular base was clearly non-infringing.