DCT
1:18-cv-06175
Godinger Silver Art Ltd v. Liran Hirschkorn
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Godinger Silver Art Ltd. (New York) 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., 11/28/2018
- Venue Allegations: Venue is alleged to be proper based on the Defendant's residence within the judicial district.
- Core Dispute: Plaintiffs seek a declaratory judgment that their novelty beverage decanters do not infringe Defendant’s design patents and that those patents are invalid, arising from Defendant’s repeated infringement complaints to Amazon.com.
- Technical Context: The dispute centers on the ornamental designs of consumer giftware, specifically globe-shaped and skull-shaped beverage decanter sets.
- Key Procedural History: This declaratory judgment action was precipitated by Defendant Hirschkorn allegedly instructing Amazon.com to remove Plaintiffs’ products from sale due to purported infringement. The complaint alleges that prior to filing suit, Plaintiffs’ counsel provided Defendant’s counsel with prior art that allegedly invalidates one of the patents. The complaint also details a series of delistings and relistings of the products by Amazon in response to competing claims from the parties.
Case Timeline
| Date | Event |
|---|---|
| 2017-02-22 | U.S. Patent No. D824,263 Priority Date |
| 2017-11-27 | U.S. Patent No. D826,640 Priority Date |
| 2017-12-19 | Plaintiffs begin selling their "Original Globe Decanter" |
| 2018-07-31 | U.S. Patent No. D824263 ('263 Patent) Issued |
| 2018-07-31 | Defendant requests Amazon remove Plaintiffs' "Original Globe Decanter" |
| 2018-08-01 | Amazon removes Plaintiffs' "Original Globe Decanter" |
| 2018-08-08 | Plaintiffs' counsel provides Defendant's counsel with alleged invalidating prior art |
| 2018-08-28 | U.S. Patent No. D826640 ('640 Patent) Issued |
| 2018-10-13 | Plaintiffs begin selling the modified, accused "Globe Decanter" |
| 2018-10-21 | Defendant requests Amazon remove Plaintiffs' modified "Globe Decanter" |
| 2018-10-22 | Amazon removes Plaintiffs' modified "Globe Decanter" |
| 2018-11-13 | Plaintiffs begin selling their "Skull Decanter" |
| 2018-11-20 | Defendant requests Amazon remove Plaintiffs' "Skull Decanter" |
| 2018-11-21 | Amazon removes Plaintiffs' "Skull Decanter" |
| 2018-11-22 | Amazon reinstates, then again removes, Plaintiffs' "Skull Decanter" following further requests from Defendant |
| 2018-11-23 | Amazon reinstates Plaintiffs' "Skull Decanter" for a third time |
| 2018-11-28 | First Amended Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D824,263 - "Decanter and Base"
- Issued: July 31, 2018
The Invention Explained
- Problem Addressed: Design patents protect ornamental appearance rather than solving a technical problem.
- The Patented Solution: The patent claims the ornamental design for a decanter and base assembly (D'263 Patent, Claim). The claimed design consists of a spherical, globe-like decanter with surface etching suggesting world continents, a circular stopper, and a crescent-shaped wooden cradle that holds the globe at an angle (D'263 Patent, Fig. 1). The cradle is mounted on a rectangular wooden base that includes four circular indentations, presumably for holding glasses (D'263 Patent, Fig. 1, 8). The features shown in broken lines, such as glasses in the indentations and branding on the base, are for illustrative purposes only and do not form part of the claimed design (D'263 Patent, Description).
- Technical Importance: The design provides a specific aesthetic for a consumer product in the novelty barware market.
Key Claims at a Glance
- The single claim asserted is for "The ornamental design for a decanter and base, as shown and described" (D'263 Patent, Claim). The scope of this claim is defined by the visual appearance of the article in the patent's drawings.
U.S. Design Patent No. D826,640 - "Decanter and Base"
- Issued: August 28, 2018
The Invention Explained
- Problem Addressed: Design patents protect ornamental appearance rather than solving a technical problem.
- The Patented Solution: The patent claims the ornamental design for a decanter and base assembly (D'640 Patent, Claim). The design features a decanter shaped like a human skull, with defined eye sockets, nasal cavity, and a full set of teeth (D'640 Patent, Fig. 2). The skull decanter sits on a rectangular wooden base that has four circular indentations for glasses and a central, recessed area shaped to fit the base of the skull (D'640 Patent, Fig. 9). As with the '263 patent, broken lines depicting environmental subject matter like glasses and branding are not part of the claimed design (D'640 Patent, Description).
- Technical Importance: The design provides a specific gothic or novelty aesthetic for a consumer barware product.
Key Claims at a Glance
- The single claim asserted is for "The ornamental design for a decanter and base, as shown and described" (D'640 Patent, Claim). The claim's scope is defined by the solid lines in the patent's drawings.
III. The Accused Instrumentality
Product Identification
- Plaintiffs' "Globe Decanter" and "Skull Decanter" (Compl. ¶2, ¶11, ¶14).
Functionality and Market Context
- The accused instrumentalities are beverage decanter sets sold by Plaintiffs on Amazon.com (Compl. ¶7, ¶14). The complaint alleges that Defendant, through a company named Royal Decanters, sells competing globe-shaped and skull-shaped decanters on Amazon (Compl. ¶37). The "Globe Decanter" at issue is a modified version of an earlier product, which Plaintiffs allegedly redesigned to "further distinguish" it from the '263 patent's design after Defendant's first take-down request (Compl. ¶11). The complaint provides photographs of the accused "Globe Decanter" and "Skull Decanter" as Exhibits 1 and 2, respectively (Compl. ¶4). This image shows the accused Globe Decanter with its stand and stopper (Compl. Ex. 1). This image shows the accused Skull Decanter with its stand and stopper (Compl. Ex. 2).
IV. Analysis of Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement, contending that Plaintiffs' products are "sufficiently different" from the patented designs (Compl. ¶26, ¶34). The analysis below summarizes the comparison between the patented designs and the accused products, which forms the basis for Plaintiffs' non-infringement claim.
D824,263 Infringement Allegations
| Claim Element (from the '263 Patent Drawings) | Alleged Non-Infringing Product Feature (Plaintiffs' Globe Decanter) | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a decanter and base, as shown and described. | Plaintiffs' Globe Decanter is alleged to be "sufficiently different" from the patented design such that there can be no infringement, particularly when considered in light of the prior art. | ¶26-27 | Claim; Figs. 1-8 |
- Identified Points of Contention:
- Scope Questions: The core legal question is whether, in the eye of an ordinary observer, the accused Globe Decanter (Compl. Ex. 1) is substantially the same as the patented design (D'263 Patent, Figs. 1-8). The analysis will require a side-by-side comparison of the overall visual impression.
- Technical Questions: While not a "technical" issue, a key factual question will be the comparison of specific ornamental features, such as the shape and proportion of the wooden cradle, the style of the globe etching, the design of the stopper, and the configuration of the base, between the patented design and the accused product.
D826,640 Infringement Allegations
| Claim Element (from the '640 Patent Drawings) | Alleged Non-Infringing Product Feature (Plaintiffs' Skull Decanter) | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a decanter and base, as shown and described. | Plaintiffs' Skull Decanter is alleged to be "sufficiently different" from the patented design such that there can be no infringement, particularly when considered in light of the prior art. | ¶34-35 | Claim; Figs. 1-15 |
- Identified Points of Contention:
- Scope Questions: The central issue is whether an ordinary observer would find the accused Skull Decanter (Compl. Ex. 2) and the patented design (D'640 Patent, Figs. 1-15) to be substantially the same.
- Technical Questions: The factual dispute may focus on differences in the artistic rendering of the skull, including the proportions of the cranium and jaw, the stylization of the teeth and eye sockets, and the overall aesthetic impression (e.g., realistic vs. cartoonish).
V. Key Claim Terms for Construction
For design patents, the "claim" is the visual design embodied in the drawings, not a set of textual limitations. Therefore, traditional claim construction of words is not the central task. The analysis focuses on comparing the overall ornamental design of the accused product to the design claimed in the patent drawings. The primary points of focus in this comparison will likely be the specific visual elements that define the patented designs.
- The Term: "The ornamental design for a decanter and base, as shown..."
- Context and Importance: The entire infringement analysis hinges on a comparison of the overall visual appearance. The court will assess whether the accused products are "substantially the same" as the patented designs from the perspective of an "ordinary observer." Practitioners may focus on identifying and arguing the significance of visual similarities and differences between the products and the patent drawings.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The parties may argue that the overall concept of a "globe-in-a-cradle decanter" or a "skull-on-a-base decanter" creates a visual impression that the accused products capture, even if minor details differ. The claim is for the design as a whole, not isolated features.
- Evidence for a Narrower Interpretation: The parties may focus on the specific, detailed elements shown in solid lines in the patent figures, arguing that these details distinguish the designs. For the '263 Patent, this could include the specific curvature of the crescent cradle or the proportions of the base (D'263 Patent, Fig. 1). For the '640 Patent, this could include the precise shape of the eye sockets or the rendering of the teeth (D'640 Patent, Fig. 2). The complaint itself alleges that the differences are sufficient to avoid infringement (Compl. ¶26, ¶34).
VI. Other Allegations
- Invalidity: Plaintiffs allege that both patents are invalid under 35 U.S.C. §§ 102 and 103 in view of prior art (Compl. ¶21-22, ¶29-30). Specific prior art examples cited include a "globe-shaped decanter sold by Stylish Whisky" for the '263 patent and a "skull-shaped decanter sold by FromKelly LLC" for the '640 patent (Compl. ¶22, ¶30).
- Tortious Interference with Prospective Business Relations: Plaintiffs bring a separate count for tortious interference, alleging that Defendant knew of Plaintiffs' business relationship with Amazon and intentionally interfered by making "wrongful and baseless claims" of infringement to "squelch competition" and harm Plaintiffs (Compl. ¶38-43).
VII. Analyst’s Conclusion: Key Questions for the Case
- A question of visual identity: Under the "ordinary observer" test, are the overall ornamental designs of Plaintiffs' Globe and Skull decanters substantially the same as the designs claimed in the '263 and '640 patents? The outcome will depend on a detailed factual comparison of the products and the patent drawings, potentially informed by the cited prior art.
- A question of patent validity: Can Plaintiffs demonstrate by clear and convincing evidence that the specific ornamental designs claimed in the patents were anticipated or rendered obvious by prior art decanters that were publicly available before the patents' priority dates? The strength of the specific prior art referenced in the complaint, such as products from "Stylish Whisky" and "FromKelly LLC," will be critical.
- A question of enforcement conduct: Did the Defendant's repeated "take-down" notices to Amazon constitute tortious interference, or were they a legitimate exercise of patent rights? This may turn on whether the infringement allegations were objectively baseless, an issue intertwined with the outcomes of the non-infringement and invalidity claims.