DCT
1:18-cv-06953
Evriholder Products, LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Evriholder Products, LLC (Indiana)
- Defendant: Art and Cook, Inc. (New York)
- Plaintiff’s Counsel: Louis C. Paul & Associates, PLLC
- Case Identification: 1:18-cv-06953, E.D.N.Y., 12/06/2018
- Venue Allegations: Plaintiff alleges venue is proper because Defendant's principal place of business is in the district, it transacts business there, and the alleged infringing acts occurred there, which Plaintiff claims Defendant admitted in a prior settlement agreement.
- Core Dispute: Plaintiff alleges that Defendant’s "Cook Works Jar & Bottle Opener" infringes a U.S. design patent covering the ornamental appearance of a jar opener.
- Technical Context: The technology is a handheld consumer kitchen utensil, where product differentiation is often based on ornamental design and ergonomics.
- Key Procedural History: The complaint alleges this dispute follows a prior lawsuit between the same parties over the same patent and a nearly identical product. That earlier case (2:18-cv-01788) reportedly ended in a settlement agreement on June 4, 2018, in which Defendant allegedly covenanted not to challenge the patent's validity. This lawsuit alleges Defendant breached that settlement by continuing to sell infringing products.
Case Timeline
| Date | Event |
|---|---|
| 2004-07-08 | '612 Patent Priority Date |
| 2006-07-11 | '612 Patent Issue Date |
| 2017-12-19 | Plaintiff sends first notice letter to Defendant |
| 2018-01-04 | Plaintiff sends second notice letter to Defendant |
| 2018-01-18 | Defendant allegedly acknowledges infringement and agrees to cease sales |
| 2018-03-23 | Plaintiff files first complaint against Defendant |
| 2018-06-04 | Settlement Agreement effective date |
| 2018-10-10 | Plaintiff becomes aware of alleged new infringing sales |
| 2018-12-06 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Design Patent No. D524,612, "Jar Opener," issued July 11, 2006.
The Invention Explained
- Problem Addressed: Design patents protect the ornamental appearance of an article of manufacture, not a functional solution to a technical problem. The purpose of the '612 Patent is to protect a novel, ornamental design for a jar opener.
- The Patented Solution: The patent claims the specific visual appearance of the jar opener as illustrated in its figures. The design features a handle end with a large, ovular loop that transitions into two tapering jaws. The interior edges of the jaws have a distinctive, undulating or scalloped shape designed to grip lids of various sizes. The overall impression is a single, continuous, and uniquely shaped tool. (’612 Patent, FIGS. 1-7).
- Technical Importance: In the market for common household goods like kitchen utensils, a distinctive ornamental design can provide significant product differentiation and brand recognition.
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is: "The ornamental design for jar opener, as shown and described." (’612 Patent, col. 1:5-6).
- The scope of the claim is defined by the solid lines in the patent drawings, which depict the overall shape and configuration of the jar opener.
III. The Accused Instrumentality
Product Identification
- The accused product is the "Cook Works Jar & Bottle Opener (Model CW6789)" (Compl. ¶9).
Functionality and Market Context
- The product is a jar and bottle opener that the Plaintiff alleges Defendant imported, marketed, and sold in the United States to retailers such as Tuesday Morning, Inc. (Compl. ¶¶9, 17, 22). The complaint alleges the accused Model CW6789 is "identical (or substantially indistinguishable)" in design to a prior accused product (Model CSC789) that was the subject of the parties' earlier settlement agreement (Compl. ¶¶10, 12, 16). The complaint provides a photograph, attached as Exhibit D, showing the accused "Cook Works Jar & Bottle Opener (Model CW6789)" product (Compl. ¶9).
IV. Analysis of Infringement Allegations
Design patent infringement is determined by the "ordinary observer" test, which asks whether an ordinary observer would believe the accused design is the same as the patented design. The complaint alleges the accused product's design is "identical (or substantially indistinguishable)" from the patented design (Compl. ¶12).
D524,612 Infringement Allegations
| Claim Element (from the Sole Claim) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for jar opener, as shown and described. | The complaint alleges that the "Cook Works Jar & Bottle Opener (Model CW6789)" possesses a design and shape that is "identical (or substantially indistinguishable)" to the design claimed in the '612 Patent. | ¶12 | col. 1:5-6; FIGS. 1-8 |
- Identified Points of Contention:
- Scope Questions: The central infringement question is whether the overall visual appearance of the accused Cook Works product is substantially the same as the design claimed in the '612 Patent.
- Technical Questions: A factual question for the court will be a side-by-side comparison of the accused product, as shown in Exhibit D of the complaint, with the figures of the ’612 Patent to determine if an ordinary observer would be deceived. The complaint's allegation of the two designs being "identical" suggests Plaintiff believes there is little to no visual difference (Compl. ¶12).
V. Key Claim Terms for Construction
In design patent cases, claim construction is typically focused on the scope of the "as shown and described" language rather than on discrete text-based terms.
- The Term: "ornamental design ... as shown and described"
- Context and Importance: The entire dispute rests on the scope of the claimed ornamental design. Practitioners may focus on separating the protectable ornamental features from any unprotectable functional aspects of the jar opener's shape, as only the ornamental aspects are protected by the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specification states, "The design shown is not to be limited to any particular size and may be scaled larger or smaller," which suggests the design's scope is not confined to the exact dimensions depicted (’612 Patent, col. 1:22-24).
- Evidence for a Narrower Interpretation: The specific shapes and contours depicted by the solid lines in Figures 1-7 define the boundaries of the claimed design. Any visual deviation in an accused product from these depicted contours could support an argument for non-infringement. Figure 8 shows an alternative embodiment with "visually contrasting ornamental surface" texturing, which could be used to argue that the un-textured design of Figures 1-7 is a distinct and specific embodiment (’612 Patent, col. 1:25-29).
VI. Other Allegations
- Indirect Infringement: The complaint alleges contributory infringement, stating that Defendant contributed to infringement by its customers (retailers) by "offering for sale, selling, importing, marketing, supporting and advertising" the accused jar opener (Compl. ¶22). The cause of action heading also references inducement under 35 U.S.C. § 271(b) (Compl. p. 4).
- Willful Infringement: The complaint makes strong allegations of willfulness. It asserts that Defendant had "full knowledge" of the '612 Patent and Plaintiff's rights due to notice letters sent in late 2017 and early 2018, a prior lawsuit, and a subsequent settlement agreement (Compl. ¶¶13, 15, 18). The complaint alleges that any sales after January 18, 2018—the date Defendant allegedly acknowledged infringement—were "deliberate, willful and in wanton disregard" of Plaintiff's rights (Compl. ¶¶14, 23). The complaint also notes that Defendant covenanted not to challenge the patent's validity in the prior settlement (Compl. ¶19).
VII. Analyst’s Conclusion: Key Questions for the Case
A central issue will be the legal effect of the prior litigation history: What is the evidentiary weight of Defendant’s alleged prior admission of infringement and the settlement agreement's no-challenge clause on the current infringement analysis for a product alleged to be "identical" to the one previously at issue?
A key evidentiary question will be one of willfulness: Given the extensive history of notice and prior litigation alleged in the complaint, will the court find that Defendant's alleged sales after the settlement agreement were objectively reckless, thereby justifying a finding of willful infringement and potential treble damages under 35 U.S.C. § 284?
The case raises a critical question regarding remedies for design patent infringement: If infringement is found, the court will need to determine the appropriate remedy, with the complaint specifically seeking Defendant's "total profit" under 35 U.S.C. § 289, a powerful remedy unique to design patents (Compl. ¶25).