DCT
1:19-cv-01568
Lifetime Brands Inc v. Silk Rose Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Lifetime Brands, Inc. (Delaware) and The Chef'n Corporation (Washington)
- Defendant: Silk Rose, Inc. (New York)
- Plaintiff’s Counsel: Tutunjian & Bitetto, P.C.
- Case Identification: 1:19-cv-01568, E.D.N.Y., 03/19/2019
- Venue Allegations: Venue is alleged to be proper as Defendant is incorporated in New York and maintains its principal place of business within the Eastern District of New York.
- Core Dispute: Plaintiffs allege that Defendant’s kitchen gadget kit, which includes an herb stripping tool, infringes one design patent and one utility patent related to a multi-function tool for preparing leafy vegetables and herbs.
- Technical Context: The technology resides in the field of consumer kitchen utensils, specifically tools designed to simplify the preparation of herbs and leafy greens like kale by combining foliage stripping and cutting functions.
- Key Procedural History: The complaint alleges that Plaintiffs provided Defendant with pre-suit notice of infringement via a letter dated January 28, 2019, which is asserted as a basis for willfulness.
Case Timeline
| Date | Event |
|---|---|
| 2014-09-08 | Priority Date for D776,991 and 9,718,198 Patents |
| 2017-01-24 | U.S. Patent No. D776991 Issues |
| 2017-08-01 | U.S. Patent No. 9718198 Issues |
| 2018-05-04 | Alleged First Availability Date of Accused Product on Amazon.com |
| 2019-01-28 | Plaintiffs Send Notice of Infringement Letter to Defendant |
| 2019-03-19 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D776,991
- Patent Identification: U.S. Patent No. D776,991, titled “Stripping Tool for Leafy Vegetables and Herbs,” issued on January 24, 2017 (Compl. ¶8).
The Invention Explained
- Problem Addressed: As a design patent, the '991 Patent does not articulate a technical problem but instead protects the specific aesthetic and non-functional appearance of the article of manufacture (Compl. ¶10).
- The Patented Solution: The patent claims the ornamental design of the tool, which is characterized by a flat, leaf-like, bilaterally asymmetrical body with convexly curved sides. The design features a series of circular apertures of varying sizes arranged along the perimeter of the body, as depicted in the patent's figures (’991 Patent, Figs. 1, 6).
- Technical Importance: The patent protects the unique visual appearance of what Plaintiffs market as their LooseLeaf™ product, which serves to distinguish it in the marketplace (Compl. ¶10).
Key Claims at a Glance
- Design patents contain a single claim for the ornamental design as shown in the drawings. The claim is for "The ornamental design for a stripping tool for leafy vegetables and herbs, as shown and described" (’991 Patent, p. 1). The infringement analysis for this patent will focus on the overall visual similarity between the patented design and the accused product.
U.S. Patent No. 9,718,198
- Patent Identification: U.S. Patent No. 9,718,198, titled “Stripping Tool for Leafy Vegetables and Herbs,” issued on August 1, 2017 (Compl. ¶9).
The Invention Explained
- Problem Addressed: The patent background identifies a need for tools to strip foliage from the stalks of leafy vegetables and herbs, a common task in food preparation (’198 Patent, col. 1:12-15).
- The Patented Solution: The invention is a hand-operated, multi-function tool comprising a single, unitary body with no moving parts. The body has opposing convexly curved edges, one of which is sharpened for cutting foliage, while the other is a dull edge for comfortably holding the tool. It also features a plurality of different-sized apertures through which herb or vegetable stems can be pulled to strip off leaves (’198 Patent, Abstract; col. 2:3-9). This design combines stripping and cutting functions into one ergonomic device.
- Technical Importance: The patented tool offers a consolidated solution for herb preparation, allowing a user to strip leaves from various-sized stems and then use the same tool to chop the foliage, potentially increasing efficiency in the kitchen (’198 Patent, col. 2:21-36).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶21).
- The essential elements of claim 1 include:
- A unitary, elongated body with no moving parts, sized to be held comfortably, and having opposing, convexly curved edges.
- One convexly curved edge is a sharp cutting edge, while the opposite convexly curved edge is a dull edge.
- A plurality of apertures of different sizes extend through the body, sized to allow a stem to pass through but not the foliage.
- A functional "whereby" clause describing the use of the tool: passing a stem through an aperture to strip foliage, and then cutting the foliage by holding the dull edge and rocking the sharp edge over the foliage.
- The complaint alleges infringement of "at least claim 1," reserving the right to assert other claims (Compl. ¶21).
III. The Accused Instrumentality
- Product Identification: The accused product is a "stripping multipurpose tool" included in a product sold by Defendant under the name "Herb Scissors Stripping Multipurpose Tool..." (the "Chuzy Chef kit") (Compl. ¶15).
- Functionality and Market Context: The complaint alleges the accused stripping tool is sold as part of a kit on Amazon.com since at least May 4, 2018 (Compl. ¶¶12, 17). The complaint asserts that the tool's physical features correspond to the elements of the asserted patents, including having a single body, opposing curved edges (one sharp, one dull), and a series of holes of different sizes (Compl. ¶23). The complaint includes a side-by-side visual comparison, showing a drawing from the '991 Patent next to a photograph of the accused stripping tool to illustrate the alleged similarity (Compl. ¶16).
IV. Analysis of Infringement Allegations
For the D’991 Patent, the complaint alleges infringement based on the "ordinary observer" test, arguing that the accused tool is "substantially the same as the design of the '991 patent" and provides a side-by-side image to support this contention (Compl. ¶16).
For the ’198 Patent, the complaint provides a narrative theory of literal infringement, which is summarized in the chart below.
’198 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A hand-operated device for use in removing foliage from a stem...the device comprising: a unitary, elongated body having no moving parts, the elongated body being sized to be held comfortably in a user's hand, the elongated body having opposing curved edges, at least a portion of each edge following a convex curve; | The Chuzy Chef kit's stripping tool includes a single body with no moving parts and has opposing curved edges that follow a convex curve. | ¶23 | col. 2:4-5 |
| at least a portion of one of the convexly curved edges of the elongated body formed as a convexly curved sharp edge, the other of the convexly curved edges of the elongated body formed as a convexly curved dull edge opposite the sharp edge; | At least one of the edges has at least a portion that is sharp and the other edges are dull. | ¶23 | col. 2:11-15 |
| a plurality of apertures of different sizes extending through the body, the apertures being spaced apart from each other along the opposing curved edges, such that a user can select an aperture large enough to allow the stem...to pass through but too small for the foliage...to pass through, and | A set of holes are spaced apart from one another along the edges and have different sizes. | ¶23 | col. 2:36-38 |
| whereby a user can pass the selected leafy vegetable or the herb through the selected aperture to remove the foliage therefrom, and then cut the foliage to a desired size by holding the body with the convexly curved dull edge against the user's hand and rocking the convexly curved sharp edge along its length over the foliage. | The complaint alleges that the accused tool satisfies "the functional features of the claim," but does not provide specific factual allegations for this element. | ¶23 | col. 2:21-36 |
- Identified Points of Contention:
- Technical Questions: A key evidentiary question for the ’198 Patent is whether the accused tool is intended to be used, or is actually used, in the specific manner described by the "whereby" clause. The complaint makes a conclusory allegation but does not provide evidence (e.g., from user manuals or product marketing) that users are instructed to hold the "dull edge" and "rock" the "sharp edge" to cut foliage as the claim requires.
- Scope Questions: For the D'991 design patent, the central question is whether the overall visual impression of the accused product is "substantially the same" as the patented design to an ordinary observer. For the ’198 utility patent, a question may arise as to whether the accused tool’s "dull" edges meet the specific "convexly curved dull edge opposite the sharp edge" limitation of claim 1.
V. Key Claim Terms for Construction
The Term: "unitary...body"
Context and Importance: This term appears in the preamble of claim 1 of the ’198 Patent. Practitioners may focus on this term because the specification discloses an embodiment constructed from two different materials: a "base portion 18" that is "hardened and workable" and an "overmolded portion 20" that is "resilient," which "collectively form[] the unitary body 12" (’198 Patent, col. 2:6-12). The construction of this term will determine whether a product made of multiple, permanently joined materials can be considered "unitary."
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The disclosure of a two-material (base and overmolded) structure that "collectively form[s] the unitary body" could support an interpretation where "unitary" refers to a single, integrated, non-separable final assembly, not necessarily a body made of a single, homogenous material (’198 Patent, col. 2:6-8).
- Evidence for a Narrower Interpretation: Language such as "a single, unitary article having no moving parts" could be argued to support a more restrictive definition, implying a one-piece construction, especially when read in a light most favorable to a narrower claim scope (’198 Patent, col. 2:4-5).
The Term: "convexly curved dull edge"
Context and Importance: This term from claim 1 of the ’198 Patent defines the part of the tool a user holds while cutting. Its definition is critical for the functional "whereby" clause. The dispute may center on whether "dull" simply means "not sharp," or if it implies an affirmative ergonomic design feature for safe and comfortable handling during the "rocking" cutting motion.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term "dull" can be given its plain and ordinary meaning of "not sharp," which would cover any unsharpened edge of the tool opposite the cutting blade.
- Evidence for a Narrower Interpretation: The specification describes the non-sharp side of the tool as potentially being an "overmolded portion 20" that is "resilient and has a tacky surface treatment to facilitate holding and retaining the tool" (’198 Patent, col. 2:13-15). This could support an argument that the "dull edge" is not merely unsharpened but is a specifically designed functional element.
VI. Other Allegations
- Indirect Infringement: The complaint does not plead separate counts for indirect infringement (inducement or contributory infringement).
- Willful Infringement: The complaint alleges that Defendant's infringement is willful (Compl. ¶2). This allegation is based on alleged pre-suit knowledge of the patents, stemming from a notice of infringement letter Plaintiffs sent to Defendant on January 28, 2019. The complaint alleges that Defendant's ongoing sales after receiving this notice constitute willful infringement (Compl. ¶¶19-20).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue for the design patent will be one of visual comparison: is the accused tool’s ornamental design substantially the same as the design claimed in the D’991 Patent from the perspective of an ordinary purchaser, or do sufficient differences exist to distinguish the two products in the marketplace?
- A key question for the utility patent will be one of functional proof: can Plaintiffs provide evidence that the accused tool operates in the specific manner recited by claim 1's "whereby" clause, particularly the method of holding the "dull edge" while "rocking" the "sharp edge" to cut?
- The case may also turn on a question of claim construction: will the term "unitary," as used in the ’198 Patent, be construed to cover a body made of two distinct, permanently-joined materials, as described in the specification's preferred embodiment, and what are the precise functional or physical characteristics required for an edge to be considered the "dull edge" of the claim?