DCT
1:22-cv-05663
NuWave LLC v. Sound Around Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: NuWave, LLC (Illinois)
- Defendant: Sound Around, Inc. (New York)
- Plaintiff’s Counsel: Bishop Diehl & Lee, LTD.
- Case Identification: 1:22-cv-05663, E.D.N.Y., 09/22/2022
- Venue Allegations: Venue is alleged to be proper in the Eastern District of New York because Defendant resides in the district, engages in the sale and distribution of products within the district, and a substantial part of the events giving rise to the claims occurred there.
- Core Dispute: Plaintiff alleges that the ornamental design of Defendant’s NutriChef induction cooktop infringes its design patent and associated trade dress for the NuWave Precision Induction Cooktop line of products.
- Technical Context: The dispute concerns the ornamental design of portable countertop induction cooktops, a segment of the competitive consumer kitchen appliance market.
- Key Procedural History: The complaint alleges that Plaintiff provided constructive notice of the patent-in-suit by marking its own products, which may form a basis for its willfulness allegations. No other significant procedural history is mentioned.
Case Timeline
| Date | Event |
|---|---|
| 2011-06-01 | D651,448 Patent Priority Date (Application Filing Date) |
| 2011-01-01 | Plaintiff's NuWave Cooktop first introduced (approximate) |
| 2012-01-03 | D651,448 Patent Issue Date |
| 2020-07-01 | Defendant's NutriChef Cooktop introduced (approximate) |
| 2022-09-22 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D651,448 - "COOKTOP," Issued January 3, 2012
The Invention Explained
- Problem Addressed: The complaint suggests that prior to Plaintiff's product, the market for portable induction cooktops was dominated by conventional designs with a "square or rectangular top surface" (Compl. ¶34, FIG. on p. 7). This implies a lack of distinctive or unique aesthetic options for consumers.
- The Patented Solution: The '448 Patent claims an ornamental design for a cooktop. The design's primary features are a circular main body combined with an integrated, protruding front section that houses the controls (Compl. ¶15, 27). The complaint refers to this protruding section as a "duckbill" control panel (Compl. ¶15). The claimed design is defined entirely by the solid lines in the patent's seven figures, which depict the object's shape from multiple orthographic and perspective views (D'448 Patent, FIG. 1-7).
- Design Importance: The complaint alleges that this "unique rounded design configuration" makes the product "readily identifiable to customers and potential customers," distinguishing it from competing products (Compl. ¶27).
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a cooktop, as shown and described" (D'448 Patent, col. 1:57-59).
- The essential visual elements of the claimed design include:
- A generally circular housing.
- A control panel area that protrudes from the circular housing, creating a distinct "duckbill" or teardrop-like overall shape when viewed from the top or bottom.
- The specific profile, contours, and proportions of the housing as depicted in the front, back, and side views.
III. The Accused Instrumentality
Product Identification
The accused products are Defendant's induction cooktops sold under the name "NutriChef Portable Single Burner Induction Cooktop" or similar naming, specifically including model numbers NCIT1S and NCIT2S (Compl. ¶41-42).
Functionality and Market Context
The complaint identifies the accused NutriChef Cooktop as a direct competitor to Plaintiff's NuWave Cooktop (Compl. ¶43). It is marketed and sold throughout the United States via online channels, including Defendant's website and the Amazon.com marketplace (Compl. ¶45-46). The core of the allegations centers on the visual appearance of the NutriChef Cooktop, which Plaintiff asserts is "substantially similar and virtually identical" to the design protected by the '448 Patent (Compl. ¶44). The complaint includes a side-by-side photograph to illustrate the alleged visual similarity between the two products (Compl. p. 9, ¶48).
IV. Analysis of Infringement Allegations
The complaint alleges that the accused NutriChef Cooktop infringes the '448 Patent because, in the eye of an ordinary observer, its design is substantially the same as the patented design (Compl. ¶47). The complaint provides a visual claim chart comparing figures from the '448 Patent to corresponding photographs of the accused product to support this allegation (Compl. p. 14-15). This visual chart compares multiple orthographic and perspective views, such as a top-down view of the patented design against a top-down photograph of the accused product (Compl. p. 15, FIG. 6 comparison). The table below summarizes the infringement theory based on the visual features shown in the patent and accused in the complaint.
D651,448 Infringement Allegations
| Claim Element (Visual Feature from D'448 Patent) | Alleged Infringing Functionality (from NutriChef Cooktop) | Complaint Citation | Patent Citation |
|---|---|---|---|
| The isometric perspective view of the cooktop design as shown in FIG. 1 | The complaint provides a photograph of the accused NutriChef cooktop from a similar isometric perspective, alleging it embodies the same overall shape and appearance. | ¶77, p. 14 | col. 1:61-63 |
| The front side view of the cooktop design as shown in FIG. 2 | A photograph of the accused product's front view is presented to show a similar profile and control panel layout. | ¶77, p. 14 | col. 1:64-66 |
| The top-down view of the cooktop design as shown in FIG. 6 | A top-down photograph of the accused product is shown, highlighting an allegedly identical overall footprint, including the circular body and protruding control area. | ¶77, p. 15 | col. 2:10-12 |
| The bottom view of the cooktop design as shown in FIG. 7 | A photograph of the underside of the accused product is provided to demonstrate similarity in shape and configuration. | ¶77, p. 15 | col. 2:13-15 |
Identified Points of Contention
- Scope Questions: The infringement analysis will depend on the scope of the '448 Patent's design protection, which is informed by the prior art. The complaint characterizes the relevant prior art as being limited to "square or rectangular" cooktops (Compl. ¶34). A central question will be whether other prior art designs exist that are closer to the '448 patent design. The existence of such art could narrow the patent's scope, requiring a higher degree of similarity for a finding of infringement.
- Design Questions: While the overall shapes appear similar, the infringement analysis may focus on differences in detail. The court may need to consider whether differences in the specific curvature, proportions, surface ornamentation, or control button layout between the patented design and the accused product are significant enough to be noticed by an ordinary observer, thereby avoiding a finding of substantial similarity.
V. Key Claim Terms for Construction
Formal claim construction of written terms is not typically performed in design patent litigation, as the claim is understood to be the design itself as depicted in the drawings. However, the scope of the design protection is a central issue.
- The "Term": The "overall ornamental design" for the cooktop.
- Context and Importance: The entire infringement analysis turns on the scope and detail of the visual appearance protected by the patent. Practitioners may focus on this issue because the comparison is not of individual features in isolation, but of the overall visual effect of the design.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that the patent protects the overall impression of a cooktop with a circular body and a protruding "duckbill" control area, and that minor variations in proportions or surface details do not alter this fundamental design identity. The claim covers the design "as shown," which could be argued to mean the overall visual gestalt.
- Evidence for a Narrower Interpretation: A party could argue that protection is limited to the exact design shown in the solid lines of the patent figures. The patent explicitly disclaims the features shown in broken lines, stating they "form no part of the claimed design" (D'448 Patent, col. 2:16-18). This disclaimer suggests that the claim is precisely limited to what is shown in solid lines, and any deviation in the accused product, even if minor, is a departure from the claimed design.
VI. Other Allegations
- Indirect Infringement: The complaint includes a claim for induced and contributory infringement (Compl. ¶79). It alleges Defendant's activities include "encouraging, aiding and abetting others" to infringe, but does not plead specific facts explaining how Defendant is alleged to have done so (e.g., through user manuals or specific advertising copy).
- Willful Infringement: Willfulness is alleged based on Defendant’s "reckless disregard" of Plaintiff's patent rights (Compl. ¶81). The complaint asserts Defendant had notice of the '448 patent "by virtue of Plaintiff marking its NuWave® Cooktop with notice" of the patent (Compl. ¶80). This allegation of constructive notice may be used to support the willfulness claim.
VII. Analyst’s Conclusion: Key Questions for the Case
This dispute will likely center on the application of the "ordinary observer" test to the specific designs at issue and the scope of rights associated with both the design patent and the asserted trade dress.
- A central issue will be one of visual comparison: would an ordinary observer, giving the attention a purchaser usually gives, be deceived into thinking the accused NutriChef Cooktop is the same as, or is affiliated with, the product embodying the '448 patent design? This analysis will be informed by the scope and content of the prior art.
- A key question for the patent claim will be the impact of the prior art: the complaint frames the prior art as consisting of square and rectangular cooktops. The degree to which Defendant can introduce prior art designs that are more similar to the '448 patent will be critical in defining the patent's scope and the level of similarity required for infringement.
- For the parallel trade dress claim, a crucial question will be non-functionality: can Plaintiff prove that its "unique rounded design configuration" and "duckbill" control panel are purely ornamental and not essential to the use or purpose of the article, or that they do not affect its cost or quality?