DCT
2:17-cv-02002
Lifetime Brands Inc v. Merkapa Outdoor
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Lifetime Brands, Inc. (New York)
- Defendant: Merkapa Outdoor (China)
- Plaintiff’s Counsel: TUTUNJIAN & BITETTO, P.C.
- Case Identification: 2:17-cv-02002, E.D.N.Y., 04/06/2017
- Venue Allegations: Plaintiff alleges venue is proper because Defendant conducts business in the district through online sales, placing products into the stream of commerce with the expectation that they will be purchased by residents of the district.
- Core Dispute: Plaintiff alleges that Defendant’s neoprene lunch tote infringes three of Plaintiff's design patents for a "Lunch Purse."
- Technical Context: The lawsuit concerns the ornamental design of insulated, flexible lunch bags within the consumer housewares and accessories market.
- Key Procedural History: The patents-in-suit were originally assigned to Built NY, Inc., which subsequently assigned them to Plaintiff. Plaintiff alleges it has sold products embodying the patented designs since early 2006 and has marked those products with the relevant patent numbers.
Case Timeline
| Date | Event |
|---|---|
| 2005-10-27 | Priority/Filing Date for ’752, ’772, and ’859 Patents |
| 2006-02-06 | Plaintiff's predecessor begins selling product embodying patented designs |
| 2006-12-19 | U.S. Patent No. D533,752 Issued |
| 2007-01-09 | U.S. Patent No. D534,772 Issued |
| 2007-01-30 | U.S. Patent No. D535,859 Issued |
| 2014-03-03 | Assignment of patents to Plaintiff recorded with USPTO |
| 2015-09-21 | Date Accused Product first available on Amazon.com |
| 2017-04-06 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D533,752 - "Lunch Purse with Zip"
- Patent Identification: U.S. Patent No. D533,752, "Lunch Purse with Zip," Issued December 19, 2006.
- The Invention Explained:
- Problem Addressed: As a design patent, the '752 patent does not explicitly state a technical problem. Its purpose is to protect a new, original, and ornamental design for an article of manufacture, distinguishing it from prior designs.
- The Patented Solution: The patent claims the specific ornamental design for a lunch purse as depicted in the figures (D’752 Patent, FIG. 1-4). The protected design is defined by the solid lines and features a tote bag with a flared body, a wider base, and a curved top edge that forms an integrated handle. The description explicitly states that elements shown in broken lines, such as the stitching and the handle opening, are for illustrative purposes only and do not form part of the claimed design (D’752 Patent, Description).
- Technical Importance: The complaint alleges that products embodying this design have been manufactured and sold since at least 2006, and that intellectual property protection is pursued to compete against "counterfeits and knock-offs" (Compl. ¶¶13-14).
- Key Claims at a Glance:
- The patent asserts a single claim for "The ornamental design for a lunch purse with zip, as shown and described" (D’752 Patent, col. 2:50-52).
- The essential elements of the claimed design are the visual characteristics of the article as shown in the solid-line drawings, including:
- The overall front elevational profile.
- The specific curvature of the upper portion forming the handle structure.
- The relationship between the wider base and the narrower top.
- The side and bottom plan views, which define its three-dimensional shape.
U.S. Design Patent No. D534,772 - "Lunch Purse"
- Patent Identification: U.S. Patent No. D534,772, "Lunch Purse," Issued January 9, 2007.
- The Invention Explained:
- Problem Addressed: The patent aims to protect a new, original, and ornamental design for a lunch purse.
- The Patented Solution: The '772 patent claims an ornamental design for a lunch purse that is visually very similar to the '752 patent. The claimed design consists of the solid-line drawings, which depict the overall shape, proportions, and integrated handle structure of the purse (D’772 Patent, FIG. 1-4). As with the '752 patent, the description specifies that the broken-line showings of stitching and the handle opening are not part of the claimed design (D’772 Patent, Description).
- Technical Importance: This patent is part of a portfolio that covers the ornamental features of Plaintiff's commercial lunch tote products (Compl. ¶13).
- Key Claims at a Glance:
- The patent asserts a single claim for "The ornamental design for a lunch purse, as shown and described" (D’772 Patent, col. 2:49-51).
- The essential elements are the visual features depicted in the solid lines of Figures 1-4, which appear to define the same overall shape and profile as the '752 Patent.
Multi-Patent Capsule: U.S. Design Patent No. D535,859 - "Lunch Purse"
- Patent Identification: U.S. Patent No. D535,859, "Lunch Purse," Issued January 30, 2007.
- Technology Synopsis: The patent protects an ornamental design for a lunch purse. The claimed design is defined by the visual appearance of the article as shown in the patent's figures, which depict its specific shape, proportions, and integrated handle (D’859 Patent, FIG. 1-4, Description). The design appears substantially identical to those in the ’752 and ’772 patents.
- Asserted Claims: The single claim for "The ornamental design for a lunch purse, as shown and described" (D’859 Patent, col. 2:49-51; Compl. Count III).
- Accused Features: The overall ornamental design of the "MERKAPA tote" is alleged to be substantially the same as, and therefore infringe, the design claimed by the '859 patent (Compl. ¶¶17, 19, 34).
III. The Accused Instrumentality
- Product Identification: "Merkapa Cute Design Waterproof Neoprene Lunch Tote Cooler Bag" (referred to as the "MERKAPA tote") (Compl. ¶16).
- Functionality and Market Context: The accused product is an insulated lunch bag made of "machine washable insulating neoprene" intended to keep food warm or cold for up to four hours (Compl. Ex. E, p. 40). It is sold through a storefront on Amazon.com, with the complaint noting it has been available since at least September 21, 2015, and is offered with various graphical surface patterns (Compl. ¶¶15-16, 21).
IV. Analysis of Infringement Allegations
The complaint bases its infringement allegations on the "ordinary observer" test, arguing that the accused MERKAPA tote is "substantially the same" as the patented designs (Compl. ¶17). The complaint provides a side-by-side visual comparison showing a front view of the patented design next to a corresponding view of the accused MERKAPA tote (Compl. ¶17, p. 5).
D533,752 Infringement Allegations
| Claim Element (from Single Claim) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a lunch purse with zip, as shown and described. | The complaint alleges that an ordinary observer would find the overall visual appearance of the accused MERKAPA tote to be substantially the same as the patented design, thereby deceiving the observer into purchasing the accused tote believing it to be the patented one. This allegation is supported by a direct visual comparison provided in the complaint. | ¶17 | col. 2:50-52 |
D534,772 Infringement Allegations
| Claim Element (from Single Claim) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a lunch purse, as shown and described. | The complaint alleges that the accused MERKAPA tote embodies a design substantially the same as the '772 patent's claimed design. This is supported by a side-by-side visual comparison intended to show the similarity in overall appearance to an ordinary observer. | ¶18 | col. 2:49-51 |
Identified Points of Contention
- Scope Questions: The primary legal question is whether an ordinary observer, giving the attention a typical purchaser would, would find the overall design of the accused MERKAPA tote substantially the same as the designs claimed in the patents. The analysis may need to account for differences in surface ornamentation (e.g., the polka-dot pattern on the accused product) versus the unadorned shape claimed in the patents.
- Technical Questions: A key technical design question is what effect the patents' disclaimers of broken-line elements have on the infringement analysis. The court will need to determine the scope of the protected design, which is limited to the solid-line shapes, and compare that scope to the overall visual impression of the accused product.
V. Key Claim Terms for Construction
In design patent litigation, the claim is typically understood to be the design itself as shown in the drawings, and disputes over the meaning of specific words are less common than in utility patent cases. However, the scope of what the drawings cover is a central issue.
- The Term: "The ornamental design ... as shown and described."
- Context and Importance: The central dispute hinges on the scope of the protected "design." Practitioners may focus on this issue because the comparison for infringement requires a clear understanding of what visual elements are included within the claim and what elements are disclaimed.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim covers the design "as shown and described," which encompasses all views (front, top, side, bottom) depicted in solid lines in the patent figures (D’752 Patent, FIGs. 1-4). This suggests the claim protects the overall three-dimensional shape and configuration of the article.
- Evidence for a Narrower Interpretation: The "DESCRIPTION" section of each patent explicitly limits the scope by stating: "The broken line showing of stitching and a handle opening is for illustrative purposes only and form no part of the claimed design" (D’752 Patent, Description). This language provides clear intrinsic evidence that the claim is narrowed to the article's shape and proportions, independent of these specific functional or manufacturing artifacts.
VI. Other Allegations
- Indirect Infringement: The complaint does not allege indirect infringement (inducement or contributory infringement). The claims are for direct infringement under 35 U.S.C. §271 (Compl. ¶¶28, 31, 34).
- Willful Infringement: The complaint alleges that Defendant’s infringement was and is willful (Compl. ¶25). The asserted basis for this claim is constructive notice, arising from Plaintiff’s alleged compliance with the patent marking statute (35 U.S.C. § 287) by marking its own commercial products with the numbers of the patents-in-suit (Compl. ¶¶24, 37). The complaint also alleges the infringement was conducted in "bad faith" (Compl. ¶39).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of visual comparison: will an ordinary observer, properly comparing the accused MERKAPA tote to the patented designs, find them to be substantially the same, particularly when factoring in the different surface ornamentation of the accused product against the unadorned shape claimed in the patents?
- A key legal question will be the effect of disclaimed elements: how should the court weigh the visual impact of features like stitching on the accused product when the patents explicitly disclaim those same elements from the scope of the protected design?
- A key evidentiary question for willfulness will be one of notice: does Plaintiff’s alleged marking of its own products sold in the U.S. constitute legally sufficient notice to a foreign defendant selling products through an online marketplace like Amazon.com, thereby supporting a finding of willful infringement?