DCT
2:17-cv-02003
Lifetime Brands Inc v. Lionkin8
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Lifetime Brands, Inc. (New York)
- Defendant: Lionkin8 (China)
- Plaintiff’s Counsel: Tutunjian & Bitetto, P.C.
- Case Identification: 2:17-cv-02003, E.D.N.Y., 04/06/2017
- Venue Allegations: Venue is alleged to be proper based on Defendant doing business in the district through online sales via Amazon.com, with the expectation that products would be purchased by residents of the district.
- Core Dispute: Plaintiff alleges that Defendant’s insulated neoprene lunch tote infringes three of its U.S. design patents for a "lunch purse."
- Technical Context: The dispute is in the consumer goods sector, concerning the ornamental design of insulated, soft-sided lunch bags.
- Key Procedural History: The complaint notes that the patents-in-suit were assigned to Plaintiff Lifetime Brands, Inc. from the original assignee, Built NY, Inc., and that the assignment was recorded with the USPTO. Plaintiff also alleges it has marked its commercial products with the '752 patent number, providing a basis for constructive notice.
Case Timeline
| Date | Event |
|---|---|
| 2005-10-27 | Filing/Priority Date for '752, '772, and '859 Patents |
| 2006-02-06 | Plaintiff's predecessor begins selling product embodying the designs |
| 2006-12-19 | U.S. Patent No. D533,752 Issues |
| 2007-01-09 | U.S. Patent No. D534,772 Issues |
| 2007-01-30 | U.S. Patent No. D535,859 Issues |
| 2014-03-03 | Patents-in-suit assigned from Built NY, Inc. to Plaintiff |
| 2016-04-13 | Accused LIONKIN tote first available on Amazon.com |
| 2017-04-06 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D533,752 - "Lunch Purse with Zip"
The Invention Explained
- Problem Addressed: Design patents do not solve technical problems but instead protect the novel, non-obvious ornamental appearance of an article of manufacture.
- The Patented Solution: The patent protects the specific ornamental design for a lunch purse as depicted in its figures (D533,752 Patent, Figs. 1-4). The core visual elements include a soft-sided bag with a flared body that is wider at the base than at the top, a continuously curved upper edge, and an integrated, oblong handle opening. The design specifies that the broken lines showing stitching and a handle opening are for illustrative purposes only and form no part of the claimed design, focusing protection on the overall shape and configuration of the purse (D533,752 Patent, DESCRIPTION).
- Technical Importance: The complaint alleges that products embodying this design have been manufactured and sold since at least February 2006, suggesting an established market presence for this aesthetic (Compl. ¶13).
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a lunch purse with zip, as shown and described" (D533,752 Patent, CLAIM).
- The essential elements of the design are its visual characteristics, including:
- The overall purse-like silhouette.
- A flared body profile, wider at the bottom than the top.
- A curved top line incorporating an integrated handle structure.
- A flat bottom enabling the purse to stand upright.
U.S. Design Patent No. D534,772 - "Lunch Purse"
The Invention Explained
- Problem Addressed: As a design patent, the '772 patent protects the ornamental appearance of a lunch purse.
- The Patented Solution: The patent claims the ornamental design for a lunch purse as shown in its figures (D534,772 Patent, Figs. 1-4). This design is a variation of the '752 Patent's design, sharing the overall concept of a purse-shaped lunch tote with an integrated handle. Visual distinctions from the '752 patent appear to include different proportions, with a less pronounced flare from the base to the top and a slightly different curvature along the top edge. The claim's scope is defined by the solid lines in the drawings, with broken lines for stitching and the handle opening being disclaimed (D534,772 Patent, DESCRIPTION).
- Technical Importance: This patent is part of a family of designs that the complaint asserts cover the ornamental features of Plaintiff's commercial 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" (D534,772 Patent, CLAIM).
- The key visual features of the design include:
- The overall purse-like configuration.
- A body with sides that are less flared than the '752 patent design.
- A distinct curved top profile with an integrated handle.
- A flat bottom plane.
U.S. Design Patent No. D535,859 - "Lunch Purse"
- Patent Identification: U.S. Design Patent No. D535,859, "Lunch Purse," issued January 30, 2007 (Compl. ¶11).
- Technology Synopsis: This patent protects a specific ornamental design for a lunch bag with a purse-like shape and an integrated handle. The design features a distinct overall silhouette with specific proportions and curves, particularly in the top line and side profile, that distinguish it from the other asserted patents ('859 Patent, Fig. 1). The broken lines showing stitching and a handle opening are disclaimed and do not form part of the claimed design ('859 Patent, DESCRIPTION).
- Asserted Claims: The patent contains a single claim for the ornamental design as shown and described ('859 Patent, CLAIM).
- Accused Features: The overall ornamental appearance of the LIONKIN tote is alleged to be substantially the same as, and therefore infringe, the design claimed in the '859 patent (Compl. ¶¶19, 33). The complaint provides a side-by-side visual comparison to support this allegation (Compl. ¶19).
III. The Accused Instrumentality
Product Identification
- The accused product is identified as the "Zigzag Insulated Neoprene Lunch Box Tote Bag with Heavy Duty Zipper For Women, Adults, Kids, Girls," referred to as the "LIONKIN tote" (Compl. ¶16).
Functionality and Market Context
- The LIONKIN tote is described as an insulated lunch bag made of neoprene material with a zipper closure, soft-grip handles, and an "art image on both sides" (Compl. Ex. E, p. 38). It is sold in the United States through an Amazon.com storefront operated by Defendant (Compl. ¶¶8, 16). The complaint alleges that the Defendant lists at least twenty-four similar items for sale, with the primary difference being the graphical design printed on the product (Compl. ¶16).
IV. Analysis of Infringement Allegations
The complaint alleges that the LIONKIN tote is "substantially the same" as the patented designs, which invokes the "ordinary observer" test for design patent infringement (Compl. ¶17). The infringement theory is supported by direct visual comparisons. The complaint provides a side-by-side comparison of the LIONKIN tote with the design of the '752 Patent (Compl. ¶17). A similar visual comparison is provided for the '772 Patent (Compl. ¶18). A third comparison is offered for the '859 Patent (Compl. ¶19).
D533,752 Infringement Allegations
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a lunch purse with zip, as shown and described. | The LIONKIN tote is alleged to possess an overall visual appearance that is substantially the same as the patented design, including its purse-like silhouette, flared body, curved top, and integrated handle structure. | ¶17 | D533,752 S, DESCRIPTION |
D534,772 Infringement Allegations
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a lunch purse, as shown and described. | The LIONKIN tote is alleged to have an overall ornamental appearance that is substantially the same as the patented design, including its overall profile, proportions, and integrated handle. | ¶18 | D534,772 S, DESCRIPTION |
Identified Points of Contention
- Scope Questions: The central issue will be whether an ordinary observer, familiar with the prior art, would be deceived by the similarity between the accused LIONKIN tote and the patented designs. The analysis will focus on the overall visual impression rather than a side-by-side comparison of minor details.
- Technical Questions: A key question for the fact-finder will be how to weigh the similarities in overall shape and configuration against any differences, including the surface ornamentation (e.g., "zigzag" pattern) present on the accused product but absent from the claimed designs. The patents claim the shape of the article, not any surface pattern, raising the question of whether the pattern is a significant enough difference to avoid a finding of substantial similarity in the eyes of an ordinary observer.
V. Key Claim Terms for Construction
In design patent cases, the claim is typically construed as being limited to the design "as shown" in the patent drawings. Formal claim construction briefing is less common than in utility patent cases. However, the scope of the design is a critical determination.
- The Term: "The ornamental design... as shown and described."
- Context and Importance: The interpretation of what is encompassed by the patent figures will define the scope of Plaintiff's intellectual property rights and will be determinative of infringement. Practitioners may focus on this as the core of the dispute, as the outcome depends entirely on the visual comparison between the construed claim (the drawings) and the accused product.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party may argue that the claim covers the overall visual impression and configuration of the lunch purse. The fact that three similar-yet-distinct designs were patented may suggest an intent to protect the general aesthetic concept of a neoprene lunch purse of this shape, allowing for minor variations in proportion and curvature.
- Evidence for a Narrower Interpretation: A party may argue the claim is limited to the precise proportions and contours depicted in the solid lines of the drawings. The patent explicitly states that "The broken line showing of stitching and a handle opening is for illustrative purposes only and form no part of the claimed design" (e.g., D533,752 Patent, DESCRIPTION). This disclaimer explicitly carves out certain features, focusing the scope of protection strictly on the depicted shape of the bag itself. Any deviation in that shape could be argued as a basis for non-infringement.
VI. Other Allegations
- Willful Infringement: The complaint alleges a "conscious, systematic, and willful pattern of patent infringement" (Compl. ¶2). The claim for willfulness is specifically supported by an allegation of constructive notice under 35 U.S.C. § 287, based on Plaintiff marking its own commercial products (the BUILT NY GOURMET TO GO LUNCH TOTE) with the '752 patent number (Compl. ¶¶23, 36). The prayer for relief requests a declaration that infringement has been willful and deliberate (Prayer ¶5).
VII. Analyst’s Conclusion: Key Questions for the Case
This case appears to center on fundamental principles of design patent law. The key questions for the court will likely be:
- A core issue will be one of visual similarity: Would an ordinary observer, giving the attention a purchaser usually gives, be deceived into purchasing the LIONKIN tote believing it to be the Plaintiff's patented product? This factual determination will require comparing the overall ornamental appearance of the accused tote to the designs claimed in the patents.
- A second key question will be the impact of prior art: While not detailed in the complaint, the scope of the asserted design patents will be informed by the prior art in the field of lunch totes. A crowded field may narrow the scope of protection, making smaller differences between the accused and patented designs more significant.
- A final evidentiary question will be one of willfulness: Can Plaintiff prove Defendant had the requisite knowledge for willful infringement? The case may turn on whether Plaintiff’s allegation of constructive notice through patent marking is sufficient to establish this element, particularly against a foreign defendant selling through an online marketplace.