DCT

2:17-cv-02004

Lifetime Brands Inc v. Bopfans

I. Executive Summary and Procedural Information

Parties & Counsel:
- Plaintiff: Lifetime Brands, Inc. (New York)
- Defendant: Bopfans (China)
- Plaintiff’s Counsel: TUTUNJIAN & BITETTO, P.C.
Case Identification: Lifetime Brands, Inc. v. Bopfans, 2:17-cv-02004, E.D.N.Y., 04/06/2017
Venue Allegations: Venue is alleged to be proper based on Defendant's business activities in the district, including offering products for sale through online channels like Amazon.com with the expectation that residents of the district would purchase them.
Core Dispute: Plaintiff alleges that Defendant’s neoprene lunch totes and single-bottle bags infringe four of Plaintiff's U.S. design patents.
Technical Context: The dispute concerns the ornamental design of insulated, flexible carriers, a product category within the consumer housewares and accessories market.
Key Procedural History: The complaint notes that the patents-in-suit were assigned from the original assignee, Built NY, Inc., to Plaintiff Lifetime Brands, Inc. It also alleges that Plaintiff provided constructive notice to the public by marking its own products with the relevant patent numbers.

Case Timeline

Date	Event
2005-01-08	’363 Patent Priority Date
2005-10-27	’752 Patent Priority Date
2005-10-27	’772 Patent Priority Date
2005-10-27	’859 Patent Priority Date
2006-01-03	’363 Patent Issue Date
2006-02-06	Plaintiff's "BUILT NY GOURMET TO GO LUNCH TOTE" first sold
2006-12-19	’752 Patent Issue Date
2007-01-09	’772 Patent Issue Date
2007-01-30	’859 Patent Issue Date
2015-11-16	Accused Bopfans tote "Date first available at Amazon.com"
2016-03-05	Accused Bopfans wine bottle bag "Date first available at 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"

(Issued December 19, 2006; Compl. ¶9; ’752 Patent, p. 14)

The Invention Explained

Nature of Invention: As this is a design patent, the invention is the specific aesthetic and ornamental appearance of the article, not its utilitarian function.
Problem Addressed: The complaint does not specify a problem addressed, but the context implies a need for distinctive ornamental designs for consumer products to protect against imitation (Compl. ¶15).
The Patented Solution: The patent claims "[t]he ornamental design for a lunch purse with zip, as shown and described" ('752 Patent, p. 14, CLAIM). The design, depicted in figures such as FIG. 1, consists of a soft-sided tote with a relatively wide, flat bottom that tapers upwards to a narrower top section, which incorporates an integrated handle opening ('752 Patent, FIG. 1). The patent explicitly disclaims the broken lines showing stitching and the handle opening, stating they are for "illustrative purposes only and form no part of the claimed design" ('752 Patent, p. 14, DESCRIPTION).
Technical Importance: The complaint alleges that the designs protected by the patents, including the '752 patent, "cover the ornamental features of Plaintiff's products" such as the BUILT NY GOURMET TO GO LUNCH TOTE (Compl. ¶14).

Key Claims at a Glance

Design patents contain a single claim for the ornamental design as depicted in the drawings.
The essential elements of the claimed design are the visual characteristics shown in the patent's figures, including:
- The overall purse-like configuration with a wide base and tapering upper body.
- The profile view showing the specific curves of the sides and top.
- The appearance of an integrated handle at the top of the article.

U.S. Design Patent No. D534,772 - "LUNCH PURSE"

(Issued January 9, 2007; Compl. ¶10; ’772 Patent, p. 33)

The Invention Explained

Problem Addressed: Similar to the '752 patent, the '772 patent seeks to protect a specific ornamental design for a consumer product (Compl. ¶14).
The Patented Solution: The patent claims "[t]he ornamental design for a lunch purse, as shown and described" ('772 Patent, p. 33, CLAIM). The visual appearance of the design in the '772 patent is very similar to that of the '752 patent, featuring the same general silhouette and integrated handle structure ('772 Patent, FIG. 1). It also contains the same disclaimer that the broken-line showings of stitching and the handle opening are for illustrative purposes and not part of the claimed design ('772 Patent, p. 33, DESCRIPTION).
Technical Importance: The complaint asserts that this patent also covers the ornamental features of Plaintiff's lunch tote products (Compl. ¶14).

Key Claims at a Glance

The patent contains a single claim for the ornamental design as shown in its figures.
The key visual features are substantially similar to those of the '752 patent.

U.S. Patent No. D535,859 - "LUNCH PURSE"

(Issued January 30, 2007; Compl. ¶11)

Technology Synopsis: This design patent protects the ornamental appearance of a lunch purse. The design features a tote-like shape with a broad base that tapers toward an integrated handle at the top, consistent with the designs of the '752 and '772 patents ('859 Patent, FIG. 1).
Asserted Claims: The single claim for the ornamental design as shown and described.
Accused Features: The overall design of the "BOPFANS tote" is alleged to be substantially the same as the design in this patent (Compl. ¶18, 20, 21).

U.S. Patent No. D513,363 - "ONE BOTTLE TOTE APPARATUS"

(Issued January 3, 2006; Compl. ¶12)

Technology Synopsis: This design patent protects the ornamental appearance of a single bottle tote. The claimed design consists of a soft, cylindrical body that conforms to the shape of a bottle, narrowing at the top to form an integrated handle with a circular opening ('363 Patent, FIG. 1, 6).
Asserted Claims: The single claim for the ornamental design as shown and described.
Accused Features: The complaint alleges that the overall design of the "BOPFANS wine bottle bag" is substantially the same as the design in this patent (Compl. ¶28, 29).

III. The Accused Instrumentality

Product Identification

The complaint identifies two accused instrumentalities:

"Lunch Tote, OFEILY Lunch boxes Lunch bags with Fine Neoprene Material Waterproof Picnic Lunch Bag Mom Bag (Black)," referred to as the "BOPFANS tote" (Compl. ¶17).
"Wine Carrier, OFEILY Durable Neoprene Single Bottle Wine Tote Bag...," referred to as the "BOPFANS wine bottle bag" (Compl. ¶27).

Functionality and Market Context

The complaint describes the accused products as being made of neoprene material and sold by Defendant through a storefront on Amazon.com (Compl. ¶8, 17, 27).
The "BOPFANS tote" is alleged to be a lunch bag, and the complaint notes it has received 186 customer reviews (Compl. ¶17, 23).
The "BOPFANS wine bottle bag" is described as a carrier for a single bottle (Compl. ¶27).
The complaint provides side-by-side photographic comparisons of the accused products with drawings from the patents-in-suit. One such comparison shows the black BOPFANS tote next to a drawing from the '752 patent (Compl. p. 5). Another shows the black BOPFANS wine bottle bag next to a drawing from the '363 patent (Compl. p. 8).

IV. Analysis of Infringement Allegations

The complaint does not contain claim charts. The infringement theory for design patents relies on the "ordinary observer" test, which asks whether an ordinary observer, familiar with the prior art, would be deceived into purchasing the accused device believing it to be the patented design. The complaint's allegations are summarized below.

Allegations regarding '752, '772, and '859 Patents: Plaintiff alleges that an "ordinary observer would think that the BOPFANS tote is substantially the same as" the designs claimed in the '752, '772, and '859 patents (Compl. ¶18). To support this, the complaint provides separate side-by-side visual comparisons for each of these three patents, juxtaposing a patent figure with a photograph of the accused BOPFANS tote (Compl. p. 5-6). For example, the complaint displays a front view from the '752 patent next to a corresponding view of the black BOPFANS tote (Compl. p. 5). These comparisons form the primary basis for the infringement allegations against the BOPFANS tote, focusing on the overall visual similarity of the products' shape, profile, and handle configuration (Compl. ¶18, 19, 20).
Allegations regarding '363 Patent: The complaint makes a parallel allegation that an "ordinary observer would think that the BOPFANS wine bottle bag is substantially the same as the design of the '363 patent" (Compl. ¶28). This allegation is also supported by a side-by-side visual comparison, showing a patent figure next to a photograph of the accused BOPFANS wine bottle bag (Compl. p. 8). The allegation rests on the asserted visual similarity of the overall design (Compl. ¶28, 29).
Identified Points of Contention:
- Scope Questions: The primary question in a design patent case is whether the accused design is "substantially the same" as the claimed design. The dispute will focus on the visual impression created by the products as a whole. A question may arise regarding whether any minor differences in proportion, curvature, or surface texture between the patent drawings and the accused products are sufficient to escape infringement in the eyes of an ordinary observer.
- Technical Questions: The case does not present technical operational questions. The dispute is purely about ornamental appearance. The key evidentiary question will be how the visual evidence is presented and interpreted by the fact-finder.

V. Key Claim Terms for Construction

In design patent litigation, the "claim" is understood to be the design itself as shown in the drawings, and traditional claim construction of written terms is rare. However, the interpretation of disclaimers can be a critical issue.

The Term: The scope of the claimed design in view of the disclaimer for the "handle opening."
Context and Importance: The integrated handle is a prominent feature of the '752, '772, and '859 patents and the accused tote. The patents state, "The broken line showing of...a handle opening is for illustrative purposes only and form no part of the claimed design" ('752 Patent, p. 14, DESCRIPTION). Practitioners may focus on this term because its interpretation could significantly impact the scope of the design being compared to the accused product.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Plaintiff may argue that the disclaimer applies only to the specific dashed-line depiction of the opening's boundary, but not to the overall visual effect of a tote having an integrated handle cutout in that location, which contributes to the design's overall appearance.
- Evidence for a Narrower Interpretation: Defendant may argue that the disclaimer entirely removes the handle opening from the legally protected design. Under this view, the court or jury would be instructed to ignore the handle opening and focus only on the remaining features, such as the outer silhouette of the bag, when performing the infringement comparison.

VI. Other Allegations

Indirect Infringement: The complaint includes boilerplate language alleging Defendant is "causing others to use" infringing products (Compl. ¶6), but it does not plead specific facts to support a claim for induced or contributory infringement, and the formal counts are for direct infringement under 35 U.S.C. §271 (Compl. ¶33, 36, 39, 42).
Willful Infringement: The complaint alleges willful infringement (Compl. ¶2, 26). The stated bases for willfulness are alleged constructive notice via Plaintiff's patent marking on its own products and Defendant's "ongoing sales" after receiving such notice (Compl. ¶25-26). The prayer for relief requests a finding of willful infringement and an award of treble damages (Compl. p. 11, ¶5, 6).

VII. Analyst’s Conclusion: Key Questions for the Case

A core issue will be one of visual comparison: from the perspective of an ordinary observer, is the overall ornamental design of the accused "BOPFANS tote" substantially the same as the designs claimed in the '752, '772, and '859 patents, and is the "BOPFANS wine bottle bag" substantially the same as the '363 patent's design?
A key legal question will be the effect of the disclaimer: how will the court interpret the statement that the "handle opening" forms "no part of the claimed design," and how will that instruction influence the jury's comparison of this prominent feature?
An underlying issue may be the distinction between related patents: with three visually similar "Lunch Purse" design patents asserted against the same product, the defense may question the novelty and non-obviousness of each design over the others, potentially impacting their validity or the scope of protection afforded to any single patent.