2:17-cv-02005
Lifetime Brands Inc v. E Living
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Lifetime Brands, Inc. (New York)
- Defendant: E-LIVING (China)
- Plaintiff’s Counsel: TUTUNJIAN & BITETTO, P.C.
- Case Identification: 2:17-cv-02005, E.D.N.Y., 04/06/2017
- Venue Allegations: Venue is alleged to be proper based on Defendant conducting business in the district through online sales and placing products into the stream of commerce with the expectation that they would be purchased by residents of the district.
- Core Dispute: Plaintiff alleges that Defendant’s neoprene lunch and bottle totes infringe five of its design patents and one of its utility patents covering similar insulated tote products.
- Technical Context: The technology relates to flexible, insulated carriers, typically made of neoprene, designed to protect and transport beverage bottles and food containers.
- Key Procedural History: The complaint notes that the patents-in-suit were originally assigned to Built NY, Inc., and subsequently assigned to the Plaintiff, Lifetime Brands, Inc. No other significant procedural events are mentioned.
Case Timeline
| Date | Event |
|---|---|
| 2004-01-09 | U.S. Patent No. 7,219,814 Priority Date |
| 2005-01-08 | U.S. Patent Nos. D513,363 & D529,278 Filing Date |
| 2005-10-27 | U.S. Patent Nos. D533,752, D534,772, & D535,859 Filing Date |
| 2006-01-03 | U.S. Patent No. D513,363 Issued |
| 2006-10-03 | U.S. Patent No. D529,278 Issued |
| 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 |
| 2007-05-22 | U.S. Patent No. 7,219,814 Issued |
| 2016-04-05 | Alleged first offer for sale of Accused Products |
| 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
The Invention Explained
As a design patent, the invention is the unique ornamental appearance of the article shown in the figures (D533752 Patent, Claim). The patent claims the specific visual characteristics of a "lunch purse with zip," which include a soft-sided body with a wide, flat base that tapers upward to an integrated handle section, an oval handle cutout, and a zipper along the top arch (D533,752 Patent, FIG. 1, Description). The complaint states that this design protects the ornamental features of Plaintiff's "BUILT NY GOURMET TO GO LUNCH TOTE" (Compl. ¶18).
Key Claims at a Glance
- Design patents contain a single claim for the ornamental design as shown and described.
- Key ornamental features of the claimed design include:
- A soft-sided tote body with a generally trapezoidal front profile and a wide, flat bottom.
- An upper handle portion that is integrated with the main body.
- An oval-shaped aperture forming the handle.
- A zipper closure element depicted along the top edge of the handle portion.
U.S. Patent No. 7,219,814 - “Totes for Bottles,” Issued May 22, 2007
The Invention Explained
- Problem Addressed: The patent’s background section describes the shortcomings of conventional paper bags for carrying wine bottles, noting they offer poor protection against breakage, allow bottles to jostle and make irritating sounds, and fail to regulate temperature (’814 Patent, col. 1:17-38).
- The Patented Solution: The invention is a tote for bottles made of an elastic and insulative material like neoprene, which cushions the bottles and helps maintain their temperature (’814 Patent, col. 3:51-67). The tote features front and rear panels sewn together to create a pocket, which is divided into two separate compartments by a central line of stitching, preventing bottles from colliding (’814 Patent, col. 3:25-29). A key feature is the "scalloped" bottom edge with a distinct lobe corresponding to each bottle pocket, which allows the flexible tote to store flat but stand upright when bottles are inserted (’814 Patent, col. 3:42-50).
- Technical Importance: This design provides a reusable, protective, and insulating solution for transporting multiple bottles, overcoming the functional limitations of traditional single-use carriers (’814 Patent, col. 1:39-45).
Key Claims at a Glance
- The complaint asserts claims 1-3 and specifically details infringement of claim 3 (Compl. ¶44-45).
- Independent Claim 3 includes the following essential elements:
- A tote with a front and rear panel secured to define a pocket.
- The panels are fabricated from "neoprene laminated between two layers of stretch nylon."
- Each panel includes a handle opening.
- The panels are secured along a "contact line" (e.g., stitching) that is "orthogonal to the opening" and divides the pocket into a first and second pocket.
- The bottom "terminal edge" is "scalloped" so that each pocket is in "operative association" with a lobe of the scallop.
Multi-Patent Capsule: U.S. Design Patent No. D534,772
- Patent Identification: U.S. Design Patent No. D534772, "Lunch Purse," issued January 9, 2007 (Compl. ¶10).
- Technology Synopsis: This patent claims an ornamental design for a lunch purse. The design is visually similar to the '752 patent, featuring a soft-sided tote with a wide base and an integrated handle with a cutout (D534,772 Patent, FIG. 1).
- Asserted Claims: One design claim for the ornamental design as shown and described.
- Accused Features: The overall ornamental appearance of the "E-LIVING tote" is alleged to be substantially the same as the patented design (Compl. ¶27, ¶56).
Multi-Patent Capsule: U.S. Design Patent No. D535,859
- Patent Identification: U.S. Design Patent No. D535859, "Lunch Purse," issued January 30, 2007 (Compl. ¶11).
- Technology Synopsis: This patent claims an ornamental design for a lunch purse. The design is also visually similar to the '752 and '772 patents, depicting a tote with a wide bottom and an integrated handle (D535,859 Patent, FIG. 1).
- Asserted Claims: One design claim for the ornamental design as shown and described.
- Accused Features: The overall ornamental appearance of the "E-LIVING tote" is alleged to infringe the patented design (Compl. ¶28, ¶59).
Multi-Patent Capsule: U.S. Design Patent No. D513,363
- Patent Identification: U.S. Design Patent No. D513363, "One Bottle Tote Apparatus," issued January 3, 2006 (Compl. ¶12).
- Technology Synopsis: This patent claims the ornamental design for a single-bottle tote apparatus. The design shows a tall, form-fitting sleeve with an integrated handle cutout at the top (D513,363 Patent, FIG. 1).
- Asserted Claims: One design claim for the ornamental design as shown and described.
- Accused Features: The complaint alleges the "E-LIVING wine bottle bag" misappropriates this patented design (Compl. ¶35, ¶62).
Multi-Patent Capsule: U.S. Design Patent No. D529,278
- Patent Identification: U.S. Design Patent No. D529278, "Two Bottle Tote Apparatus," issued October 3, 2006 (Compl. ¶13).
- Technology Synopsis: This patent claims the ornamental design for a two-bottle tote apparatus. The design shows a wider tote with a central vertical seam, a scalloped bottom, and an integrated handle cutout, similar in form to the utility '814 patent (D529,278 Patent, FIG. 1).
- Asserted Claims: One design claim for the ornamental design as shown and described.
- Accused Features: The "E-LIVING double tote" is alleged to infringe this patented design (Compl. ¶42, ¶65).
III. The Accused Instrumentality
Product Identification
The complaint identifies three categories of accused products sold by Defendant under the "E-LIVING" brand: the "E-LIVING tote" (a lunch bag), the "E-LIVING wine bottle bag" (a single bottle carrier), and the "E-LIVING double tote" (a two-bottle carrier) (Compl. ¶25, ¶34, ¶41).
Functionality and Market Context
The products are described as neoprene bags with various graphical designs, sold through a storefront on Amazon.com (Compl. ¶8, ¶25). The complaint alleges their functionality and appearance directly copy Plaintiff's products. For example, the "E-LIVING double tote" is alleged to include front and rear nylon-laminated neoprene panels, a handle opening, central stitching that divides the interior into two pockets, and a scalloped bottom edge (Compl. ¶46). The complaint provides a side-by-side comparison of the patented '752 design and the accused "E-LIVING tote" (Compl. ¶26).
IV. Analysis of Infringement Allegations
For the design patents, infringement is determined by the "ordinary observer" test. The complaint asserts that an ordinary observer would find the accused products substantially the same as the patented designs, providing visual comparisons as evidence (Compl. ¶26, ¶35, ¶42). The image provided shows a side-by-side comparison of a line drawing from the '363 patent and a photograph of the accused "E-LIVING wine bottle bag" (Compl. ¶35). Another image compares the '278 patent design to the accused "E-LIVING double tote" (Compl. ¶42).
The analysis for the '814 utility patent is based on a limitation-by-limitation comparison.
D533,752 Infringement Allegations
The complaint alleges that from the perspective of an ordinary observer, the "E-LIVING tote is substantially the same" as the design claimed in the '752 patent (Compl. ¶26). The infringement theory rests on the overall visual similarity in shape and configuration between the accused product and the patent's drawings, as depicted in a side-by-side comparison (Compl. ¶26). A potential point of contention is that the patent is titled "Lunch Purse with Zip," and the drawings depict a zipper, while the photograph of the accused product does not appear to show one, which may impact the comparison of the overall ornamental design.
7,219,814 Infringement Allegations
| Claim Element (from Independent Claim 3) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a front panel defining a perimetral edge; a rear panel defining a perimetral edge, the front panel being secured to the rear panel...so as to define a pocket... | The E-LIVING double tote includes a front and rear...panel, with the two being secured to one another along the perimetral edge...together the panels define a pocket. | ¶46 | col. 3:7-15 |
| wherein the front and rear panels are fabricated from a neoprene laminated between two layers of stretch nylon, | The E-LIVING double tote includes a front and rear nylon-laminated neoprene panel... | ¶46 | col. 8:22-24 |
| and each said front and rear panel including a handle opening, | Both panels include a handle opening, as can be seen in the pictures above... | ¶46 | col. 5:4-8 |
| wherein the front and rear panels are secured to one another along a contact line extending in a direction orthogonal to the opening, | The panels are secured to one another along a contact line...that extends in a direction orthogonal to the opening (e.g., the central stitching)... | ¶46 | col. 3:25-29 |
| wherein the contact line divides the pocket into a first and a second pocket, | ...and that contact line divides the pocket into two pockets. | ¶46 | col. 3:26-29 |
| wherein the terminal edge opposite the opening is scalloped such that each of the first and second pockets is in operative association with a lobe of the scalloped terminal edge. | The terminal edge (i.e., the bottom of the E-LIVING double tote) has a scalloped shape, with the first and second pockets being in operative association with a respective lobe of the scalloped terminal edge. | ¶46 | col. 3:42-49 |
Identified Points of Contention
- Scope Questions: A central question for the design patents will be how the "ordinary observer" test is applied where the accused products have different surface ornamentation (e.g., polka dots) and may lack specific features (e.g., a zipper) shown in the patent drawings. For the '814 Patent, a dispute may arise over the meaning of "neoprene laminated between two layers of stretch nylon" and whether the accused product's material meets this specific construction.
- Technical Questions: For the '814 Patent, a factual question will be whether the "central stitching" on the accused tote is geometrically "orthogonal to the opening" as required by claim 3. Further, evidence will be needed to establish that the accused product's bottom edge is "scalloped" and that its pockets are in "operative association" with the lobes in the manner claimed.
V. Key Claim Terms for Construction
The Term: "scalloped" (from Claim 3 of the '814 Patent)
- Context and Importance: This term defines the shape of the tote's bottom edge, which is functionally linked to the tote's ability to stand upright when holding bottles. The allegation of infringement hinges on the accused tote having a "scalloped shape" (Compl. ¶46). The precise scope of what constitutes a "scalloped" edge will therefore be critical.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the bottom edges as "preferably scalloped, defined by a pair of lobes 116, 118" (’814 Patent, col. 3:42-44). This language could support a construction that encompasses any bottom edge with two distinct lobes or curved indentations.
- Evidence for a Narrower Interpretation: The patent figures, particularly Figure 2, depict a specific, symmetrical, dual-arc shape. A party could argue that the term "scalloped" should be limited to the particular shape shown in these preferred embodiments.
The Term: "operative association" (from Claim 3 of the '814 Patent)
- Context and Importance: This term connects the "scalloped" bottom edge to the individual pockets. The claimed function of the tote standing upright is a result of this association. Practitioners may focus on this term because it appears to be functional language that could be subject to interpretation under 35 U.S.C. § 112(f).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests a functional relationship, stating that each pocket "is in registration with a respective lobe" and that the "contact line 108 is axially aligned with the intersection of lobes 116, 118" (’814 Patent, col. 3:45-48). This could support a broad functional definition tied to the outcome of allowing the tote to stand.
- Evidence for a Narrower Interpretation: A defendant might argue the term requires the specific structural alignment shown in the figures, where the bottom of each pocket aligns precisely with the lowest point of each lobe on the scalloped edge.
VI. Other Allegations
Indirect Infringement
The complaint does not provide sufficient detail for analysis of indirect infringement. The allegations focus on direct infringement through Defendant’s acts of making, using, selling, and importing the accused products (Compl. ¶68).
Willful Infringement
Willfulness is alleged based on the assertion that Defendant engaged in a "conscious, systematic, and willful pattern of patent infringement" (Compl. ¶2). The complaint further alleges that Defendant had constructive notice of the patents through Plaintiff's marking of its own commercial products (Compl. ¶32, ¶39) and that the Defendant's products are a result of "slavish" copying (Compl. ¶48).
VII. Analyst’s Conclusion: Key Questions for the Case
A core issue for the five asserted design patents will be one of visual comparison: would an ordinary observer, taking into account the prior art, find the overall ornamental appearance of the accused E-LIVING totes to be substantially the same as the patented designs, particularly given apparent differences in surface patterns and the potential absence of functional elements like a zipper that are part of the claimed designs?
A key evidentiary question for the '814 utility patent will be one of technical and material composition: does the accused "E-LIVING double tote" practice every element of the asserted claims? Specifically, can Plaintiff prove that the accused product is made from the claimed "neoprene laminated between two layers of stretch nylon" and that its structure meets the geometric and functional requirements of the "scalloped" bottom edge being in "operative association" with the bottle pockets?