1:23-cv-00427
STP Atlantic LLC v. STP North America LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: STP Atlantic LLC (New Jersey)
- Defendant: STP North America LLC (New York)
- Plaintiff’s Counsel: Tarter Krinsky & Drogin LLP
- Case Identification: 1:23-cv-00427, N.D.N.Y., 04/05/2023
- Venue Allegations: Venue is alleged to be proper in the Northern District of New York because the Defendant, a New York LLC, resides in the district.
- Core Dispute: Plaintiff seeks a declaratory judgment that Defendant’s design patent for a sound deadening mat is invalid due to prior public sales and unenforceable due to inequitable conduct during prosecution.
- Technical Context: The dispute concerns the ornamental design of sound deadening mats used in automobiles to reduce noise and provide thermal insulation.
- Key Procedural History: The complaint alleges this lawsuit was precipitated by Defendant filing a patent infringement report with Amazon.com against Plaintiff's products, which resulted in the removal of Plaintiff's product listings. This action by Defendant forms the basis for the actual controversy required for a declaratory judgment action.
Case Timeline
| Date | Event |
|---|---|
| 2017-08-22 | Plaintiff begins selling KILMAT brand sound deadening mats on Amazon, alleged to be invalidating prior art |
| 2021-02-14 | Application for the '206 Patent filed (effective priority date) |
| 2022-09-06 | U.S. Design Patent No. D963,206 issues |
| 2023-03-16 | Defendant allegedly files patent infringement report with Amazon against Plaintiff's product |
| 2023-04-05 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D963,206 - “Sound Deadening Mat,” Issued September 6, 2022
The Invention Explained
- Problem Addressed: As a design patent, the '206 Patent does not contain a background section articulating a specific technical problem. Its purpose is to protect the novel, non-obvious, and ornamental appearance of an article of manufacture, in this case a sound deadening mat (D’206 Patent, Title).
- The Patented Solution: The patent claims the specific ornamental design for the mat as depicted in its figures (D’206 Patent, CLAIM). The design consists of a rectangular mat featuring a grid of raised, smaller rectangular cells with rounded corners, creating a textured, repeating surface pattern (D’206 Patent, Figs. 1-3). The patent’s description clarifies that the broken lines in the drawings define the boundaries of the claimed design and are not part of it (D’206 Patent, DESCRIPTION).
- Technical Importance: The complaint indicates that products with this design are used within automobiles to reduce road and engine noise and improve heat insulation and interior acoustics (Compl. ¶17).
Key Claims at a Glance
- The complaint challenges the validity and enforceability of the patent’s single claim.
- The claim is for: "The ornamental design for a sound deadening mat, as shown and described."
- The essential visual elements comprising this design are:
- The overall ornamental appearance of a sound deadening mat as depicted in Figures 1-5.
- A surface pattern consisting of a grid of raised rectangular cells.
- Each cell features rounded corners and a slight bevel on its top surface.
III. The Accused Instrumentality
Product Identification
As this is a declaratory judgment action for invalidity, the central product is Plaintiff’s own "KILMAT" brand sound deadening mat, which Plaintiff alleges is invalidating prior art to the '206 Patent (Compl. ¶¶17, 57-58).
Functionality and Market Context
Plaintiff's KILMAT mats are sold on the Amazon Marketplace and are designed for use in vehicle interiors to provide sound and heat insulation (Compl. ¶17). The complaint alleges that all of its KILMAT mats sold under various Amazon Standard Identification Numbers (ASINs) bear the same ornamental design, which has not changed since sales began in 2017 (Compl. ¶¶18-20). The complaint includes a photograph of the KILMAT mat as Exhibit 2 (Compl. ¶19).
IV. Analysis of Infringement Allegations
This action does not allege infringement; rather, it alleges patent invalidity based on anticipation by a prior art product. The analysis therefore centers on whether the design of Plaintiff's KILMAT mat, allegedly on sale before the '206 Patent's critical date, is identical to the patented design. The complaint provides a claim chart in Exhibit 3 comparing figures from the '206 Patent to photographs of the plaintiff's KILMAT sound deadening mat (Compl. ¶29).
D'206 Patent Invalidity Allegations
| Claim Element (from the '206 Patent) | Alleged Anticipating Feature in Plaintiff's Product | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a sound deadening mat, as shown and described | Plaintiff's KILMAT mats allegedly embody a design that is "identical in all respects to the design of sound deadening mats that were already on sale in the United States by STP more than one year prior to the filing of the ‘206 Application." | ¶29 | Figs. 1-5 |
| A grid of raised, rectangular cells with rounded corners | The complaint alleges that Plaintiff's KILMAT mats, on sale since 2017, bear the same ornamental design as the patented design. | ¶¶17, 19, 58 | Fig. 2 |
| The overall visual appearance of the mat | The complaint asserts that "each and every element of the ornamental design of the ‘206 Patent was anticipated by the sound deadening mats sold by STP." | ¶58 | Fig. 1 |
Identified Points of Contention
- Factual Question (Timing): A central factual dispute will be whether Plaintiff can produce clear and convincing evidence that its KILMAT mats were offered for sale or sold in the United States before February 14, 2020, which is the critical date one year prior to the '206 Patent's application filing date (Compl. ¶¶17, 27).
- Factual Question (Identity): The core validity question is whether the design of the prior art KILMAT mat is identical to the design claimed in the '206 Patent, as judged by an ordinary observer. The complaint alleges complete identity (Compl. ¶29).
V. Key Claim Terms for Construction
In a design patent case, claim construction involves describing the claimed visual appearance rather than defining textual terms. The analysis focuses on the scope of the design as a whole.
- The Term: "The ornamental design for a sound deadening mat, as shown and described."
- Context and Importance: The entire case hinges on a visual comparison between the patent figures and Plaintiff's prior art product. The scope of what is "shown and described" in the patent will be determinative for the anticipation analysis.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A court may construe the claim as protecting the overall visual impression created by the grid of beveled, rounded-corner rectangles, potentially allowing for minor, immaterial variations from the drawings.
- Evidence for a Narrower Interpretation: The patent’s description explicitly states that "The broken line portion of the drawings defines the bounds of the claimed design and forms no parts thereof" (D’206 Patent, DESCRIPTION). This language strictly limits the claimed design to the features shown in solid lines, suggesting a narrow interpretation where any deviation from the precise shapes and proportions shown could place a design outside the claim's scope.
VI. Other Allegations
Inequitable Conduct
The complaint includes a cause of action for a declaratory judgment of unenforceability based on inequitable conduct (Compl. ¶¶60-70). It alleges that Defendant and the named inventor knew that third parties, including Plaintiff, were selling mats with the claimed design prior to filing the patent application (Compl. ¶¶26-27). The complaint further alleges this prior art was material to patentability and was intentionally withheld from the USPTO with an intent to deceive the office (Compl. ¶¶66-67).
Exceptional Case
Plaintiff seeks a declaration that this is an exceptional case under 35 U.S.C. § 285, which would entitle it to an award of attorney fees (Compl., Prayer for Relief ¶C). This allegation is predicated on the claims of inequitable conduct and Defendant’s alleged assertion of a knowingly invalid patent.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of evidentiary proof: Can Plaintiff produce clear and convincing evidence to support its factual claim that its KILMAT product—bearing a design identical to that in the '206 Patent—was publicly on sale in the United States before the critical date of February 14, 2020?
- A second critical question concerns intent: To prove inequitable conduct, can Plaintiff demonstrate not only that Defendant knew of material prior art, but also that it withheld this information from the USPTO with the specific intent to deceive the patent examiner?
- Finally, the case raises a question of commercial conduct: Did Defendant’s enforcement of the '206 Patent through Amazon’s reporting system, in light of its alleged knowledge of the patent’s invalidity, constitute conduct that would warrant the broad injunctive relief sought by Plaintiff to prevent future infringement complaints on e-commerce platforms?