1:23-cv-04622
St Charles New York Inc v. E Lawrence Design LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: St. Charles New York Inc. (New York)
- Defendant: E. Lawrence Design, LLC (Florida/New York); New Day Woodwork, Inc. (New York); RBL Metals, LLC (New York); Amy Schorr (New York); and Brian Schorr (New York)
- Plaintiff’s Counsel: Ferdinand IP Law Group
- Case Identification: 1:23-cv-04622, S.D.N.Y., 06/01/2023
- Venue Allegations: Venue is asserted based on allegations that Defendants manufacture, offer to sell, and sell the accused products within the Southern District of New York.
- Core Dispute: Plaintiff alleges that Defendants' custom kitchen cabinetry infringes a design patent protecting the ornamental appearance of a cabinetry door.
- Technical Context: The dispute is in the field of high-end, custom interior design, where unique aesthetic features and proprietary designs are significant market differentiators.
- Key Procedural History: The complaint alleges a prior business relationship between Plaintiff and Defendant E. Lawrence Design, which included a contract for Plaintiff to supply cabinetry for the other defendants. A dispute over that project led to a pending state court lawsuit for breach of contract. Plaintiff alleges this prior relationship establishes Defendants' knowledge of the patented design.
Case Timeline
| Date | Event |
|---|---|
| 2018-02-16 | '333 Patent Priority Date (Application Filing) |
| 2020-09-08 | '333 Patent Issue Date |
| 2021 | Plaintiff and Defendant Lawrence allegedly begin business relationship |
| 2022-06 | Plaintiff allegedly begins delivery of cabinets for "Schorr Project" |
| 2023-05-19 | Plaintiff sends demand letter regarding an Instagram post |
| 2023-06-01 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D895,333 - “Cabinetry Door”
- Patent Identification: U.S. Design Patent No. D895,333, “Cabinetry Door,” issued September 8, 2020.
The Invention Explained
- Problem Addressed: The complaint asserts that Plaintiff's designs, including the patented design, aim to solve the aesthetic challenge of creating a "calming and ordered visual effect" in kitchen cabinetry by using "lithe and refined horizontal and vertical lines of hardware emulating molding lines" (Compl. ¶13).
- The Patented Solution: The D'333 Patent claims the ornamental design for a cabinetry door as depicted in its figures (D’333 Patent, Claim). The design consists of a flat, rectangular door panel to which a separate, raised, mitered frame is applied on the face, creating a layered, three-dimensional visual effect with clean lines (D’333 Patent, FIG. 1, 5). The patent’s exploded view separates the design into its constituent visual components: a backing panel and a front frame (D’333 Patent, FIG. 4).
- Technical Importance: The complaint positions this design as a key element of its "iconic" "STC No. 1 kitchen" line, which it claims is distinguished by a "modern, trim, and tailored silhouette" (Compl. ¶13).
Key Claims at a Glance
- The D'333 Patent asserts a single claim for "The ornamental design for a cabinetry door, as shown and described" (D’333 Patent, Claim).
- The scope of this claim is defined by the visual appearance of the door depicted in solid lines in the patent’s six figures, which show the door from the front, side, top, and in perspective views.
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are custom-made kitchen cabinet doors manufactured and installed for a residential renovation project (the “Schorr Project”) (Compl. ¶15-16).
Functionality and Market Context
The complaint alleges that after a dispute arose over cabinetry Plaintiff had supplied, Defendant Lawrence contracted with Defendant New Day Woodwork for millwork and Defendant RBL Metals for "metal hardware" to "copy Plaintiff's patented design" and create new cabinetry (Compl. ¶16). An Instagram post by Defendant RBL, included in the complaint, shows the accused cabinetry installed in a kitchen (Compl. p. 6). This image shows light-colored cabinet doors and drawer fronts featuring a distinct, raised, metallic frame around their perimeters (Compl. p. 6).
IV. Analysis of Infringement Allegations
The legal standard for design patent infringement is whether an "ordinary observer," giving the attention a purchaser usually gives, would be deceived into purchasing the accused product believing it to be the patented design. The complaint alleges that the accused cabinet doors meet this standard (Compl. ¶24). The infringement analysis will turn on a direct visual comparison between the design shown in the '333 Patent and the appearance of the accused cabinetry.
The complaint provides an image of Plaintiff's "STC No. 1 cabinetry" that embodies the patented design, characterized by its clean lines and framed appearance (Compl. p. 4). For comparison, it provides a screenshot from Defendant RBL Metals' Instagram account depicting the accused cabinetry (Compl. p. 6). This Instagram post describes the accused product as having "Custom lacquer and stainless steel trim and integrated hardware" (Compl. p. 6). Visually, the accused doors in the photograph appear to share the core aesthetic of the patented design: a flat primary panel with a prominent, raised, mitered frame applied to the face.
- Identified Points of Contention:
- Scope Questions: The primary question is whether the overall visual impression of the accused design is substantially the same as the claimed design. A defense could focus on any perceived differences in the proportions of the frame to the door, the materials used (e.g., "stainless steel trim"), or the specific profile of the frame's edges as potential distinctions from the patent's drawings.
- Technical Questions: A key question for the court will be whether the visual elements shared between the patented design and the accused product are ornamental, as claimed, or are dictated by function. The complaint frames the "hardware lines" as "emulating molding" for a "visual effect," suggesting an ornamental purpose (Compl. ¶13).
V. Key Claim Terms for Construction
In a design patent case, "claim construction" focuses on defining the overall scope of the patented design as a whole, rather than construing individual text-based terms.
- The Term: The overall "ornamental design for a cabinetry door."
- Context and Importance: The resolution of the case depends on the scope of the visual impression protected by the '333 Patent. Practitioners may focus on whether the patent protects the general concept of a flat-panel door with a raised, applied frame, or if its scope is limited to the exact visual details and proportions shown in the drawings.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent’s single claim protects the design "as shown and described," which could be argued to encompass designs that create the same overall visual impression, even with minor variations (D'333 Patent, Claim).
- Evidence for a Narrower Interpretation: A defendant could argue that the patent's protection is limited to the specific embodiment shown. The exploded view in Figure 4, which explicitly shows the frame ("2") as a separate component from the backing ("1"), may be used to argue that the patent is limited to a design with this specific two-piece construction (D'333 Patent, FIG. 4). If the accused product achieves a similar look through different means (e.g., routing a design into a single piece of wood), it might support an argument of non-infringement.
VI. Other Allegations
- Indirect Infringement: While not pleaded as a separate count, the complaint alleges facts that could support a theory of joint or induced infringement. It claims Defendant Lawrence "contracted with Defendants New Day and RBL to copy Plaintiff's patented design," with New Day providing millwork and RBL providing the metal hardware, suggesting a coordinated effort to create the allegedly infringing product (Compl. ¶16).
- Willful Infringement: The complaint alleges that Defendants' infringement was willful, asserting that they had actual knowledge of the '333 Patent "since at least as early as 2021" due to a prior business relationship and contract with Plaintiff involving the patented design (Compl. ¶15, 28). As further evidence of willfulness, the complaint notes that Defendant RBL's Instagram post gave "all design credit" to Defendant Lawrence, which Plaintiff alleges was knowingly false (Compl. ¶17).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual comparison: In the eyes of an ordinary observer familiar with the prior art in cabinet design, is the overall ornamental appearance of the accused cabinetry substantially the same as the design claimed in the '333 Patent? The outcome will likely depend heavily on the side-by-side comparison of the products and the patent drawings.
- The case will also turn on a question of design scope: Is the legally protected design the general aesthetic of a flat door with a raised, mitered frame, or is it confined to the specific proportions and two-part construction illustrated in the patent's figures? The court’s interpretation of this scope will determine the threshold for infringement.
- A key factual question will be one of intent: Did the defendants have pre-suit knowledge of the '333 Patent and, as alleged, intentionally copy the patented design? The answer to this will be dispositive for the claim of willfulness and the potential for enhanced damages.