DCT
1:23-cv-06634
Karen Williams Design Ltd v. E Lawrence Design LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Karen Williams Design, Ltd. (New York)
- Defendant: E. Lawrence Design, LLC (Florida); New Day Woodwork, Inc. (New York); RBL Metals, LLC (New York); Amy Schorr and Brian Schorr (New York)
- Plaintiff’s Counsel: Ferdinand IP Law Group
- Case Identification: 1:23-cv-06634, S.D.N.Y., 07/31/2023
- Venue Allegations: Venue is alleged to be proper as Defendants manufacture, offer for sale, and sell the accused products within the Southern District of New York, where they also reside or are registered to do business.
- Core Dispute: Plaintiff alleges that Defendants' custom-made kitchen cabinetry infringes a design patent for an ornamental cabinetry door.
- Technical Context: The dispute is in the field of high-end interior and kitchen design, where the ornamental appearance of components like cabinetry is a primary driver of value.
- Key Procedural History: The complaint notes a pre-existing business relationship between Defendant E. Lawrence Design and St. Charles (the patent's original assignee), which included a contract for the installation of the patented design. A dispute over that contract led to a pending state court lawsuit between those two parties. Plaintiff also sent a demand letter to Defendant RBL Metals regarding an Instagram post of the accused product, which was subsequently removed.
Case Timeline
| Date | Event |
|---|---|
| 2018-02-16 | D'333 Patent Priority Date (Application Filing Date) |
| 2020-09-08 | U.S. Design Patent No. D895,333 Issues |
| 2021-01-01 | Plaintiff Karen Williams Design, Ltd. acquires the D'333 Patent |
| 2021 | Defendant E. Lawrence Design contracts with St. Charles for cabinetry |
| 2022-06 | St. Charles begins installation of original cabinets |
| 2023-05-19 | St. Charles sends demand to Defendant RBL to remove Instagram post |
| 2023-07-31 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D895,333 - "CABINETRY DOOR"
- Patent Identification: U.S. Design Patent No. D895333, titled "CABINETRY DOOR", issued on September 8, 2020.
The Invention Explained
- Problem Addressed: While the patent itself does not articulate a specific problem, the complaint provides context by describing a market for high-end cabinetry that seeks a "streamlined look" with "lithe and refined horizontal and vertical lines" to create a "calming and ordered visual effect" (Compl. ¶13).
- The Patented Solution: The patent protects the specific ornamental design for a cabinetry door as depicted in its figures (D'333 Patent, Figs. 1-6). The design consists of a flat, unadorned main panel surrounded by a thin, recessed frame that also serves as integrated hardware, creating what the complaint describes as a "modern, trim, and tailored silhouette" (Compl. ¶13). An exploded view in the patent clarifies the two-part construction of a backing and a frame (D'333 Patent, Fig. 4).
- Technical Importance: The complaint alleges the design is an "iconic" offering from St. Charles, a "renowned kitchen design company" with a history of introducing design innovations to the market (Compl. ¶12-13).
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is: "The ornamental design for a cabinetry door, as shown and described" (D'333 Patent, Claim).
- The scope of the claim is defined by the visual appearance of the cabinetry door shown in the patent's drawings, including:
- The overall rectangular shape.
- The proportions of the flat central panel relative to the surrounding frame.
- The appearance of the thin, recessed frame element that functions as integrated hardware.
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are "custom-made kitchen cabinetry" doors that were allegedly manufactured by Defendants New Day Woodwork, Inc. (millwork) and RBL Metals, LLC (metal hardware) at the direction of E. Lawrence Design, LLC and installed at the residence of Amy and Brian Schorr (Compl. ¶16).
Functionality and Market Context
- The complaint alleges that after a dispute arose over an initial installation of authentic cabinetry, Defendant E. Lawrence Design "ripped out the custom-made cabinetry that St. Charles had installed" and hired the other defendants "to copy Plaintiff's patented design to create new cabinetry" (Compl. ¶16). An image from an Instagram post by Defendant RBL Metals shows the installed accused cabinetry (Compl. p.6, ¶17). This image depicts kitchen cabinets with a flat-panel design and thin metallic trim that serves as an integrated handle (Compl. p.6). The complaint alleges this post "wrongfully and willfully" credited Defendant E. Lawrence Design with "all design credit" (Compl. ¶17).
IV. Analysis of Infringement Allegations
The complaint asserts that the accused cabinetry design is so similar to the patented design that it would deceive an ordinary observer, which is the legal standard for design patent infringement (Compl. ¶24).
D'333 Patent Infringement Allegations
| Claim Element (from the single claim) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a cabinetry door, as shown and described. | Defendants are alleged to have manufactured, used, and sold kitchen cabinets that "embody the patented invention." The complaint provides an image of the "accused kitchen cabinetry" showing doors with a flat surface and thin, integrated trim/hardware that allegedly "so closely resembles the invention disclosed in the D’333 Patent that an ordinary observer would be deceived." | ¶17, ¶22, ¶24 | col. 2:5-11 |
- Identified Points of Contention:
- Visual Comparison: The central issue will be a direct visual comparison between the D'333 Patent figures and the accused products. The case will turn on whether an ordinary observer, familiar with the prior art, would find the two designs substantially the same.
- Scope Questions: The infringement analysis will focus on the overall visual impression, rather than on a list of elements. Defendants may argue that differences in proportion, material finish, or the precise profile of the trim on their product are sufficient to distinguish it from the patented design in the eyes of an ordinary observer.
V. Key Claim Terms for Construction
In design patent litigation, the claim is defined by the drawings, and formal construction of verbal claim terms is generally not a central issue. The analysis is typically a comparison of the accused design to the patent's figures as a whole. The complaint does not suggest any specific terms are in dispute.
VI. Other Allegations
- Indirect Infringement: The complaint does not include a separate count for indirect infringement. However, the factual allegations may support such a claim, asserting that Defendant E. Lawrence Design "contracted with Defendants New Day and RBL to copy Plaintiff's patented design," which suggests active inducement (Compl. ¶16).
- Willful Infringement: Willfulness is a central allegation. The complaint claims Defendants had "actual knowledge of the D'333 Patent" based on the prior contractual relationship between Defendant E. Lawrence Design and the patent's original assignee for the sale and installation of the very same design (Compl. ¶15, ¶20). The alleged act of removing the authentic product and then hiring others to "copy" it forms the core of the willfulness claim (Compl. ¶16).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual identity: In applying the "ordinary observer" test, will the trier of fact find the overall ornamental appearance of the accused cabinetry to be substantially the same as the design claimed in the D'333 Patent's figures, or will any alleged differences be sufficient to avoid infringement?
- A key evidentiary question will concern willfulness and intent: What evidence will be presented to establish that Defendants had knowledge of the specific D'333 Patent and intentionally copied its protected design, as opposed to independently arriving at a similar aesthetic? The pre-existing contractual relationship will be a critical fact in this analysis.
- A final question will relate to joint liability: Given the multiple defendants, the court will need to determine the specific role and culpability of each party—the designer, the manufacturers, and the end-user homeowners—in the alleged infringement.