DCT

1:23-cv-06715

Hudson Furniture Inc v. Mumesan Aydinlatma Dek San Tic Ltd Sti

I. Executive Summary and Procedural Information

Parties & Counsel:
- Plaintiff: Hudson Furniture, Inc. (New York)
- Defendant: Mumesan Aydinlatma Dek. San. Tic. Ltd. Sti. (Turkey)
- Plaintiff’s Counsel: Lerner David LLP
Case Identification: 1:23-cv-06715, S.D.N.Y., 08/01/2023
Venue Allegations: Venue is alleged based on Defendant conducting business in the district, substantial events giving rise to the claim occurring there, and a contractual agreement in which Defendant consented to exclusive jurisdiction in New York City.
Core Dispute: Plaintiff alleges that Defendant’s furniture and lighting products infringe four of Plaintiff’s design patents.
Technical Context: The dispute is in the high-end, designer furniture and lighting market, where the unique ornamental appearance of a product is a primary driver of its value.
Key Procedural History: The parties entered into an exclusive manufacturing agreement on August 20, 2015. Plaintiff alleges this agreement restricted Defendant to manufacturing Plaintiff's designs only for Plaintiff. The complaint notes that Plaintiff sent a written warning to Defendant regarding infringement on September 29, 2022, followed by calls in December 2022. This pre-suit history may be relevant to allegations of willful infringement.

Case Timeline

Date	Event
2012-10-03	Priority Date for U.S. Design Patent D693,160
2013-03-06	Priority Date for U.S. Design Patent D697,251
2013-05-31	Priority Date for U.S. Design Patent D690,458
2013-09-24	U.S. Design Patent D690,458 Issued
2013-11-12	U.S. Design Patent D693,160 Issued
2014-01-07	U.S. Design Patent D697,251 Issued
2015-08-20	Hudson and Mumesan enter into exclusive manufacturing agreement
2020-06-15	Priority Date for U.S. Design Patent D918,458
2021-05-04	U.S. Design Patent D918,458 Issued
2022-09-29	Hudson sends written warning to Mumesan
2022-12-06	First call between Hudson and Mumesan regarding alleged infringement
2022-12-14	Second call between Hudson and Mumesan
2023-08-01	Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Design Patent D693,160, “Table Base,” Issued November 12, 2013

The Invention Explained

Problem Addressed: Design patents do not solve technical problems; they protect the novel, non-obvious, ornamental appearance of an article of manufacture (Compl. ¶36).
The Patented Solution: The ’160 Patent claims the specific ornamental design for a table base. The design consists of an abstract, sculptural form with interlocking, ribbon-like elements that create an open, dynamic structure to support a tabletop (D’160 Patent, Fig. 1). The broken lines in the figures depict the tabletop and the floor, which are environmental and do not form part of the claimed design (D’160 Patent, Description).
Technical Importance: The patent protects the unique aesthetic of the table base, which is a key element of its market identity in the luxury furniture space (Compl. ¶14).

Key Claims at a Glance

The single claim of a design patent protects the overall visual impression of the design as shown in the drawings. The asserted claim is for:
- The ornamental design for a table base, as shown and described (D’160 Patent, Claim).

U.S. Design Patent D697,251, “Chandelier,” Issued January 7, 2014

The Invention Explained

Problem Addressed: As a design patent, the ’251 Patent protects a unique ornamental appearance rather than solving a technical problem (Compl. ¶42).
The Patented Solution: The patent claims the ornamental design for a chandelier. The design features a series of interlocking, irregular, ring-like shapes suspended from chains, creating a horizontally-oriented, flowing sculptural light fixture (D’251 Patent, Fig. 1-2). The chains used for suspension are shown in broken lines, indicating they are not part of the claimed ornamental design (D’251 Patent, Description).
Technical Importance: The design provides a distinctive aesthetic for a lighting fixture, distinguishing it from conventional chandelier designs and contributing to its value as a "dramatic, dynamic" work (Compl. ¶14, ¶42).

Key Claims at a Glance

The patent contains a single claim for:
- The ornamental design for a chandelier, as shown and described (D’251 Patent, Claim).

U.S. Design Patent D918,458, “Chandelier,” Issued May 4, 2021

Technology Synopsis: The ’458.1 Patent protects the ornamental design for a chandelier. The design is comprised of multiple interlocking, fluid, loop-like elements connected by smaller couplings, forming a complex, vertically-oriented cluster (D’458.1 Patent, Fig. 1-2; Compl. ¶48).
Asserted Claims: The single claim for "The ornamental design for a chandelier, as shown and described" is asserted (D'458.1 Patent, Claim; Compl. ¶48).
Accused Features: Defendant is accused of making, using, and selling chandeliers that embody the patented design (Compl. ¶50).

U.S. Design Patent D690,458, “Sconce,” Issued September 24, 2013

Technology Synopsis: The ’458.2 Patent protects the ornamental design for a sconce. The design consists of a single, irregular, vertically-oriented ring-like shape with non-uniform thickness and curvature, intended for wall mounting (D’458.2 Patent, Fig. 1-2; Compl. ¶24).
Asserted Claims: The single claim for "The ornamental design for a sconce, as shown and described" is asserted (D'458.2 Patent, Claim; Compl. ¶54).
Accused Features: Defendant is accused of making, using, and selling sconces that embody the patented design (Compl. ¶56).

III. The Accused Instrumentality

Product Identification: The accused instrumentalities are furniture and lighting fixtures, including table bases, chandeliers, and sconces, manufactured and sold by Defendant Mumesan (Compl. ¶17, ¶38, ¶44).
Functionality and Market Context: The complaint alleges that Defendant, a former exclusive manufacturer for Plaintiff, is now producing and selling "replicas or near replicas" of Plaintiff's designs for its own benefit (Compl. ¶16, ¶29). The complaint provides photographic evidence of accused products, such as a chandelier with interlocking ring elements and a table with a sculptural base, which are alleged to be "identical, substantially identical, and/or incorporate Hudson's identifiable designs" (Compl. ¶17, ¶29). A photograph from what appears to be a showroom depicts multiple accused products, including chandeliers and a sconce, displayed for sale (Compl. p. 10(d)). The complaint alleges these products are offered for sale and sold into the United States (Compl. ¶18, ¶32).

IV. Analysis of Infringement Allegations

Design patent infringement is determined from the perspective of an "ordinary observer." Infringement occurs if the resemblance between the patented design and the accused product is such that an ordinary observer, familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented one. The complaint supports its infringement allegations primarily through visual comparisons.

Allegations for the ’251 Patent (Chandelier): The complaint alleges that Mumesan has made and sold products that are "replicas or near replicas" of Hudson's designs (Compl. ¶29). The complaint includes a photograph of Hudson's "Pangea" chandelier design, which corresponds to the '251 Patent (Compl. p. 5(b)). It also includes a photograph of an accused product, which appears to be a near-identical version of the "Pangea" design, hanging in what looks like a workshop or showroom (Compl. p. 9(a)). The visual evidence provided for the "Pangea" design suggests a very high degree of similarity between the patented design and the accused product.
Allegations for Other Patents: The complaint provides a photograph from a showroom setting that displays several accused products simultaneously (Compl. p. 10(d)). This image shows a horizontal chandelier similar to the '251 Patent design, a table with a base that may relate to the '160 Patent, and wall sconces that may relate to the '458.2 Patent. The photograph of an accused wall sconce, shown illuminated, depicts a cluster of faceted glass-like elements that appears to correspond to Plaintiff's "Chanceux" designs (Compl. p. 10(b), p. 7).
Identified Points of Contention:
- Overall Visual Similarity: The central question for the court will be whether an ordinary observer would find the accused products substantially the same as the designs claimed in the patents-in-suit. Based on the photographic evidence, the complaint alleges a high degree of visual similarity (Compl. ¶29). The defense may argue that any differences in proportion, material finish, or minor details are sufficient to distinguish the products in the eye of the ordinary observer.
- Scope of the Claimed Design: For each patent, the dispute will focus on the overall ornamental appearance. The analysis will compare the visual impression of the accused products to the specific designs depicted in the solid lines of the patent figures. For instance, with the '251 Patent, the question will be whether the accused chandelier's arrangement of interlocking rings is substantially the same as that shown in Figure 1 of the patent.

V. Key Claim Terms for Construction

This section is not applicable. Design patents have a single claim to the "ornamental design... as shown," and its scope is defined by the drawings, not by claim terms that require construction.

VI. Other Allegations

Indirect Infringement: The complaint does not contain a specific count for indirect infringement. It focuses on allegations that the Defendant is directly infringing by "making, using, selling, and offering for sale" the accused products (Compl. ¶38, ¶44, ¶50, ¶56).
Willful Infringement: While the complaint does not use the word "willful" in its patent infringement claims for relief, it pleads facts that may support a finding of willfulness. The complaint alleges that Mumesan was Hudson's exclusive manufacturer and therefore had direct knowledge of Hudson's proprietary designs and the associated patents (Compl. ¶16, ¶26). It further alleges that Hudson provided specific notice of the patents-in-suit to Mumesan through correspondence and calls beginning on September 29, 2022, but that Mumesan has indicated it will continue its allegedly infringing conduct (Compl. ¶27, ¶28, ¶33).

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

Infringement under the Ordinary Observer Test: The primary question will be a factual one of visual comparison: are the accused Mumesan products "substantially the same" as the patented Hudson designs in the eyes of an ordinary observer? The case will likely depend on a side-by-side comparison of the products and the patent drawings, focusing on the overall aesthetic impression rather than on a list of technical elements.
Impact of the Prior Contractual Relationship: A key legal and equitable issue will be the effect of the 2015 manufacturing agreement. Plaintiff will likely argue this history proves Defendant had knowledge of the designs and patents, supporting a finding of willful infringement and potentially estopping Defendant from challenging the patents' validity.
Damages and Disgorgement: If infringement is found, a central dispute will be the calculation of damages. Given the allegation that Defendant was a former manufacturing partner, the court may be asked to consider whether damages should be based on a reasonable royalty, Plaintiff's lost profits, or, as is available for design patents under 35 U.S.C. § 289, a disgorgement of Defendant's total profits from the infringing articles.