DCT
1:23-cv-09686
Kohler Co v. Signature Plumbing Specialties LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Kohler Co. (Wisconsin)
- Defendant: Signature Plumbing Specialties LLC (New York)
- Plaintiff’s Counsel: Foley & Lardner LLP
- Case Identification: 1:23-cv-09686, S.D.N.Y., 11/06/2023
- Venue Allegations: Venue is alleged to be proper in the Southern District of New York because the defendant is a New York LLC with its principal place of business in the district, and because a substantial part of the events giving rise to the complaint allegedly occurred there.
- Core Dispute: Plaintiff alleges that Defendant’s faucets, bathtubs, and plumbing fixtures infringe seven of Plaintiff's U.S. design patents.
- Technical Context: The lawsuit concerns the ornamental designs of high-end plumbing fixtures, a market where distinctive aesthetic features are a primary driver of brand identity and consumer purchasing decisions.
- Key Procedural History: The complaint notes that product lines embodying the asserted designs have won industry awards, such as a Red Dot Award and a Chicago Athenaeum Museum GOOD DESIGN Award, facts which may be raised in connection with secondary considerations of non-obviousness if the patents' validity is challenged.
Case Timeline
| Date | Event |
|---|---|
| 2009-04-30 | U.S. Design Patent No. D613,824 Priority Date |
| 2010-04-13 | U.S. Design Patent No. D613,824 Issue Date |
| 2012-01-27 | U.S. Design Patent No. D678,487 Priority Date |
| 2013-03-19 | U.S. Design Patent No. D678,487 Issue Date |
| 2015-03-09 | U.S. Design Patent No. D767,732 Priority Date |
| 2016-01-01 | Alleged launch of Kohler's Composed® line (embodies ’732 patent) |
| 2016-09-27 | U.S. Design Patent No. D767,732 Issue Date |
| 2017-02-27 | U.S. Design Patent Nos. D823,988, D959,614, and D844,752 Priority Date |
| 2018-07-24 | U.S. Design Patent No. D823,988 Issue Date |
| 2019-01-01 | Alleged launch of Kohler's Components® line (embodies ’988, ’614, ’752 patents) |
| 2019-04-02 | U.S. Design Patent No. D844,752 Issue Date |
| 2019-12-20 | U.S. Design Patent No. D949,293 Priority Date |
| 2021-01-01 | Alleged launch of Kohler's Central Park West™ line (embodies ’293 patent) |
| 2022-04-19 | U.S. Design Patent No. D949,293 Issue Date |
| 2022-08-02 | U.S. Design Patent No. D959,614 Issue Date |
| 2023-11-06 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D767,732, “Faucet,” issued September 27, 2016
The Invention Explained
- Problem Addressed: Design patents protect aesthetics rather than solving functional problems. The complaint alleges a need in the market for "novel and distinctive designs" for plumbing fixtures (Compl. ¶22).
- The Patented Solution: The '732 patent claims the ornamental design for a faucet as depicted in its figures ('732 Patent, Claim). The design is characterized by a minimalist and geometric aesthetic, featuring a slender, rectilinear spout extending from a simple cylindrical base ('732 Patent, FIG. 1). The "DESCRIPTION" section of the patent clarifies that the broken lines, including a jagged break symbol, indicate that the particular length of the spout and the internal mechanics form no part of the claimed design ('732 Patent, DESCRIPTION). The complaint states this design is embodied in Kohler's "Composed®" faucet line (Compl. ¶22).
- Technical Importance: The commercial significance of the design is suggested by the complaint's allegation that the Composed® line, which embodies the patented design, received a Red Dot Design Award (Compl. ¶26).
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is for "the ornamental design for a faucet, as shown and described" ('732 Patent, Claim).
- The essential visual elements of the design include the combination of a slim, flat-topped, rectangular spout, a clean cylindrical base, and the overall minimalist composition of these two forms.
U.S. Design Patent No. D949,293, “Plumbing Fixture,” issued April 19, 2022
The Invention Explained
- Problem Addressed: The patent addresses the creation of a new visual appearance for a plumbing fixture, which the complaint frames as a "novel and distinctive" design (Compl. ¶23).
- The Patented Solution: The '293 patent claims the ornamental design for a plumbing fixture, specifically a gooseneck spout ('293 Patent, Claim). The defining visual features are the spout's high-arching continuous curve combined with industrial-style textured or knurled bands at its base and terminus ('293 Patent, FIG. 1). The patent's "DESCRIPTION" notes that broken lines indicate unclaimed portions and boundaries, focusing the claim on the specific visual appearance of the spout itself ('293 Patent, DESCRIPTION). The complaint alleges this design is used in Kohler's Kallista® brand "Central Park West™" faucet line (Compl. ¶23).
- Technical Importance: The complaint points to the design's perceived market value by highlighting its use in a premium product line and its reception of a Chicago Athenaeum Museum GOOD DESIGN Award (Compl. ¶26).
Key Claims at a Glance
- The single asserted claim is for "the ornamental design for a plumbing fixture, as shown and described" ('293 Patent, Claim).
- The essential visual elements include the spout's high-arc gooseneck profile, the presence and placement of the knurled/textured bands, and the overall aesthetic blending smooth curves with industrial detailing.
Multi-Patent Capsule: U.S. Design Patent No. D823,988
- Patent Identification: U.S. Design Patent No. D823,988, “Faucet,” issued July 24, 2018 (Compl. ¶16).
- Technology Synopsis: The '988 patent claims the ornamental design for a faucet that combines a high-arc gooseneck spout with a single, side-mounted cylindrical lever handle. The design is embodied in Kohler's "Components® Tube Bathroom Sink Spout with Rocker Handle" (Compl. ¶¶ 24, 58).
- Asserted Claims: The single claim for the ornamental design as shown and described (Compl. ¶57; '988 Patent, Claim).
- Accused Features: The complaint accuses Signature's Lavatory Faucet (marked LF13582BR2-9SPB) of infringement (Compl. ¶59).
Multi-Patent Capsule: U.S. Design Patent No. D613,824
- Patent Identification: U.S. Design Patent No. D613,824, “Plumbing Fitting,” issued April 13, 2010 (Compl. ¶17).
- Technology Synopsis: The ’824 patent claims the ornamental design for a plumbing fitting, specifically a lever-style handle. The design consists of a flat, tapering lever extending from a base, creating a distinct, modern geometric shape (Compl. ¶70; '824 Patent, FIG. 1).
- Asserted Claims: The single claim for the ornamental design as shown and described (Compl. ¶69; '824 Patent, Claim).
- Accused Features: The complaint accuses Signature's Lavatory Faucet (marked LF1211BR2-4PC) and two Shower Trim models (STWOD1099BR8PC and STWOD1120BR8PC) of infringement (Compl. ¶71).
Multi-Patent Capsule: U.S. Design Patent No. D959,614
- Patent Identification: U.S. Design Patent No. D959,614, “Faucet,” issued August 2, 2022 (Compl. ¶18).
- Technology Synopsis: The '614 patent claims the ornamental design for a faucet spout characterized by a wide, thin, ribbon-like profile that gently arches forward from a base. This design is allegedly part of Kohler's "Components®" product line (Compl. ¶¶ 24, 82).
- Asserted Claims: The single claim for the ornamental design as shown and described (Compl. ¶81; '614 Patent, Claim).
- Accused Features: The complaint accuses Signature's "Infringing Component Ribbon-Style Faucets," specifically models LF1175BR2PC and LFH1061BR2, of infringement (Compl. ¶83).
Multi-Patent Capsule: U.S. Design Patent No. D844,752
- Patent Identification: U.S. Design Patent No. D844,752, “Faucet,” issued April 2, 2019 (Compl. ¶19).
- Technology Synopsis: The '752 patent, like the '614 patent, claims an ornamental design for a ribbon-style faucet spout with a wide, flat, arched profile. It is also allegedly embodied in Kohler's "Components®" line (Compl. ¶¶ 24, 93).
- Asserted Claims: The single claim for the ornamental design as shown and described (Compl. ¶92; '752 Patent, Claim).
- Accused Features: The complaint accuses the same "Infringing Component Ribbon-Style Faucets" of infringing the '752 patent (Compl. ¶94).
Multi-Patent Capsule: U.S. Design Patent No. D678,487
- Patent Identification: U.S. Design Patent No. D678,487, “Bathtub,” issued March 19, 2013 (Compl. ¶20).
- Technology Synopsis: The ’487 patent claims the ornamental design for a bathtub, featuring a rectangular alcove form with a wide, flat top ledge, a clean-lined apron, and a textured floor pattern. The design is allegedly embodied in Kohler's "Bellwether®" tub line (Compl. ¶¶ 25, 104).
- Asserted Claims: The single claim for the ornamental design as shown and described (Compl. ¶103; '487 Patent, Claim).
- Accused Features: The complaint accuses Signature's Bath Tub (marked BT2092AC1-R) of infringement (Compl. ¶105).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are a collection of faucets, shower trims, and a bathtub collectively identified as the "Infringing Plumbing Products" (Compl. ¶¶ 8, 29). Specific accused products include the "Infringing Composed-Style Faucets" (e.g., LF1370BR2AB), "Infringing Central Park West-Style Faucets" (e.g., LF1151BR2PC), and the "Signature Bath Tub" (BT2092AC1-R) (Compl. ¶¶ 35, 47, 105).
Functionality and Market Context
The complaint alleges the accused products are "copycat" designs manufactured in China and imported into the United States for sale (Compl. ¶2). The complaint provides an image from a "third-party fixture schedule" showing one of the accused faucets, suggesting it was specified for a development project (Compl. ¶36). Kohler alleges that Signature offers these products as lower-cost alternatives in response to bids specifying Kohler products, positioning them as direct market competitors (Compl. ¶30).
IV. Analysis of Infringement Allegations
The infringement analysis for a design patent centers on the "ordinary observer" test, which asks whether an ordinary observer, familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented design.
D767,732 Infringement Allegations
The complaint provides an image comparing the patented design to accused faucets, showing a single-lever faucet with a slim, rectangular spout and a cylindrical base (Compl. ¶36, p. 10).
| Claim Element (from the single claim) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a faucet, as shown and described. | The overall appearance of Signature's "Infringing Composed-Style Faucets" is alleged to be "substantially the same as" and "confusingly similar to" the patented design. | ¶¶38-39 | '732 Patent, Claim |
| A slender, rectilinear spout with a flat top surface extending horizontally from a vertical body. | The accused faucets are depicted with a slim, rectilinear spout extending from a vertical base, allegedly creating a similar geometric profile. | ¶36 | '732 Patent, FIG. 1, 5 |
| A cylindrical vertical body supporting the spout and handle assembly. | The accused faucets are constructed with a cylindrical vertical body that supports the spout, consistent with the patented design's form. | ¶36 | '732 Patent, FIG. 1, 4 |
| The overall minimalist aesthetic combining distinct geometric shapes (a rectangle and a cylinder). | The combination of the rectangular spout and cylindrical base in the accused products allegedly creates an overall visual impression that is confusingly similar to the patented design. | ¶39 | '732 Patent, FIG. 1 |
- Identified Points of Contention:
- Scope Questions: The primary dispute will concern the scope of the design's protection. A court will assess whether the overall visual impression of the accused faucets is substantially the same as that of the '732 patent design, viewed in its entirety.
- Technical Questions: The analysis will depend on a visual comparison of the products against the patent drawings. A key question for the fact-finder will be whether differences in proportion, curvature, or minor details between the accused faucets and the patent drawings are significant enough to avoid deceiving an ordinary observer.
D949,293 Infringement Allegations
The complaint provides four images of the accused "Infringing Central Park West-Style Faucets" from Signature's website (Compl. ¶48, pp. 12-13).
| Claim Element (from the single claim) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a plumbing fixture, as shown and described. | The complaint alleges the overall appearance of the accused faucets is "substantially the same as" and "confusingly similar to" the patented design. | ¶¶50-51 | '293 Patent, Claim |
| A high-arching, curved gooseneck spout. | The accused faucets are depicted with a high-arching gooseneck spout profile that allegedly mimics the patented design. | ¶48 | '293 Patent, FIG. 1, 4 |
| Textured or knurled bands at the base and/or terminus of the spout. | The accused faucets are shown with textured or knurled detailing on the bases of the spout and handles, which allegedly appropriates the distinctive industrial aesthetic of the patented design. | ¶48 | '293 Patent, FIG. 1 |
| The overall aesthetic combining smooth curves with industrial-style texturing. | The complaint alleges that the accused products' combination of a curved spout and textured elements creates an overall impression that is confusingly similar to the '293 patent design. | ¶51 | '293 Patent, FIG. 1 |
- Identified Points of Contention:
- Scope Questions: A central issue may be whether the scope of the patent covers any combination of a gooseneck spout and knurling, or if it is limited to the specific placement and style of knurling shown in the drawings (i.e., at the spout tip and base).
- Technical Questions: The infringement analysis will turn on a visual comparison. The court will need to determine if differences between the textured elements on the accused products and those shown in the patent drawings are sufficient to differentiate the designs in the mind of an ordinary observer.
V. Key Claim Terms for Construction
In design patent cases, the "claim" is the visual design itself, so there are no textual terms to construe. The central issue is the scope of the claimed design.
- The Term: "The ornamental design for a [faucet/plumbing fixture], as shown and described."
- Context and Importance: The entire dispute hinges on the scope of the claimed designs. Practitioners may focus on this issue because the outcome depends on whether an "ordinary observer" would find the accused products and patented designs to be "substantially the same." The scope is not limitless and is informed by the prior art.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patents use broken lines to disclaim certain features and proportions. For example, the jagged break-away symbols in the '732 and '293 patents indicate that the claimed design is not limited to a specific spout length or height, which may support a broader application of the design to products of varying dimensions ('732 Patent, FIG. 1; '293 Patent, FIG. 1, DESCRIPTION).
- Evidence for a Narrower Interpretation: The solid lines in the drawings precisely define the shape, contours, and configuration of the claimed design. A party could argue that the design is limited to the exact visual details depicted in solid lines, and any deviation in angles, surface curvature, or the specific pattern of texturing (as in the '293 patent) would place an accused product outside the scope of the claim ('732 Patent, FIG. 1; '293 Patent, FIG. 1).
VI. Other Allegations
Indirect Infringement
The complaint focuses on direct infringement under 35 U.S.C. § 271(a) through importing, selling, and offering for sale, and does not plead specific facts to support separate claims for induced or contributory infringement.
Willful Infringement
The complaint alleges that infringement has been and continues to be willful for all asserted patents (e.g., Compl. ¶¶ 41, 53). The stated basis for willfulness is knowledge of the patents "since at least the filing of this Complaint," establishing a basis for potential post-filing willfulness (e.g., Compl. ¶¶ 40, 52). The complaint also contains broader allegations of a "pattern and practice of knocking off Kohler's novel and distinctive... designs" and selling "blatant and inferior copycats," which may be used to support a theory of pre-suit willfulness based on deliberate copying (Compl. ¶¶ 29-30).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be the scope of the designs in the context of the prior art. The case will likely turn on whether the overall visual impression of the accused products is "substantially the same" as the patented designs to an ordinary observer, or if the similarities are attributable to unprotectable functional elements or common design trends, thereby narrowing the scope of what Kohler's patents protect.
- The dispute may hinge on the materiality of specific design features. For example, with respect to the '293 patent, is the protectable novelty the general idea of a gooseneck spout with industrial texturing, or is it the specific placement, style, and proportions of the knurling as shown in the drawings? The outcome will depend on whether Signature's products are found to have appropriated the specific ornamental features that distinguish the patents from the field.
- A key evidentiary question will be one of intent. The complaint's allegations of a "pattern and practice of knocking off" designs and offering "copycats" in response to bids for Kohler products (Compl. ¶¶ 29-30) raise the issue of deliberate copying. Evidence supporting these allegations could be persuasive to a fact-finder on the ultimate question of infringement and will be critical to proving the claim of willful infringement.