DCT
1:24-cv-05540
Foto Electric Supply Co Inc v. Marut Enterprises LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Foto Electric Supply Co., Inc. (Fesco) (New York)
- Defendant: Marut Enterprises LLC (California) and Brett Marut (Florida)
- Plaintiff’s Counsel: Goldberg Cohen LLP
- Case Identification: 1:24-cv-05540, S.D.N.Y., 12/16/2024
- Venue Allegations: Venue is alleged to be proper based on Defendants transacting business in the district, including selling products and engaging in communications with the New York-based Plaintiff regarding the matter.
- Core Dispute: Plaintiff seeks a declaratory judgment that its second-generation back shavers do not infringe Defendant’s design patent, that the patent is invalid and unenforceable, and further alleges patent misuse and anticompetitive behavior by the Defendant.
- Technical Context: The dispute centers on the ornamental design of personal grooming devices, specifically articulating, long-handled shavers designed for shaving one's own back.
- Key Procedural History: The complaint follows a prior, now-settled lawsuit in which Marut asserted U.S. Patent No. 7,856,725 (a utility patent) against Fesco’s first-generation products. Fesco alleges that Marut previously asserted the design patent-in-suit via a cease-and-desist letter but now refuses to confirm it is not pursuing those claims against Fesco's visually identical second-generation products, creating a justiciable controversy. In response to the current lawsuit, Marut has issued a covenant not to sue on the '725 utility patent but not on the design patent.
Case Timeline
| Date | Event |
|---|---|
| 2005-09-21 | Priority Date for U.S. Patent 7,856,725 ('725 Patent) |
| 2006-05-26 | Priority Date for U.S. Design Patent D611,653 ('653 Patent) |
| 2010-03-09 | Issue Date of '653 Design Patent |
| 2010-12-28 | Issue Date of '725 Patent |
| 2023-05-26 | Marut's counsel sends letter asserting '653 Design Patent rights |
| 2023-08-02 | Marut files previous case asserting '725 utility patent |
| 2024-12-16 | Fesco files current Amended Complaint for Declaratory Judgment |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D611,653 - "SHAVER"
The Invention Explained
- Problem Addressed: While the '653 Design Patent itself does not describe a technical problem, its related utility patent, U.S. Patent No. 7,856,725, addresses the difficulty a user has in shaving their own back with a normal-sized razor ('725 Patent, col. 1:20-23).
- The Patented Solution: The '653 Patent claims "the ornamental design for a shaver, as shown and described" ('653 Patent, Claim). The design, depicted in the patent's figures, consists of the visual appearance of a shaver with a long, two-part handle connected by a hinge that allows it to pivot, and a lower handle section that appears to be telescoping or adjustable ('653 Patent, FIG. 1-3). The overall claimed aesthetic is that of a modern, articulated, long-reach grooming tool.
- Technical Importance: The complaint does not provide sufficient detail for analysis of the design's technical or market importance at the time of invention.
Key Claims at a Glance
- A design patent has a single claim, which is for the ornamental design as depicted in the drawings.
- The key visual elements comprising the single claim are:
- The overall appearance of the shaver from the front (FIG. 1) and rear (FIG. 2), showing its proportions, the shape of the head, and the configuration of the handle segments.
- The appearance of the shaver in a pivoted, articulated state, as shown from the side (FIG. 3).
- Specific visual features including the shape of the shaver head, the hinge mechanism, and a rectangular feature on the rear of the upper handle ('653 Patent, FIG. 2).
III. The Accused Instrumentality
Product Identification
- Fesco’s "second generation GEM 107/108 with a 150 degree angle" (the "New Products") (Compl. ¶1).
Functionality and Market Context
- The accused products are described as consumer shavers for the back (Compl. ¶8).
- The complaint alleges that the "New Products have the same appearance as the Original Products" that were the subject of prior communications from Marut (Compl. ¶27). The only identified change is a functional modification to limit the pivot angle to a maximum of 150 degrees, which Fesco alleges has no effect on the product's appearance (Compl. ¶¶9, 29-30). A screenshot from the defendant's website describes the MANGROOMER product as the "Industry Leader in Back Hair Shavers" (Compl. p. 11).
- The complaint alleges that Marut has achieved, or is close to achieving, monopoly power in the market for "mens' pivoting back shavers" and identifies its "MANGROOMER" product as a predominant seller (Compl. ¶¶65, 70-71). The complaint provides an image from an online retailer showing the MANGROOMER product in use for shaving a person's back (Compl. p. 9).
IV. Analysis of Infringement Allegations
As this is a declaratory judgment action, the following table summarizes the plaintiff's (Fesco's) allegations of non-infringement of the defendant's (Marut's) patent.
D'653 Patent Non-Infringement Allegations
| Claimed Visual Feature (from D'653 Patent) | Alleged Non-Infringing Feature in Fesco's Product | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a shaver, as shown and described. | Fesco's second-generation product does not infringe the '653 Design Patent. | ¶124 | Claim |
| The shape of the head shown in the figures. | The head of the accused product is of a different shape. | ¶126 | FIG. 1, 2 |
| The configuration of the side plates. | The side plates on the accused product are "not flush or parallel." | ¶126 | FIG. 3 |
| The rear view showing a single, visible battery as part of the claimed design. | The accused rechargeable product "lacks such a battery entirely." | ¶128 | FIG. 2 |
| The requirement from the rear view for a single battery. | The accused product's internal mechanism contains two side-by-side batteries. | ¶130 | FIG. 2 |
- Identified Points of Contention:
- Scope Questions: The dispute raises the question of whether the visual differences alleged by Fesco—such as the head shape and side plates—are substantial enough to lead an ordinary observer to conclude the designs are not the same. A further question is whether the visual representation of a battery in Figure 2 is a required ornamental element of the claimed design, or merely illustrative of one embodiment.
- Technical Questions: A key factual question is how an ordinary observer would perceive the two designs as a whole. The infringement analysis will depend on whether the overall visual impression is substantially similar, notwithstanding the specific differences Fesco alleges. The complaint's statements that the accused product "lacks such a battery entirely" (Compl. ¶128) while also having an "internal mechanism" with "two side-by-side batteries" (Compl. ¶130) may create ambiguity for the court to resolve regarding the product's actual construction and appearance.
V. Key Claim Terms for Construction
In design patent cases, analysis focuses on the scope of the claimed design rather than discrete claim terms. A central issue raised by the complaint is the distinction between ornamental and functional features.
- The Term: The scope of the claimed ornamental design versus unprotectable functional aspects.
- Context and Importance: The validity and infringement analyses will depend heavily on whether the shaver's design is "dictated by" function. If key visual features are deemed functional, they are excluded from the scope of the design patent's protection. Practitioners may focus on this issue because Fesco's invalidity count is predicated entirely on a functionality argument (Compl. ¶¶135-141).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation (More Ornamental): The patent claims the "ornamental design for a shaver, as shown and described," which on its face suggests the entire visual appearance is protected as ornamental ('653 Patent, Claim).
- Evidence for a Narrower Interpretation (More Functional): The complaint alleges that the '653 Design Patent and the '725 utility patent are "directed to the same invention," which could suggest the design's primary features are functional (Compl. ¶138). Further, the complaint points to Marut's own advertising, which allegedly touts functional benefits like how a "shock absorber multi-functional flex neck... effortlessly follows the contours of your back," as evidence that the design is functional (Compl. ¶140). This evidence may support narrowing the enforceable scope of the design to only those features not dictated by utility.
VI. Other Allegations
- Willful Infringement: As a declaratory judgment action filed by the accused infringer, the complaint does not contain allegations of willful infringement against Fesco. Instead, Fesco makes related allegations that Marut has engaged in bad faith enforcement, asserted "sham" and "frivolous" claims, and engaged in patent misuse in an attempt to monopolize the market (Compl. ¶¶78, 92, 144). These allegations form the basis for Fesco's patent misuse and antitrust counts.
VII. Analyst’s Conclusion: Key Questions for the Case
- Functionality vs. Ornamentality: A threshold issue for the court will be one of validity: is the '653 patent's claimed design invalid because it is primarily "dictated by" its function? The outcome will likely depend on evidence related to alternative designs, the co-pending '725 utility patent, and the defendant's own marketing statements touting the design's functional advantages.
- The Ordinary Observer Test: If the patent is found valid, a core question of fact will be one of visual similarity. The case will turn on whether an ordinary observer, giving the attention a typical purchaser would, would find the overall visual appearance of Fesco's accused shaver to be substantially the same as the patented design, such that they would be deceived into purchasing one for the other.