1:24-cv-07492
Roll & Hill v. HPG Intl Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Roll & Hill, LLC (New York)
- Defendant: HPG International, LLC (California); Michaelis Boyd, Inc. (New York); Marriott International, Inc. (Delaware); and The Lightstone Group, LLC (New Jersey)
- Plaintiff’s Counsel: Becker & Poliakoff, P.A.
- Case Identification: 1:24-cv-07492, S.D.N.Y., 10/03/2024
- Venue Allegations: Venue is alleged to be proper based on Defendants' continuous and systematic business contacts in the Southern District of New York, the location of corporate defendants, and the commission of the alleged torts within the district, specifically at the Moxy Hotel in Manhattan.
- Core Dispute: Plaintiff, an exclusive licensee, alleges that Defendants infringed a design patent for a high-end lighting fixture by procuring, producing, and installing "knockoff" versions in a New York City hotel.
- Technical Context: The dispute is in the field of ornamental design for designer lighting fixtures, where aesthetic appearance and brand association are significant market drivers.
- Key Procedural History: The complaint alleges a specific course of conduct where Defendants first expressed commercial interest in Plaintiff's product, obtained a sample fixture and a price quote for a bulk order, and then ceased communications before allegedly installing infringing copies in a hotel project. Plaintiff is the exclusive licensee of the asserted patent.
Case Timeline
| Date | Event |
|---|---|
| 2017-03-27 | '077 Patent Priority Date |
| 2018-07-24 | '077 Patent Issue Date |
| 2018-10-25 | Defendant Michaelis Boyd introduced to Plaintiff Roll & Hill |
| 2019-10-18 | Defendant HPG ordered a sample of the patented "Krane Fixture" |
| 2019-11-04 | Sample fixture shipped to Defendant HPG |
| Late 2022 | Moxy Hotel, containing the accused fixtures, opened to the public |
| 2024-10-03 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Design Patent No. D824,077, "Lighting Fixture," issued July 24, 2018.
The Invention Explained
- Problem Addressed: Design patents protect the ornamental appearance of an article of manufacture rather than solving a functional or technical problem (Compl. ¶15). The complaint positions the patented design as part of an "exceptional collection" from a "design-minded" company that collaborates with independent designers (Compl. ¶12).
- The Patented Solution: The patent claims "the ornamental design for a lighting fixture, as shown and described" (’077 Patent, Claim). The design, depicted in solid lines in the patent's figures, features a slender, curved support arm extending from a vertical member, from which a bowl-shaped light diffuser is suspended (’077 Patent, Fig. 1; Description). The patent’s description clarifies that elements shown in broken lines, such as mounting hardware, form no part of the claimed design (’077 Patent, Description).
- Technical Importance: The complaint alleges the design is for the "Krane" fixture, a product with a retail price of $4,490, suggesting its significance lies in its aesthetic value and brand positioning in the high-end interior design market (Compl. ¶16).
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a lighting fixture, as shown and described" (’077 Patent, Claim).
- The scope of this claim is defined by the visual appearance of the fixture as depicted in the solid lines of Figures 1 through 14 of the patent.
III. The Accused Instrumentality
Product Identification
The accused products are the "knockoff" lighting fixtures installed in the guest rooms of the Moxy Hotel located at 145 Bowery, New York, NY (Compl. ¶¶1, 26).
Functionality and Market Context
The complaint alleges that after obtaining a sample of Plaintiff's "Krane Fixture," Defendants procured "cheap and inauthentic versions" from a Chinese manufacturer for installation in the "majority of the rooms at the Moxy Hotel" (Compl. ¶¶26, 30-31). The complaint presents a photograph showing one of the accused fixtures installed in a hotel room setting (Compl. ¶28). The allegations frame the accused products not merely as competing products, but as direct copies intended to replace a specified order for the authentic, patented product (Compl. ¶¶1, 26).
IV. Analysis of Infringement Allegations
The complaint alleges that the accused design is "substantially the same" as the patented design in the eye of an ordinary observer (Compl. ¶32). A side-by-side photograph comparing the authentic fixture with an accused fixture installed in the Moxy Hotel is provided to support this allegation (Compl. ¶28). The complaint also presents line drawings from the patent itself for comparison (Compl. ¶29).
D824,077 Infringement Allegations
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a lighting fixture, as shown and described. | The lighting fixtures used in the Moxy Hotel are alleged to be "knockoff[s]" that are "substantially the same" as the patented design, such that the resemblance would deceive an ordinary observer. | ¶¶32, 33 | '077 Patent, Figs. 1-14 |
Identified Points of Contention
- Scope Questions: The primary legal and factual question will be the application of the "ordinary observer" test. The court will need to compare the accused product with the claimed design as shown in the patent's drawings, not with the Plaintiff's commercial embodiment. Any differences between the Plaintiff's "Krane" fixture and the patent drawings could be relevant.
- Technical Questions: A potential point of dispute may be whether alleged differences in materials, finish, quality, or minor proportions between the accused fixture and the patented design are sufficient to avoid a finding of substantial similarity in the eyes of an ordinary observer. The complaint's characterization of the accused products as "cheap" versions may invite scrutiny of these details (Compl. ¶30).
V. Key Claim Terms for Construction
Claim construction, the process of defining the meaning of disputed terms, is generally not performed for design patents. The "claim" is understood to be the design itself as depicted in the patent's figures. The analysis is a visual comparison based on the overall appearance of the design, rather than the interpretation of written terms. The central analysis in this case will therefore likely hinge on the "ordinary observer" infringement test, not on claim construction.
VI. Other Allegations
Indirect Infringement
The complaint alleges induced infringement, stating that Defendants acted "with specific intent" to induce the marketing, distribution, and sale of the infringing fixtures (Compl. ¶45). The factual basis for intent is the alleged narrative that Defendants obtained a sample and price quote for the authentic product before procuring the alleged copies for the Moxy Hotel project (Compl. ¶¶21-26).
Willful Infringement
The complaint alleges "willful and deliberate infringement" and seeks enhanced damages (Compl. Prayer for Relief ¶F). This allegation is based on the claim that Defendants had pre-suit knowledge of the specific patented design, having obtained a physical sample, and then engaged in "duplicitous conduct" to create and install a "knockoff" (Compl. ¶¶1, 25).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual comparison: Applying the "ordinary observer" test, is the overall ornamental design of the lighting fixtures installed in the Moxy Hotel substantially the same as the design claimed in the '077 patent's figures? The visual evidence provided in the complaint suggests this will be the central battleground of the infringement claim.
- A key evidentiary question will be the apportionment of liability: The complaint names four distinct corporate entities (designer, purchasing agent, hotel brand, and property owner). A central challenge for the Plaintiff will be to present evidence establishing the specific actions, knowledge, and intent of each defendant to prove direct infringement, induced infringement, and willfulness against each party.
- The case will likely turn on a question of intent and damages: Given the allegations of a "bait and switch" scheme, a critical question for the court will be whether the alleged infringement was willful. The determination of willfulness could expose Defendants to a potential award of enhanced damages, significantly raising the financial stakes of the litigation.