DCT
1:24-cv-08929
E Mishan & Sons Inc v. Caraway Home Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: E. Mishan & Sons, Inc. ("Emson") (New York)
- Defendant: Caraway Home, Inc. ("Caraway") (Delaware)
- Plaintiff’s Counsel: Notaro, Michalos & Zaccaria P.C.
- Case Identification: 1:24-cv-08929, S.D.N.Y., 11/22/2024
- Venue Allegations: Venue is alleged to be proper in the Southern District of New York because the defendant, Caraway, resides in the district.
- Core Dispute: Plaintiff Emson seeks a declaratory judgment that its "Gotham Steel" cookware lids do not infringe Defendant Caraway's design patent for a cookware lid.
- Technical Context: The dispute centers on the ornamental design of consumer cookware lids, a product category where aesthetic appearance is a significant factor in purchasing decisions.
- Key Procedural History: The complaint alleges that this action arises from an infringement report filed by Caraway with Amazon.com, which resulted in the deactivation of Emson’s product listing. Emson alleges its attempts to resolve the matter directly with Caraway and through Amazon's appeal process were unsuccessful, creating an actual controversy that necessitates a judicial declaration of non-infringement.
Case Timeline
| Date | Event |
|---|---|
| 2019-10-11 | D'421 Patent Priority Date |
| 2021-06-08 | D'421 Patent Issue Date |
| 2024-05-25 | Emson's Accused Product listed on Amazon |
| 2024-07-29 | Amazon deactivates Emson's product listing based on Caraway's report |
| 2024-08-06 | Emson submits appeal of deactivation to Amazon |
| 2024-08-14 | Amazon rejects Emson's appeal |
| 2024-08-14 | Emson's counsel sends letter to Caraway demanding withdrawal of complaint |
| 2024-08-24 | Counsel for Emson and Caraway speak by phone but do not resolve the matter |
| 2024-11-22 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Design Patent No. D921,421, "Cookware Lid," issued June 8, 2021.
The Invention Explained
- Problem Addressed: Design patents do not solve functional problems; they protect new, original, and ornamental designs for articles of manufacture. The D'421 Patent seeks to protect a particular aesthetic appearance for a cookware lid.
- The Patented Solution: The patent claims "The ornamental design for cookware lid, as shown and described" (D’421 Patent, Claim). The design, depicted in the patent's figures, consists of a circular, disc-shaped lid characterized by a distinctly flat top surface and a flat bottom surface that incorporates two separate, semi-circular flanges (D'421 Patent, Figs. 2, 3, 7; Compl. ¶36, ¶38). The broken lines in the figures, such as those depicting a handle, illustrate environmental structure and form no part of the claimed design (D'421 Patent, p. 2).
- Technical Importance: The design offers a specific minimalist aesthetic that contributes to the overall visual impression of a cookware set.
Key Claims at a Glance
- The D'421 Patent contains a single claim for the ornamental design as depicted in its figures.
- As this is a design patent, the "elements" are the visual features of the design as a whole. Based on the complaint's allegations, the key ornamental features include:
- A circular disc-shaped lid with a "totally flat top surface" (Compl. ¶36).
- A bottom side that includes "two separate semi-circular flanges" (Compl. ¶38).
- A bottom surface that, aside from the flanges, is "also flat" (Compl. ¶40).
III. The Accused Instrumentality
Product Identification
- The lids included in Emson's "Gotham Steel 11 Pc Ceramic Pots and Pans Set" (the "Accused Product") (Compl. ¶13).
Functionality and Market Context
- The complaint describes the accused lids as having several distinct design features. The top surface is alleged to be "beveled (sloping) near the circumferential perimeter and a convex center," rather than being flat (Compl. ¶37). A photograph of the accused lid's top surface is provided to illustrate this asserted beveled edge and convex shape (Compl. p. 7).
- The bottom side of the accused lid is alleged to have a "single, continuous circular wall" instead of the two separate flanges shown in the patent (Compl. ¶39). The bottom surface is also described as "beveled and concave (i.e., not flat)" (Compl. ¶41).
- Emson alleges it is a competitor to Caraway in the marketing and sale of cookware on Amazon (Compl. ¶34). The deactivation of its Amazon listing allegedly caused sales of the Accused Product to drop to zero (Compl. ¶32).
IV. Analysis of Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement. The analysis below summarizes the plaintiff's (Emson's) arguments for why its product design is "plainly dissimilar" to the patented design (Compl. ¶42).
D'421 Patent Non-Infringement Allegations
| Claim Element (Ornamental Feature of Patented Design) | Alleged Non-Infringing Feature (of Accused Lid) | Complaint Citation | Patent Citation |
|---|---|---|---|
| A circular disc-shaped lid with a "totally flat top surface." | The accused lid has a top surface that is "beveled (sloping) near the circumferential perimeter and a convex center." | ¶36, ¶37 | Figs. 1, 3, 7 |
| The bottom side includes "two separate semi-circular flanges." | The bottom side of the accused lid has a "flange that comprises a single, continuous circular wall." | ¶38, ¶39 | Fig. 2 |
| The bottom surface of the lid, aside from the two flanges, is "also flat." | The accused lid's bottom surface, aside from the circular flange, is "beveled and concave (i.e., not flat)." | ¶40, ¶41 | Figs. 2, 4, 7 |
- Identified Points of Contention: The central issue is the application of the "ordinary observer" test for design patent infringement. The court will need to determine if an ordinary observer, familiar with prior art cookware lids, would be deceived into believing the accused Emson lid is the same as the patented Caraway design.
- Scope Questions: A primary question will be whether the scope of the D'421 Patent's design is limited to the precise features shown, such as the perfectly flat top and two-flange bottom, or if it covers the more general concept of a minimalist, disc-shaped lid. The complaint presents a side-by-side comparison of the patented design's underside and the accused lid's underside to emphasize these differences (Compl. p. 8).
- Technical Questions: The dispute will focus on the visual significance of the differences alleged by Emson. Are the beveled/convex top and single continuous flange minor variations that do not alter the overall visual impression, or are they fundamental design differences that create a "plainly dissimilar" appearance, as Emson alleges? (Compl. ¶42).
V. Key Claim Terms for Construction
In design patent cases, there are no "terms" to construe in the traditional sense. Instead, the focus is on the scope of the claimed design as a whole, informed by the drawings. The key points of contention will revolve around the visual importance of specific ornamental features.
The Feature: The "flat top surface"
- Context and Importance: This feature is a primary point of differentiation asserted by Emson. Caraway's original Amazon complaint allegedly described the accused lid's surface as "almost flat" (Compl. ¶19), while Emson argues its beveled and convex surface is visually distinct from the "totally flat" surface shown in the patent figures (Compl. ¶36-37). The resolution of this difference is central to the infringement analysis.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation (favoring Caraway): A party could argue that the overall minimalist, circular profile is the dominant feature of the design, and minor variations in surface contour do not change the fundamental aesthetic.
- Evidence for a Narrower Interpretation (favoring Emson): The patent drawings, particularly the side elevation (Fig. 3) and cross-section (Fig. 7), unambiguously depict a perfectly flat plane. Emson will argue these drawings strictly define this feature as an essential part of the claimed design, and any deviation, such as the accused product's convexity, is a significant departure.
The Feature: The "two separate semi-circular flanges" on the bottom
- Context and Importance: Emson contends that its lid's "single, continuous circular wall" is fundamentally different from the patented design's two distinct flanges (Compl. ¶38-39). Practitioners may focus on this feature as it relates to the underside of the lid, which may be a less prominent part of the overall design but is explicitly claimed.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation (favoring Caraway): A party could argue that the flanges are primarily functional and their specific configuration is a minor detail in the overall ornamental appearance, which is dominated by the top view.
- Evidence for a Narrower Interpretation (favoring Emson): Figure 2 of the patent clearly shows two separate, arc-shaped flanges with significant gaps between them. Emson will argue this specific configuration is a deliberate, protected element of the ornamental design, and a continuous wall creates a different visual impression. The complaint includes a direct visual comparison to support this point (Compl. p. 8).
VI. Other Allegations
- Willful Infringement: This is a declaratory judgment action for non-infringement, so there is no allegation of willful infringement against Emson. Instead, Emson makes allegations against the patentee, Caraway, asserting that Caraway's conduct in filing the Amazon complaint and refusing to withdraw it was "objectively baseless" (Compl. ¶32). Emson alleges that "Caraway knows that the Accused Product does not and cannot infringe the D’421 Patent" (Compl. ¶47). Based on this, Emson seeks a declaration that this is an "exceptional case" under 35 U.S.C. § 285, which would entitle it to attorneys' fees (Compl. ¶54).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this declaratory judgment action will likely depend on the answers to two primary questions:
A core issue will be one of visual comparison: From the perspective of an ordinary observer, do the asserted differences in the accused lid's design—specifically its beveled/convex top and its single, continuous bottom flange—distinguish it sufficiently from the patented design's perfectly flat top and two separate flanges, or are the designs "substantially the same" in their overall ornamental effect?
A key legal question will be one of patentee conduct: Assuming Emson prevails on non-infringement, did Caraway’s initial infringement report to Amazon and its subsequent refusal to retract it, in light of the visual differences highlighted by Emson, constitute conduct so "objectively baseless" as to render this an exceptional case warranting an award of attorney's fees under 35 U.S.C. § 285?