7:22-cv-09176
Hub Pen Co LLC v. Huh
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Hub Pen Company, LLC (Delaware)
- Defendant: Kathleen Huh (New York); Awe-Huh Creative Services LLC (New York)
- Plaintiff’s Counsel: John H. Choi & Associates LLC; Thorpe North & Western LLP
- Case Identification: 7:22-cv-09176, S.D.N.Y., 10/26/2022
- Venue Allegations: Venue is alleged to be proper in the Southern District of New York because Defendants reside and conduct business in the district, and a substantial part of the alleged infringing activity occurred there.
- Core Dispute: Plaintiff alleges that a pen and stylus product supplied by Defendants to the New York City Board of Elections infringes Plaintiff's design patent.
- Technical Context: The dispute concerns the ornamental design of writing instruments within the promotional products market.
- Key Procedural History: Public records indicate that on March 27, 2020, the U.S. Patent and Trademark Office issued an Ex Parte Reexamination Certificate for the patent-in-suit, which cancelled the patent's sole claim. The complaint, filed more than two years after this cancellation, does not mention the reexamination proceeding or the cancellation of the claim.
Case Timeline
| Date | Event |
|---|---|
| 2013-01-23 | '949 Patent Priority Date (Filing Date) |
| 2014-07-29 | '949 Patent Issue Date |
| 2016-10-03 | Reexamination Request Filed for '949 Patent |
| 2020-03-27 | '949 Patent Reexamination Certificate Issued (Claim 1 Cancelled) |
| 2022-10-26 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. D709,949 - “PEN AND STYLUS”
- Patent Identification: U.S. Patent No. D709,949, “PEN AND STYLUS,” issued July 29, 2014.
The Invention Explained
- Problem Addressed: Design patents protect ornamental appearance rather than functional solutions. The '949 Patent addresses the need for a new, original, and ornamental design for a combined pen and stylus product, distinguishing it aesthetically from other writing instruments on the market.
- The Patented Solution: The patent protects the specific visual appearance of the pen and stylus as depicted in its figures ('949 Patent, FIGS. 1-8). The design is characterized by a smoothly contoured, hourglass-shaped body, a distinctively shaped clip integrated into the upper barrel, and a stylus integrated into the plunger mechanism at the top. The claim covers the ornamental design “as shown and described” ('949 Patent, Claim).
- Technical Importance: The complaint alleges the patented design is embodied in Plaintiff's commercially successful "Javalina®" product line (Compl. ¶¶ 11-12).
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a pen and stylus, as shown and described" ('949 Patent, Claim).
- However, an Ex Parte Reexamination Certificate issued on March 27, 2020 determined that "Claim 1 is cancelled" ('949 Reexam. Cert., p. 2).
III. The Accused Instrumentality
Product Identification
The accused instrumentality is a "pen and stylus product" supplied by Defendants to the New York City Board of Elections ("BOE") (Compl. ¶15).
Functionality and Market Context
The accused product is a writing implement alleged to be a lower-priced replacement for Plaintiff's Javalina® pen, which Plaintiff had previously supplied to the BOE (Compl. ¶¶ 14, 16). The complaint alleges that Defendants entered into a four-year contract with the BOE and have already delivered at least two million units of the Accused Product (Compl. ¶16). The core of the accusation centers on the product's visual appearance, which the complaint alleges is an "identical copy" of the patented design (Compl. ¶25). A photograph provided in the complaint shows the Accused Product, which features a contoured body and clip design (Compl. ¶15).
IV. Analysis of Infringement Allegations
The complaint’s infringement theory rests on the "ordinary observer" test for design patents, alleging that the Accused Product is substantially the same as the patented design. The complaint includes a drawing from the patent to facilitate a visual comparison (Compl. ¶24). However, all infringement allegations are premised on the existence of a valid and enforceable patent claim, which appears to be contradicted by the 2020 Reexamination Certificate.
D709,949 Infringement Allegations
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a pen and stylus, as shown and described. | The overall ornamental design of the Accused Product, which is alleged to be an "identical copy" of the claimed design shown in the patent's figures. | ¶¶ 22, 25 | Claim; FIGS. 1-8 |
Identified Points of Contention
- Validity Question: The central and likely dispositive issue is the legal status of the '949 Patent. The primary question for the court will be whether an infringement action can be maintained on a patent whose only claim was cancelled in a reexamination proceeding that concluded more than two years before the suit was filed.
- Infringement Question: Should the case proceed past the threshold validity question, the analysis would turn on whether an ordinary observer, familiar with the prior art, would be deceived into believing the Accused Product is the same as the patented design. The complaint's allegation of the products being "identical" suggests this would be a fact-intensive visual comparison (Compl. ¶25).
V. Key Claim Terms for Construction
Claim construction is generally not performed for design patents, as the claim is defined by the drawings rather than by words. The scope of the claim is determined by the overall ornamental design shown in the patent's figures. The dispositive issue of the claim's cancellation appears to obviate any potential need for interpretation.
VI. Other Allegations
Indirect Infringement
The complaint includes allegations of contributory and induced infringement (Compl. ¶23). It alleges that Defendants' acts of making, using, and selling the Accused Product constitute these forms of infringement, but does not plead specific facts detailing how customers were induced to infringe or how the product constitutes a material part of the invention known to be especially made for infringement.
Willful Infringement
Willfulness is alleged based on Defendants' purported pre-suit knowledge of the '949 Patent (Compl. ¶¶ 20, 28). The complaint asserts this knowledge arose because Plaintiff's own Javalina® products, which Defendants allegedly used to produce the Accused Product, are "properly marked with the patent" (Compl. ¶26).
VII. Analyst’s Conclusion: Key Questions for the Case
The viability of this lawsuit appears to hinge on a single, threshold legal determination before any factual analysis of infringement is reached.
- A core issue will be one of patent enforceability: What is the legal effect of the March 27, 2020 Reexamination Certificate that cancelled the sole claim of the '949 Patent? The court must determine if Plaintiff has asserted a cognizable property right in a patent that, based on public records, ceased to have any valid claims over two years before the complaint was filed.
- A secondary question, contingent on a finding of enforceability, would be one of design identity: Is the Accused Product's design substantially the same as the design claimed in the '949 Patent from the perspective of an ordinary observer? However, this factual inquiry is likely to be mooted by the antecedent question of the patent's validity.