Blue Sky Innovation Group Inc v. Forcome Co Ltd

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Blue Sky Innovation Group, Inc. (Ohio)
  • Defendant: Forcome Co., Ltd (China) and The Sausage Maker, Inc. (New York)
  • Plaintiff’s Counsel: Bennett Schechter Arcuri & Will LLP; Benesch, Friedlander, Coplan & Aronoff LLP
• Case Identification: 1:23-cv-00200, W.D.N.Y., 03/03/2023
• Venue Allegations: Venue is alleged as proper for The Sausage Maker based on its incorporation and principal place of business within the district. Venue for Forcome, a foreign corporation, is alleged based on a substantial part of the events giving rise to the claim occurring in the district and its amenability to personal jurisdiction there.
• Core Dispute: Plaintiff alleges that Defendants are manufacturing, importing, and selling meat grinders that infringe its design patent for a grinder motor and base.
• Technical Context: The dispute is in the consumer products sector, specifically concerning the ornamental design of meat grinders marketed for outdoor and recreational use.
• Key Procedural History: The complaint alleges a prior manufacturing relationship, established by a 2014 "Cooperation Agreement," between Plaintiff and Defendant Forcome. Plaintiff asserts that Forcome used confidential designs provided under this agreement to manufacture and sell the accused products through Defendant The Sausage Maker, in breach of exclusivity and confidentiality clauses. These allegations of a breached partnership and misuse of proprietary designs are central to the claims of willful infringement.

Case Timeline

Date	Event
2014-09-02	Blue Sky and Forcome enter "Cooperation Agreement"
2014-10-31	Blue Sky sends product designs to Forcome
2016-05-26	'080 Patent Priority Date
2018-10-16	'080 Patent Issued
2020-05-01	Blue Sky terminates "Cooperation Agreement"
2023-03-03	Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

• Patent Identification: U.S. Design Patent No. D831,080, "Grinder Motor and Base," issued October 16, 2018.

The Invention Explained

• Problem Addressed: Design patents do not solve a functional problem but rather provide a unique, non-obvious, ornamental appearance for an article of manufacture. The goal is to create a visually distinct product identity in the marketplace (Compl. ¶¶13-14).
• The Patented Solution: The patent protects the specific aesthetic and non-functional appearance of a grinder motor and base unit. The claimed design, depicted in solid lines across eight figures, consists of a rectangular base with a recessed side handle, on which sits a cylindrical motor housing featuring prominent horizontal ribs and a distinctive front attachment collar ('080 Patent, Figs. 1, 7). The patent's description explicitly notes that broken lines in the drawings, such as the grinder head attachment itself, represent unclaimed environment and do not form part of the protected design ('080 Patent, Description).
• Technical Importance: The complaint suggests the design is part of a broader strategy to create "innovative meat grinder designs" that distinguish Plaintiff's products in the consumer market (Compl. ¶14).

Key Claims at a Glance

• The patent contains a single claim: "The ornamental design for a grinder motor and base, as shown and described" ('080 Patent, Claim).
• In design patent cases, infringement is assessed using the "ordinary observer" test. The complaint directly invokes this standard, alleging the accused and patented designs are "so similar as to be nearly identical such that an ordinary observer...would be so deceived by the substantial similarity between the designs so as to be induced to purchase the Infringing Products" (Compl. ¶33).

III. The Accused Instrumentality

• Product Identification: Meat grinders manufactured by Forcome and sold in the United States by The Sausage Maker under "The Sausage Maker" brand name (the "Infringing Products") (Compl. ¶26).
• Functionality and Market Context: The complaint identifies the accused products as meat grinders whose design is allegedly "derived from Blue Sky's Carnivore Grinder designs" and are "copies of Blue Sky's patented design" (Compl. ¶26). The complaint provides visual evidence comparing the accused product to Plaintiff's "Carnivore Grinder," alleging that component parts like the food tray and plates are identical (Compl. ¶29, p. 7). A provided image shows the accused product, featuring a black base and a black and silver motor housing with an attached grinding mechanism (Compl. p. 6). The complaint alleges these products are imported and sold in the United States (Compl. ¶26).

IV. Analysis of Infringement Allegations

The complaint does not contain a formal claim chart. Instead, it presents its infringement theory through a direct side-by-side visual comparison, which forms the core of its allegations.

The complaint provides a side-by-side image comparing Figure 1 of the '080 Patent with a photograph of the accused "Infringing Products" (Compl. p. 6). This visual suggests that the overall shape of the accused product's base, the finned or ribbed texture and cylindrical shape of the motor housing, the placement of the side handle, and the configuration of the front collar are substantially similar to the patented design. A second comparison on the same page shows a side profile view from Figure 4 of the '080 Patent next to a similar view of the accused product, further illustrating the alleged similarity in the overall form and proportions (Compl. p. 6).

• Identified Points of Contention:
  • Visual Similarity: The central question for the fact-finder will be whether, under the "ordinary observer" test, the accused design is substantially the same as the claimed design in the '080 Patent. The analysis must consider the design as a whole, while filtering out the unclaimed environmental elements shown in broken lines in the patent's figures.
  • Impact of Color and Minor Differences: The infringement analysis may focus on whether differences in color, finish, or minor surface details between the patent drawings and the physical accused product are sufficient to prevent an ordinary observer from being deceived.

V. Key Claim Terms for Construction

For design patents, claim construction is not a matter of defining textual terms but of determining the scope of the claimed design from the patent's drawings as a whole.

• The Term: "The ornamental design for a grinder motor and base" ('080 Patent, Claim).
• Context and Importance: The construction of the claim is defined by what is shown in solid versus broken lines in the patent's figures. This distinction is critical because the infringement test compares the accused product only to the legally protected aspects of the design. Practitioners may focus on this distinction to argue that any perceived similarity relies on unclaimed features, or conversely, that the core protected features are copied.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim covers the overall visual impression of the design, not a collection of discrete features. A party could argue that minor differences in the accused product do not alter the overall aesthetic appearance that an ordinary observer would perceive, which is dominated by the core shapes shown in solid lines.
  • Evidence for a Narrower Interpretation: The patent's description states, "The broken lines in the drawings represent unclaimed environment only and form no part of the claimed design" ('080 Patent, Description). A party could argue that the scope is strictly limited to the exact shapes and contours shown in the solid lines, and any deviation in the accused product, however small, is a legally relevant distinction.

VI. Other Allegations

• Indirect Infringement: The complaint alleges that Forcome actively induced infringement by Sausage Maker (Compl. ¶34). It alleges Forcome had knowledge of the patent and the infringing nature of the sales based on the prior business relationship where Blue Sky provided the original designs. The complaint alleges Forcome had the specific intent to induce infringement through its partnership with Sausage Maker (Compl. ¶34).
• Willful Infringement: Willfulness is alleged based on Defendants "knowingly, intentionally, and willfully" infringing the '080 patent (Compl. ¶39). The allegations are heavily supported by the narrative of the prior manufacturing agreement, Forcome's alleged use of confidential designs provided by Blue Sky, and the alleged direct copying of the patented design (Compl. ¶¶19-26).

VII. Analyst’s Conclusion: Key Questions for the Case

The resolution of this dispute appears to hinge on two central questions:

1. A core issue will be one of visual comparison: Applying the "ordinary observer" test, is the overall ornamental design of the accused meat grinder "substantially the same" as the design claimed in the '080 patent, when viewed as a whole and properly filtering out any unclaimed elements depicted in broken lines?
2. A key evidentiary question will be one of intent: How will the detailed factual allegations regarding the prior manufacturing agreement and alleged misuse of confidential designs affect the fact-finder's assessment? This evidence, while not dispositive for direct infringement, may significantly influence the analysis of substantial similarity and will be central to the claims for willfulness and enhanced damages.