DCT
3:20-cv-01011
Samuel Stamping Tech LLC v. Therma Tru Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Samuel Stamping Technologies, LLC (Pennsylvania)
- Defendant: Therma-Tru Corp. (Ohio)
- Plaintiff’s Counsel: Vorys, Sater, Seymour and Pease LLP
- Case Identification: 3:20-cv-01011, N.D. Ohio, 05/08/2020
- Venue Allegations: Venue is alleged to be proper because Defendant is an Ohio corporation that resides in and has a regular and established place of business in the district, where the alleged acts of infringement occurred.
- Core Dispute: Plaintiff alleges that Defendant’s door skin products infringe three design patents that protect specific ornamental designs for door skins.
- Technical Context: The dispute concerns the ornamental appearance of door skins, which are the outer layers of doors, typically made of stamped steel or fiberglass, that feature decorative, recessed panel designs.
- Key Procedural History: The complaint alleges a prior business relationship where, since 2006, Plaintiff manufactured door skins with the patented designs for a supplier that sold them to Defendant. Plaintiff alleges it provided Defendant with notice of the patents, both through direct contact in early 2019 and a formal letter in August 2019, after learning Defendant planned to produce allegedly identical models in-house.
Case Timeline
| Date | Event |
|---|---|
| 2006-01-01 | SST begins stamping door skins for supplier (Commencing in 2006) |
| 2006-09-08 | Priority Date for U.S. Patent No. D557,427 |
| 2007-12-11 | U.S. Patent No. D557,427 Issues |
| 2008-02-11 | Priority Date for U.S. Patent No. D625,023 |
| 2008-02-11 | Priority Date for U.S. Patent No. D635,276 |
| 2010-10-05 | U.S. Patent No. D625,023 Issues |
| 2011-03-29 | U.S. Patent No. D635,276 Issues |
| 2018-10-01 | Supplier advises SST of Defendant's plans (Late 2018) |
| 2019-01-01 | SST contacts Defendant employee (Early 2019) |
| 2019-08-22 | SST sends formal notice letter to Defendant |
| 2020-05-08 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D557,427 - "HIGH DEFINITION TWO PANEL DOOR SKIN"
- Patent Identification: U.S. Design Patent No. D557,427, "HIGH DEFINITION TWO PANEL DOOR SKIN," issued December 11, 2007.
The Invention Explained
- Problem Addressed: Design patents do not solve functional problems; rather, they protect new, original, and ornamental designs for an article of manufacture (Compl. ¶1). The filing represents an effort to create a novel aesthetic appearance for a door skin.
- The Patented Solution: The patent protects the specific visual appearance of a door skin featuring two recessed panels: a larger, vertically-oriented rectangular panel on top and a smaller, square-like panel below (D'427 Patent, Fig. 2). The term "high definition" in the title refers to the specific, multi-stepped cross-sectional profile of the panel recesses, which creates a distinct shadow line effect (D'427 Patent, Figs. 5, 6).
- Technical Importance: The complaint describes these patented designs as "highly successful for SST" (Compl. ¶7).
Key Claims at a Glance
- Design patents contain a single claim, which is for the design as shown in the patent's drawings.
- The claim covers "The ornamental design for a high definition two panel door skin, as shown and described" (D'427 Patent, Claim). Its scope is defined by the solid lines in Figures 1-6.
U.S. Design Patent No. D625,023 - "HIGH DEFINITION DOOR SKIN WITH SOFT ARCH"
- Patent Identification: U.S. Design Patent No. D625,023, "HIGH DEFINITION DOOR SKIN WITH SOFT ARCH," issued October 5, 2010.
The Invention Explained
- Problem Addressed: Similar to the '427' Patent, the '023' Patent seeks to protect a new and ornamental aesthetic for a door skin (Compl. ¶1).
- The Patented Solution: This design features a two-panel configuration, but modifies the top panel with a "soft arch" (D'023 Patent, Fig. 2). The lower panel remains rectangular. The design retains a "high definition" profile for the recesses, which is detailed in the cross-sectional views (D'023 Patent, Figs. 6-8). The combination of the arch and the specific panel profiles constitutes the patented design.
- Technical Importance: This patent is part of the same family of "highly successful" designs asserted by the Plaintiff (Compl. ¶7).
Key Claims at a Glance
- The single claim is for "The ornamental design for a high definition door skin with soft arch, as shown and described" ('023 Patent, Claim).
- The scope of the claim is defined by the visual appearance depicted in the patent's drawings.
U.S. Design Patent No. D635,276 - "HIGH DEFINITION DOOR SKIN WITH SOFT ARCH AND V-GROOVES"
- Patent Identification: U.S. Design Patent No. D635,276, "HIGH DEFINITION DOOR SKIN WITH SOFT ARCH AND V-GROOVES," issued March 29, 2011 (Compl. ¶8).
- Technology Synopsis: This patent claims an ornamental design that builds on the '023 Patent's design. It incorporates a soft-arched upper panel and a rectangular lower panel, but adds a series of vertical, parallel "V-grooves" inside both recessed panels to create the appearance of a plank door ('276' Patent, Fig. 2; Compl. ¶29).
- Asserted Claims: The single claim for the ornamental design as shown and described in the patent's figures ('276 Patent, Claim).
- Accused Features: The complaint accuses Defendant's "Profiles 2 Panel Plank Soft Arch Flush Style No. 205HD" door of infringing the '276 Patent (Compl. ¶29).
III. The Accused Instrumentality
- Product Identification: The complaint names three accused products:
- "Profiles 2 Panel Square Top Flush Style No. 978HD"
- "Profiles 2 Panel Soft Arch Flush Style No. 1005HD"
- "Profiles 2 Panel Plank Soft Arch Flush Style No. 205HD" (Compl. ¶¶ 13, 21, 29).
- Functionality and Market Context: The accused products are door skins used to form the front and back surfaces of doors (Compl. ¶7). Plaintiff alleges that Defendant, a former indirect customer for doors using Plaintiff's patented designs, decided to "produce the same models in-house in a cost saving move" (Compl. ¶10). The complaint includes a three-way visual comparison for each accused product, showing the patent drawing, a photo of Plaintiff's "commercial embodiment," and a photo of the corresponding accused door from Defendant's website (Compl. pp. 5, 7, 9). This visual, showing Defendant's product from its own website, is offered as evidence that Defendant is making, using, or selling the accused designs (Compl. ¶13).
IV. Analysis of Infringement Allegations
D'427 Patent Infringement Allegations
| Claim Element (from the single Design Claim) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design for a two-panel door skin. | The complaint alleges the overall design of the accused "Profiles 978HD" door is "substantially the same" and "nearly identical" to the claimed design, sufficient to deceive an ordinary observer. | ¶14 | '427 Patent, Figs. 1-2 |
| A large, vertically oriented, rectangular upper recessed panel. | The accused door is depicted with a large, vertically oriented, rectangular upper panel that appears to have the same proportions and placement as the claimed design. | ¶13, p. 5 (Image) | '427 Patent, Fig. 2 |
| A smaller, generally square-shaped lower recessed panel. | The accused door is depicted with a smaller, square-like lower panel that appears to have the same proportions and placement as the claimed design. | ¶13, p. 5 (Image) | '427 Patent, Fig. 2 |
| A specific "high definition," multi-stepped profile for the panel recesses. | The visual evidence in the complaint suggests the accused door replicates the distinctive recessed profile shown in the patent's cross-sectional drawings. | ¶14, p. 5 (Image) | '427 Patent, Figs. 5-6 |
D'023 Patent Infringement Allegations
| Claim Element (from the single Design Claim) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design for a door skin with a soft arch. | The complaint alleges the overall design of the "Profiles 1005HD" door is "substantially the same" and "nearly identical" to the claimed design. | ¶22 | '023 Patent, Figs. 1-2 |
| An upper recessed panel featuring a "soft arch" top edge. | The accused door is depicted with an upper panel that has a soft arch top, appearing to match the curvature and proportions of the claimed design. | ¶21, p. 7 (Image) | '023 Patent, Fig. 2 |
| A rectangular lower recessed panel. | The accused door is shown with a rectangular lower panel that appears visually identical in proportion and placement to the lower panel in the patent's drawings. | ¶21, p. 7 (Image) | '023 Patent, Fig. 2 |
| A specific "high definition," multi-stepped profile for the panel recesses. | As depicted in the complaint's visual comparison, the accused door appears to incorporate the same recessed profile that defines the "high definition" look of the patented design. | ¶22, p. 7 (Image) | '023 Patent, Figs. 6-8 |
- Identified Points of Contention:
- Visual Similarity: The central question for all three patents will be whether an "ordinary observer," giving the attention a typical purchaser would, would find the accused designs to be substantially the same as the patented designs. The complaint asserts they are "nearly identical" (Compl. ¶¶ 14, 22, 30). The defense may focus on any subtle differences in proportion, curvature, or profile depth to argue that an ordinary observer would not be deceived.
- Role of Prior Art: While not addressed in the complaint, the infringement analysis will ultimately occur in the context of the prior art. The question for the fact-finder is whether the accused design appropriates the novel ornamental features of the patented design that distinguish it from what came before.
V. Key Claim Terms for Construction
In design patent litigation, there are no "terms" to construe in the manner of a utility patent's Markman hearing. The claim is understood to be the design itself as depicted in the drawings. The analysis focuses on the scope of the visual design.
- The Term: "The ornamental design ... as shown and described."
- Context and Importance: This phrase constitutes the entirety of the claim in each patent-in-suit. Its scope is defined by the visual information contained in the solid lines of the patent figures. The dispute will not center on the definition of a word, but on a visual comparison between the patented drawings and the accused products.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue that the overall visual impression of the design is what is protected, and that minor, imperceptible variations do not escape infringement. The complaint's use of the "ordinary observer" standard supports this holistic view (Compl. ¶14).
- Evidence for a Narrower Interpretation: A party could argue that the claim is strictly limited to the exact proportions and contours shown in the drawings. The detailed cross-sectional views provided in each patent (e.g., '427 Patent, Figs. 5-6; '023 Patent, Figs. 6-8) could be used to argue that any deviation from these specific "high definition" profiles places an accused product outside the scope of the claim.
VI. Other Allegations
- Indirect Infringement: The complaint does not contain specific counts or allegations for indirect infringement (inducement or contributory infringement). The allegations are directed at Defendant's own "making, importing, using, offering to sell, or selling" of the accused doors (Compl. ¶13).
- Willful Infringement: The complaint lays a foundation for willfulness by alleging a history where Defendant was an end-user of products embodying the patented designs (Compl. ¶9). It further alleges that Plaintiff gave Defendant both informal notice via an employee in "early 2019" and formal written notice via a letter on August 22, 2019, and that the employee "acknowledged notice" of the patents (Compl. ¶¶ 10-11). The prayer for relief explicitly seeks enhanced damages under 35 U.S.C. § 284 and a finding that the case is "exceptional" under § 285, which are remedies tied to findings of willful or egregious conduct (Compl. p. 10-11, ¶¶ 5, 7).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual comparison: Will a fact-finder, acting as an "ordinary observer," conclude that the accused Therma-Tru doors are "substantially the same" as SST's patented designs, or will Defendant be able to identify and emphasize visual differences sufficient to avoid a finding of infringement?
- A second critical question will relate to culpability and damages: Based on the alleged prior business relationship and direct pre-suit notice, can SST establish that Defendant's alleged infringement was willful? The answer will determine the availability of enhanced damages and attorneys' fees.
- Finally, the case may raise a question of market replacement: Does the evidence support the complaint's narrative that Defendant directly copied SST's designs to replace a product it was previously purchasing, a fact pattern that could influence the court's view of the equities and the determination of damages?