DCT
1:14-cv-00153
Gillette Co v. SD Blades
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: The Gillette Company (Delaware)
- Defendant: SD Blades; Eric Young Kim; Brandon Suhan Rim; Kim Taeho; Young Ha Kang (Georgia)
- Plaintiff’s Counsel: Dinsmore & Shohl, LLP
- Case Identification: 1:14-cv-00153, S.D. Ohio, 02/18/2014
- Venue Allegations: Venue is based on allegations that Defendants committed acts of infringement in Ohio, solicited business, and derived substantial revenue from selling infringing products within the state.
- Core Dispute: Plaintiff alleges that Defendants' replacement razor cartridges, dispensers, and containers infringe six of Gillette's design patents by copying the unique ornamental and non-functional designs of its Fusion®, Mach3®, and Venus® product lines.
- Technical Context: The dispute is in the highly competitive consumer personal care market, where the ornamental design of products like razor cartridges and their packaging is a key differentiator and source of brand identity.
- Key Procedural History: The complaint does not mention any prior litigation, inter partes review proceedings, or licensing history related to the patents-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 1996-04-10 | Priority Date for U.S. Patent No. Des. 422,751 |
| 1999-07-29 | Priority Date for U.S. Patent No. Des. 430,023 |
| 1999-07-29 | Priority Date for U.S. Patent No. D440,874 S |
| 2000-04-11 | U.S. Patent No. Des. 422,751 Issued |
| 2000-08-29 | U.S. Patent No. Des. 430,023 Issued |
| 2001-04-24 | U.S. Patent No. D440,874 S Issued |
| 2005-02-24 | Priority Date for U.S. Patent No. D531,518 S |
| 2005-02-24 | Priority Date for U.S. Patent No. D533,684 S |
| 2006-11-07 | U.S. Patent No. D531,518 S Issued |
| 2006-12-12 | U.S. Patent No. D533,684 S Issued |
| 2008-09-26 | Priority Date for U.S. Patent No. D604,904 S |
| 2009-11-24 | U.S. Patent No. D604,904 S Issued |
| 2014-02-18 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. D533,684 S - Razor Cartridge
The Invention Explained
- Problem Addressed: In the market for shaving products, creating a visually distinct and recognizable appearance for a razor cartridge helps build brand identity and distinguish a product from competitors. The complaint alleges Gillette has invested significantly in developing "unique, nonfunctional and distinctive product designs" (Compl. ¶20).
- The Patented Solution: The ’684 Patent protects the specific ornamental design for a razor cartridge as depicted in its six figures (D'684 Patent, Figs. 1-6). The design features a specific overall shape, a prominent curved guard bar element, and a particular arrangement of fins and blades within the cartridge frame. The patent claims the visual appearance itself, not any functional aspect of the cartridge's performance (D'684 Patent, Claim).
- Technical Importance: The design is associated with Gillette's Fusion® line of razor cartridges, a major product family for the company (Compl. ¶24).
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a razor cartridge, as shown" (D’684 Patent, Claim). This claim covers the overall visual appearance of the cartridge depicted in the patent's drawings.
- As a design patent, the claim is not broken down into textual elements; its scope is defined by the drawings as a whole.
U.S. Patent No. D531,518 S - Dispenser For Razor Cartridge
The Invention Explained
- Problem Addressed: Similar to the razor cartridge itself, the dispenser or container that holds replacement cartridges provides a key opportunity for branding and creating a distinct, non-functional visual impression for consumers.
- The Patented Solution: The ’518 Patent protects the ornamental design for a multi-cartridge dispenser, as shown in its six figures (D'518 Patent, Figs. 1-6). The design is characterized by a generally rectangular shape with rounded ends, a transparent or translucent body, and internal structures that hold multiple cartridges in a stacked, visible arrangement. The claim is for the aesthetic appearance of the dispenser (D'518 Patent, Claim).
- Technical Importance: The complaint alleges this dispenser design is embodied in the packaging for the Fusion® line of products, contributing to the product line's goodwill (Compl. ¶25-26).
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a dispenser for razor cartridge, as shown" (D’518 Patent, Claim).
- The scope of this claim is defined by the visual appearance of the dispenser depicted in the patent's drawings.
Multi-Patent Capsule: U.S. Patent No. D604,904 S - Razor Cartridge
- Patent Identification: U.S. Patent No. D604,904 S, "Razor Cartridge," issued November 24, 2009.
- Technology Synopsis: This patent protects the ornamental design for a razor cartridge. The complaint alleges this design is embodied in Gillette's Fusion® ProGlide™ line of razor cartridges (Compl. ¶27). The design features a distinct rectangular frame and arrangement of blades and fins, creating a specific visual appearance.
- Asserted Claims: The single claim for "The ornamental design for a razor cartridge, as shown and described" (D'904 Patent, Claim).
- Accused Features: Razor cartridges made, sold, or offered for sale by Defendants that allegedly apply the patented design or a colorable imitation thereof (Compl. ¶55).
Multi-Patent Capsule: U.S. Patent No. Des. 422,751 - Razor Blade Cartridge
- Patent Identification: U.S. Patent No. Des. 422,751, "Razor Blade Cartridge," issued April 11, 2000.
- Technology Synopsis: This patent protects the ornamental design for a razor blade cartridge. The complaint alleges this design is embodied in Gillette's Mach3® line of razor blade cartridges, a product line in which Gillette has established "tremendous goodwill" (Compl. ¶29-30). The design is characterized by its specific cartridge shape and connector geometry.
- Asserted Claims: The single claim for "The ornamental design for a razor blade cartridge, as shown and described" (’751 Patent, Claim).
- Accused Features: Razor blade cartridges sold by Defendants that are alleged to be "direct copies and near exact imitations" of products embodying the '751 Patent design (Compl. ¶39, ¶61).
Multi-Patent Capsule: U.S. Patent No. Des. 430,023 - Container
- Patent Identification: U.S. Patent No. Des. 430,023, "Container," issued August 29, 2000.
- Technology Synopsis: This patent protects the ornamental design for a container. The complaint alleges this design is embodied in the containers for "Certain of the Venus® line of shaving blade containers" (Compl. ¶31). The design features a distinctive rounded rectangular shape with a textured lower portion.
- Asserted Claims: The single claim for "The ornamental design for a container, as shown and described" (’023 Patent, Claim).
- Accused Features: Razor blade containers sold by Defendants that allegedly apply the '023 Patent design or a colorable imitation (Compl. ¶67).
Multi-Patent Capsule: U.S. Patent No. D440,874 S - Container
- Patent Identification: U.S. Patent No. D440,874 S, "Container," issued April 24, 2001.
- Technology Synopsis: This patent also protects the ornamental design for a container. The complaint alleges this design is used for containers housing certain Venus® line razor cartridges (Compl. ¶32). The design is for a shallow, lidded container with a specific profile and shape.
- Asserted Claims: The single claim for "The ornamental design for a container, as shown and described" (’874 Patent, Claim).
- Accused Features: Razor blade containers sold by Defendants that are alleged to embody the patented design (Compl. ¶73).
III. The Accused Instrumentality
- Product Identification: The accused instrumentalities are "razor blades, razor cartridges, shaving blade units, dispensers for razor cartridges, and razor containers" manufactured, distributed, and sold by the SD Blades Defendants (Compl. ¶1).
- Functionality and Market Context: The complaint alleges that Defendants operate an Amazon.com "Storefront" to offer these products for sale (Compl. ¶35-36). The products are explicitly marketed as "replacements" for Gillette's Fusion®, Mach3®, and Venus® brand razors (Compl. ¶37). The complaint characterizes the accused products as "direct copies and near exact imitations" of Gillette's products that embody the designs of the patents-in-suit (Compl. ¶39). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint alleges that for each patent-in-suit, an ordinary observer would be deceived by the substantial similarity between the patented design and the corresponding accused product, leading them to purchase the accused product believing it to be the same as Gillette's (e.g., Compl. ¶44, ¶50).
D533,684 S Infringement Allegations
| Claim Element (from the single claim) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a razor cartridge, as shown and described. | Razor cartridges made, designed, and sold by SD Blades that apply the design of the ’684 Patent or a colorable imitation thereof, such that an ordinary observer would be deceived by the substantial similarity. | ¶43-44 | D'684 Patent, Claim; Description |
D531,518 S Infringement Allegations
| Claim Element (from the single claim) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a dispenser for razor cartridge, as shown and described. | Dispensers for razor cartridges made, designed, and sold by SD Blades that apply the design of the ’518 Patent or a colorable imitation thereof, such that an ordinary observer would be deceived by the substantial similarity. | ¶49-50 | D'518 Patent, Claim; Description |
- Identified Points of Contention:
- Scope Questions: The central question for each patent will be whether the accused design is "substantially the same" as the claimed design in the eyes of an "ordinary observer." This infringement test, established in Egyptian Goddess, Inc. v. Swisa, Inc., requires comparing the two designs as a whole.
- Technical Questions: A potential point of contention is the distinction between functional and ornamental features. Defendants may argue that any similarities between their products and the patented designs are dictated by the need to be functional "replacements" (e.g., to fit a Gillette handle) and are therefore not protected by the design patents. The complaint anticipates this by repeatedly asserting the patented designs are "non-functional" (Compl. ¶1, ¶24, ¶27). The court will need to determine which aspects of the patented designs are ornamental and which, if any, are purely functional.
V. Key Claim Terms for Construction
In design patent litigation, the "claim" is understood to be the drawings themselves, rather than textual limitations. Consequently, claim construction in the traditional sense of defining disputed terms is not typically a central issue. The analysis focuses on a visual comparison between the patent drawings and the accused product from the perspective of an ordinary observer. The complaint does not raise any issues that would suggest a need for construing specific terms.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement to infringe for all six patents (Compl. ¶¶77-100). The factual basis is the allegation that SD Blades aids and abets other third-party entities (e.g., "tradingrosesl," "2brothers") who sell the infringing products "by SD Blades" on Amazon.com (Compl. ¶78, ¶82). This suggests a theory that Defendants are liable for infringement by other sellers operating through their supply chain or storefront.
- Willful Infringement: Willfulness is alleged for all direct infringement counts. The complaint alleges that Defendants' actions were "deliberate and willful" (e.g., Compl. ¶45, ¶51, ¶57). The factual support for this allegation appears to be the claim that the accused products are "direct copies and near exact imitations" of Gillette's products, suggesting Defendants had knowledge of and intentionally copied the patented designs (Compl. ¶39).
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 appearance of the Defendants' various razor cartridges, dispensers, and containers "substantially the same" as the designs depicted in Gillette's patents, such that a typical purchaser would be deceived?
- A key legal and factual question will be the functionality defense: To what extent are the visual features of the patented designs ornamental and protectable, versus being dictated by their function as replacement parts compatible with Gillette-branded handles and systems? The resolution of this issue will define the scope of protection afforded by each design patent.
- An evidentiary question will concern liability: Can Gillette prove that the named individual defendants personally directed or participated in the infringing conduct, or that the "SD Blades" entity should be disregarded, in order to establish personal liability beyond the unincorporated entity itself?