Smiths Consumer Products Inc v. Gourmet Man LLC doing Business As BBQ Nation

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Smith's Consumer Products, Inc. (Delaware)
  • Defendant: Mitche Graf, d/b/a The Gourmet Man and BBQ Nation (Oregon)
  • Plaintiff’s Counsel: Cosgrave Vergeer Kester LLP
• Case Identification: 3:22-cv-00527, D. Or., 05/10/2022
• Venue Allegations: Venue is alleged to be proper in the District of Oregon because the Defendant resides in the district, maintains a regular and established place of business there, and acts of infringement have occurred in the district.
• Core Dispute: Plaintiff alleges that Defendant’s BBQ Nation Compact Knife Sharpener infringes a design patent covering the ornamental design of a two-step knife sharpener.
• Technical Context: The dispute concerns the ornamental appearance of handheld kitchen tool accessories, specifically manual knife sharpeners, a common consumer product category.
• Key Procedural History: The complaint alleges that Plaintiff provided Defendant with notice of the patent and the alleged infringement via a letter dated November 5, 2021, which may form the basis for the willfulness allegations.

Case Timeline

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

U.S. Design Patent No. D587,550 - Two Step Knife Sharpener, issued March 3, 2009

The Invention Explained

This design patent protects the specific, non-functional ornamental appearance of a two-step knife sharpener (Compl. ¶8). The design is characterized by a distinctive overall shape, featuring a curved, hand-held body that tapers toward one end and two V-shaped sharpening slots protruding from the top surface (’550 Patent, FIGS. 1-7). The claimed design includes the specific contours of the body, the arrangement and shape of the sharpening slots, and the visual relationship between these elements from multiple perspectives (’550 Patent, Description).

Key Claims at a Glance

Design patents have a single claim, which is for the ornamental design as shown in the patent's drawings. The claim of the ’550 Patent is for "The ornamental design for the two step knife sharpener, as shown and described" (’550 Patent, Claim).

III. The Accused Instrumentality

Product Identification

The "BBQ Nation Compact Knife Sharpener" (Compl. ¶11).

Functionality and Market Context

The accused product is a handheld knife sharpener sold by Defendant under the "The Gourmet Man" and "BBQ Nation" brands (Compl. ¶¶2, 11). The complaint alleges the product is offered for sale and sold on the website www.bbqnation.net (Compl. ¶11). The complaint provides visual evidence showing the accused product features a dark-colored body with a gripping area and two sets of sharpening elements set into V-shaped slots on its top surface (Compl. ¶13, p. 4). This side-by-side comparison shows the accused product from a front perspective view, juxtaposed with FIG. 1 of the patent (Compl. ¶13, p. 4).

IV. Analysis of Infringement Allegations

The complaint alleges that the design of the BBQ Nation Knife Sharpener is "identical to or substantially the same as" the design claimed in the ’550 Patent (Compl. ¶12). The central allegation is that, in the eye of an ordinary observer, the resemblance between the accused product and the patented design is such that it would cause the observer to purchase the accused product believing it to be the Plaintiff's product (Compl. ¶17).

To support this, the complaint provides a multi-page visual comparison chart directly juxtaposing figures from the ’550 Patent with photographs of the accused BBQ Nation Knife Sharpener from corresponding angles (Compl. ¶13, pp. 4-6). For example, the complaint presents a front view of the accused sharpener alongside FIG. 3 of the patent (Compl. ¶13, p. 5). Similarly, a top-down photograph of the accused product is placed next to the patent's top plan view, FIG. 6 (Compl. ¶13, p. 5). A bottom view of the accused product, showing a textured grip surface, is compared with the patent's bottom plan view, FIG. 7 (Compl. ¶13, p. 6). These comparisons form the primary basis for the infringement claim.

• Identified Points of Contention:
  • Scope Questions: The primary question for the court will be whether an ordinary observer, familiar with the prior art, would be deceived into believing the accused sharpener is the same as the patented design. The analysis will focus on the overall visual impression created by the products, rather than a direct comparison of minute details.
  • Technical Questions: While design patents concern ornamentality, a court may consider whether any visual similarities are dictated by the product's function. The question may arise as to what aspects of the sharpener's design are purely ornamental versus which are functionally required for a two-stage handheld sharpener.

V. Key Claim Terms for Construction

Design patent claims are not construed in the same manner as utility patent claims, as the claim scope is defined by the drawings rather than text. Therefore, analysis of specific "claim terms" is not applicable. The central issue is the scope of the claimed design as a whole and its comparison to the accused product.

VI. Other Allegations

Willful Infringement

The complaint alleges willful infringement based on the assertion that Defendant was given explicit notice of the ’550 Patent and its alleged infringement via a letter dated November 5, 2021 (Compl. ¶18). It is alleged that despite this notice and knowledge of Plaintiff's rights, the Defendant continued to engage in infringing activities (Compl. ¶19).

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 accused BBQ Nation Knife Sharpener substantially the same as the design claimed in the ’550 Patent, such that a typical purchaser would be deceived?
• A key evidentiary question will concern the impact of prior art: The infringement analysis will eventually be conducted in light of the prior art designs for knife sharpeners. The case may turn on whether the similarities between the patented design and the accused product are found in features that are common in the prior art or in the novel, ornamental aspects of the patented design.
• A central question for damages will be willfulness: Did the Defendant have pre-suit knowledge of the patent from the November 2021 notice letter, and did its subsequent conduct rise to the level of willful infringement, potentially justifying enhanced damages?