DCT
2:19-cv-00696
Salvitti v. Lascelles
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Alfred Salvitti, Nico Salvitti, and John-David Potynsky (Pennsylvania & North Carolina)
- Defendant: Scott Lascelles and Dana DiSabatino (Pennsylvania)
- Plaintiff’s Counsel: Greenberg Traurig, LLP
- Case Identification: 2:19-cv-00696, E.D. Pa., 04/08/2019
- Venue Allegations: Venue is alleged to be proper because the defendants reside in the judicial district and the alleged infringing acts and other events giving rise to the claims occurred there.
- Core Dispute: Plaintiffs Alfred and Nico Salvitti allege that their former business partner, Defendant Scott Lascelles, is infringing two patents covering a pistol-grip knife design by continuing to sell the knives after his license was allegedly revoked.
- Technical Context: The technology relates to ergonomic designs for tactical knives, specifically incorporating features from firearms to align with the muscle memory of trained operators.
- Key Procedural History: The Amended Complaint alleges that the patent-owning plaintiffs (the "Salvittis") had granted a limited license to a company managed by Defendant Lascelles to produce and sell knives under the patents. The Salvittis allege they revoked this license via letter on February 1, 2019, due to purported contractual breaches and fiduciary violations by Lascelles. The infringement claims are predicated on alleged sales activity occurring after this revocation date.
Case Timeline
| Date | Event |
|---|---|
| 2012-12-14 | Priority Date for U.S. Patent No. 9,631,892 |
| 2013-12-13 | Filing/Priority Date for U.S. Patent No. D713,923 |
| 2013 | Colonel Blades knives first manufactured |
| 2014-03-28 | The Colonel, LLC formally organized |
| 2014-09-23 | U.S. Patent No. D713,923 Issued |
| 2017-04-25 | U.S. Patent No. 9,631,892 Issued |
| 2019-02-01 | Plaintiffs allegedly revoke Defendant's license to the patents |
| 2019-02-12 | Defendant allegedly continues to offer knives for sale on website and Instagram |
| 2019-03-09 | Defendant allegedly ceases infringing activity conditionally |
| 2019-04-08 | Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,631,892 - "Pistol Grip Knife"
- Patent Identification: U.S. Patent No. 9,631,892, "Pistol Grip Knife," issued April 25, 2017 (Compl. ¶22).
The Invention Explained
- Problem Addressed: The patent’s background describes that traditional knives, with handles typically in-line with the blade, require handling techniques that are distinct from and less intuitive than those for firearms. This can be inefficient for military or law enforcement personnel already possessing extensive firearms training ('892 Patent, col. 1:21-45).
- The Patented Solution: The invention is a fixed-blade knife featuring a handle angled relative to the blade, designed to mimic the ergonomics of a pistol grip. This allows a user to employ a more natural punching or thrusting motion, leveraging muscle memory from firearm training. A key feature is a finger opening at the junction of the blade and handle, intended to provide a secure grip and improved control, similar to placing a finger on a trigger guard ('892 Patent, col. 2:55-65; col. 3:55-60).
- Technical Importance: The design seeks to create a more effective close-quarters combat weapon by making its use more instinctual for individuals trained in tactical pistol drawing and aiming ('892 Patent, col. 2:55-60).
Key Claims at a Glance
- The complaint asserts the '892 Patent generally, with Claim 1 being the sole independent claim.
- Essential elements of Independent Claim 1 include:
- A handle integrated with the knife's tang for gripping.
- A blade extending from the handle at an acute angle.
- A finger opening located approximately at the vertex of the angle between the blade and handle.
- An area at the blade's tip containing a contrasting color to serve as an aiming point.
U.S. Design Patent No. D713,923 - "Pistol Grip Knife"
- Patent Identification: U.S. Design Patent No. D713,923, "Pistol Grip Knife," issued September 23, 2014 (Compl. ¶22).
The Invention Explained
- Problem Addressed: Design patents address the novel, non-obvious, and ornamental appearance of an article of manufacture.
- The Patented Solution: The '923 patent protects the specific ornamental design for a "Pistol Grip Knife" as depicted in the patent's figures ('923 Patent, Figs. 1-8). The claimed design consists of the visual characteristics of the knife, including its curved, ergonomic handle, the angled blade, the circular finger opening, and the specific contours and surface features shown.
- Technical Importance: The distinctive visual appearance of the knife is foundational to the "Colonel Blades" brand identity alleged in the complaint (Compl. ¶14).
Key Claims at a Glance
- Design patents contain a single claim. The claim of the '923 Patent is for "The ornamental design for a pistol grip knife, as shown and described" ('923 Patent, "CLAIM").
III. The Accused Instrumentality
Product Identification
- The accused products are the "Colonel Blades knives" that Defendant Lascelles allegedly continued to make, use, sell, or offer for sale after the revocation of a prior license (Compl. ¶¶ 48, 62).
Functionality and Market Context
- The complaint alleges that the accused knives "fall within the scope of the Patents" (Compl. ¶48). The core of the infringement allegation is that the defendant is selling the very products previously manufactured and sold under the now-revoked license (Compl. ¶¶ 23, 44).
- The complaint includes a screenshot from an Instagram post by the user "colonel_blades" showing a photograph of a knife and announcing its availability for purchase (Compl. ¶49, Ex. E).
- A second screenshot from the "colonelblades.com" website shop page is provided as evidence of the knives being offered for sale post-revocation (Compl. ¶48, Ex. D).
- The complaint alleges these knives are marketed through military and law enforcement connections, leveraging the patented technology as the basis for the brand (Compl. ¶¶ 14, 24).
IV. Analysis of Infringement Allegations
The complaint alleges direct infringement of both the '892 utility patent and the '923 design patent, based on the defendant's alleged unauthorized sale of "Colonel Blades knives" after a license was revoked (Compl. ¶62). For the '923 design patent, the infringement test is whether an ordinary observer would find the design of the accused knives to be substantially the same as the design claimed in the patent. Given the allegations that the accused product is the original licensed product, the focus of the dispute may be less on technical comparison and more on the legal status of the license.
'892 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a handle for gripping by a user's hand, said handle being an integrated part of said tang of said knife for receiving fingers of said knife user when said user is holding said knife | The accused Colonel Blades knives are alleged to be manufactured under the patent and possess a pistol-grip style handle integrated with the knife's body. | ¶¶ 22, 48, 62 | col. 4:38-44 |
| a blade extending outwardly from the handle forming an acute angle with the handle for said knife | The accused knives allegedly feature a blade that extends from the handle at an acute angle, consistent with the patented design. | ¶¶ 22, 48, 62 | col. 4:45-48 |
| a finger opening located approximately at the vertex of said acute angle between said blade and handle to accept the finger of said knife user | The accused knives allegedly include a finger opening at the junction of the handle and blade. | ¶¶ 22, 48, 62 | col. 3:55-60 |
| further including an area at the tip of said knife blade containing a contrasting color to serve as an aiming point of said knife when pointing said blade at the intended target | The complaint alleges generally that the knives fall within the patent's scope, which would require the presence of this feature. | ¶¶ 48, 62 | col. 6:46-52 |
- Identified Points of Contention:
- Legal Question: The primary dispute appears to center on whether the license to the patents was validly terminated, as alleged in the complaint (Compl. ¶44). If the license remained in effect, the sales would be authorized. If it was terminated, the subsequent sales would constitute infringement, assuming the products practice the claims.
- Technical Question: Does the complaint provide sufficient evidence that the specific "Colonel Blades knives" sold after the license revocation meet every limitation of Claim 1 of the '892 patent? For example, it raises the question of whether evidence will show the accused knives include "an area at the tip of said knife blade containing a contrasting color."
V. Key Claim Terms for Construction
- The Term: "acute angle" ('892 Patent, Claim 1)
- Context and Importance: This term defines the fundamental geometric relationship between the handle and the blade, which is central to the invention's ergonomic concept. The scope of "acute" (i.e., less than 90 degrees) could be debated in light of the specification's preferred embodiment.
- Intrinsic Evidence for a Broader Interpretation: The term's plain and ordinary meaning would cover any angle less than 90 degrees.
- Intrinsic Evidence for a Narrower Interpretation: The specification discloses that "the angle used in the preferred embodiment is approximately 45 degrees" ('892 Patent, col. 4:45-48). A party could argue that this disclosure limits the scope of "acute angle" to a range near the preferred 45-degree angle.
- The Term: "contrasting color" ('892 Patent, Claim 1)
- Context and Importance: This limitation requires a specific visual feature at the blade's tip intended to function as an "aiming point." Its presence or absence on the accused knives is a clear factual question for infringement. Practitioners may focus on this term because it is a specific, potentially distinguishing feature that the plaintiff must prove is present in the accused products.
- Intrinsic Evidence for a Broader Interpretation: The specification suggests the color serves as a "barrel sight" and can be "bright white or red" ('892 Patent, col. 5:6-16). This supports a construction where any visually distinct color suffices.
- Intrinsic Evidence for a Narrower Interpretation: Dependent Claim 2 further specifies that the contrasting area is comprised of a "luminescent material to provide a sight." ('892 Patent, col. 6:50-52). A defendant could argue that the "contrasting color" in Claim 1 should be interpreted in light of this more specific function, potentially requiring properties beyond simple color difference.
VI. Other Allegations
- Willful Infringement: The complaint alleges that Defendant Lascelles’s infringement was willful (Prayer for Relief, p. 21, ¶f). The basis for this allegation is the defendant's alleged continuation of infringing activities (e.g., selling and offering to sell the knives) after receiving a cease-and-desist letter on February 1, 2019, which explicitly revoked the patent license and demanded a stop to all such activities (Compl. ¶¶ 44-45, 51, 65).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of contract law: was the patent license held by the defendant's company validly revoked as of February 1, 2019? The resolution of this question regarding the enforceability of the license termination may be dispositive of the patent infringement claims.
- A key evidentiary question will be one of proof of infringement: can the plaintiffs demonstrate that the specific knives offered for sale by the defendant after the alleged license revocation meet every limitation of the asserted patent claims? The analysis may focus on elements like the "contrasting color" tip required by Claim 1 of the '892 patent, which is not explicitly detailed in the complaint's infringement allegations.
- For the '923 design patent, the core question is whether the ornamental design of the accused knives is substantially the same as the patented design from the perspective of an ordinary observer. While this appears straightforward if the defendant was selling the original product, it remains a required element of proof for the plaintiff.