2:22-cv-04847
Jes Gear LLC v. Salvitti
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: JES Gear, LLC (Wyoming) and JL Creative Group, LLC d/b/a Warrior Poet Supply Co. (Georgia)
- Defendant: Alfred W. Salvitti (Pennsylvania)
- Plaintiff’s Counsel: Montgomery McCracken Walker & Rhoads LLP; Tewes Law Group LLC
- Case Identification: 2:22-cv-04847, E.D. Pa., 12/06/2022
- Venue Allegations: Venue is based on the defendant's residence within the district and the assertion that a cease-and-desist letter was sent from within the district.
- Core Dispute: Plaintiffs seek a declaratory judgment that their "WPS Fox Folder Knife" does not infringe Defendant's design patent for a "pistol grip knife," and that the patent is invalid.
- Technical Context: The dispute concerns the ornamental design of tactical knives, a market segment where distinct aesthetics can be a significant product differentiator.
- Key Procedural History: The action was precipitated by a cease-and-desist letter sent by Defendant to Plaintiff WPS on October 28, 2022. The complaint also notes that Defendant previously asserted the same patent in the same district in a case that was dismissed with prejudice.
Case Timeline
| Date | Event |
|---|---|
| 2013-12-13 | D'923 Patent Application Filing Date |
| 2014-09-23 | D'923 Patent Issue Date |
| 2019 | Prior lawsuit filed by Defendant asserting the D'923 Patent |
| c. 2021 | Plaintiffs began selling the accused WPS Fox Folder Knife |
| 2022-10-28 | Defendant sends Cease and Desist Letter to Plaintiff WPS |
| 2022-12-06 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D713,923 S - "Pistol Grip Knife"
The Invention Explained
- Problem Addressed: As a design patent, the D’923 Patent does not describe a technical problem but instead protects a new, original, and ornamental design for an article of manufacture (D’923 Patent, Claim).
- The Patented Solution: The patent claims the specific ornamental design for a "pistol grip knife" (D’923 Patent, Claim). The claimed design, depicted across twelve figures, features a continuously curved, ergonomic handle that flows into a fixed blade, a large circular finger hole, and textured grip details (D’923 Patent, Figs. 1-12). The complaint specifically notes that the patent depicts a fixed blade, not a folding blade (Compl. ¶22).
- Technical Importance: The patent protects the unique aesthetic appearance of the knife, which can serve as a source identifier and a basis for consumer appeal in the market for tactical and utility knives (D’923 Patent, Figs. 1-2).
Key Claims at a Glance
- The single claim asserted is for: "The ornamental design for a pistol grip knife, as shown and described." (D’923 Patent, Claim).
- The essential visual elements of the claimed design include:
- A crescent or arc-shaped overall profile.
- An integrated, non-folding, fixed blade that continues the curvature of the handle.
- A prominent, circular finger hole located where the handle transitions to the blade area.
- Specific surface ornamentation on the handle grip.
III. The Accused Instrumentality
Product Identification
- The "WPS Fox Folder Knife" (Compl. ¶1).
Functionality and Market Context
- The accused product is a "high-performance tactical knife" designed for strength and ergonomic handling (Compl. ¶13). A central feature, highlighted in its name and marketing, is that it is a folding knife, allowing it to be carried in a closed position for convenience and legality in certain jurisdictions (Compl. ¶13, ¶15, ¶19). The complaint includes a screenshot from the plaintiff's website showing the WPS Fox Folder Knife in its open position. (Compl. ¶18). A second screenshot on the same page shows the knife in its folded, non-operational state. (Compl. ¶18). Plaintiffs allege they collaborated on its design beginning in 2020 and began selling it in or about 2021 (Compl. ¶13, ¶17).
IV. Analysis of Infringement Allegations
As this is a complaint for declaratory judgment of non-infringement, this section summarizes the Plaintiffs' arguments for why their product does not infringe. The standard for design patent infringement is whether an "ordinary observer," familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented design.
Plaintiffs allege that the accused WPS Fox Folder Knife and the design in the D’923 Patent are "plainly dissimilar" (Compl. ¶31). The core of their non-infringement position rests on the assertion that the patented design is for a fixed-blade knife, whereas the accused product is a folding knife (Compl. ¶22, ¶19). This distinction is alleged to be so significant that an ordinary observer would not be confused between the two products (Compl. ¶29-30). While the complaint shows images of the accused product, it does not provide a direct side-by-side comparison with the patented design's figures or a detailed breakdown of visual dissimilarities beyond the fundamental fixed-versus-folding difference.
- Identified Points of Contention:
- Scope Questions: The primary question is whether the "ordinary observer" test should compare the accused folding knife only in its open, assembled state to the patented fixed-blade design, or if the inherent nature of the product as a folding knife (including its appearance when folded and the visible pivot mechanism when open) creates a per se different overall ornamental impression.
- Visual Questions: Beyond the folding mechanism, what are the specific points of visual similarity and dissimilarity in the handle shape, blade profile, and finger hole placement between the accused product and the patented design? The complaint asserts they are "plainly dissimilar" but does not enumerate the differences for the court.
V. Key Claim Terms for Construction
Claim construction for design patents focuses on the overall visual impression of the drawings rather than the definition of specific words. The claim is understood to be for the design as a whole, depicted in the figures. The complaint does not raise any issues of claim construction. The dispositive analysis will not turn on construing a specific term like "pistol grip knife," but rather on the application of the "ordinary observer" test to the claimed design and the accused product.
VI. Other Allegations
- Willful Infringement: While Plaintiffs do not allege willfulness, the complaint confirms they received a cease-and-desist letter on October 28, 2022, which placed them on actual notice of the D'923 Patent and Defendant's infringement allegations (Compl. ¶10). This fact would be central to any subsequent counterclaim by the Defendant for willful infringement based on Plaintiffs' continued sales after that date.
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be the application of the "ordinary observer" test: will the undisputed functional difference between a fixed-blade knife (patented) and a folding knife (accused) be sufficient to create a different overall ornamental impression, thereby precluding a finding of infringement?
- A key invalidity question is raised by the complaint's second claim for relief (Compl. ¶41-45). Although the complaint does not specify the grounds, the case may require an analysis of whether the patented design was obvious under 35 U.S.C. § 103 or anticipated under § 102 in light of prior art knives at the time of invention.
- A significant procedural question is the effect of prior litigation: the complaint notes that Defendant’s infringement claims in a prior case involving the D'923 Patent were "dismissed with prejudice" (Compl. ¶27). The court will need to determine what, if any, preclusive effect that prior dismissal has on the current dispute.