DCT
2:22-cv-00546
Hard Metal Advantage LLC v. Kennametal Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Hard Metal Advantage, LLC (Louisiana)
- Defendant: Kennametal, Inc. (Pennsylvania)
- Plaintiff’s Counsel: Meyer, Unkovic & Scott LLP; Babineaux, Poché, Anthony & Slavich, L.L.C.
- Case Identification: 2:22-cv-00546, W.D. Pa., 08/02/2022
- Venue Allegations: Venue is alleged to be proper in the Western District of Pennsylvania because Defendant has a regular and established place of business in the district and has allegedly committed acts of infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s carbide chips for industrial tools infringe its design patent covering the ornamental appearance of a "Carbide Chip."
- Technical Context: The technology involves tungsten carbide inserts, which are small, durable components used as cutting elements on industrial equipment such as mills and downhole drilling tools.
- Key Procedural History: The complaint notes that the original 2011 patent assignment document could not be located, attributing the loss to "multiple hurricanes and catastrophic flooding events." Plaintiff has executed and attached a recent "Confirmatory Patent and Invention Assignment" to document its ownership.
Case Timeline
| Date | Event |
|---|---|
| 2010-02-04 | D'987 Patent Application Filed (Priority Date) |
| 2011-12-06 | D'987 Patent Issued |
| 2011-12-06 | D'987 Patent Allegedly Assigned to Plaintiff |
| 2022-08-02 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D649,987 - "Carbide Chip", issued December 6, 2011
The Invention Explained
- Problem Addressed: Design patents do not typically articulate a technical problem in the manner of utility patents. Instead, they protect novel, non-obvious, and ornamental product designs. The implicit goal is to create a new and distinctive appearance for an industrial component, a "tungsten carbide chip suitable for use on a variety of mills and other tools" (Compl. ¶10).
- The Patented Solution: The patent claims the specific ornamental design for a carbide chip as depicted in its figures. The design consists of a hexagonal prismatic body with flat top and bottom faces, featuring prominent beveled (or chamfered) edges around the perimeters of both the top and bottom hexagonal surfaces (D'987 Patent, Figs. 1-6). The overall visual impression is one of a clean, symmetrical, and geometrically distinct shape for the chip (D'987 Patent, Description).
- Technical Importance: The complaint alleges that the product's appearance has become distinctive in the marketplace and serves to indicate its origin, suggesting that the aesthetic design has commercial and branding significance beyond its basic utility (Compl. ¶30).
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a carbide chip, as shown and described" (D'987 Patent, Claim).
- The core ornamental features comprising the claimed design as a whole include:
- A generally hexagonal prismatic body.
- A flat hexagonal top surface and a parallel flat hexagonal bottom surface.
- Six substantially rectangular side faces.
- A continuous beveled edge inset from the periphery of the top hexagonal surface.
- A continuous beveled edge inset from the periphery of the bottom hexagonal surface.
III. The Accused Instrumentality
Product Identification
The accused products are "carbide chips" sold by Defendant Kennametal, including what the complaint describes as "six-sided hexagonal carbide chips and multi-sided cutting chips" (Compl. ¶7, ¶15).
Functionality and Market Context
The complaint alleges these chips are sold for use in industrial applications and directly compete with Plaintiff's products (Compl. ¶7, ¶34). The complaint provides photographs of an allegedly infringing carbide chip as Exhibit C (Compl. ¶15). The photograph in Exhibit C depicts a small, metallic, hexagonal-shaped object with beveled top and bottom edges, consistent with the description of an industrial cutting insert (Compl., Ex. C).
IV. Analysis of Infringement Allegations
The standard for infringement of a design patent is whether an "ordinary observer," familiar with the prior art designs, would be deceived into believing the accused design is the same as the patented design. The analysis relies on a comparison of the accused product to the patent's drawings.
D'987 Patent Infringement Allegations
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design as a whole | Defendant's carbide chips are alleged to embody the patented design, thereby infringing the '987 Patent. | ¶15 | D'987 Patent, Figs. 1-6 |
| A generally hexagonal prismatic body with beveled top and bottom edges | The accused product, depicted in photographs, is a six-sided, hexagonal chip with beveled edges on its primary faces. | ¶15; Ex. C | D'987 Patent, Figs. 1, 3, 4 |
Identified Points of Contention
- Technical Question (Functionality): A central dispute may concern whether the allegedly copied design features are primarily ornamental or functional. The hexagonal shape and beveled edges could be argued by the defense to be dictated by functional constraints, such as fitting into tooling, cutting performance, or durability. The patent itself shows the chips arrayed on a mill head, which could be used to support an argument that the shape serves a functional purpose (D'987 Patent, Fig. 7).
- Scope Question (Overall Appearance): The infringement analysis will turn on a holistic comparison of the designs' overall visual impressions. The key question is whether the Kennametal chip is "substantially the same" as the patented design. This comparison will focus on the specific proportions, angles, and aesthetic details of the shape and bevels shown in the patent's figures versus those of the accused product.
V. Key Claim Terms for Construction
In design patent cases, the "claim" is the design as a whole, as depicted in the drawings. Formal claim construction focuses less on specific words and more on the scope of the visual design itself, particularly what is ornamental versus functional.
- The Term: "ornamental design"
- Context and Importance: This concept is foundational to the entire case. The scope of the patent's protection covers only the ornamental aspects of the design, not those dictated by function. Practitioners may focus on this issue because if the key visual features of the patented design are deemed functional, they are filtered out of the infringement analysis, which could eliminate the basis for the claim.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation (More Features are Ornamental): The issuance of the design patent by the USPTO creates a presumption of validity, suggesting an examiner considered the design to be ornamental. The clean, symmetrical geometry and specific beveled edges shown in the drawings may be argued to represent a particular aesthetic choice not strictly required for the chip's function (D'987 Patent, Figs. 1-6).
- Evidence for a Narrower Interpretation (More Features are Functional): The patent describes the article as a "carbide chip used on down-hole tools including, without limitation, mills" and includes a figure showing the chips mounted on a tool (D'987 Patent, Description; Fig. 7). This industrial context suggests that features like the hexagonal shape (for tight packing or tool interface) and beveled edges (for cutting or stress reduction) are driven by function and should not be part of the protected "ornamental design."
VI. Other Allegations
- Indirect Infringement: The complaint does not plead facts supporting a claim for indirect infringement of the '987 Patent, focusing instead on direct infringement by Defendant's sales (Compl. ¶15).
- Willful Infringement: The complaint alleges that Defendant's infringement is willful and deliberate (Compl. ¶17). This allegation is based on the assertion "on information and belief" that Defendant has "actual knowledge of the '987 Patent," without providing specific facts regarding the timing or circumstances of that alleged knowledge (Compl. ¶16).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of functionality versus ornamentality: To what extent are the visual features of the patented design, particularly its hexagonal shape and beveled edges, dictated by the functional requirements of an industrial carbide chip, as opposed to being arbitrary, ornamental choices?
- The central infringement question will be a holistic visual test: After filtering out any functional elements, would an ordinary observer find the overall visual appearance of Kennametal's accused carbide chip to be substantially the same as the ornamental design claimed in the '987 Patent?
- A potential threshold issue may concern chain of title: Will the "Confirmatory Patent and Invention Assignment" be sufficient to establish that Plaintiff has standing to sue for infringement, given the stated loss of the original assignment document?