DCT
3:24-cv-00261
KIMBERBELL Kids LLC v. RNK LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Kimberbell Kids L.L.C. dba Kimberbell (Utah)
- Defendant: RNK, LLC dba RNK Distributing & Quilter's Select (Tennessee); Cliff Wallach (New York)
- Plaintiff’s Counsel: Luedeka Neely P.C.
- Case Identification: 3:24-cv-00261, E.D. Tenn., 06/11/2024
- Venue Allegations: Venue is alleged to be proper in the Eastern District of Tennessee because the defendants reside and/or conduct business in the district, and a substantial portion of the alleged infringing events occurred there.
- Core Dispute: Plaintiff alleges that Defendant’s quilt rulers infringe two of its design patents covering the ornamental appearance of a quilt ruler.
- Technical Context: The dispute is in the field of quilting and embroidery tools, specifically concerning the ornamental design of rulers used for positioning and cutting fabric quilt blocks.
- Key Procedural History: The complaint alleges that Plaintiff sent a cease and desist letter to Defendant RNK on April 19, 2024, providing notice of the alleged infringement prior to filing the lawsuit.
Case Timeline
| Date | Event |
|---|---|
| 2018-10-08 | Priority Date for D'874,953 and D'891,950 Patents |
| 2020-02-11 | U.S. Patent No. D874,953 Issues |
| 2020-08-04 | U.S. Patent No. D891,950 Issues |
| 2024-04-19 | Plaintiff sends pre-suit notice of infringement to Defendant |
| 2024-06-11 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D874,953
- Patent Identification: U.S. Design Patent No. D874,953, titled "Quilt Ruler," issued February 11, 2020.
The Invention Explained
- Problem Addressed: The complaint asserts that Plaintiff's patented designs are incorporated into its "Orange Pop Ruler" products, which provide a "system for visually centering quilt blocks in embroidery projects" (Compl. ¶11).
- The Patented Solution: The patent claims the ornamental design for a quilt ruler, not its functional aspects (D'953 Patent, Claim). The claimed design, depicted in solid lines in the patent's figures, consists of a thin, planar, square frame with a large central aperture. The defining visual characteristics include two perpendicular, terminally rounded cutouts located at each of the four interior corners of the central aperture (D'953 Patent, Fig. 2).
- Technical Importance: The complaint alleges the patented designs are incorporated into Kimberbell's "unique embroidery tool products" (Compl. ¶¶11, 15).
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a quilt ruler, as shown and described" (D'953 Patent, Claim).
- The essential ornamental elements shown in the patent figures include:
- The overall configuration of a thin, square frame with a large central opening.
- A specific cutout feature at the midpoint of each of the four outer sides.
- A pair of perpendicular, terminally-rounded cutouts extending from each of the four interior corners.
U.S. Design Patent No. D891,950
- Patent Identification: U.S. Design Patent No. D891,950, titled "Quilt Ruler," issued August 4, 2020.
The Invention Explained
- Problem Addressed: As with the '953 Patent, the design is associated with a system for visually centering quilt blocks (Compl. ¶11).
- The Patented Solution: The '950 Patent, a divisional of the application that led to the '953 Patent, also claims the ornamental design for a quilt ruler (D'950 Patent, (62), Claim). The claimed design shown in the figures appears substantially the same as the '953 Patent's design, particularly regarding the thin square frame and the distinctive interior corner cutouts (D'950 Patent, Fig. 3). The figures in this patent depict the claimed ruler in an environment of nesting with other rulers, which are shown in broken lines and do not form part of the claimed design (D'950 Patent, DESCRIPTION).
- Technical Importance: The complaint alleges this design is also incorporated into Plaintiff's unique products (Compl. ¶¶11, 15).
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a quilt ruler, as shown and described" (D'950 Patent, Claim).
- The essential ornamental elements appear to be the same as those in the '953 Patent, including the overall square frame shape and the specific cutouts at the interior corners.
III. The Accused Instrumentality
Product Identification
- The accused products are quilt rulers offered in 8.5" and 7.5" versions under the names "Quilter's Select," "RNK Distributing," and/or "Square-It" (Compl. ¶18).
Functionality and Market Context
- The complaint alleges the accused products are quilt rulers that have "thin, planar, and square/rectangular frames with square/rectangular apertures on the insides" (Compl. ¶21). The complaint includes photographs of the accused "QS/RNK 8.5"" and "QS/RNK 7.5"" rulers (Compl. ¶19). Crucially, the complaint alleges these rulers possess "two perpendicular and terminally rounded cutouts at each corner," mirroring a key feature of the patented designs (Compl. ¶21).
- Plaintiff alleges that Defendant RNK is a "direct competitor" that sells to the same customers through similar marketing channels and that the parties have exhibited at the same industry trade shows (Compl. ¶¶16-17).
IV. Analysis of Infringement Allegations
The complaint alleges that the accused products are "identical and/or so substantially similar" to the patented designs as to deceive an ordinary observer (Compl. ¶¶27, 35). The infringement theory relies on a direct visual comparison. The complaint provides a visual aid comparing the accused products directly to a figure from the '953 Patent (Compl. ¶21).
D'874,953 Infringement Allegations
| Key Ornamental Feature (from the '953 Patent) | Alleged Infringing Feature (on Accused Products) | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design of a thin, planar, square frame with a large central aperture. | The accused products are described and depicted as thin, square rulers with a central aperture. | ¶¶19, 21 | D'953 Patent, Fig. 2 |
| Two perpendicular and terminally rounded cutouts at each of the four interior corners. | The accused products are alleged to have "two perpendicular and terminally rounded cutouts at each corner," a feature shown in the complaint's photographic evidence. | ¶21 | D'953 Patent, Fig. 2 |
D'891,950 Infringement Allegations
The infringement allegations for the '950 Patent are substantively identical to those for the '953 Patent, asserting that the accused products' designs are substantially the same as the ornamental design claimed in the '950 Patent (Compl. ¶34).
| Key Ornamental Feature (from the '950 Patent) | Alleged Infringing Feature (on Accused Products) | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design of a thin, planar, square frame with a large central aperture. | The accused products are described and depicted as thin, square rulers with a central aperture. | ¶¶19, 21, 34 | D'950 Patent, Fig. 3 |
| Two perpendicular and terminally rounded cutouts at each of the four interior corners. | The accused products are alleged to have "two perpendicular and terminally rounded cutouts at each corner," a feature shown in the complaint's photographic evidence. | ¶¶21, 34 | D'950 Patent, Fig. 3 |
- Identified Points of Contention:
- Scope Questions: The primary legal question will be whether an "ordinary observer," familiar with any relevant prior art, would be deceived into purchasing the accused ruler believing it to be the patented design. The court will assess the overall visual impression of the designs, not just a side-by-side comparison of individual features.
- Technical Questions: A potential issue for the court is whether the allegedly infringing features, particularly the corner cutouts, are primarily functional rather than ornamental. If a design feature is dictated by its function, it is not protectable by a design patent. The complaint's side-by-side visual comparison (Compl. ¶21) invites a direct comparison, and any subtle differences in proportion, curvature, or other details between the patented designs and the accused products may become focal points of the dispute.
V. Key Claim Terms for Construction
In design patent cases, the "claim" is understood to be the design itself as depicted in the drawings, and formal claim construction of specific terms is uncommon. The analysis focuses on the overall visual appearance. However, the interpretation of the scope of the claimed design as a whole will be critical.
- The "Term": The overall ornamental design for a "quilt ruler" as shown in the patent figures.
- Context and Importance: The entire infringement analysis depends on the scope of the claimed design and the degree of similarity an accused product must have to be considered infringing. Practitioners may focus on this because the outcome will depend on whether the court views the design holistically and at a high level of generality or focuses on the precise details and proportions shown in the drawings.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent's claim is to the overall "ornamental design ... as shown and described" (D'953 Patent, Claim). Plaintiff may argue that the key protectable elements are the novel overall look and the distinctive corner cutouts, and that minor variations in non-essential elements do not alter the general visual impression that deceives an ordinary observer. The direct visual comparison in the complaint supports this by focusing on the striking similarities (Compl. ¶21).
- Evidence for a Narrower Interpretation: A defendant may argue that the scope of protection is limited to the exact design shown in the solid lines of the patent figures, including the specific proportions and curvatures. The patent's use of broken lines to disclaim certain environmental subject matter (e.g., '953 Patent, Figs. 7-13) reinforces that the claim is precisely limited to what is shown in solid lines, suggesting that any deviation in an accused product could be sufficient to avoid infringement.
VI. Other Allegations
- Indirect Infringement: The complaint does not contain separate counts for indirect infringement. However, it alleges that Defendant Cliff Wallach, as an officer of RNK, "specifically directed the design and distribution" of the accused products, which could form a basis for alleging individual liability (Compl. ¶18).
- Willful Infringement: The complaint alleges that Defendants had knowledge of the patents at least as of April 19, 2024, due to a notice letter sent by Plaintiff (Compl. ¶23). The allegation that Defendants "continue and/or continued to sell the Accused Products" after this date forms the basis for the willfulness claims (Compl. ¶¶24, 31, 39).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual perception: Would an ordinary observer, viewing the accused rulers and the patented designs in the context of the overall market for quilting tools, be deceived into thinking the designs are the same? The case will likely turn on the court's holistic comparison of the products' overall appearance.
- The case may raise a question of functionality versus ornamentation: A key factual dispute could be whether the distinctive corner cutouts—a primary point of alleged similarity—are dictated by functional needs for quilt-making, which would render them unprotectable by design patent, or if they are primarily ornamental.
- A central question for damages will be one of willfulness: Does the evidence show that Defendants' continued sales of the accused rulers after receiving the April 19, 2024 notice letter rose to the level of egregious conduct required to support a finding of willful infringement and potential enhancement of damages?