DCT
2:22-cv-00825
Olson Kundig Inc v. 12th Avenue Iron Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Olson Kundig, Inc. (Washington)
- Defendant: 12th Avenue Iron, Inc. (Washington)
- Plaintiff’s Counsel: Foster Garvey PC
- Case Identification: 2:22-cv-00825, W.D. Wash., 06/13/2022
- Venue Allegations: Venue is alleged to be proper as Defendant resides in the judicial district, the tortious acts occurred in the district, and a purported agreement between the parties contains a forum selection clause for the district.
- Core Dispute: Plaintiff, an architectural firm, alleges that its former manufacturing partner, the Defendant, is infringing four design patents covering architectural hardware following the termination of their business relationship.
- Technical Context: The dispute centers on the ornamental designs of high-end architectural hardware, including hooks and door pulls, marketed as part of a designer collection.
- Key Procedural History: The complaint alleges that the parties operated for approximately a decade under the terms of an unsigned Product Development, Manufacturing and Marketing Agreement. Plaintiff alleges it terminated this de facto agreement in April 2022 due to breach (including non-payment of royalties) and that Defendant’s continued sale of the products now constitutes patent infringement. The existence and termination of this prior relationship are central to the claims of infringement and willfulness.
Case Timeline
| Date | Event |
|---|---|
| 2009-12-01 | Business relationship discussions initiated between parties (approx.) |
| 2010-06-01 | Product Development Agreement drafted (approx.) |
| 2012-01-01 | "Tom Kundig Collection" launched (approx.) |
| 2016-05-13 | Priority Date for ’D352, ’D197, ’D933, and ’D422 Patents |
| 2017-07-18 | U.S. Design Patent No. D792,197 issues |
| 2017-10-17 | U.S. Design Patent No. D799,933 issues |
| 2018-05-22 | U.S. Design Patent No. D818,352 issues |
| 2018-09-04 | U.S. Design Patent No. D827,422 issues |
| 2020-01-01 | Defendant allegedly stops paying royalties (approx.) |
| 2022-04-28 | Plaintiff delivers notice of termination of the Agreement |
| 2022-06-13 | Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D818,352 - "Hook"
- Patent Identification: U.S. Design Patent No. D818,352, "Hook," issued May 22, 2018.
The Invention Explained
- Problem Addressed: Design patents protect the ornamental, non-functional appearance of an article of manufacture. The patent does not describe a technical problem but instead provides a novel aesthetic design for a functional object—a hook (D’352 Patent, Title).
- The Patented Solution: The patent claims the specific ornamental design of a hook as depicted in its seven figures (D’352 Patent, Claim, Figs. 1-7). The design features a cylindrical mounting piece from which a bent, tubular hook element extends at an angle, creating a distinct visual appearance. The claim itself simply refers to the design "as shown and described" in the patent's drawings (D'352 Patent, Claim).
- Technical Importance: The design is part of a broader collection of architectural hardware intended to provide "intimate, human-scaled experiences within architecture" (Compl. ¶27).
Key Claims at a Glance
- The patent asserts a single claim for "The ornamental design for a hook, as shown and described" (D’352 Patent, Claim).
- As a design patent, the claim consists of a single element: the overall visual appearance of the hook as illustrated in the patent’s figures.
U.S. Design Patent No. D792,197 - "Half-Pipe Coat Hook"
- Patent Identification: U.S. Design Patent No. D792,197, "Half-Pipe Coat Hook," issued July 18, 2017.
The Invention Explained
- Problem Addressed: The patent presents a new ornamental design for a coat hook, distinguishing it aesthetically from prior art hooks (D’197 Patent, Title).
- The Patented Solution: The claimed design consists of a flat, vertical mounting plate supporting two parallel, U-shaped "half-pipe" channels that serve as the hooks (D’197 Patent, Figs. 1-7). The core of the invention is this specific combination of shapes and their arrangement, which creates the overall ornamental effect claimed in the patent (D'197 Patent, Claim).
- Technical Importance: This design is alleged to be one of the original 25 pieces in the "Tom Kundig Collection," a line of hardware and home furnishings (Compl. ¶¶27, 29).
Key Claims at a Glance
- The patent asserts a single claim for "The ornamental design for a half-pipe coat hook, as shown and described" (D’197 Patent, Claim).
- The claim covers the holistic visual appearance of the coat hook as shown in the patent's drawings.
U.S. Design Patent No. D799,933 - "No-Peek Latch"
- Patent Identification: U.S. Design Patent No. D799,933, "No-Peek Latch," issued October 17, 2017.
- Technology Synopsis: The patent protects the ornamental design for a door latch. The design features an elongated, rectangular body with a recessed pull area and a visible latch mechanism housing at the top (D’933 Patent, Figs. 1-7).
- Asserted Claims: The single claim for the ornamental design "as shown and described" (D’933 Patent, Claim).
- Accused Features: The complaint accuses the "No Peek Privacy Sliding Door Pull" of infringement, alleging it has a similar rectangular shape with notches in similar locations (Compl. ¶¶113, 116). The complaint includes a visual comparison of the patent figure and photos of the accused product (Compl. ¶114).
U.S. Design Patent No. D827,422 - "Hook"
- Patent Identification: U.S. Design Patent No. D827,422, "Hook," issued September 4, 2018.
- Technology Synopsis: The patent protects the ornamental design for a hook. The design consists of a T-shaped configuration, with a central perpendicular mounting element and a horizontal cylindrical bar featuring slightly offset end caps (D’422 Patent, Figs. 1-7).
- Asserted Claims: The single claim for the ornamental design "as shown and described" (D’422 Patent, Claim).
- Accused Features: The complaint accuses the "Slip Dbl Hook" of infringement. It alleges the product has a cylindrical shaped back piece, a cylindrical cross piece substantially perpendicular to the back piece, and slightly offset end pieces, creating a similar appearance to the patented design (Compl. ¶¶126, 128-130). A visual comparison is provided in the complaint (Compl. ¶127).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are specific products within the "Tom Kundig Collection" sold by Defendant 12th Avenue Iron: the "Notch Hook," "Half Pipe Dbl Hook," "No Peek Privacy Sliding Door Pull," and "Slip Dbl Hook" (Compl. ¶¶ 84, 99, 113, 126).
Functionality and Market Context
- The accused products are functional architectural hardware (hooks and a door pull) designed by Tom Kundig, a principal of Plaintiff (Compl. ¶32). The complaint alleges that Defendant’s website explicitly markets these products as "The Kundig-designed collection" (Compl. ¶33). Plaintiff asserts that it invested substantial time and effort in designing the collection, which has expanded from 25 pieces to over 125 products since its launch in 2012 (Compl. ¶¶29-31).
IV. Analysis of Infringement Allegations
D818,352 Infringement Allegations
The complaint provides a side-by-side visual comparison of the patented design and a photograph of the accused "Notch Hook" product to support its allegations of similarity (Compl. ¶85).
| Claim Element (from Single Design Claim) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a hook, as shown and described. | The accused "Notch Hook" product allegedly has a similar overall shape, a cylindrical back piece, and a bent cylindrical cross piece perpendicular to the back piece, such that an ordinary observer would find the designs the same. | ¶¶85-90 | Figs. 1-7 |
D792,197 Infringement Allegations
To illustrate the alleged similarity, the complaint includes a figure from the patent alongside a photograph of the accused "Half Pipe Dbl Hook" (Compl. ¶100).
| Claim Element (from Single Design Claim) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a half-pipe coat hook, as shown and described. | The accused "Half Pipe Dbl Hook" product allegedly has a similar overall shape, with a substantially flat middle piece and half-cylinder pieces on either side, such that an ordinary observer would find the designs the same. | ¶¶100-104 | Figs. 1-7 |
- Identified Points of Contention:
- Scope Questions: For all asserted design patents, the central question is whether the visual appearance of the accused product is "substantially the same" as the claimed design in the eyes of an "ordinary observer." The complaint asserts this standard is met (Compl. ¶¶ 90, 104, 117, 131). The dispute will focus on the differences, if any, between the patented figures and the physical products, and whether those differences are significant enough to avoid infringement.
- Technical Questions: A key evidentiary question will be the role of prior art. The "ordinary observer" test requires that the comparison be made in the context of the prior art. The court will need to determine what the relevant prior art is for designer architectural hardware and how that art informs the comparison between the patented designs and the accused products.
V. Key Claim Terms for Construction
In design patent litigation, the claim is understood to be for the ornamental design as a whole, depicted in the drawings. Formal construction of specific text-based terms is rare. The central issue is not the definition of a word but the overall visual impression of the design.
- The Term: "The ornamental design for a [hook / half-pipe coat hook / no-peek latch], as shown and described."
- Context and Importance: The scope of the patent is defined by the visual content of the drawings. The dispute will not center on construing any particular word in the claim, but rather on comparing the overall visual appearance of the accused products to the totality of the design shown in the patent figures. Practitioners will focus on arguing the degree of visual similarity or difference from the perspective of an ordinary observer.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue that the design's core concept or overall visual gestalt is what is protected, and that minor variations in proportion or detail in an accused product do not escape infringement. The patent title (e.g., "Hook") provides general context for the article of manufacture.
- Evidence for a Narrower Interpretation: A party could argue that the claim is limited to the precise shapes, proportions, and surface ornamentation depicted in the patent’s figures (e.g., the exact angle of the bend in the D’352 patent or the specific curvature of the hooks in the D’197 patent). Any deviation in the accused product could be argued as a basis for non-infringement.
VI. Other Allegations
- Willful Infringement: The complaint alleges that Defendant’s infringement is willful. This allegation is supported by claims of both pre- and post-suit knowledge. The complaint asserts that Defendant had "actual knowledge" of Plaintiff's patent rights, stemming from the parties' decade-long collaborative relationship where Defendant allegedly manufactured the products based on Plaintiff's designs (Compl. ¶¶ 82, 97, 111, 124). Willfulness is further supported by the allegation that Defendant continued to "make, use, sell, [and] offer to sell" the accused products even after Plaintiff terminated the purported license agreement on April 28, 2022 (Compl. ¶¶ 83-84, 98-99, 112-113, 125-126).
VII. Analyst’s Conclusion: Key Questions for the Case
- A threshold issue is contractual: did the parties' extended course of dealing create an enforceable implied-in-fact contract based on the terms of the unsigned 2010 Agreement? If so, was that contract and its associated patent license validly terminated by Plaintiff, thereby making Defendant's subsequent sales unauthorized?
- The primary patent law question is one of visual similarity: from the perspective of an ordinary observer familiar with the prior art in architectural hardware, are the ornamental designs of the accused products substantially the same as the designs claimed in the four patents-in-suit?
- A key question for damages will be culpability: given the parties' prior business relationship and Defendant's alleged knowledge of the designs and patents, does its continued sale of the accused products after receiving a notice of termination constitute willful infringement that would justify enhanced damages?