Benshot LLC v. K 2 Industries Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: BenShot, LLC (Wisconsin)
  • Defendant: K-2 Industries, Inc. (New York), d/b/a Pavilion Gift Company
  • Plaintiff’s Counsel: Theorem Law, LLC
• Case Identification: 1:25-cv-01168, E.D. Wis., 08/06/2025
• Venue Allegations: Venue is alleged to be proper based on Defendant's sales and business activities within the Eastern District of Wisconsin, where a substantial part of the events giving rise to the claim allegedly occurred.
• Core Dispute: Plaintiff alleges that Defendant’s novelty drinking glasses, which feature a golf ball embedded in the side, infringe its design patent for an embedded sphere device.
• Technical Context: The case concerns the ornamental design of novelty drinkware, a consumer product category where unique visual appearance is a key market differentiator.
• Key Procedural History: The complaint notes that Plaintiff sent a cease-and-desist letter to Defendant regarding the patent-in-suit approximately two months prior to filing the lawsuit.

Case Timeline

Date	Event
2017-01-01 (approx.)	Plaintiff alleges it invented and began selling its design.
2018-02-19	D859,082 Patent Priority Date (Application Filing).
2019-09-10	D859082 Patent Issued.
2025-06-18	Date of photographs showing accused product offered for sale.
2025-06-19	Cease-and-desist letter sent to Defendant.
2025-08-06	Complaint Filing Date.

II. Technology and Patent(s)-in-Suit Analysis

U.S. Design Patent No. D859,082 - "Sphere Device"

• Patent Identification: U.S. Design Patent No. D859,082, titled "Sphere Device", issued on September 10, 2019 (the ’082 Patent). (Compl. ¶11; D’082 Patent).

The Invention Explained

• Problem Addressed: Design patents protect ornamental appearance rather than solving a functional problem. The patent aims to create a novel and distinctive visual appearance for an article of manufacture. (D’082 Patent, Claim).
• The Patented Solution: The ’082 Patent claims the ornamental design for a "sphere device" as depicted in its figures. The design consists of a sphere with a dimpled surface, resembling a golf ball, that appears to be partially embedded in a transparent wall. A key aspect of the claimed design is the visual effect of the wall material being displaced around the sphere's point of entry. (D’082 Patent, Figs. 1-3). The patent's description explicitly states that the drinking glass shown in broken lines is for illustrative purposes only and "forms no part of the claimed design." (D’082 Patent, Description).
• Technical Importance: The complaint alleges that the design became "extremely popular" after its introduction, suggesting its aesthetic novelty was a significant commercial driver. (Compl. ¶7).

Key Claims at a Glance

• The patent asserts a single claim for: "The ornamental design for a sphere device, as shown and described." (D’082 Patent, Claim).
• The visual features protected by this claim, as shown in the solid lines of the patent figures, include:
  • A sphere with a textured, dimpled surface pattern.
  • The partial embedding of the sphere within a surface.
  • The appearance of the surface material being displaced or fractured around the embedded sphere.

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are a line of "15 oz Golf Ball glasses" sold under various names, including "Work," "Green," "Life," "Full Swing," "Out Golfing," "Dad Par," "Grandpa Par," "Queen of the Green," "Best Friend," and "Legend." (Compl. ¶1, ¶14).

Functionality and Market Context

The accused products are drinking glasses, which the complaint describes as pint glasses, each featuring an object representing a golf ball embedded in the side wall. (Compl. ¶16, ¶18). The complaint alleges these products are sold through Defendant's website, paviliongift.com, and in third-party retail stores such as Hallmark. (Compl. ¶9, ¶38-39). A photograph of an accused product on a store shelf in Appleton, Wisconsin, is provided as evidence of the offer for sale. (Compl. ¶39, p. 15).

IV. Analysis of Infringement Allegations

The infringement test for a design patent is whether an "ordinary observer," giving such attention as a purchaser usually gives, would be deceived into purchasing the accused product believing it to be the patented design. The complaint's allegations are structured around this test. The side-by-side comparison of the patent's FIG. 1 and the accused "Work 15 oz Golf Ball Glass" is intended to show visual similarity. (Compl. ¶15, p. 5).

D'082 Patent Infringement Allegations

Key Visual Feature (from D'082 Claim)	Alleged Infringing Feature	Complaint Citation	Patent Citation
The ornamental design for a sphere device, as shown and described.	The complaint alleges that the "overall design" of the accused glasses is "substantially similar" to the patented design in the view of an ordinary observer or purchaser.	¶16, ¶18, ¶20, ¶22, ¶24, ¶26, ¶28, ¶30, ¶32, ¶34	Claim; Figs. 1-8
A sphere with a dimpled surface pattern partially embedded in a transparent wall.	Each accused product is alleged to have "an object representing a golf ball embedded in the side of a pint glass," which the complaint's visual evidence shows has a dimpled surface.	¶16, ¶18, ¶20	Figs. 1, 2, 7
The visual appearance of the transparent wall material displaced around the sphere.	The complaint provides numerous side-by-side images comparing the patented design with various accused products, which are intended to demonstrate similarity in the overall impression, including the embedding effect.	¶15 (p.5), ¶17 (p.6)	Figs. 1, 3

Identified Points of Contention

• Scope Questions: The central issue will be the application of the ordinary observer test. A court will need to determine whether an ordinary observer, taking into account the prior art, would find the accused designs substantially the same as the claimed design.
• Technical/Visual Questions: A likely point of dispute will be the effect of features present on the accused products that are absent from the patented design. The complaint's own exhibits show that many accused glasses feature prominent text (e.g., "A BAD DAY AT GOLF...") and some use colored golf balls, whereas the patented design as drawn is uncolored and unadorned with text. (Compl. ¶15, p. 5; ¶29, p. 12). The legal question will be whether these differences are sufficient to alter the overall visual impression to a degree that avoids infringement.

V. Key Claim Terms for Construction

In design patent cases, construction focuses on the scope of the claimed design as a whole, rather than on discrete text-based terms. The primary "term" for construction is the visual appearance defined by the patent's drawings.

• The "Term": The scope of the claimed design as defined by the solid and broken lines in the patent figures.
• Context and Importance: This interpretation is critical because it defines what is protected. The patent disclaims the glass itself (shown in broken lines), protecting only the embedded sphere and its interaction with the glass wall. Practitioners may focus on this distinction, as Defendant will likely argue that the overall appearance of its integrated product (glass + sphere + text/color) is different from the more narrowly defined claimed design.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party could argue that the core, novel aesthetic of the design—the impression of a dimpled sphere lodged in glass—is the dominant visual feature. From this perspective, additions like text or color may be seen as minor variations that do not change the fundamental character of the design an ordinary observer perceives.
  • Evidence for a Narrower Interpretation: The patent specification provides explicit limiting language: "The broken lines in the drawing views are included for the purpose of illustrating unclaimed environment only, and forms no part of the claimed design." (D’082 Patent, Description). A party could argue this strictly limits the protected design to the sphere and the immediate glass deformation, and that an ordinary observer's comparison must be made against an accused product viewed as a whole, including its unclaimed glass shape and added surface ornamentation like text, making the overall impressions different.

VI. Other Allegations

• Indirect Infringement: The complaint alleges active inducement of infringement under 35 U.S.C. § 271(b). (Compl. ¶45). The factual support for this allegation is that Defendant sells products that allegedly embody the invention to others (e.g., retailers and consumers), thereby inducing their infringement. (Compl. ¶38, ¶45).
• Willful Infringement: Willfulness is alleged based on Defendant’s purported knowledge of the ’082 Patent. (Compl. ¶46). The complaint alleges Defendant had knowledge at least as of receiving a cease-and-desist letter on June 19, 2025, and further alleges, on information and belief, that Defendant was aware of the patent even prior to that date. (Compl. ¶35, ¶37).

VII. Analyst’s Conclusion: Key Questions for the Case

• A central issue will be one of visual comparison: Would an ordinary observer, viewing the accused drinking glasses as a whole, be deceived into believing they are the same as the patented design, particularly when considering features on the accused products that are absent from the patent, such as text and color?
• The case will also turn on the effective scope of protection: How will the court treat the explicitly unclaimed portions of the design (the glass shown in broken lines) when applying the infringement test? The outcome may depend on whether the analysis focuses narrowly on the claimed "sphere device" element or more broadly on the overall visual impression of the accused product as an integrated article of commerce.