3:23-cv-00414
WB Mfg LLC v. Alumni Classroom Furniture Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: WB Mfg LLC (Wisconsin)
- Defendant: Alumni Classroom Furniture Inc (Canada)
- Plaintiff’s Counsel: Dewitt LLP
- Case Identification: 3:23-cv-00414, W.D. Wis., 09/29/2023
- Venue Allegations: Venue is asserted on the basis that the defendant is a foreign corporation not resident in the United States and may therefore be sued in any judicial district.
- Core Dispute: Plaintiff alleges that Defendant’s "Scallop Desks" infringe a design patent for an ornamental desk design.
- Technical Context: The dispute is in the field of commercial furniture, specifically modular desks designed for collaborative arrangements in settings like classrooms.
- Key Procedural History: The patent-in-suit was assigned to Plaintiff WB Manufacturing from the original applicant, Benchmark Components, Inc. Plaintiff alleges it provided Defendant with pre-suit notice of infringement via a cease-and-desist letter dated January 21, 2021.
Case Timeline
| Date | Event |
|---|---|
| 2016-01-19 | '487 Patent Priority Date |
| 2017-03-07 | U.S. Design Patent No. D780,487 Issued |
| 2021-01-21 | Plaintiff sent cease-and-desist letter to Defendant |
| 2023-09-29 | First Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D780,487 - “Desk”
The Invention Explained
- Problem Addressed: While design patents do not formally articulate a technical problem, the patent’s figures illustrate a solution to the challenge of creating individual desks that can be flexibly arranged into larger, collaborative group tables for multi-person use ('487 Patent, Figs. 5-6).
- The Patented Solution: The patent claims the unique ornamental design for a desk, the principal feature of which is the specific, non-geometric, and asymmetrically curved shape of the desktop surface ('487 Patent, Fig. 1). The design’s shape allows individual desk units to nest together to form various larger configurations ('487 Patent, Figs. 5-6). The patent explicitly disclaims the legs and any underlying support structure by rendering them in broken lines, focusing the claim on the desktop's shape ('487 Patent, DESCRIPTION).
- Technical Importance: This design offers a distinct aesthetic and modular functionality for the competitive collaborative furniture market, where flexible and reconfigurable arrangements are valued (Compl. ¶8).
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a desk, as shown and described" ('487 Patent, CLAIM).
- The scope of this claim is defined by the visual appearance of the desk depicted in solid lines in the patent’s drawings. The core elements are:
- The overall top-down profile and perimeter shape of the desktop.
- The specific curvature and proportions of the indented and protruding "scalloped" edges.
III. The Accused Instrumentality
Product Identification
Defendant’s "Scallop Desks" and "New Scallop Desks" (Compl. ¶16, 19).
Functionality and Market Context
The accused products are desks marketed for use in classroom or other institutional settings (Compl. ¶16, 19). The complaint alleges Plaintiff and Defendant are direct competitors in the furniture market (Compl. ¶8). An image from Defendant's website shows the accused "New Scallop Desks" arranged in a four-unit pod, indicating a modular and collaborative function (Compl. ¶19). This arrangement with blue chairs and light-colored desktops highlights the product's use in forming larger group workspaces (Compl. ¶19).
IV. Analysis of Infringement Allegations
The infringement test for a design patent is whether an ordinary observer, familiar with the prior art, would be deceived into believing the accused design is the same as the patented design. The complaint alleges that the accused "Scallop Desks" are "confusingly similar and substantially the same" as the design claimed in the '487 Patent ('487 Patent) (Compl. ¶17, 20).
The complaint presents a direct visual comparison, juxtaposing the patent's environmental figures with photographs of the accused desks arranged in nearly identical pod formations (Compl. ¶17, p. 3). This visual evidence, showing the accused products with green chairs, is intended to demonstrate that the overall visual impression of the accused desks mirrors the patented design when used as intended (Compl. ¶17, p. 3). The infringement allegation rests on the similarity of the overall shape and appearance of the accused desktops when compared to the design claimed in the '487 Patent.
Identified Points of Contention
- Scope Questions: The central dispute will be a comparison of overall visual appearance. The question for the court will be whether the specific shape of the accused desks is "substantially the same" as the patented design, or if any differences are sufficient to distinguish them in the mind of an ordinary observer.
- Technical Questions: The analysis will focus on a visual, rather than technical, comparison. The trier of fact will need to compare the specific proportions, curvatures, and overall impression of the accused desk’s top surface with the solid-line drawings in the '487 Patent. The complaint does not provide details on the prior art, but the scope of the patent's protection will ultimately be viewed in light of what was known in the field before the patent was filed.
V. Key Claim Terms for Construction
In a design patent case, claim construction does not focus on textual terms but on the scope of the claimed design as a whole, as interpreted through the drawings.
- The "Claim": The ornamental design for a desk.
- Context and Importance: The entire case turns on the scope of the claimed design. The key question is how broadly the specific aesthetic of the drawings should be interpreted—as a general concept of a scalloped, modular desk, or as the precise shape depicted.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent disclaims functional elements like the legs and mounting brackets by showing them in broken lines ('487 Patent, DESCRIPTION). This suggests the protected design is defined solely by the ornamental shape of the desktop, potentially broadening its application to any desk with a substantially similar top-surface appearance, regardless of its support structure.
- Evidence for a Narrower Interpretation: A party could argue that the design's scope is strictly limited to the exact proportions and curvatures shown in the patent's figures. Any variation in the number, depth, or shape of the "scallops" in the accused product could be argued to fall outside the scope of the claimed design.
VI. Other Allegations
Willful Infringement
The complaint alleges willful infringement based on the assertion that Defendant had pre-suit knowledge of the '487 Patent. Specifically, the complaint states that Plaintiff sent a cease-and-desist letter to Defendant on January 21, 2021, and that Defendant continued its allegedly infringing conduct thereafter (Compl. ¶18, 21-22).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual comparison: In the eyes of an ordinary observer familiar with the prior art for classroom furniture, is the overall ornamental design of Defendant’s "Scallop Desk" substantially the same as the design claimed in the '487 Patent?
- A second issue will be the impact of prior art: How does the landscape of prior art desk designs define the scope of protection for the '487 Patent, and do the similarities between the products fall within that protected scope?
- A key question for damages will be one of intent: Does the allegation that Defendant continued to sell the accused desks for over two years after receiving a cease-and-desist letter support a finding of willful infringement, which could lead to enhanced damages?