DCT

2:23-cv-00128

BigNJ Inc v. Vacu Vin Innovations Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:23-cv-00128, D. Wyo., 07/18/2023
  • Venue Allegations: Plaintiff alleges venue is proper in the District of Wyoming because Defendant AMZ Watchdog is a Wyoming entity that resides and transacts business in the district, and Defendant Vacu Vin contracted with AMZ Watchdog for patent enforcement services within the district.
  • Core Dispute: In this declaratory judgment action, Plaintiff BigNJ alleges that U.S. Design Patent D904,832, owned by Defendant Vacu Vin and asserted by both Defendants, is invalid due to an on-sale bar, unenforceable due to inequitable conduct, and therefore not infringed by BigNJ's utensil rest products.
  • Technical Context: The dispute concerns the ornamental design of a silicone utensil rest, a common kitchen accessory designed to hold cooking utensils and keep countertops clean.
  • Key Procedural History: The complaint alleges that Defendants repeatedly asserted the patent against Plaintiff's Amazon product listings, causing them to be disabled. The central allegation is that the patent is invalid under the on-sale bar because the patentee's own affiliate, "Tomorrow's Kitchen," publicly sold and offered for sale products embodying the patented design more than one year before the patent application's filing date. The complaint further alleges the patent is unenforceable because the patentee knew of these invalidating prior sales and intentionally failed to disclose them to the USPTO during prosecution.

Case Timeline

Date Event
2016-01-01 Tomorrow’s Kitchen 2016 Catalog allegedly depicts the design (approx. date)
2016-03-12 Tomorrow’s Kitchen product allegedly offered for sale on Amazon UK
2016-03-21 Tomorrow’s Kitchen allegedly depicts the design in a Facebook post
2016-06-28 Tomorrow’s Kitchen product allegedly offered for sale on Amazon US
2016-07-05 Tomorrow’s Kitchen website allegedly offers the design for sale
2017-11-08 "D832 Patent" application filed
2020-12-15 "D832 Patent" issues
2023-05-13 Defendant VV allegedly asserts the "D832 Patent" against Plaintiff
2023-07-03 Defendant AMZW allegedly asserts the "D832 Patent" against Plaintiff
2023-07-04 Defendant AMZW allegedly asserts the "D832 Patent" again
2023-07-18 Complaint for Declaratory Judgment filed

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

U.S. Design Patent No. D904,832 - "Utensil Rest"

  • Patent Identification: U.S. Design Patent No. D904,832, "Utensil Rest," issued December 15, 2020.

The Invention Explained

  • Problem Addressed: Design patents protect ornamental appearance, not function. The patent does not describe a technical problem but instead claims a specific visual design for a utensil rest (D'832 Patent, Claim).
  • The Patented Solution: The patent claims the ornamental design for a utensil rest as depicted in its seven figures (D'832 Patent, Claim, Figs. 1-7). The design consists of a base with a raised section containing several scalloped notches for holding utensils, connected to a larger, flat, raised-edge tray for catching drips. The overall impression is of a single, integrated unit with distinct functional areas defined by their shape. Figure 1 provides a top perspective view that illustrates the complete ornamental design (D'832 Patent, Fig. 1).
  • Technical Importance: The complaint alleges that products embodying this design have been available since at least early 2016, suggesting a market for kitchen tools that organize utensils and protect countertops during cooking (Compl. ¶19).

Key Claims at a Glance

  • The patent contains a single claim: "The ornamental design for a 'utensil rest,' as shown and described" (D'832 Patent, Claim).
  • The scope of a design patent claim is defined by its drawings. The key elements of the claimed design are:
    • A base section with four upward-facing, scalloped notches.
    • An adjoining, larger, rectangular tray section with a raised peripheral edge.
    • The specific proportions and contours of these elements relative to each other, as shown in the perspective, top, bottom, and side views (D'832 Patent, Figs. 1-7).
  • The complaint seeks a declaratory judgment of non-infringement, invalidity, and unenforceability for the entire patent (Compl. ¶¶ 51-66).

III. The Accused Instrumentality

Product Identification

  • The complaint identifies Plaintiff BigNJ's own products as the "Accused Products," specifically citing the "Gray Silicone Spoon Holder for Stove Top with Drip Pad" sold under Amazon ASIN B0874S275K and others (Compl. ¶18).

Functionality and Market Context

  • The Plaintiff's product is described as a "Gray Silicone Spoon holder for Stove Top with Drip Pad (Two Pack) - Heat Resistant, BPA Free Utensil Rest for Kitchen Counter - Grill Utensil Holder for Spatulas, Tongs, Ladles" (Compl. ¶18, p. 7).
  • A screenshot from an Amazon product listing depicts the product as a single-piece silicone item with four slots for utensils and an attached drip tray (Compl. ¶18, p. 7). The complaint alleges that after Defendants made infringement complaints to Amazon, BigNJ's product listings were disabled, causing "substantial business disruption and thousands of dollars in lost revenue" (Compl. ¶47).

IV. Analysis of Infringement Allegations

The complaint does not allege infringement but rather seeks a declaratory judgment of non-infringement. The primary basis for this claim is the assertion that the "D832 Patent" is invalid under 35 U.S.C. §§ 102 and 103, and therefore cannot be infringed (Compl. ¶¶ 64-66). The core of the complaint is a factual argument for invalidity based on the on-sale bar.

The complaint presents a side-by-side visual comparison, juxtaposing a photo of the "Tomorrow's Kitchen" prior art product with a figure from the "D832 Patent" to support its argument that they are identical (Compl. ¶5, p. 3).

The complaint's primary argument is that the "D832 Patent" is invalid because the patentee's own affiliate, "Tomorrow's Kitchen," sold and publicly disclosed an identical design more than one year prior to the patent's November 8, 2017 filing date (Compl. ¶4, 53).

A screenshot of the Amazon UK product listing for the "Tomorrow's Kitchen" product includes a "Date First Available" of March 12, 2016, which is more than one year before the critical date (Compl. ¶24, p. 10).

The complaint does not provide a claim chart comparing the Plaintiff's product to the patent's claim for a traditional non-infringement analysis. Instead, it rests its non-infringement count on the axiom that "one cannot infringe an invalid patent" (Compl. ¶65).

No probative visual evidence provided in complaint for a direct infringement comparison.

V. Key Claim Terms for Construction

In a design patent case, there are typically no "terms" to construe as in a utility patent. The claim is for the "ornamental design ... as shown" (D'832 Patent, Claim). The analysis focuses on the overall visual appearance of the design, comparing the patented design to the accused product from the perspective of an "ordinary observer."

However, the central dispute in this declaratory judgment action does not appear to be about the finer points of the design's visual scope. Instead, it focuses on a threshold question of validity. The dispositive comparison will not be between the Plaintiff's product and the patent, but rather between the patented design and the alleged prior art "Tomorrow's Kitchen" product. The key question for the court will be whether the design sold by "Tomorrow's Kitchen" prior to the critical date of November 8, 2016, is identical to or substantially the same as the design claimed in the "D832 Patent". The complaint provides extensive documentary evidence, including dated product catalogs and website archives, to support its position that the designs are identical (Compl. ¶¶ 19-26, Exs. B-F).

VI. Other Allegations

  • Unenforceability / Inequitable Conduct: The complaint includes a cause of action for a declaratory judgment of unenforceability based on inequitable conduct (Compl. ¶¶ 57-61). It alleges that Defendant VV, the patent applicant, knew of its affiliate's (Tomorrow's Kitchen) prior sales, disclosures, and public uses of the identical design, that this information was material to patentability, and that VV intentionally failed to disclose this information to the USPTO during prosecution with an intent to deceive the office (Compl. ¶¶ 34, 38, 60).
  • Tortious Interference: The complaint alleges tortious interference against both Defendants (Compl. ¶¶ 67-75). The basis for this claim is that Defendants knew the "D832 patent" was invalid and acted in bad faith by wrongfully asserting it to Amazon, intending to induce a breach or termination of Plaintiff's business relationship with Amazon, which resulted in disabled product listings and lost sales (Compl. ¶¶ 71-72, 74).

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

This case appears to turn less on a traditional infringement analysis and more on threshold questions of patent validity and enforceability. The key questions for the court will likely be:

  1. A dispositive factual question: Does the evidence, particularly the dated product catalogs, website archives, and Amazon listings, establish that the "Tomorrow's Kitchen" utensil rest was "on sale" or in "public use" in the U.S. before the critical date of November 8, 2016?
  2. A critical legal and factual question of identity: Is the design of the prior art "Tomorrow's Kitchen" product substantially the same as the ornamental design claimed in the "D832 Patent"? The complaint's visual evidence suggests a high degree of similarity.
  3. A question of patentee conduct: If the patent is found to be invalid based on the on-sale bar, did the patentee, Vacu Vin, know of its affiliate's prior art product during prosecution and intentionally conceal it from the USPTO? A finding of intent to deceive could render the patent unenforceable and potentially expose Defendants to claims for attorneys' fees or other damages.