United States District Court, D. New Jersey
MCNULTY United States District Judge.
Curver Luxembourg, SARL ("Curver") is the owner of
a design patent, No. D677, 946 ("the '946
Patent"), which claims an overlapping "Y"
design. Curver alleges that Home Expressions Inc. ("Home
Expressions") makes and sells a basket that incorporates
this design and therefore infringes the '946 Patent. Now
before the court is defendant Home Expressions' motion to
dismiss the Complaint. (ECF no. 13). For the following reasons,
Home Expressions' motion is granted.
a Luxembourg corporation, owns the '946 Patent, which is
titled "Pattern for a Chair." (Compl. ¶ 1;
'946 Patent). Home Expressions is a New York corporation
with its principal place of business in New Jersey. (Compl.
'946 Patent claims the ornamental "Y" design
¶ 7; '946 Patent).
original design patent application was not accepted by the
U.S. Patent and Trademark Office ("PTO"). (Ex. A).
Curver originally applied for a design patent with the titles
"Furniture Part" and "Furniture (Part
of)." (Ex. A). The PTO objected, explaining:
The title of the design must designate the particular
article, which is the subject of the design. 37 CFR
1.153. The title of the design identifies the article in
which the design is embodied by the name generally known and
used by the public. MPEP 1503, I.
(Ex. A). Curver rectified this by resubmitting the design
patent for "[t]he ornamental design for a pattern for a
chair." ('946 Patent); (Ex. A; Ex. B). Each figure
in the patent was now described as a view of a "design
for a pattern for a chair." ('946 Patent).
makes and sells storage baskets that incorporate the patented
"Y" design. (Compl. ¶ 8). Home Expressions
sells storage baskets that are allegedly
"identical" to baskets sold by Curver. (Compl.
¶ 10). Home Expressions' baskets allegedly contain
"each element of the claimed design in the '946
Patent, " as well as unprotected elements of
Curver's basket, such as an alternating matte and glossy
finish on the bottom surface. (Compl. ¶¶ 11-12).
Figure 2 shows an example of Curver's basket. (Ex. 2).
Figure 3 shows an example of Home Expressions' baskets.
6, 2017, Curver filed a complaint against Home Expressions,
claiming that the manufacture, use, sale, offer for sale,
and/or importation of Home Expressions' basket
constitutes patent infringement under 35 U.S.C. § 271
et seq. (Compl. ¶ 11). Curver seeks a permanent
injunction and damages. (Compl.). Home Expressions filed a
motion to dismiss Curver's claim on July 24, 2017. (ECF
Motion to Dismiss
Rule of Civil Procedure 12(b)(6) provides for the dismissal
of a complaint, in whole or in part, if it fails to state a
claim upon which relief can be granted. The moving party
bears the burden of showing that no claim has been stated.
Hedges v. United States, 404 F.3d 744, 750 (3d Cir.
2005). In deciding a motion to dismiss under Rule 12(b)(6), a
court must take all allegations in the complaint as true and
view them in the light most favorable to the plaintiff.
See Worth v. Seldin, 422 U.S. 490, 501 (1975);
Trump Hotels & Casino Resorts, Inc. v.
Mirage Resorts Inc., 140 F.3d 478, 483 (3d Cir. 1998);
see also Phillips v. County of Allegheny, 515 F.3d
224, 231 (3d Cir. 2008).
Rule of Civil Procedure 8(a) does not require that a
complaint contain detailed factual allegations. Nevertheless,
"a plaintiffs obligation to provide the
'grounds' of his 'entitlement to relief requires
more than labels and conclusions, and formulaic recitation of
the elements of a cause of action will not do." Bell
Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007). Thus,
the factual allegations must be sufficient to raise a
plaintiffs right to relief above a speculative level, such
that it is "plausible on its face." See
Id. at 570; see also Umland v. PLANCO Fin. Servs.,
Inc., 542 F.3d 59, 64 (3d Cir. 2008). A claim has
"facial plausibility when the plaintiff pleads factual
content that allows the court to draw the reasonable
inference that the defendant is liable for the misconduct
alleged." Ashcroft v. Iqbal, 556 U.S. 662, 678
(2009) (citing Twombly, 550 U.S. at 556). While
"[t]he plausibility standard is not akin to a
'probability requirement'... it asks for more than a
sheer possibility." Iqbal, 556 U.S. at 678.
United States Court of Appeals for the Third Circuit has
explicated the Twombly/Iqbal standard on several
occasions. See, e.g., Argueta v. U.S. Immigration &
Customs Enforcement, 643 F.3d 60, 70-73 (3d Cir. 2011);
Santiago v. Warminster Twp., 629 F.3d 121, 129-30
(3d Cir. 2010). In doing so, it has provided a three-step
process for evaluating a Rule 12(b)(6) motion:
To determine whether a complaint meets the pleading standard,
our analysis unfolds in three steps. First, we outline the
elements a plaintiff must plead to a state a claim for
relief. See [Iqbal, 556 U.S.] at 675;
Argueta, 643 F.3d at 73. Next, we peel away those
allegations that are no more than conclusions and thus not
entitled to the assumption of truth. See Iqbal, 556
U.S. at 679; Argueta, 643 F.3d at 73. Finally, we
look for well-pled factual allegations, assume their
veracity, and then "determine whether they plausibly
give rise to an entitlement to relief." Iqbal,
556 U.S. at 679; Argueta, 643 F.3d at 73. This last
step is "a context-specific task that requires the
reviewing court to draw on its judicial experience and common
sense." Iqbal, 556 U.S. at 679.
Bistrian v. Levi, 696 F.3d 352, 365 (3d Cir. 2012).
deciding a Rule 12(b)(6) motion, a court must consider only
the complaint, exhibits attached to the complaint, matters of
the public record, as well as undisputedly authentic
documents if the complainant's claims are based upon
these documents." Mayer v. Belichick, 605 F.3d
223, 230 (3d Cir. 2010); see also In re Asbestos Prods.
Liability Litig. (No. VI), 822 F.3d 125, 134 & n.7
(3d Cir. 2016); Buck v. Hampton Twp. Sch. Dist, 452
F.3d 256, 260 (3d Cir. 2006) ("In evaluating a motion to
dismiss, we may consider documents that are attached to or
submitted with the complaint, and any matters incorporated by
reference or integral to the claim, items subject to judicial
notice, matters of public record, orders, and items appearing
in the record of the case.").
Design Patent Infringement
patent law permits those who invent designs for manufactured
articles to patent their designs. 35 U.S.C. § 171(a).
Patent protection is available for a "new, original and
ornamental design for an article of
manufacture." Id. A patentable design
"gives a peculiar or distinctive appearance to the
manufacture, or article to which it may be applied, or to
which it gives form." Gorham Co. v. White, 81
U.S. (14 Wall.) 511, 525 (1871); see also Samsung Elecs.
Co., Ltd. v. Apple Inc., 137 S.Ct. 429, 432-33 (2016).
general, a patent infringement analysis involves two steps:
claim construction and claim comparison.
the court construes the patent. See Markman v. Westview
Instruments, Inc., 517 U.S. 370, 372-74 (1996); see
MBO Labs., Inc. v. Becton, Dickinson & Co., 474 F.3d
1323, 1329 (Fed. Cir. 2007). Claim construction is an issue
of law committed to the district judge for determination.
Teva Pharm. USA, Inc. v. Sandoz, Inc., 789 F.3d
1335, 1337 (Fed. Cir. 2015); see Markman v. Westview
Instruments, Inc., 52 F.3d 967, 977 (Fed. Cir. 1995)
(holding that claim construction is "a matter of law
exclusively for the court").
case of design patents, which involve matters of physical
appearance, the claim construction process is often
uncomplicated. Relevant precedent requires that the court
simply construe the design patents as they are shown in the
patent drawings. MSA Prods., Inc. v. Nifty Home Prods.,
Inc., 883 F.Supp.2d 535, 540-41 (D.N.J. 2012).
"Design patents are typically claimed as shown in
drawings, and claim construction must be adapted to the
pictorial setting." Crocs, Inc. v. Int'l Trade
Comm'n, 598 F.3d 1294, 1302 (Fed. Cir. 2010).
"Depictions of the claimed design in words can easily
distract from the proper infringement analysis of the
ornamental patterns and drawings." Id.; see Egyptian
Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed.
Cir. 2008); Contessa Food Prods., Inc. v. Conagra,
Inc., 282 F.3d 1370, 1377 (Fed. Cir. 2002).
second step of this analysis, the design patent's claims
(as now construed) are compared to the allegedly infringing
products. See PC Connector Sols. LLC v. SmartDisk
Corp., 406 F.3d 1359, 1362 (Fed. Cir. 2005). This step
involves a factual determination. See Id. at 1364.
When considering infringement of a design patent, courts use
the "ordinary observer" test. Crocs, 598
F.3d at 1303. Under the ordinary observer test, infringement
[I]f, in the eye of an ordinary observer, giving such
attention as a purchaser usually gives, two designs are
substantially the same, if the resemblance is such as to
deceive such an observer, inducing him to purchase one
supposing it to be ...