Kohler Co. v. Signature Plumbing Specialties LLC

Background

Kohler Co. sued Signature Plumbing Specialties LLC, alleging infringement of five design patents, tortious interference with prospective economic advantage, and unfair competition under New York law. Signature moved for judgment on the pleadings, which asks whether the complaint and other permitted pleadings state a plausible claim based on the materials properly considered at that stage. The court stayed further proceedings while it considered the motion.

Patent-related claims

Willful infringement. Signature argued that Kohler could not plausibly allege willful infringement because Kohler’s only alleged notice of the patents came from serving the original complaint. The court rejected that argument. It held that Kohler could pursue willful-infringement claims, at least for infringement occurring after Signature was served with the original complaint. The court noted that the complaint did not allege any earlier patent notice before September 2023.

Patent marking. Signature argued that Kohler failed to plead compliance with the patent-marking statute, which can limit damages before notice to the alleged infringer. The court found that Kohler adequately alleged that it had used virtual marking for the asserted design patents since at least September 2023. The court stated that discovery could later test whether Kohler actually complied with the marking requirements and whether any pre-suit damages were available, but it declined to dismiss that part of the case at the pleading stage.

The ’988 patent. Signature argued that its accused faucet was plainly different from the ’988 patented design. The court agreed. It emphasized that the patented design had an arched or domed baseplate while Signature’s faucet had a flat baseplate, and that the handle proportions also differed. Applying the ordinary-observer test—whether an ordinary observer familiar with earlier designs would be deceived into thinking the accused product was substantially the same—the court found the designs plainly dissimilar. Kohler’s ’988 patent claim was dismissed with prejudice.

The ’824 patent. Signature argued that the ’824 patented design had an octagonal shape, while its accused faucets had a square profile. The court again found the designs plainly dissimilar, focusing on the shape as the dominant ornamental feature of the design. Kohler’s ’824 patent claim was dismissed with prejudice.

Prior-sales defense

Signature argued that products accused of infringing the ’732, ’614, and ’487 patents had been sold before the patents’ priority dates, which would invalidate the patents. Signature relied on internet photographs, business records, and other materials attached to its answer. The court held that these materials could not be considered on the pleadings because their accuracy could reasonably be disputed and they did not fit the narrow categories of materials permitted at that stage.

The court declined to convert the motion into a motion for summary judgment, which would have allowed consideration of evidence outside the pleadings. It left open whether discovery should proceed on the prior-sales issue and stated that the issue could later be decided under the usual summary-judgment standard.

New York state-law claims

The court dismissed Kohler’s claim for tortious interference with prospective economic advantage because the complaint did not adequately identify the alleged statements, who made them, when or where they were made, which customers received them, or which projects were affected. The court also found that Kohler did not plausibly allege that Signature used the legally required wrongful means.

The court dismissed Kohler’s unfair-competition claim for similar reasons. Kohler did not provide sufficient details about the projects, people involved, alleged false statements, or other facts showing the required bad faith and misappropriation. Both state-law claims were dismissed with prejudice because Kohler had not sought to amend them after Signature identified the pleading deficiencies and did not request leave to amend during the motion proceedings.

Disposition

Judge Arun Subramanian concluded that Signature’s motion for judgment on the pleadings was granted in part and denied in part. The court dismissed the ’988 and ’824 patent claims with prejudice and dismissed the tortious-interference and unfair-competition claims with prejudice. It did not decide the prior-sales invalidity defense at that stage, and the opinion states that other parts of Kohler’s patent case could proceed.