E. Mishan & Sons, Inc. v. Caraway Home, Inc.

Background

E. Mishan & Sons, Inc. brought an action seeking a declaratory judgment that it did not infringe U.S. Design Patent D921,421, which Caraway Home, Inc. owns. The patent covers the ornamental design for a cookware lid. Caraway answered and asserted one counterclaim against Mishan for design-patent infringement under 35 U.S.C. § 271.

The dispute arose after Caraway’s counsel complained to Amazon that Mishan’s “Gotham Steel 11 Pc Ceramic Pots and Pans Set,” including its lids, infringed Caraway’s patent. Mishan then filed this case. Caraway alleged that Mishan knew about the patent, that its infringement was willful, and that it continued marketing, selling, manufacturing, and offering the accused products for sale.

Motion and Legal Standard

Mishan moved for judgment on the pleadings under Federal Rule of Civil Procedure 12(c), both on its own non-infringement claim and on Caraway’s infringement counterclaim. A Rule 12(c) motion asks whether the pleadings themselves show that a claim cannot plausibly succeed. Because Mishan was the moving party, the court accepted the factual allegations in Caraway’s answer and drew reasonable inferences in Caraway’s favor.

Design-patent infringement ordinarily presents a factual question. But a court may resolve the issue at the pleadings stage when the infringement claim is facially implausible because the patented and accused designs are plainly dissimilar.

Court’s Analysis

The court applied the ordinary-observer test. Under that test, the court first compares the patented design’s drawings with the accused product to determine whether they appear substantially the same. If they are not plainly dissimilar, the court may then compare both designs with prior art to evaluate differences that would matter to an ordinary observer familiar with earlier designs.

The court concluded that this was a rare case in which the designs were plainly dissimilar at the first step. The patented lid had a totally flat top surface, while the accused lid had a beveled or sloping surface near its perimeter and a convex center. The bottoms also differed: the patented lid had two separate semicircular flanges, while the accused lid had a single continuous circular wall. The court noted that the handle was shown only in broken lines and therefore was not part of the patented design.

After accounting for those differences, the only remaining similarity was that both lids were round. The court stated that Caraway did not identify or describe similarities between the designs in its counterclaim or opposition papers. It therefore concluded that no ordinary observer could be deceived into believing that the accused lid was the patented lid.

Because the designs failed the first step of the ordinary-observer test, the court held that it did not need to compare them with prior art. The court separately explained that, under Second Circuit precedent, it could not consider prior-art exhibits attached to Mishan’s pleading because those exhibits were not part of Caraway’s pleading. Considering them would have required converting the Rule 12(c) motion into a motion for summary judgment. That issue did not affect the result because the first-step comparison was dispositive.

Disposition

Judge J. Paul Oetken granted Mishan’s motion for judgment on the pleadings. The Clerk was directed to enter judgment in favor of E. Mishan & Sons, Inc. on both Mishan’s declaratory judgment claim and Caraway Home, Inc.’s infringement counterclaim, terminate the motion, and close the case.