Kohler Co. v. Signature Plumbing Specialties LLC

Background

Kohler and Signature had litigated whether Signature infringed Kohler’s water-faucet and bathtub design patents. At the time of this order, two claims remained: Count IV, involving the ‘614 patent, and Count V, involving the ‘487 patent.

After the court ordered discovery, Signature moved for summary judgment on both remaining claims. Summary judgment is a decision without a trial when the record shows that no genuine dispute of important facts requires a jury’s decision. Signature argued that earlier faucets and tubs invalidated the patents because they existed before the patents’ priority dates.

Kohler then moved to voluntarily dismiss its ‘614 patent claim with prejudice. A dismissal with prejudice bars Kohler from bringing that claim again. Signature opposed the request, arguing that Kohler was attempting to avoid Signature’s invalidity defense.

The ‘614 patent claim

The court granted Kohler’s motion to dismiss Count IV with prejudice under Federal Rule of Civil Procedure 41(a)(2). The court concluded that this rule permits dismissal of an individual claim, not only an entire case, and that Signature had not shown undue prejudice.

Signature had not filed a counterclaim seeking a declaration that the ‘614 patent was invalid. The court explained that, if Signature had requested that affirmative relief, the court would have had to decide that request despite Kohler’s dismissal of its infringement claim.

The court also held that Signature’s invalidity defense to the ‘614 claim was made moot by the dismissal. Kohler represented that there would be no relitigation of the claim and that the dismissal would prevent Kohler from suing Signature for infringement of the ‘614 patent based on Signature’s importation, manufacture, use, sale, or offer for sale of the faucets identified in Kohler’s infringement contentions and any substantially similar products. The court expressly relied on that representation and stated that Kohler would face an estoppel defense if it later tried to renege.

The court further stated that Signature’s rights to seek sanctions or attorney’s fees under 35 U.S.C. § 285 at the end of the litigation were preserved, including regarding the ‘614 patent.

The ‘487 patent claim

The ‘487 patent concerns a bathtub design. Kohler alleged that Signature’s BT2092 bathtub infringed that patent. Signature argued that, years before the patent’s 2011 priority date, it had sold and installed an ADA-compliant BT2006 bathtub that was the same in all relevant respects as the BT2092 bathtub.

Kohler appeared to accept that the BT2006 would invalidate the ‘487 patent if Signature proved that the bathtub had been sold, offered for sale, or publicly available when Signature claimed. Kohler instead challenged the admissibility and reliability of Signature’s evidence. That evidence included testimony from Signature’s founder and president, Keith Kugler, together with purchase orders, specification sheets, invoices, and other materials concerning a claimed sale and installation at the Georgica building on Manhattan’s Upper East Side.

The court held that it could not decide Mr. Kugler’s credibility on summary judgment. Because a jury could disbelieve him, causing Signature’s evidence to fail, or believe him, in which case the evidence could be sufficient to prove the invalidity defense, the court denied Signature’s motion for summary judgment.

Disposition

The court ordered a one- or two-day jury trial limited to Signature’s invalidity defenses to Kohler’s ‘487 patent claim. It directed the parties to propose five available two-day trial periods during December 2025 or January 2026. Signature’s owner and Kohler’s chief executive officer were required to attend. The court also granted the parties’ letter motions to seal and directed the clerk to terminate Docket Entries 96, 102, 103, 104, 106, and 112.

Judge Arun Subramanian therefore granted Kohler’s motion to voluntarily dismiss Count IV with prejudice, denied Signature’s motion for summary judgment, and granted the parties’ motions to seal.