Focus Products Group International, LLC v. Kartri Sales Company, Inc.

Background

The plaintiffs were Focus Products Group International, LLC, Zahner Design Group Ltd., Hookless Systems of North America, Inc., Sure Fit Home Products, LLC, Sure Fite Home Décor Holdings Corp., and SF Home Décor, LLC. They alleged that Kartri Sales Company, Inc. and Marquis Mills, International, Inc. infringed three utility patents and one design patent involving shower curtains with integrated rings. They also alleged infringement of the registered HOOKLESS® trademark, the unregistered EZ ON trademark, and unregistered trade dress, as well as New York common-law unfair competition.

Zahner Design Group owned the four patents at issue and had granted exclusive licenses through Hookless Systems of North America to Focus. Marquis made, imported, and sold furniture and home accessories, including shower curtains, while Kartri distributed such products. Marquis supplied Kartri with the accused shower curtains.

The parties filed cross-motions for summary judgment on a subset of their claims. Summary judgment is a decision without a trial when the court determines that no genuine dispute over a material fact requires a trial and that one side is entitled to judgment under the law.

Utility-patent claims

For the ’248 utility patent, the court considered whether the accused shower-curtain ring contained an “approximately horizontal component” under Claim 1. The court had previously construed that phrase to mean a component that is level or nearly level. Focus’s expert measured the relevant component in Focus’s design at 26 degrees and the component in defendants’ design at 22 degrees. Because defendants’ component was at least as close to horizontal as Focus’s own component, and defendants offered no direct rebuttal to the measurements, the court held that defendants’ design infringed this aspect of Claim 1. The court granted Focus’s motion for summary judgment on this discrete issue and denied Marquis’s first counterclaim seeking a declaration of no infringement.

For the ’609 patent, the court considered whether the accused ring had a “projecting edge” and whether that edge was “next to” the slit. For the ’088 patent, the court considered whether the ring had a “projecting edge.” Applying its prior claim constructions, the court held that the accused design included a projecting edge and, for the ’609 patent, that the edge was adjacent to the slit. The court granted Focus’s motion for summary judgment on these discrete infringement issues.

The defendants also challenged the validity of the utility patents. As to the ’248 patent, the court rejected their indefiniteness argument because they had not provided the information or admissible evidence needed to support it. The court also rejected their argument that the ’248 patent was anticipated by an earlier design because the cited prior art did not contain a slit with an approximately horizontal component. As to the ’609 patent, defendants did not provide evidence showing that the written description failed to support the claimed projecting edge. The court rejected the same written-description argument as to the ’088 patent and denied the double-patenting argument as moot because Focus had filed terminal disclaimers. The conclusion lists Marquis’s fourth, fifth, and sixth patent-invalidity counterclaims as dismissed.

Trademark and trade-dress claims

The court dismissed Marquis’s counterclaim asserting that the HOOKLESS® trademark had become generic. It held that Kartri, the defendant accused of infringing that mark, had not pleaded genericness as an affirmative defense or counterclaim, and therefore had forfeited that defense. The court did not reach the parties’ arguments about whether “hookless” had actually become generic.

The defendants sought summary judgment declaring that their “EZY HANG” mark did not infringe Focus’s “EZ ON” mark. The court denied that motion because defendants addressed only some of the factors used to evaluate likely consumer confusion and did not support their position with evidence. The court also denied defendants’ motion asserting that Focus lacked ownership of the EZ ON mark. A factual dispute remained concerning whether a trademark application filed by Focus’s sublicensee, Carnation Home Fashions, Inc., fell within the sublicense agreement and therefore had to be assigned.

The court denied Focus’s motion for summary judgment on its trade-dress infringement claim. It held, however, that the claimed product-design trade dress—shower curtains without hooks and with a row of fixed rings with slits or gaps along the upper portion—was generic. The court reasoned that Focus was seeking protection for the general concept of hookless shower curtains rather than a source-identifying design. Because generic trade dress cannot receive protection, the court did not reach functionality, secondary meaning, or likelihood of confusion. It granted defendants’ related counterclaims to the extent they challenged this product-design trade dress.

Other counterclaims

The court dismissed Kartri’s counterclaim for tortious interference and monopolization because defendants did not address it in their summary-judgment briefs and therefore abandoned it. The court granted summary judgment to Focus on Marquis’s patent-misuse counterclaim because defendants identified no supporting evidence. Marquis voluntarily dismissed its lack-of-inventorship counterclaim, so the court dismissed that claim on consent.

Damages and disposition

The court held that Focus, as an exclusive licensee whose patent owner and intermediate exclusive licensee were also parties, could seek damages for patent infringement found in the case. The court declined to resolve Focus’s other damages-related summary-judgment arguments because liability was not yet resolved. It denied without prejudice Focus’s motion for partial summary judgment on those damages claims and held Focus’s separate motion to preclude certain damages evidence in abeyance.

The court’s conclusion states that the parties’ cross-motions for summary judgment were granted in part and denied in part. The specified infringement issues under the ’248, ’609, and ’088 utility patents were resolved for Focus; summary judgment on the claimed trade dress was denied to Focus and granted to defendants on their corresponding trade-dress counterclaims; summary judgment was denied on the EZ ON trademark issues; and several counterclaims were dismissed. Claims and counterclaims not addressed by the motions remained outside the ruling. The case was to proceed toward trial on the remaining claims, subject to settlement proceedings before Magistrate Judge Stewart D. Aaron.