Court: District Court, S.D. Illinois; July 19, 2018; Federal District Court
Wine Enthusiast, Inc. initiated a declaratory judgment action on September 6, 2017, addressing claims of patent and trade dress infringement by Vinotemp International Corporation, which responded with three counterclaims. Wine Enthusiast moved to dismiss two of these counterclaims on March 12, 2018, and the court granted the motion in part.
Vinotemp, which designs and sells wine storage units, claims ownership of United States Patent No. D711,936 (the "D936 Patent"), issued on August 26, 2014, detailing the ornamental design of a black wine rack face. The patent includes a primary figure showing a top perspective of this design, with other figures illustrating its features, including a thin profile when viewed from the side.
Vinotemp also describes its trade dress for wine storage units, characterized by glass fronts and shelves that hold bottles horizontally, with black fronts that obscure the bottom halves of the bottles, creating a "floating" appearance. Vinotemp alleges that Wine Enthusiast's Evolution series of refrigerators infringes this patent and trade dress. In support of its motion, Wine Enthusiast provided photographs showing that its shelf fronts differ significantly from Vinotemp's design.
Prior to the lawsuit, on July 31, 2017, Vinotemp had sent a letter to Wine Enthusiast alleging infringement of the D936 Patent and its trade dress. Following this, Wine Enthusiast sought a declaration that it had not infringed any rights and that Vinotemp's trade dress claims were invalid. Vinotemp's counterclaims include assertions of infringement related to both the D936 Patent and its trade dress rights.
An initial pretrial conference was conducted on December 15. Wine Enthusiast filed a motion to dismiss two counterclaims on March 12, 2018, which was fully submitted by April 6. In evaluating a motion to dismiss for failure to state a claim under Fed. R. Civ. P. 12(b)(6), courts must accept all allegations in the complaint as true and favor the non-moving party. A complaint survives dismissal if it includes sufficient factual matter to present a plausible claim for relief. This standard applies to all types of claims, including counterclaims.
Regarding design patent infringement, a design patent protects the ornamental appearance of an article, as opposed to its utility. The Federal Circuit emphasizes that a design is better illustrated than described, and the protection is limited to what is depicted in the patent drawings. Courts utilize the "ordinary observer" test to determine infringement, assessing whether the claimed design and the accused design appear substantially similar to an ordinary observer. The comparison can consider prior art for context, which may help clarify if the designs are indeed similar.
Neither party has presented relevant prior art. The ordinary observer test applies to the patented design as a whole, meaning courts should not focus on minor differences that could obscure infringement findings. This test considers the overall impression a typical purchaser would have, extending to all ornamental features visible during normal product use, from manufacture to destruction. Wine Enthusiast is entitled to dismissal of Vinotemp's patent infringement claim. An ordinary observer would not find the Rack Face substantially similar to Wine Enthusiast's shelf front when considering the patented design features collectively. Key differences include Vinotemp's Rack Face having a "J" shape, thinner construction, and a flush attachment to the wine rack, none of which are present in Wine Enthusiast's design, which lacks curves, is thicker, and does not attach in the same manner. Despite Vinotemp's assertion that these differences are minor, they are significant in relation to the D936 Patent's scope, which protects a specific design rather than all black wine rack fronts. Vinotemp has not sufficiently claimed that Wine Enthusiast's shelf front infringes the patent.
Vinotemp asserts a trade dress infringement claim under Section 43(a) of the Lanham Act, which prohibits the use of any term or symbol that may cause confusion regarding the source or sponsorship of goods. To succeed, Vinotemp must first demonstrate that its trade dress is protectable by showing it is non-functional, has acquired secondary meaning, and is not generic. Additionally, Vinotemp must plead that Wine Enthusiast's use of a similar mark is likely to confuse consumers. The court emphasizes the necessity of a precise expression of the claimed trade dress, including specific design elements, as vague descriptions may hinder proper evaluation. Wine Enthusiast contends that Vinotemp's trade dress description is too indefinite and generic, and it questions the allegations of secondary meaning and non-functionality. However, the court finds that Vinotemp has adequately alleged trade dress infringement, determining that challenges to the claim are more suitable for resolution during summary judgment or trial. Consequently, while Wine Enthusiast's motion to dismiss is partly granted, Vinotemp's counterclaim for trade dress infringement remains intact. Additionally, Vinotemp alleges that Wine Enthusiast's product infringes another patent, which has not been challenged. Notably, Vinotemp has not registered its claimed trade dress.
