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Wing Shing Products Co. Ltd. v. Sunbeam Products

September 30, 2009


The opinion of the court was delivered by: Richard J. Holwell, District Judge


Plaintiff Wing Shing brings this action against defendants Sunbeam and Simatelex for infringement of a patented coffee maker design. The matter now comes before the Court on defendants' motions for summary judgment. For the reasons stated below, those motions are granted. Simatelex's motion to dismiss for lack of personal jurisdiction is denied as moot.


Plaintiff Wing Shing, a British Virgin Islands corporation based in Hong Kong, owns United States Design Patent No. D348,585 ("the '585 patent") for the ornamental design of a coffeemaker. (Def. 56.1 ¶ 4.) Defendant Sunbeam is a Delaware corporation that sells coffee makers under the MR. COFFEE brand. (Def. 56.1 ¶¶ 1-2.) Defendant Simatelex is a company located in Hong Kong that manufactures and sells coffee makers for Sunbeam. (Def. 56.1 ¶ 5.)

The subject of this action is a line of MR. COFFEE automatic coffee-making devices called the "AR series," which defendants manufactured and sold between 2001 and 2006. (Def. 56.1 ¶¶ 68-85.) The AR series included three primary designs, the most popular of which, the "AR 10/12," accounted for more than 85% of total AR sales.*fn2 (Def. 56.1 ¶ 64, 84.) There were also two less popular designs: the "AR 4/5" and the "2004 AR." (Def. 56.1 ¶¶ 79-83.) Wing Shing accuses the entire AR series of infringing the '585 patent, (Compl. ¶ 13), though the infringement analysis in its opposition papers focuses exclusively on the AR 10/12. (Pl. Opp. at 13-19.)

These parties have litigated issues related to the '585 patent before. This Court previously affirmed, in relevant part, an order by the Bankruptcy Court finding that Sunbeam had infringed the patent by selling a different line of devices, known as the "AD series." Sunbeam Prods., Inc. v. Wing Shing Prods. (BVI) Ltd., 311 B.R. 378 (S.D.N.Y. 2004), aff'd, 153 F. App'x 703 (Fed. Cir. 2005) ("Wing Shing I"). MR. COFFEE, which Sunbeam acquired in 1998, and Wing Shing collaborated on the design for the AD series in 1992, and Wing Shing thereafter manufactured the ADs for sale under the MR. COFFEE brand. Soon after the parties had agreed on the design, Wing Shing patented it without informing MR. COFFEE. When Sunbeam decided some years later to switch to Simatelex as its manufacturer, Wing Shing initiated its infringement claim. Wing Shing I, 311 B.R. at 385-87.

Because the '585 patent explicitly patented the AD design, Sunbeam did not argue non-infringement in Wing Shing I, but instead sought unsuccessfully to prove that it had co-invented the '585 design. See id. At least one model from the AR series (the subject of this action) already existed during the late stages of the Wing Shing I litigation and was referenced by Sunbeam as a non-infringing alternative to the AD series, but Wing Shing did not accuse the AR of infringement at that time. (Pl. 56.1 ¶¶ 104 -- 21.) Wing Shing first provided notice that the AR infringed on October 7, 2005, (Pl. 56.1 ¶ 137; Llewellyn Decl. Ex. AG at 14-15), and initiated this action in May 2006.

The Court denied defendants' original summary judgment motions without prejudice and stayed this action pending issuance of the en banc decision in Egyptian Goddess, Inc. v. Swisa, Inc., which portended significant revision of the standard for design patent infringement. See 256 Fed. App'x. 357, 357-58 (Fed. Cir. 2007). The parties renewed and re-briefed the motions after the Federal Circuit issued its now-seminal opinion. See Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008).

Sunbeam advances four independent grounds for summary judgment: invalidity of the '585 patent; collateral estoppel; non-infringement; and laches. Simatelex joins all of these arguments except invalidity. Because the Court finds as a matter of law that the accused devices do not infringe the '585 patent, it need not address defendants' other arguments.


Summary judgment is appropriate if the evidentiary record shows that "there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(c). An issue of fact is genuine if "a reasonable jury" could decide it in favor of the non-movant. Roe v. City of Waterbury, 542 F.3d 31, 35 (2d Cir. 2008) (citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986)). A fact is "material" if it might affect the outcome of the suit under controlling law. Mitchell v. Shane, 350 F.3d 39, 47 (2d Cir. 2003). The movant bears the burden to show that no genuine issue of material fact exists. Vermont Teddy Bear Co. v. 1-800 Beargram Co., 373 F.3d 241, 244 (2d Cir. 2004). For summary judgment purposes, all evidence is to be construed in the light most favorable to the non-movant, and every justifiable inference must be drawn in that party's favor. McClellan v. Smith, 439 F.3d 137, 144 (2d Cir. 2006). In general, infringement in a design patent case is a question of fact that the patentee must prove by a preponderance of the evidence. L.A. Gear v. Thorn McAn Shoe Co., 988 F.2d 1117, 1124 (Fed. Cir. 1993). Where no reasonable fact-finder could conclude that the patentee has met this burden, however, summary judgment is appropriate. See Egyptian Goddess, 543 F.3d at 679.


A. Egyptian Goddess

To determine if an accused object infringes a design patent, courts have traditionally undertaken a familiar two-step approach: first, construing the patent claim to determine its scope; and second, comparing the construed claim to the accused design to determine whether they are "substantially the same." Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995). In Egyptian Goddess, the Federal Circuit significantly altered both steps in the analysis. First, the court ...

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