TRISTAR PRODUCTS, INC. v. OCEAN STATE JOBBERS, INC. et al

Filing 98

OPINION. Signed by Judge Renee Marie Bumb on 7/15/2021. (dmr)

[Docket No. 67]
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEW JERSEY
CAMDEN VICINAGE

TRISTAR PRODUCTS, INC., et
al.,
Plaintiffs,

Civil No. 17-1767 (RMB/MJS)

v.
OPINION
OCEAN STATE JOBBERS, INC., et
al.,
Defendants.

APPEARANCES
NOAM JOSEPH KRITZER
EDWARD PAUL BAKOS
BAKOS & KRITZER
147 COLUMBIA TURNPIKE
FLORHAM PARK, NEW JERSEY 07932
On behalf of Plaintiffs
MARK DIANA
ROBIN KOSHY
OGLETREE DEAKINS NASH SMOAK & STEWART PC
10 MADISON AVENUE, SUITE 400
MORRISTOWN, NEW JERSEY 07960
On behalf of Defendant Ocean State Jobbers, Inc.

RENÉE MARIE BUMB, United States District Judge
This matter comes before the Court upon the Motion for Partial
Summary Judgment filed by Plaintiffs KE M.O. House Co. (“KE M.O.
House”)

and

Tristar

Products,

Inc.

(“Tristar

Products”

and,

collectively, “Plaintiffs”). [Docket No. 67.] Plaintiffs’ Motion

seeks summary judgment in their favor on Counts I, II, III, and
XI. [Id.] The Court previously denied in part this Motion, insofar
as it granted summary judgment in favor of Defendant Ocean State
Jobbers, Inc. (“Defendant” or “Ocean State Jobbers”)1 on Counts
II, III, and XI. [Docket No. 89.] The Court reserved judgment with
respect to Count I, which it addresses now. For the reasons set
forth herein, Plaintiffs’ Motion for Partial Summary Judgment on
the remaining Count I will be denied.
I.

FACTUAL BACKGROUND
This case arises out of an alleged design patent infringement

involving the sale of household cooking pans. Plaintiffs are two
companies that design and distribute household products including
cookware products such as pots, pans, and kitchenware. [Docket No.
67-1, at 5.] The principals of these entities are Keith Mirchandani
(Tristar

Products)

and

Mo-Tsan

Tsai

(KE

M.O.

House).

[Id.]

Mirchandani and Tsai applied for and received U.S. Design Patent
D772,641

(the

“‘641

patent”)

covering

the

design

of

a

pan;

Plaintiffs are the current assignees of the ‘641 patent that issued
on November 29, 2016. [Docket No. 67-2, ¶¶ 1-4; Docket No. 70-1,
¶¶ 1-4.] Plaintiffs have marketed and sold the pan described by

1

There are two defendants in this matter. However, only Ocean
State Jobbers has been served. [See Docket.] For purposes of this
Opinion, any reference to “Defendant” is limited to Ocean State
Jobbers. Any reference to “Defendants,” on the other hand, includes
both Ocean State Jobbers and Zhejiang Cooker King Cooker Co., Ltd.
2

the ‘641 patent under the “Copper Chef” brand within the United
States. [Docket No. 36, ¶¶ 11-12.]
The design of the ‘641 patent may be summarized as follows:
a deep pan with a main flat-bottomed copper-colored square pan
body with rounded corners, walls that rise at a slight outward
angle from the base, and a lipless top edge.

[Docket No. 67-6.] Attached to this pan body are two silver-colored
handles – one short handle that is attached to the pan body in two
locations and forms a looping handle, and a second straight handle
that is attached on the opposite side of the pan body from the
short handle and extends in a direction away from the pan body.
See id. Both of these handles have a roughly round or tubular
cross-section, and are attached to the pan body using rivets. See
id. On the bottom surface of the pan body is a silver-colored
induction plate that has a pattern of an inner circle surrounded
by six concentric rows of circumferentially-spaced circles or
divots and two outer concentric circles. See id.

3

The unserved Defendant Zhejiang Cooker King Cooker Co., Ltd.
(“Zhejiang Cooker”) is a Chinese manufacturer whom Plaintiffs had
initially contracted with to manufacture the pan described by the
‘641 patent. [Docket No. 67-2, ¶¶ 34-37; Docket No. 67-14.] After
an

apparent

dispute

between

Plaintiffs

and

Zhejiang

Cooker,

however, Zhejiang Cooker sold the pans to Defendant. Evidence has
been

introduced

that

Zhejiang

Cooker

removed

Plaintiffs’

trademarks and identifying information prior to selling the pans
to Defendant.2 [Docket No. 67-14.] Defendant operates a chain of
retail stores and offered the pans for sale at one or more of its
retail stores. [Docket No. 67-2, ¶¶ 33-37; Docket No. 67-14; Docket
No. 70-1, ¶¶ 33-37.]
II.

PROCEDURAL HISTORY
Plaintiffs

brought

this

suit

alleging

eleven

counts,

including infringement of the ‘641 patent, trademark infringement,
unfair competition, and false advertising, among others. [Docket

2

There is disagreement between the parties as to whether the
identifying information was removed from only some, or all, of the
pans before sale. [Docket No. 67-1, at 24 n.11.] It appears that
the intent was to remove the marks from all the pans, and that
this was successfully done on the vast majority, if not all but
one of the pans that were offered for sale. [Docket No. 70-2, at
13.] An inspection carried out by both parties found that none of
the 836 inspected pans bore the Copper Chef logo. [Id.] As
discussed at an earlier hearing, Plaintiffs introduced evidence
that they had in their possession one pan that contained
Plaintiff’s identifying information that was allegedly purchased
at one of Defendant’s stores. [Docket No. 67-2, ¶¶ 34-39.]
4

No. 36.] Previously, both Plaintiffs and Defendant filed Motions
for Partial Summary Judgment. [Docket Nos. 66, 67.] The Court
granted

Defendant’s

Motion,

entering

judgment

in

favor

of

Defendant on Counts II, III, IV, V, VI, VII, VIII, and XI as there
was a failure of evidence to support the claims. [Docket No. 89.]
The Court also denied in part Plaintiffs’ Motion, insofar as it
sought judgment in Plaintiffs’ favor on Counts II, III, and XI.
[Id.] However, the Court reserved judgment with respect to Counts
I, IX, and X, pending supplemental briefing from the parties. [Id.]
Plaintiffs thereafter dismissed Counts IX and X, which Defendant
did not oppose. [Docket No. 92, at 4-5; Docket No. 94, at 2.] As
such, the only Count that remains at issue is Count I, which
alleges

that

Defendants

infringed

the

‘641

patent

under

35

U.S.C. § 271. In addition to the previously filed briefs, [Docket
Nos. 67, 70, 73], the parties filed supplemental briefs on March
11 and 18, 2021, [Docket Nos. 90, 92, 94, 95]. Defendant opposes
summary judgment on Count I.3
III. LEGAL STANDARD
Summary judgment shall be granted if “the movant shows that
there is no genuine dispute as to any material fact and the movant
is entitled to judgment as a matter of law.” FED. R. CIV. P. 56(a).

3

Inexplicably, Defendant has not moved for summary judgment on
this Count even though its opposition brief seeks such judgment.
5

A fact is “material” only if it might impact the “outcome of the
suit under the governing law.” Gonzalez v. Sec’y of Dept of
Homeland Sec., 678 F.3d 254, 261 (3d Cir. 2012). A dispute is
“genuine” if the evidence would allow a reasonable jury to find
for the nonmoving party. Id.
In determining the existence of a genuine dispute of material
fact, a court’s role is not to weigh the evidence; all reasonable
inferences and doubts should be resolved in favor of the nonmoving
party. Melrose, Inc. v. City of Pittsburgh, 613 F.3d 380, 387 (3d
Cir. 2010). However, a mere “scintilla of evidence,” without more,
will not give rise to a genuine dispute for trial. Saldana v. Kmart
Corp., 260 F.3d 228, 232 (3d Cir. 2001). Moreover, a court need
not adopt the version of facts asserted by the nonmoving party if
those facts are “utterly discredited by the record [so] that no
reasonable jury” could believe them. Scott v. Harris, 550 U.S.
372, 380 (2007). In the face of such evidence, summary judgment is
still appropriate “where the record taken as a whole could not
lead a rational trier of fact to find for the nonmoving party.”
Walsh v. Krantz, 386 F. App’x 334, 338 (3d Cir. 2010).
The movant has the initial burden of showing through the
pleadings, depositions, answers to interrogatories, admissions on
file,

and

any affidavits

“that

the

non-movant

has failed

to

establish one or more essential elements of its case.” Connection
Training Servs. v. City of Phila., 358 F. App’x 315, 318 (3d Cir.
6

2009). “If the moving party meets its burden, the burden then
shifts to the non-movant to establish that summary judgment is
inappropriate.” Id. In the face of a properly supported motion for
summary judgment, the nonmovant’s burden is rigorous: it “must
point to concrete evidence in the record”; mere allegations,
conclusions, conjecture, and speculation will not defeat summary
judgment. Orsatti v. New Jersey State Police, 71 F.3d 480, 484 (3d
Cir. 1995); accord Jackson v. Danberg, 594 F.3d 210, 227 (3d Cir.
2010) (citing Acumed LLC. v. Advanced Surgical Servs., Inc., 561
F.3d 199, 228 (3d Cir. 2009) (“[S]peculation and conjecture may
not defeat summary judgment.”). However, “the court need only
determine if the nonmoving party can produce admissible evidence
regarding a disputed issue of material fact at trial”; the evidence
does not need to be in admissible form at the time of summary
judgment. FOP v. City of Camden, 842 F.3d 231, 238 (3d Cir. 2016).
While this case involves issues of patent law, “summary
judgment is as appropriate in a patent case as in any other.” Avia
Group Int’l, Inc. v. L.A. Gear California, Inc., 853 F.2d 1557
(Fed. Cir. 1988) (citations omitted), abrogated on other grounds.
The law of the regional circuit applies for a determination of
summary judgment in a patent case. High Point Design LLC v. Buyers
Direct, Inc., 730 F.3d 1301, 1311 (Fed. Cir. 2013) (“[The Federal
Circuit] reviews a district court’s grant of summary judgment under
the law of the regional circuit.”).
7

IV.

DISCUSSION
Plaintiffs seek summary judgment on Count I on the grounds

that Defendant’s pans, which were produced by the same company and
using the same molds as those used to produce Plaintiffs’ pans,
are indistinguishable and that no reasonable jury could reach a
conclusion that Defendant had not infringed the ‘641 patent.
[Docket No. 67-1, at 12-25.] In response, Defendant argues that
the ‘641 patent is invalid as being obvious under 35 U.S.C. § 103.
[Docket Nos. 70, 94.]4
Because the allegation of infringement is accompanied by the
defense of invalidity, there are two primary evaluations that must
be undertaken in analyzing this Motion, first, infringement, and
second, invalidity.
A.

Infringement

“Design patent infringement is a question of fact, which a
patentee must prove by a preponderance of the evidence.” Columbia
Sportswear North America, Inc. v. Seirus Innovative Accessories,
Inc., 942 F.3d 1119, 1129 (Fed. Cir. 2019) (citations omitted). In
order to evaluate infringement of a design patent, courts apply
the “ordinary observer” test as laid out by the Federal Circuit;

4

Defendant also asserts additional defenses to the alleged
infringement, but their responses to the instant Motion are based
on the invalidity of the ‘641 patent. [Docket Nos. 38, 70, 90,
94.]
8

this is the only test that applies to design patent infringement.
Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir.
2008); Columbia Sportswear, 942 F.3d at 1129.
The ordinary observer test asks whether “in the eye of an
ordinary observer, giving such attention as a purchaser usually
gives, two designs are substantially the same” and whether the two
items are “the same in general appearance and effect, so much . . .
that even persons in the trade would be in danger of being deceived
[into believing that they are the same product].” Egyptian Goddess,
Inc. v. Swisa, Inc., 543 F.3d 665, 670 (Fed. Cir. 2008) (quoting
Gorham Co. v. White, 81 U.S. 511, 528, 531 (1871)).
As noted, the pans offered for sale by Defendant were made
based

on

the

‘641

patent

by

the

same

process,

to

the

same

specification, and by the same manufacturer as Plaintiffs’ pans.
[Docket No. 67-14.] The only difference between the two pans is
that Defendant’s pans had Plaintiffs’ trademark and identifying
information removed from the underside before being offered for
sale.5 [Id.] Putting aside the brand/identifying information, there
is no dispute that the pans are identical. Assuming arguendo that
the ‘641 patent is valid, no reasonable jury would find that an

5

Although Plaintiffs dispute this, as this Court previously found,
Plaintiffs have introduced evidence that only one pan contained
the Plaintiffs’ mark. [See Docket No. 88.] An inspection by the
parties of 836 pans revealed no such mark on any of the pans.
[Docket No. 70-2, at 13.]
9

ordinary observer would not confuse the two pans as being the same.
Therefore,

if the

‘641 patent

is valid,

then Plaintiffs are

entitled to judgment on Count I. The Court now turns to invalidity.
B.

Obviousness
1.

Standard

Federal courts cannot declare a patent valid. Panduit Corp.
v. Dennison Mfg. Co., 810 F.2d 1561, 1569 (Fed. Cir. 1987) (“It is
neither necessary nor appropriate for a court to declare a patent
valid.”). Per 35 U.S.C. § 282, a patent is presumed valid and
remains valid until a challenger has met its burden of establishing
invalidity. Panduit, 810 F.2d at 1569-70. In order to succeed on
an

allegation

of

invalidity,

the

challenger

must

“show

the

invalidity of the claims by clear and convincing evidence as to
underlying facts.” Rockwell Int’l Corp. v. U.S., 147 F.3d 1358,
1364

(Fed.

Cir.

1998)

(citations

omitted).

“The

‘clear

and

convincing’ standard of proof of facts is an intermediate standard
which lies somewhere between ‘beyond a reasonable doubt’ and a
‘preponderance of the evidence’ . . . [and] has been described as
evidence which produces in the mind of the trier of fact ‘an
abiding conviction that the truth of [the] factual contentions are
highly probable.’” Buildex Inc. v. Kason Indus., Inc., 849 F.2d
1461, 1463 (Fed. Cir. 1988) (quoting Colorado v. New Mexico, 467
U.S. 310, 316 (1984)). If a challenger meets this burden of proving

10

invalidity, a court should declare the patent invalid. Panduit,
810 F.2d at 1569.
This presumption of validity applies to “all of the many bases
for challenging a patent’s validity,” which include, but are not
limited to, challenges of anticipation and obviousness. Id. at
1570. Additionally, “this presumption [of patent validity] exists
at every stage of the litigation.” Sanofi-Synthelabo v. Apotex,
Inc., 470 F.3d 1368, 1375 (Fed. Cir. 2006) (quoting Canon Computer
Sys., Inc. v. Nu–Kote Int’l, Inc., 134 F.3d 1085, 1088 (Fed. Cir.
1998)).
However, a court may declare a patent invalid. See Panduit,
810

F.2d

at

1570.

Obviousness

is

one

way

to

establish

the

invalidity of a patent. 35 U.S.C. § 103 (“A patent for a claimed
invention may not be obtained . . . [if] the claimed invention as
a whole would have been obvious . . . to a person having ordinary
skill in the art to which the claimed invention pertains.”); see
also United States v. Adams, 383 U.S. 39, 48 (1966) (“[N]ovelty
and nonobviousness — as well as utility — are separate tests of
patentability and all must be satisfied in a valid patent.”). In
opposition to Plaintiffs’ Motion, Defendant asserts that the ‘641

11

patent is invalid as being obvious under 35 U.S.C. § 103.6 [Docket
No. 70, at 2-10; Docket No. 94, at 3-4.]
The determination of whether a patent is obvious
is a question of law, based on underlying factual
determinations, including: “the scope and content of the
prior art”; “differences between the prior art and the
claims at issue”; “the level of ordinary skill in the
pertinent art”; and “[s]uch secondary considerations as
commercial success, long felt but unsolved needs,
failure of others, etc.”
Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376,
1384 (Fed. Cir. 2015) (quoting Graham v. John Deere Co., 383 U.S.
1, 17, (1966)). While obviousness is a question of law, “[w]hen
the parties dispute the underlying facts, the issue of obviousness

6

In its Answer to Plaintiffs’ Second Amended Complaint, Defendant
raises anticipation as an affirmative defense. [Docket No. 38, at
14.] However, because Defendant does not raise the argument of
anticipation in response to Plaintiffs’ Motion for Partial Summary
Judgment – although it certainly sounds much like an anticipation
defense – the Court will not address that issue here. The Court
notes that in its briefs Defendant uses the term “obvious” when
arguing that a single piece of prior art standing alone should
invalidate the patent. [See, e.g., Docket No. 90]. These appear to
be arguments relating to anticipation, and not obviousness,
because obviousness “requires considering whether two or more
pieces of prior art could be combined, or a single piece of prior
art could be modified, to produce the claimed invention.” Comaper
Corp v. Antec, Inc., 596 F.3d 1343, 1351-52 (Fed. Cir. 2010). The
Court notes that there are different legal and factual standards
between a finding of invalidity for anticipation or obviousness.
See, e.g., CRFD Research, Inc. v. Matal, 876 F.3d 1330, 1345 (Fed.
Cir. 2017) (“[A]nticipation is a question of fact, while
obviousness is a question of law based on underlying factual
findings.”). Defendant has not argued anticipation in its briefs
in opposition to Plaintiffs’ Motion for Partial Summary Judgement,
and the Court will not bring up such arguments sua sponte.
12

typically is submitted to the jury.” Duro-Last, Inc. v. Custom
Seal, Inc., 321 F.3d 1098, 1108 (Fed. Cir. 2003).
“Invalidity for obviousness requires a showing that the prior
art viewed as a whole would have suggested the claimed process to
one

skilled

in

the

art.”

Rockwell,

147

F.3d

at

1366.

A

determination of obviousness requires that each element of the
claimed invention existed in the prior art, and that it would be
obvious to one of ordinary skill in the art to combine each of
these

elements

into the

claimed invention.

See

KSR

Int’l v.

Teleflex Inc., 550 U.S. 398, 418 (2007). It is not sufficient that
“each of [the claimed invention’s] elements was, independently,
known in the prior art”; there also must be a showing that the act
of combining these elements would have been obvious to one of
ordinary skill in the art. KSR Int’l, 550 U.S. at 418.
The obviousness of a design patent must be assessed from the
viewpoint of an “ordinary designer.” See, e.g., High Point Design
LLC v. Buyers Direct, Inc., 730 F.3d 1301 (Fed. Cir. 2013). This
test specifies that “the ultimate inquiry . . . is whether the
claimed design would have been obvious to a designer of ordinary
skill who designs articles of the type involved.” Apple, Inc. v.
Samsung Electronics Co., Ltd., 678 F.3d 1314, 1329 (Fed. Cir. 2012)
(citations omitted). This “ordinary designer” analysis requires
the application of a two-step process, as laid out by the Federal
Circuit:
13

First, “one must find a single reference, ‘a something
in existence, the design characteristics of which are
basically the same as the claimed design.’” Second,
“other references may be used to modify [the primary
reference] to create a design that has the same overall
visual appearance as the claimed design.” However, the
“secondary references may only be used to modify the
primary reference if they are ‘so related to the primary
reference that the appearance of certain ornamental
features in one would suggest the application of those
features to the other.’”
Id. (quoting Durling v. Spectrum Furniture Co., Inc., 101 F.3d
100,

103

(Fed.

Cir.

1996))

(internal

citations

omitted).

Additionally, as part of the first step of the Durling analysis,
the Court must translate the design of the challenged patent into
a verbal description, which the Court has done above. See High
Point Design, 730 F.3d at 1314.
2.

Prior Art

In applying the standards outlined above, the Court first
looks to the prior art in this case. Prior art refers to any such
patents, publications, offers for sale, public uses, or any other
such item, event, or circumstance that could be used to challenge
the

novelty

or

non-obviousness

of

a

claimed

invention.

35

U.S.C. § 102. This prior art must predate the effective filing
date of the challenged patent. Id. Whether a certain reference
qualifies as prior art is a question of law. Riverwood Int’l Corp.
v. R.A. Jones & Co., Inc., 324 F.3d 1346, 1352 (Fed. Cir. 2003).
Defendant points to a number of pieces of uncontested prior
art. [Docket No. 90-1, at 9-10.] This prior art includes patents
14

from

China

(Chinese

Design

Patent

Nos.

CN

301766853

and

CN

301060141), Germany (Registered Community Designs 000368949 and
001994369), the United States (U.S. Patent Nos. D594,271 and
D696,060) as well as catalogs and advertisements showing different
household pan designs (the Woll W1024NL from the Frieling Catalog,
and the E269 and E269GS from the AMT Gastroguss Catalog). [Id.]
Additionally, there is one specific piece of art that the
parties dispute in this case: the “Winolaz Pan.”7 The parties
disagree over the general admissibility of the Winolaz Pan as prior
art as well as the features that the Winolaz Pan discloses.
Defendant asserts that the Winolaz Pan has been on sale or has
otherwise qualified as prior art since at least September 2012 and
thus should be considered prior art against the ‘641 patent, which
has an effective filing date of December 1, 2015. [Docket No. 90,
at 2; U.S. Patent No. D772,641.] Defendant supports this claim
with an email from a Winolaz employee stating that the pan has
been produced since September 2012.8 [Docket No. 70-2, at 99.]

7

The parties also alternatively refer to this pan as the “Copper
Queen” pan. [See. e.g., Docket No. 90, at 2.]
8

The Court notes that the employee states that the pan has been
“produced” since September 2012, but it is unclear if this is also
the same date that it was first in public use, offered for sale,
described in a printed publication, or otherwise in a state that
would qualify it as prior art. See 35 U.S.C. § 102.
15

In response, Plaintiffs make three general arguments: (1)
that the Winolaz Pan is inadmissible because Defendant did not
follow the Local Patent Rules; (2) that the evidence allegedly
supporting

Defendant’s

argument

about

the

Winolaz

Pan

is

inadmissible as hearsay; and (3) that, even if the Winolaz Pan is
admissible, it is not prior art. [See Docket No. 95, at 6-20.] The
Court will first address the admissibility of the Winolaz Pan
before considering the prior art in this case.
i.

The Admissibility of the Winolaz Pan

With respect to the Local Patent Rules, Plaintiffs’ arguments
fail. They argue that the Winolaz Pan is inadmissible because
Defendant failed to comply with the Local Patent Rules of the
District of New Jersey in submitting the Winolaz Pan as prior art.
[Docket

No.

95,

at

6.]

Specifically,

Plaintiffs

allege

that

Defendant failed to comply with Local Patent Rules 3.3(a)-(b) and
3.4(b)-(c).9 [Docket No. 95, at 11.] Specifically, Plaintiffs argue

9

Rule 3.3(a) refers to a version of 35 U.S.C. § 102 that predated
the Leahy-Smith America Invents Act (AIA). The Rule lays out
different requirements for the different categories of prior art
described by pre-AIA § 102(b), (f), and (g), as well as
requirements for prior art patents and publications. So, Rule
3.3(a) references § 102(f) and (g), which have been repealed, as
well as § 102(b), which is significantly different from the pre-AIA
version. Although Rule 3.3(a) references sections of the law that
have been repealed or changed, the intent of the rule is clear as
it lays out different requirements for prior art based on which
category it falls into (e.g., a prior publication, patent, or offer
for sale). These outdated references do not affect the Court’s
analysis because the categories of prior art at issue here are
16

that Defendants did not comply with Rule 3.3(a), which requires
that each piece of prior art that is used to show that the claimed
invention was patented, described in a printed publication, in
public use, or on sale prior to patenting10 must
be identified by specifying the item offered for sale or
publicly used or known, the date the offer or use took
place or the information became known, and the identity
of the person or entity which made the use or which made
and received the offer, or the person or entity which
made the information known or to whom it was made known.
L. PAT. R. 3.3(a). Plaintiffs argue that Defendant failed to comply
with any of the requirements of Rule 3.3(a). [Docket No. 95, at
11.]
It is clear from the record that Defendant complied with the
requirements
Disclosure

of

of

Rule

3.3(a).

Invalidity

Defendant

Contentions,”

provided
which

a

“Rule

3.3

identified

the

Winolaz Pan by name as the “Winolaz Pan,” stated that it has been
for

sale

since

September

2012,

and

provided

a

link

to

the

still relevant and described by the current § 102(a). The Court
will interpret the references to pre-AIA § 102 as instead referring
to the relevant portions of the current § 102(a), where applicable.
In addition, Rule 3.3(a) requires that each party opposing an
assertion of patent infringement identify each item of prior art,
regardless of the category of prior art. L. PAT. R. 3.3(a).
10

Rule 3.3(a) lays out these requirements for the admission of
prior art under pre-AIA 35 U.S.C. § 102(b), which describes
prior art showing that “the invention was patented or described
in a printed publication in this or a foreign country or in
public use or on sale in this country, more than one year prior
to the date of the application for patent in the United States.”
35 U.S.C. § 102 (2002), amended by 35 U.S.C. § 102 (2011).
17

manufacturer’s webpage showing Hefei Winolaz Cookware Co., Ltd. as
being

the

entity

who

made

the

offer

for

sale

or

made

the

information known. [Docket No. 90-1, at 10.]
Plaintiffs also argue that Defendant failed to comply with
Rule 3.4(b)-(c) by failing to provide a “copy or sample” of the
prior art and by failing to “produce any other document or thing
on which it intends to rely in support of its assertion.” [Docket
No. 95, at 11.] The record shows that Defendant also complied with
this portion of the Rules. In the original disclosure of invalidity
contentions,

Defendant

identified

a

two-page

sheet

with

information regarding the Winolaz Pan, [Docket No. 90-1, at 16-17;
Docket No. 95, at 9], as well as a website link to the Winolaz
website showing the Winolaz Pan being offered for sale. [Docket
No. 90-1, at 10 n.1.]
Turning to Plaintiffs’ hearsay argument, Plaintiffs argue
that the email from the Winolaz employee should be considered
hearsay under Rule 802 of the Federal Rules of Evidence. [Docket
No. 95, at 13-19.] However, evidence need not be in an admissible
form in order for the Court to consider it at the summary judgment
stage. Rather “the court need only determine if the nonmoving party
can produce admissible evidence regarding a disputed issue of
material fact at trial.” FOP v. City of Camden, 842 F.3d at 238.
Defendant has put forth evidence that it can present such evidence
in an admissible form at trial, to wit, by calling the Winolaz
18

employee to testify as to the earliest date of sale of the Winolaz
Pan. Therefore, the Court will not deem the evidence about the
Winolaz Pan inadmissible at this stage.
ii.

The Authenticity of the Winolaz Pan

Finally, Plaintiffs argue that the Winolaz Pan cannot be
authenticated as prior art even if it is admissible. [See, e.g.,
Docket No. 95, at 19-20.] This, however, is a question of fact for
the jury; it would be inappropriate for the Court to make a
credibility

determination

or

factual

finding

at

this

stage.

Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986). In
particular, what feature or features the Winolaz Pan discloses is
a question of fact. See Mettler-Toledo, Inc. v. B-Tek Scales, LLC,
671 F.3d 1291, 1297 (Fed. Cir. 2012) (“What is disclosed by a prior
art reference is a question of fact.”). The crux of this factual
dispute involves Plaintiffs’ claim that a number of the images
that Defendant has submitted as being the Winolaz Pan are actually
images of Plaintiffs’ Copper Chef pan itself. [Docket No. 90, at
3; Docket No 95-1.] This uncertainty is further highlighted by the
fact that the images that Defendant submits as being the Winolaz
Pan appear to show pans of different designs. One such example of
this is a document provided by Defendant, which shows a sheet
summarizing the Winolaz Pan accompanied by three images that
purport to show the Winolaz Pan. [Docket No. 67-26.] The three
images included in this document are reproduced below:
19

[Docket 67-26, at 2.]

[Docket 67-26, at 2.]

20

[Docket 67-26, at 2-3.] None of the three photographs in this
document show the underside of the pan, so it is impossible to
tell if it contains an induction plate similar to the one specified
in the ‘641 patent. The first image shows a pan with the same basic
shape and color as shown in the ‘641 patent, but with slight
differences to the handles – namely they have a flattened instead
of rounded shape, and the long handle attachment is forked. The
second image shows a pan that appears similar to the first image,
but instead has more rounded handles that appear similar (if not

21

identical) to those specified in the ‘641 patent. The third image
similarly

shows

a

pan

with

rounded

handles,

however

the

authenticity of this image is disputed and Plaintiffs argue that
it actually shows an image from their own marketing materials.
[See Docket No. 95-1.] In later submissions, Defendant puts forward
images (reproduced below) that purport to show the underside of
the Winolaz Pan, including depictions of the previously omitted
induction plate. [Docket No. 90, at 2-3.]

[Docket No. 90, at 3.] However, Plaintiffs again contend that these
images actually show Plaintiffs’ product, and were directly taken
from

marketing

materials

for

Plaintiffs’

pan.

[Docket

No.

95-1, ¶¶ 2, 6.] If Defendant is successful in proving that the
22

images that they have put forward as showing the Winolaz Pan are
authentic, and not from Plaintiff’s catalogues, then – as the
parties must recognize – the case for invalidity of the ‘641 patent
is almost certain given the similarities between the two pans.
Given the parties’ arguments about the Winolaz Pan, the next
issue for the Court to resolve is whether or not the factual
dispute is material. The Court will now address that issue by
analyzing whether, given the relevant prior art, the ‘641 patent
was obvious to an ordinary designer.11
3.

Obviousness to an Ordinary Designer

The Court assumes that the Winolaz Pan will qualify as prior
art and that Defendant is correct regarding the features that the
art discloses. Therefore, for the purposes of this Opinion, the
Winolaz Pan will serve as the primary reference because its design
characteristics are “basically the same as the claimed design,” as
required in the first step of the Durling analysis. Durling, 101
F.3d at 103. Making all reasonable inferences in Defendant’s favor,
each depiction of the Winolaz Pan shows a design that is “basically
the same” as the design shown in the ‘641 patent. Each depiction

11

The Court notes that, even assuming arguendo that the Winolaz
Pan was inadmissible or unconvincing to a jury, the parties’
remaining arguments about other prior arts also boil down to
questions of fact. Therefore, even if the Winolaz Pan was not
admissible, the legal question of obviousness would still be
reliant on the resolution of questions of fact reserved for the
jury.
23

of the Winolaz Pan shows a pan with a similar main copper-colored
square deep pan body, and a short and long handle of similar style
and attachment to that shown in the ‘641 patent. [See, e.g., Docket
No. 90, at 3; Docket No. 67-26.] When comparing images of the
Winolaz Pan and ‘641 pan side-by-side, they create the same visual
impression, and this visual impression holds true for any of the
images put forward that purport to show the Winolaz Pan. [Docket
No. 67-26.] See High Point Design LLC v. Buyers Direct, Inc., 730
F.3d 1301, 1314 (Fed. Cir. 2013) (suggesting that when identifying
a primary reference, a “district court should do a side-by-side
comparison of the two designs to determine if they create the same
visual impression”).12

12

The Court notes that the disputes about the Winolaz Pan amount
to a genuine issue of material fact as to whether a piece of prior
art may serve as a primary reference. While the Court is of the
opinion that the Winolaz Pan is “basically the same” as the ‘641
patent design, in such a case where there remains a material
dispute regarding a primary reference, summary judgment is not
proper and questions remain for the jury. See High Point Design,
730 F.3d 1301 (reversing summary judgment where genuine issues of
material fact existed as to whether claimed prior art were proper
primary references); Spigen Korea Co., Ltd v. Ultraproof, Inc.,
955 F.3d 1379 (Fed. Cir. 2020) (holding that a factual issue
regarding whether prior art was a primary reference precluded
granting summary judgment that a patent was invalid as obvious).
Therefore, on that basis alone, summary judgment must be denied
here. The Court further notes that, even if the Winolaz Pan were
not admissible or the jury were not convinced by Defendant’s
evidence about the Winolaz Pan, this dispute as to whether there
is a primary reference remains. Plaintiffs contend that there is
not a proper primary reference. [Docket No. 92, at 12 n.3.]
Defendant argues that a number of different pans could serve as a
primary reference, and specifically points to the Woll W1024NL,
24

With the Winolaz Pan as the primary reference, the secondary
prior art references that Defendant points to teach many, if not
all, of the features described in the ‘641 patent. The Woll W1024NL
pan [Docket No. 67-18, at 10], the AMT pans (E269GS, E269, and
E267) [Docket No. 67-19, at 28-29], Registered Community Design
000368949 (“RCD ‘949”) [Docket No. 67-21], and Chinese patent CN
301766853 (“CN ‘853”) [Docket No. 67-20] teach a pan with a square
body

with

rounded

corners

and

sides

that

rise

at

an

angle.

Registered Community Design 001994369 (“RCD ‘369”) teaches that a
round induction plate may be placed on the underside of a deep
square pan. [Docket No. 67-23.] U.S. Patent No. D594,271 (the “‘271
patent”) and U.S. Patent No. D696,060 (the “‘060 patent”) teach
the addition of a similarly styled induction plate on the underside
of the pan body. [Docket No. 67-1, at 20; U.S. Patent No. D594,271;
U.S. Patent No. D696,060.] The AMT pans [Docket No. 67-19], Woll
pans [Docket No. 67-18], and Swiss Diamond pans [Docket No. 67-19,
at 86] teach that the long and short handles can be located on
opposite sides of the pan body and may have a roughly rounded or
tubular profile. The AMT pans additionally teach that these handles
may have a thin profile, may be silver-colored, and may be attached

the AMT pans (E269GS, E269, and E267), the RCD ‘949, and the CN
‘853 pans. [Docket No. 70, at 10.] Therefore, even removing the
Winolaz Pan from consideration, the same factual dispute precludes
the Court from granting Plaintiffs’ Motion.
25

to the pan body with two fasteners. [Docket No. 67-19, at 36-39.]
Chinese patent application CN 200730319097.3 (“CN ‘097”), Chinese
patent application CN 03353517.5 (“CN ‘517”), and the ‘271 patent
teach the attachment of the handles using rivets in a manner
basically the same as shown in the ‘641 patent. [Docket No. 73-4;
U.S. Patent No. D594,271.] Moreover, in an ex parte reexamination
of the ‘641 patent, the United States Patent and Trademark Office
held that the “copper color is an obvious design choice and
provides no patentable distinction,” and additionally Plaintiffs
concede that “the copper color . . . is not an issue relevant to
the present Motion.” [Docket 73, at 8 n.6; Docket 73-4.]13
The parties disagree on whether the combination of the prior
art would be obvious to an ordinary designer. Defendant asserts
that it would be obvious to an ordinary designer to combine
features in the prior art to create the design described in the
‘641 patent, and it puts forth the testimony of one of its
designers in support. [Docket No. 70-2, ¶¶ 5-7.] Plaintiffs argue
that Defendant has only provided a “list of references” and has
not shown that it would have been obvious to an ordinary designer

13

As part of separate litigation, on May 3, 2017, Telebrands Corp.
filed a request for an ex parte reexamination of the ‘641 patent,
which was granted on August 3, 2017, and confirmed the
patentability of the single claim on May 30, 2019. Tristar Prods.
Co. v. Telebrands Corp., Civil Action No. 17-1206 (RMB-JS), Docket
No. 60, at 8 (D.N.J. Sept. 15, 2017).
26

to combine these references into the design shown in the ‘641
patent. [Docket No. 92, at 11-13.] Plaintiffs also point to the
holding of the examiner who undertook the ex parte reexamination
of the ‘641 patent and determined that it was not obvious to an
ordinary designer – though it should be noted that the prior art
considered by the patent examiner did not include all of the prior
art considered by the Court currently, most significantly the
Winolaz Pan. [Docket No. 73-4, at 5-9.]
The combination of prior art that might render the ‘641 patent
obvious to an ordinary designer is dependent on the many factual
disputes laid out above. Therefore, the Court will deny Plaintiffs’
Motion on that basis.
V.

CONCLUSION
For the foregoing reasons, the Court will deny Plaintiffs’

Motion for Partial Summary Judgment. An accompanying Order shall
issue.

July 15, 2021
Date

s/Renée Marie Bumb
RENÉE MARIE BUMB
United States District Judge

27