Design Patent Infringement: Kimber Cakeware v. Bradshaw

by Dennis Crouch

Kimber Cakeware v. Bradshaw Int’l (S.D. Ohio 2013)

Kimber’s design patent No. D671,376 covers a cup-cake batter separator. Kimber sells these as “batter babies” and they allow you to make cupcakes with two types of batter. Cool idea. Of course using a divider to segmenting baked goods is not a new idea. In fact, Robert Reiser (the ’376 patentee) has his own prior patents covering other forms of cake-batter separators.

The question in this recently filed case is going to be infringement: whether “in the eye of an ordinary observer, giving such attention as a purchaser usually gives [and in light of the prior art], the two designs are substantially the same.” Quoting Gorham v. White (1871) as described in Egyptian Goddess v. Swisa (Fed. Cir. 2008).

The following image comes from the Kimber complaint. Of course, the missing factor here is the prior art.

ScreenShot003

File Attachment: KimberComplaint.pdf (403 KB)

58 thoughts on “Design Patent Infringement: Kimber Cakeware v. Bradshaw

  1. Seems like the big picture here is that they are both cupcakes. A cupcake is pretty much something you would expect here for a design. The two cupcakes are about as different as cupcakes can get. Therefore, to extend the design patent to cover all cupcakes is too much design space.

    Although, maybe Stern can tell us it is a natural law so all cupcakes are the same, or Lemley can tell us that there is no structure in either cupcake design so they are the same design. Funny that the two of you hide and publish in your vanity presses.

  2. I make no such admission.

    Obtuse. Is it on purpose? (Said in the best Andy Dufresne tones). Can you really be that dense?

    His mere suggestion lacks any (and I do mean ANY) meat.

    There is no actual attempt – yet. That is why I reposted – I want to see some scintella of an attempt.

    If the good professor has some (even remote) inkling of how DOE would be applied to design patents, let’s see something. I am curious to see how ornamental is tied to the crux of function/way/result.

    It makes me wonder if you even know what DOE is, IANAE.

    Or perhaps your addiction to Calvinball face spikes is just resurfacing…

  3. the good professor has (again) indicated that DOE may make design patents stronger than you think

    So you admit you were wrong yesterday, when you said that “attempting to use that doctrine would be legal error”? Because he’s clearly attempting it, and he’s the first one in the thread to suggest doing so.

  4. Impressive that you so miss the boat, IANAE.

    Clearly, I am posting (again) because the good professor has (again) indicated that DOE may make design patents stronger than you think – without giving any hint as to how.

    Ever the @_$$ without the smart, you are.

  5. Perhaps a hint of how DOE works in the design patent realm professor…?

    Impressive. Not even 24 hours ago, two posts up in this very thread, you claimed that even attempting to use DOE for design patents would be legal error.

  6. Perhaps the point is that design patent might not be as narrow as you think.

    On Mar 5, 2013 8:37 AM, "Dennis Crouch" <dcrouch@gmail.com> wrote:

    That is called the doctrine of equivalents.

  7. Sigh. Lawyers arguing over cupcake separators with lots of money at stake. Way to advance society, patent system.

  8. Mooney–

    Nice work! I say that only because your conclusions are exactly the same as my own :)

    Maybe you and I should start up a design patent boutique firm–I hear the overheads are low, lol. Heck, I don’t think we’d even need liability insurance!

  9. Person A passed a sketch to Person B, who responded by drawing a new sketch of a design that included none of the elements of the design in Person A’s sketch.

    Is person A a co-inventor of the DESIGN?

    No.

    What if these 2 described sketches were the last in a longer series of back-and-forth sketches, but the final sketch by Person B still included no elements of the designs in any of the previous sketches?

    Still no.

    Is each sketch to be treated as its own design invention, if they are all completely different?

    Yes.

    What if it was more than just trading sketches, and if there was any conversation between the two of them, but no specific direction as to what to sketch?

    Still no.

    What if some of them contain some elements from earlier sketches?

    Not enough facts to answer. Depends on the elements and whether the elements in prior sketches were old in the art or obvious, and (of course) whose sketches they were.

    Design patent law = sad joke on the world at everyone else’s expense

    My answers would not make that joke even worse than it already is. That’s why they are the correct answers.

  10. I’ll give a start point: Hoop (FedCir 2004), and the fact that B’s sketch was not “substantially similar” to A’s sketch.

  11. And yes, I know about the “inventive concept” test, and “substantial vs superficial”, something I have always found to have been an unfortunate choice of wording in a design patent context.

  12. Sorry, question should have read: “Is Person A a co-inventor of the design disclosed in Person B’s sketch?”

  13. Yes, I’m still waiting for Perry to come out of hiding and have a mature discussion about, well, anything.

    Meanwhile, I’m dealing with a different design patent issue–inventorship.

    In utility patents, the issue of inventorship is explored with particular reference to conception. In designs, conception and reduction-to-practice can, and sometimes do, occur simultaneously.

    I have a situation where 2 people were sitting around trading sketches. Person A passed a sketch to Person B, who responded by drawing a new sketch of a design that included none of the elements of the design in Person A’s sketch.

    Is person A a co-inventor of the DESIGN?

    What if these 2 described sketches were the last in a longer series of back-and-forth sketches, but the final sketch by Person B still included no elements of the designs in any of the previous sketches? Is each sketch to be treated as its own design invention, if they are all completely different? What if some of them contain some elements from earlier sketches?

    What if it was more than just trading sketches, and if there was any conversation between the two of them, but no specific direction as to what to sketch?

    BTW, inventorship is a QoL and if in an issued patent requries C&C evidence to overcome, I believe.

    I’ve got my own ideas, but I’m interested to hear other people’s. This type of “design session” occurs often, sometimes with the last-produced sketch ultimately modified to some extent.

  14. the accused design is closer to the patented design than the prior art of record.

    As discussed, the “prior art” for “designs” for cupcake batter separators includes, among probably thousands of other embodiments, a piece of paper with roughly trapezoidal shape (i.e., the dimensions of a cross-sectioned cupcake) and lacking an array of nine bumps at the top — exactly like the accused design.

    The patentee is surely aware of that art and, in fact, has admitted that such separators are ancient in the culinary fields (see, e.g., USPN 7533864: “In earlier times one wishing to create such a cake had to improvise and use cardboard cut outs or purchase single size cake batter separators designed specifically for each type of pan.”) Perhaps there is a nice inequitable conduct argument to be made as well (although it would seem a laugh in the context of design patents where inequity is apparently the rule rather than the exception).

    Perhaps at this time it would be prudent for some kind person to provide the attorneys who filed this case with examples of the prior art. That way there will be no confusion about what prior art these wise professionals and their client were “aware of” when they decided to proceed with their frivolous case.

    Anyone with one eye can see that if the accused device infringes that design, then anyone who cuts out a piece of cardboard for the purpose of cupcake batter separation is also infringement, or could certainly also be sued “non-frivolously”. And that’s an effed up result. Yes, the USPTO and the Federal Circuit certainly share some of the blame for the sad state of design patents but so too do the b-ttomfeeders who filed this case. And they can and should be sanctioned.

    I think everyone in the confectionery industry should know about this lawsuit, particularly small independent cupcake and candy purveyors, and they should understand what it means for them when these sorts of lawsuits can be filed without sanctions. Like I said: spread the word. I’ve already forwarded info to friends and bakery owners and they were d-sgusted.

  15. But isn’t that the wrong application of the doctrine of equivalents?

    If you were applying the DOE to an utility patent in the normal way to capture an equivalent functionality, then sure, the DOE may apply. But since the inventive aspect in a design patent is expressly NOT the functional equivalent, attempting to use that doctrine would be legal error, no?

  16. Imagine telling the court in a real [utility] patent suit: “well, your honor, you can just ignore any parts of our patent claim that don’t happen to be in the accused infringers product.”

    You’d have to argue that the icing swirl at the top of the defendant’s product is an equivalent of the little circles.

  17. Just curious mr post your email address,

    As an attorney asked to file the complaint, what type of due diligence would you engage in to satisfy your Rule 11 ethical requirement? Would you be satisfied with any art cited by the Office during examination, or would you strive to understand what the actual art field was?

  18. This is not a frivolous case. With the prior art cited by the Examiner I would have no problem filing the complaint in this case. If the defendant cannot find better prior art than it stands a good chance of losing as the accused design is closer to the patented design than the prior art of record. Design patents are a great weapon.

  19. It doesn’t differ by much, if it’s evident from a photograph of the accused product that the utility patent is clearly not infringed either.

    And when the utility patent claim refers to a picture in the claim. And when the picture is really, really simple. How often does that happen?

    Answer: pretty much never. Big difference.

    Egyptian Goddess effectively broadens the scope of the “claim” to encompass anything about halfway between the literal claim and the prior art, unlike real patents

    Okay, let’s assume (a huge assumption) that the only prior art is a roughly trapezoidal piece of paper with a flat top, with no tight array of bumps in a dimple near the apex. Then let’s assume that Egyptian Goddess applies the way IANAE says.

    So “halfway” between “a tight array of nine bumps” and “nothing” is … nothing! Sure, that makes sense.

    The argument that needs to be made is that “ordinary observers” can’t tell the difference between something with a tight array of dots and something without any dots so we ignore the dots even though the dots are right there in the claim. And this is believed by some commenter on the Internets to be “reasonable” in view of [insert mind-numbingly awful design patent case here], therefore it would so terribly unfair to those poor poor partners (excuse me, “members”) if they were to be sanctioned. Why, some other attorney might vicariously feel a little hurt by such a sanction. They might not be willing to be as ridiculously “zealous” as their ultra-gr–dy client wants them to be which would be worse than repealing the First Amendment.

  20. International Seaway would be a good place to start with respect to validity, ordinary observer test

    What does International Seaway tell us about whether this “ordinary observer” is allowed, in the context of a very very simple design, to completely ignore limitations that are unambiguously present in the claim and that are plainly not present in the accused design?

    What does this “most relevant case” say about that? C’mon, you must have it memorized. There must be some really important exception or loophole that is applicable to this complaint. What is it? Spit it out.

    In re Dembiczak would also be educational here on the question of the obviousness of a design.

    The pumpkin face case? LOL. Right. Deep stuff in that case.

    Here’s the deal, metoo: the more the bottomfeeders file these j–k complaints based on j–k designs, the harder the s–t is going to hit the fan. And there’s nothing “ironic” at all about that fact or the fact that I’m here telling it to you.

  21. Oh the irony coming from you of all peple.

    International Seaway would be a good place to start with respect to validity, ordinary observer test (rather than using someone skilled in the art as the vantage point), design as a whole, etc.

    In re Dembiczak would also be educational here on the question of the obviousness of a design.

  22. That woujld seem to disprove complaints by small inventors that it is hard to find attorneys that will take on any patent suit.

    Even the external curves of the functional grasping tab on the top of this patent vs. the productc are very different. Most importantly, how is one to ignore all those solid line decorative holes in the design patent’s tab? [The ONLY apparent ornamental feature in this patent?] That hole pattern is clearly part of the design patent’s “claim.”
    Imagine telling the court in a real [utility] patent suit: “well, your honor, you can just ignore any parts of our patent claim that don’t happen to be in the accused infringers product.”

  23. I was merely responding to posters who seemed to think that the entire design here is functional–to the point that someone even mentionde the Best Lock case.

    Well, you yourself ascribed functionality to nearly every aspect of the design and IANAE pointed out that the “crown” certainly has functional attributes as well. I haven’t even looked at the prior art but I’m guessing there’s quite a bit of it. What aspects of the design strike you as “non-obvious”? There isn’t a whole lot to it. Or is that the point? Is it one of those “minimal” designs that it took a huge team of professional designers five months to create?

    As for Best Lock, you should ask IBP why he’s bringing it up. I think he just wants to talk with Perry.

  24. It is absurd to suggest that the entire design is obvious based upon your “analysis.”

    I don’t think it’s “absurd” at all. I would agree, though, that the barely detectable manner in which the PTO applies “obviousness” to design patents is extremely absurd indeed.

    In any case, I was only following up on your post which seemed to suggest that the “functional” aspects of the design were minimal compared to the ornamental aspects. I found your assertion absurd and I explained why.

    Why did you bother bringing it up in the first place? The design claim is limited to the solid lines and those “bumps” you pointed out do not exist on the accused design. By applying the exceedingly generous “anyone who isn’t insane can see that” standard, I stand by my statement that the filing is sanctionable.

    Is there some shortage of Federal lawsuits that needs to be remedied any means necessary? Are patent attorneys exceptionally mentally deficient? Are patent attorneys especially prone to cry or commit violent acts if they are sanctioned? Why should lawsuits such as this one not be sanctioned?

  25. you need to go reread some of the more relevant design patent decisions.

    Oh, here we go again. The “design patent” experts are here to tell us all that we aren’t fit to discuss this really, really complicated stuff unless we understand all those deeply considered and well-reasoned design patent cases. Why not give us the name of two or three of the “most relevant” cases to this complaint so we can all join you up on Mt. Olympus?

  26. I said no such thing. I was merely responding to posters who seemed to think that the entire design here is functional–to the point that someone even mentionde the Best Lock case.

  27. So what if the bottom and sides “constitute roughly half of the claimed design”? It is absurd to suggest that the entire design is obvious based upon your “analysis.”

  28. the product shape above the rim of the cupcake pan is NOT functional, and you have two shapes that are not all that much different.

    Excuse me, but are you suggesting that design patents are not limited to the bold lines that are recited in the claim? You’re proposing to read those seven raised bumps right out of the claim for infringement purposes because they are allegedly “functional”? Say what?

  29. You cannot possibly be suggesting that the overall design is obvious based upon your “analysis,” right? If so, I think you need to go reread some of the more relevant design patent decisions.

  30. My thought as well, MMQ.

    But even if, Kimber would still lose.

    Kimber’s wasting their time and money (counsel most assuredly being not on contingency).

  31. In other words, the only part of the design dictated by function is the bottom and the two sloped side edges.

    Not sure why you use the phrase “only part” when “the bottom and the two sloped side edges” constitute roughly half of the claimed design. Add in the functional bumps and the non-obvious ornamental aspect of the design is reduced to pretty much zilch.

    Heckuva job, PTO.

    But seriously it’s important for complaints like this one to be tossed out and sanctions issued. Just like j—k patents, allowing such actions to go unsanctioned ruins the system for everyone and encourages the worst bottom-feeding tendencies in our society.

  32. Now, one could argue, I suppose, that making the insert the shape of a baked cupake is the obvious choice one would make.

    Especially considering that you need a bit of extra material above the rim of the pan to prevent accidental overflow, and you’ll want a protrusion at the top that is easily grippable by, let’s say, a thumb and forefinger. Which gives you pretty much exactly the “patented” design.

    But who is a person of ordinary skill in the art of … well, art? Design patents are purely ornamental, and a cupcake shape is an obvious design choice for ornamenting anything, even outside the context of baking accessories. The “ordinary observer” would probably not be surprised to learn that there were lots of cupcake-shaped cupcake accessories around, either.

  33. I don’t think this complaint is sanctionable. Ignore the swirls on the product accused of infringing, keeping in mind that the product shape above the rim of the cupcake pan is NOT functional, and you have two shapes that are not all that much different. Now, one could argue, I suppose, that making the insert the shape of a baked cupake is the obvious choice one would make.

  34. how does that differ from ordinary utility patent infringement litigation between competitors.

    It doesn’t differ by much, if it’s evident from a photograph of the accused product that the utility patent is clearly not infringed either.

    Except that Egyptian Goddess effectively broadens the scope of the “claim” to encompass anything about halfway between the literal claim and the prior art, unlike real patents. And you get a presumption of validity, unlike real trademarks. And you can get the registration that founds your entire cause of action without any meaningful examination or opposition, unlike either. And without a good definition of who is “skilled in the art” of pretty bits of plastic, the entire validity and infringement analysis is more or less arbitrary.

  35. Unless I am missing something, this at least should be dismissed on summary judgement. They seem to me to be remarkably different.

  36. I wouldn’t bet against you, Paul, at least with respect to the sanctions. So maybe sanctions for a patent case are only available when the asserted patent never existed or has expired? I’m just curious where a court would draw the line if this complaint is found to be not sanctionable.

    Or maybe there is some weird genetic trait that is concentrated in Ohio whereby afflicted individuals are incapable of seeing an array of tiny circles when the array exists within a cupcake-shaped frame. So it’s excusable somehow.

    As for whether a prompt SJ will follow, I have to say that even I am not that cynical … yet. But I’m prepared to become that cynical. ;)

  37. Those are bumps rather than holes, presumably to make it easier to grasp the insert and remove it.

    Also, the shape of the insert above the sides of the cupkake pan are not functional, since you remove the insert before you put the pan in the oven. (When you pour batter into a cupcake pan you do not fill it above the rim of the pan.) In other words, the only part of the design dictated by function is the bottom and the two sloped side edges. An insert shaped like a trapezoid would function in the same way, producing cupcakes exactly like those shown in the photo above.

  38. This may take the cake [sorry] for patent suit chutzpah, but I would still bet that, like most patent suits, it is highly unlikely to get FRCP Rule 11 or any other sanctions, or even a prompt S.J.

  39. Fyi, the guy who signed the complaint is a litigator with zero patent expertise on his CV. He can probably help you, though, if you need a liquor license in Ohio or Pennsylvania.

    The other guy listed on the complaint is an ordinary patent prosecutor type without any particular design patent expertise indicated. I suppose this guy have provided the “professional analysis” of the claim and accused product that we will hopefully learn more about as this case progresses.

    Or it might just go the way of other awesome patent cases like the one where direct infringement was alleged to be the distribution of a movie in which Nicholas Cage’s fictional character allegedly practiced the claimed process.

  40. I would argue that if you care even a little bit about the integrity of our patent system, you should boycott all the products made by these trolling j-rks.

    Spread the word. Shut ‘em down. Let somebody who isn’t a j-rk take their place.

  41. If only those seven holes at the top of the patented design were shown in dashed lines…

  42. I’m not an expert in trademark infringement (sorry, “design patent infringement”), but apart from both articles being the shape and size of a cupcake (without which the thing wouldn’t work), this looks like a blatant attempt to inflict litigation on a competitor who has done nothing wrong.

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