Judge Cote Ices Claim That Refrigerator Rack Infringes Design Patent
On July 19, 2018, United States District Judge Denise Cote (S.D.N.Y.) granted Plaintiff Wine Enthusiast, Inc.'s Rule 12(b)(6) motion to dismiss counterclaims by Defendant Vinotemp International Corp. ("Vinotemp") for infringement of U.S. Design Patent No. D711,936 (the "D936 Patent") but allowed Vinotemp’s trade dress claim in a wine refrigerator to go forward.
Vinotemp manufactures and sells wine refrigeration and storage units allegedly including the “ornamental design for a black wine rack face, as shown and described” in its D936 patent (“Rack Face”). On July 31, 2017, Vinotemp sent a letter to Wine Enthusiast alleging that its Evolution Series wine refrigerator units were infringing Vinotemp’s D936 Patent and Vinotemp’s trade dress. Wine Enthusiast responded by filing an action seeking declaratory judgments of non-infringement, invalidity, and lack of trade dress rights. Vinotemp counterclaimed for, inter alia, infringement of the D396 Patent and Vinotemp’s trade dress rights.
Judge Cote first addressed the counterclaim for patent infringement. Comparing the design depicted in the drawings of the D936 Patent with photographs of the accused refrigerator, Judge Cote concluded that, as a matter of law, no ordinary observer would think the D936 Patent's Rack Face was substantially similar in design to the shelf front on Wine Enthusiast's refrigerator. In particular, Judge Cote, noted that the ornamental features of Vinotemp’s Rack Face, including its “J” shape at the top, its thinness, and its method of attachment to the refrigerator shelf, were not present in Wine Enthusiast’s shelf fronts. Figures 5 and 6 from the D936 Patent and photographs of the Wine Enthusiast wine rack—each included in Judge Cote's decision and provided below— illustrate some of these differences.
Judge Cote noted that concentrating on minor, isolated differences should not distract from the overall impression of a design. However, when considering the scope of the D936 Patent, it was apparent to the court that these design differences were not minor, and actually constituted the entirety of the claimed design except for its color.
Though Vinotemp's design patent infringement counterclaim was dismissed, its trade dress claim under Section 43(a) of the Lanham Act was not. According to Judge Cote, Vinotemp, which described its Rack Face arrangement as "giv[ing] the impression the [wine] bottles are 'floating' within the storage unit," had plausibly alleged it was entitled to trade dress protection and that Wine Enthusiast's use of a similar trade dress could cause consumer confusion.
Case: Wine Enthusiast, Inc. v. Vinotemp Int'l. Corp., 17-CV-6782(DLC), Dkt. No. 42 (S.D.N.Y. July 19, 2018).