Oh Boy, Can it Core an Apple: Judge Brown Channels the Honeymooners and Finds Plaintiff Entitled to Fees and Costs for Infringement of the Wallet Ninja Design Patent | Patterson Belknap Webb & Tyler LLP
On December 1, 2023, Judge Gary R. Brown (E.D.N.Y.) awarded Plaintiff Dynamite Marketing, Inc. (“Plaintiff”) fees and costs, declined to enhance damages, granted a permanent injunction against future infringement, and denied each of Defendants’ motions for judgment as a matter of law, for a new trial and/or remittitur.
Judge Brown likened this case to the famous episode of the Honeymooners where the lead characters, Ralph Kramden and Ed Norton, had a plan to sell a multipurpose kitchen tool that can famously “core an apple.” Like the Honeymooners, the Plaintiff here also developed a “multi-purpose tool” that it called the Wallet Ninja. Plaintiff’s principal, Alex Shlaferman, shared a “rough outline” of a drawing of the Wallet Ninja with defendant Cooper, a mechanical engineer with a business that “offered to create mechanical drawings for inventors.” Shlaferman paid Cooper to provide “drawings for the Wallet Ninja and several other projects.” Shlaferman utilized those drawings to assist in obtaining a design patent for certain features of the Wallet Ninja. The patent at issue is U.S. Design Patent No. D751,877 (“the ’D877 patent”).
The Court found that the Wallet Ninja “enjoyed remarkable market success” and gained significant notoriety on Amazon.com. Unfortunately, the “Sherman defendants began selling a knockoff that they acknowledge infringes plaintiff’s patent.” Those defendants eventually “redesigned” the product, but the changes in the “redesign” were negligible. The Sherman defendants sold approximately 800,000 units of the knockoff product.
After the litigation was filed, the Sherman defendants “obtained an assignment” of defendant Cooper’s “right as a putative inventor.” The Sherman defendants leveraged the assignment to argue that Plaintiff did not have the necessary rights to proceed with a patent infringement suit. The jury rejected this argument, finding that defendant Cooper was not an inventor on the ’D877 patent. The jury further found that the ’D877 patent was valid and infringed. Finally, the jury found that Defendants’ infringement was willful. In total, Plaintiff was awarded $1.85 million in damages.
The Court addressed various issues regarding the parties’ post-verdict motions. First, the Court confirmed that a reasonable jury could determine that defendant Cooper “did not make substantial contributions to the claimed invention.” The Court noted that the “only example of an element contributed by Cooper” was the “hex cutouts” at the bottom of the Wallet Ninja. The Court described such contributions as, at best, “incidental.”
Next, the Court addressed the Sherman defendants’ argument that their own actual profits “represented a more reliable measure of damages” instead of Plaintiff’s lost profits. The Court was not persuaded and noted that while defendants argued that they only had made $150,000 in profits, the testimony at trial demonstrated they had actually made $390,000 in profits, “a figure more than two and a half times that fervently cited by defendants’ counsel.”
The Court also rejected Defendants’ motion for a new trial on validity, infringement, and willfulness. In doing so, the Court noted that the jury’s infringement finding “was supported by substantial evidence, including testimony by plaintiff’s expert that the products were sufficiently similar so as to cause confusion.” The Court also concluded that the evidence of record “amply supports the jury’s determination” on validity as well. Overall, the Court found that “defendants’ ‘kitchen sink’ motion requires little analysis.”
Finally, the Court addressed Plaintiff’s motion for enhanced damages and attorneys’ fees. The Court noted that defendants had engaged in a “pattern of bad conduct,” starting from the “initial theft of plaintiff’s patented design” and through their conduct in the litigation, which the Court characterized as “at times, unacceptable.” “Defendants’ approach to this case, which was (and remains) highly unreasonable, certainly justifies an award of attorneys’ fees.” The Court awarded attorneys’ fees, expert fees, and costs in the amount of over $1.5 million, plus pre-judgment interest. The Court declined to award other enhanced damages.
The case is Dynamite Mktg., Inc. v. Wowline Inc., Case No. 19-cv-3067 (GRB)(AYS) (E.D.N.Y. Dec. 01, 2023)
