Kohler v. Signature - 12 (C) Motion
Kohler v. Signature - 12 (C) Motion
Kohler v. Signature - 12 (C) Motion
KOHLER CO., §
§
Plaintiff, §
§ Civil Action No. 1:23-cv-09686-AS
v. §
§ JURY TRIAL DEMANDED
SIGNATURE PLUMBING SPECIALTIES §
LLC, § ORAL ARGUMENT REQUESTED
§
Defendant. §
TABLE OF CONTENTS
I. INTRODUCTION ...............................................................................................................1
A. For All Counts – Kohler Has Not Pled the Elements of Willful
Infringement .............................................................................................................6
B. For All Counts – Kohler Does Not Allege Compliance with the Marking
Statute, Which Preclude Pre-Suit Damages .............................................................7
C. For Counts III, IV, and VI– Kohler Fails to Allege Plausible Infringement
of the Design Patents-in-Suit ...................................................................................7
D. Prior Sales of Accused Designs Render Invalid Multiple Asserted Patents ..........14
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V. CONCLUSION ..................................................................................................................20
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TABLE OF AUTHORITIES
Page(s)
Cases
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I. INTRODUCTION
This is a case about kitchen and bathroom tubs and fixtures. The plaintiff, Kohler Co.
(“Kohler” or “the plaintiff”), purports to have filed the complaint in this case to stop the defendant,
Signature Plumbing Specialties LLC (“Signature”), from submitting competing fixture packages
for large-scale construction projects that may result in the substitution of Signature products for
the plaintiff’s. Such submissions are commonplace in the market and ensure fair competition.
Even if they were somehow untoward, which they are not, the complaint does not recite any cause
of action targeting that competitive activity. Instead, the plaintiff is trying to discourage Signature
from competing with a collateral attack—by suing Signature for design patent infringement. This
is not the first time that the plaintiff has filed a case like this against a small competitor with limited
resources. Indeed, the plaintiff repurposed portions of prior complaints to target Signature in this
round. Whether due to carelessness or anticompetitive intent, there are considerable problems
with the plaintiff’s approach. This motion is directed to the subset of infirmities addressable at the
The first set of problems is that the plaintiff does not allege (plausibly or otherwise) the
requisite elements for willful infringement or the entitlement to damages for any conduct prior to
the filing of the complaint. Willful infringement requires that the alleged infringer have actual
knowledge of the plaintiff’s patent(s) and the specific intent to infringe. The plaintiff does not and
cannot allege those necessary elements, either before the filing of the complaint or after, and its
willful infringement claims for all Counts fail as a matter of law. Similarly, the plaintiff fails to
allege that it has complied with the marking requirements of 35 U.S.C. § 287, which are intended
to provide constructive notice to the public of the plaintiff’s patents as a predicate for pre-suit
damages. There are no marking allegations in the complaint and the plaintiff’s demand and prayer
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The second problem with the complaint is that various infringement allegations appear to
have been hastily pled without due regard to the accused products. As a point of reference, the
asserted “claims” set forth in the complaint are defined by the solid lines in the figures of the
plaintiff’s patents—the dotted lines are not part of the claims. A simple comparison between at
least three of the plaintiff’s design patents and the accused products reveals a lack of plausibility.
As described below, there are facial deficiencies that are as apparent and straightforward as the
difference between square and round. A brief pre-suit comparison could have avoided this.
Finally, the plaintiff violates one of the simplest concepts in patent law by accusing of
infringement products in Counts I, II, V, VI and VII that were on sale, sold, in use, and in the public
domain for years prior to Kohler’s earliest priority over those designs. It is a fundamental tenet of
patent law that something that would infringe if done after the grant of the patent would render
invalid if done before the filing of the patent application. Immediately seeing this threshold issue,
to avoid this very sort of motion practice, Signature identified for the plaintiff addresses of
construction projects in the New York City area where these prior art products were installed, and
provided business records including dates, model numbers, quantities, and specifications for
accused designs that Signature sold well prior to the plaintiff’s priority dates. The plaintiff decided
to ignore that evidence and to maintain its claims and forge ahead. Based on the infringement
allegations in the plaintiff’s complaint, the publicly-available evidence of prior sale and use of the
accused designs, and Signature’s business records filed with the Answer corroborating that public
evidence, the plaintiff’s claims should be dismissed on the pleadings for invalidity.
The complaint never should have been filed. Pursuant to Rule 12(c) of the Federal Rules
of Civil Procedure, Signature respectfully requests dismissal of all Counts, including all allegations
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A. Kohler’s Complaint
On November 6, 2023, Kohler brought this suit in the United States District Court for the
Southern District of New York, accusing Signature of infringing seven design patents—U.S.
Design Patent Nos. D767,732 (“the ʼ732 patent”), D949,293 (“the ʼ293 patent”), D823,988 (“the
ʼ988 patent”), D613,824 (“the ʼ824 patent”), D959,614 (“the ʼ614 patent”), D844,752 (“the ʼ752
patent”), and D678,487 (“the ʼ487 patent”) (collectively, “the Design Patents-in-Suit”). Dkt. 5
“Accused Products”) by product number as infringing at least one claim of the Design Patents-in-
Suit. Complaint ¶ 29. The plaintiff attached pictures of accused designs and alleged that they
infringe. Complaint ¶¶ 34, 36, 46, 48, 58, 60, 70, 72, 82-83, 93, 104, 106, Exs. A-R.
Kohler’s complaint copies and pastes identical allegations between each of its infringement
counts and also repeats the preliminary section from prior similarly-cast complaints. See
Complaint ¶¶ 31-112. For example, the plaintiff repeats the following for each count:
“Signature has imported, used, offered for sale, and/or sold and continues to import,
use, offer for sale, and or sell the [Accused Products], which infringe the [asserted
“[The Accused Products] contain each and every aspect of the claimed designs in the
[asserted patent].” Complaint ¶¶ 37, 49, 61, 73, 84, 95, 107.
“[The Accused Products] have an overall appearance that is substantially the same as
the claimed designs in the [asserted patent].” Complaint ¶¶ 38, 50, 62, 74, 85, 96, 108.
“[The Accused Products] have an overall appearance that is confusingly similar to the
claimed designs in the [asserted patent].” Complaint ¶¶ 39, 51, 63, 75, 86, 97, 109.
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The complaint does not recite any claim-specific, or accused product-specific, facts to support the
infringement of any of the accused products. The complaint does not mention knowledge of the
patents, knowledge of the infringement or the intent to infringe. The complaint alleges only that
“Signature has had actual notice of the [asserted patent] since at least the filing of this Complaint.”
Complaint ¶¶ 40, 52, 64, 76, 87, 98, 110. Nonetheless, Kohler alleges in summary fashion that
“Signature’s infringement of the [asserted patent] has been and continues to be willful.” Complaint
¶¶ 41, 53, 65, 77, 88, 99, 111.” The complaint does not allege compliance with the marking
B. Procedural History
The original date for Signatures response to Kohler complaint was the day after
Thanksgiving. Kohler requested an extension of that deadline until January 16, 2024, “to permit
During a discussion between counsel on December 14, 2023, Signature expressed some
confusion over the nature of the lawsuit based on the products accused of infringement, the
particular designs asserted and, in particular, the fact that Kohler was accusing a considerable
number of products of infringement that had been sold and commercially installed years prior to
Kohler’s patents. Thereafter, Signature provided business records to corroborate what it told
Kohler over the phone. Kohler acknowledged that the Signature business records disclose
“invoices, purchase orders, and packing slips . . . [with] the SKUs, quantity, date, and shipping
information.” Declaration of Megan Mahoney, Ex. B (Jan. 11, 2024 email from K. Jelenchick to
M. Mahoney). Nonetheless, Kohler dismissed all of them summarily, arguing that they did not
satisfy Signature’s burden of showing invalidity. With those documents in hand, Kohler has not
offered any compromise or agreed to withdraw any portion of its complaint. Instead, Kohler is
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With no indication that the plaintiff intends to engage in discussions concerning a business
resolution, Signature had no choice but to file and serve its Answer (Dkt. 22) and this motion.
Despite the February 16 deadline for Signature’s response (Dkt. 17), Signature prepared and filed
these documents in advance of the Rule 16 conference to enable to Court to consider the presence
A motion for judgment on the pleadings pursuant to Rule 12(c) is subject to the same
standard as a motion to dismiss under Rule 12(b)(6). Zeta Glob. Corp. v. Maropost Mktg. Cloud,
Inc., 610 F. Supp. 3d 535, 539 (S.D.N.Y. 2022). To survive a motion for judgment on the pleadings,
the complaint must contain sufficient factual matter that, when accepted as true, states a claim to
relief that is plausible on its face. Id. The Court need not accept as true legal conclusions,
Kimberly-Clark Corp., 570 F. App'x 927, 932 (Fed. Cir. 2014). As such, judgment on the pleadings
is appropriate where the material facts are undisputed and judgment on the merits is possible based
on the contents of the pleadings. Id. at 934 (affirming judgment of design patent noninfringement
on the pleadings); see also Pop Top Corp. v. Nook Digital, LLC, No. 20-CV-6598 (VSB), 2022
WL 193064, at *3 (S.D.N.Y. Jan. 21, 2022) (dismissing infringement claims on 12(c)). The Court
is not limited to the four corners of the complaint. The Court may consider “the complaint, the
answer, any written documents attached to them, and any matter of which the court can take
judicial notice.” L-7 Designs, Inc. v. Old Navy, LLC, 647 F.3d 419, 422 (2d Cir. 2011).
For design patents, “[f]ull lines in the drawing show the claimed design.” Manual of Patent
Examining Procedure (“MPEP”) § 1503.01. Broken lines are not part of the claimed design, but
may be used “to disclose the environment related to the claimed design.” MPEP § 1503.02.
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IV. ARGUMENT
This motion for judgment on the pleadings addresses four discrete matters, set out in
A. For All Counts – Kohler Has Not Pled the Elements of Willful Infringement
should be dismissed for failing to allege plausibly that Signature had knowledge of any of the
Design Patents-in-Suit or the intent to infringe at any time. See Hills Point Indus. LLC v. Just Fur
Love LLC, No. CV 22-1256 (GBW), 2023 WL 8804046, at *2 (D. Del. Dec. 20, 2023) (dismissing
willful infringement for failure to plead pre-suit knowledge). The complaint fails to recite
allegations concerning Signature’s knowledge of the patents or Signature’s intent, i.e., that
Signature knew or should have known that any acts it has committed—at any time or for any
patent—constitute infringement.
For each Count in the complaint, the full extent of Kohler’s allegations of willful
infringement address only post-suit “notice” and the legal conclusion of willful infringement:
“Signature has had notice of the [asserted] patent since at least the filing of this
Complaint”
“Signature’s infringement of the [asserted] patent has been and continues to be willful.”
Complaint ¶¶ 40-41, 52-53, 64-65, 76-77, 87-88, 98-99, 110-11. “Pleading mere notice of an
asserted patent is insufficient to state a claim for willfulness.” Hills Point Indus., 2023 WL
8804046, at *4. Kohler does not allege knowledge, or intent prior to its complaint. Neither the
factual allegation of post-suit “notice” nor the legal conclusion of willfulness recites a plausible
claim that Signature had knowledge of Kohler’s patents and the intent to infringe —at any time.
Kohler’s claims for willful infringement and enhanced damages should be dismissed.
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B. For All Counts – Kohler Does Not Allege Compliance with the Marking Statute,
Which Preclude Pre-Suit Damages
Kohler has the burden to plead and to prove its compliance with the marking requirements
of 35 U.S.C. § 287(a). See Blackbird Tech LLC v. Argento SC By Sicura, Inc., No. 21CV11018
(DLC), 2022 WL 3701084, at *2 (S.D.N.Y. Aug. 26, 2022) (dismissing claims to the extent they
request pre-litigation damages for infringement). This requires Kohler to allege and then to prove
that Kohler has “consistently marked substantially all” of the patented products to recover any pre-
suit damages. See Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437, 1446 (Fed. Cir. 1998).
Kohler’s lone statements directed to damages is that “Signature’s conduct has caused and
will continue to cause Kohler substantial damage, including irreparable harm.” Complaint ¶¶ 42,
54, 66, 78, 89, 100, 112. Kohler fails to allege (plausibly or otherwise) that it has complied with
Kohler’s demand and prayer for the entitlement to pre-suit damages should be dismissed.
C. For Counts III, IV, and VI– Kohler Fails to Allege Plausible Infringement of the
Design Patents-in-Suit
To assert a plausible claim for infringement, Kohler cannot simply depict the claimed
design and then conclude that the Accused Products have each and every aspect. See Anderson,
570 F. App'x at 933-34 (affirming dismissal of infringement because there were “plain differences”
and plaintiff did not allege any bases beyond conclusory allegations); see also Colida v. Nokia,
Inc., 347 F. App’x 568, 570 (Fed. Cir. 2009) (affirming dismissal of facially implausible design
patent infringement claims). Plausible infringement requires that “in the eye of an ordinary
observer, giving such attention as a purchaser usually gives, two designs are substantially the same,
if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing
it to be the other.” Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1335 (Fed. Cir.
2015) (citing Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 670 (Fed. Cir. 2008)). “The
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ordinary observer is not an expert in the claimed design, but one of ‘ordinary acuteness’ who is a
‘principal purchaser’ of the underlying articles with the claimed designs.” Id. at 1337 (quoting
In contrast, where the claimed design and accused design are “sufficiently distinct” and
“plainly dissimilar,” the accused design does not infringe as a matter of law. Id. (performing a
side-by-side comparison of the claimed and accused design and determining they “simply d[id]
not look alike.”) To sufficiently plead design patent infringement, the complaint must therefore
include factual allegations that, when taken as true, demonstrate how the Accused Products are
substantially similar to the Design Patents-in-Suit and why it is plausible that an ordinary observer
could confuse the Accused Products with the claimed designs. See Anderson, 570 F. App'x at 933-
34 (“[Plaintiff] has never explained how or why an ordinary observer would be deceived into
thinking that the accused products are the same as the patented design, and her complaint for design
patent infringement cannot survive on merely conclusory allegations.”). Here, Counts III, IV, and
VI of Kohler’s complaint lack any factual allegations that could support a claim for infringement.
Kohler fails to provide any infringement analysis beyond identifying the Accused Products
and then repeating the same list of conclusory allegations for each claim:
Signature “has imported, used, offered for sale, and/or sold and continues to import,
the Accused Products “contain each and every aspect” and “have an overall
appearance that is substantially the same as” and “is confusingly similar to the
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Complaint ¶¶ 35-39, 47-51, 59-63, 71-75, 83-86, 94-97, 105-109. These are conclusions of law
and are not factual allegations that articulate why any of the Accused Products infringe. See
Anderson, 570 F. App'x at 933-34. Such legal conclusions are not the requisite factual allegations
that must be taken as true at the pleadings stage. See id. at 931; see also L-7 Designs, 647 F.3d at
430. Kohler ultimately fails to allege any facts regarding Signature’s allegedly infringing conduct
or to provide notice, by chart or otherwise, as to how the Accused Products could infringe the
The plaintiff asserts two designs in Counts V and VI directed at “ribbon-style faucets.” As
described below in the context of invalidity, those accused designs were sold by Signature
approximately nine years before Kohler applied for its earliest patent application covering these
designs. Setting that aside, however, there are also facial infringement problems. One design (on
the left), claimed in the asserted ’614 patent, covers the shape of the faucet spout and a portion of
the bottom above the base. Kohler’s second design (on the right), claimed in the asserted ’752
patent, claims both the faucet spout and the shape of the base, referred to as the “escutcheon (note
that the escutcheon on the right image is in solid line, indicating that it is a part of Kohler’s claim):
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Compare Complaint, Ex. E with Complaint, Ex. F. Kohler presents no plausible basis for how
Signature’s accused design with a flat and square escutcheon could infringe the ’752 patent, which
expressly adds the arched escutcheon limitation to the claimed design. A simple comparison of
the asserted claim (on the left with the escutcheon emphasized in red) with the accused designs,
See Complaint, Exs. F (annotated) (left), I (center), O (right); see also Dkt. 22 at p. 13-35
concerning the ’752 patent is the only allegation for which Kohler did not include “representative
picture of the asserted design. Instead, the plaintiff simply states the conclusion that the Accused
Faucets “contain each and every aspect of the claimed designs in the ʼ752 patent.” See Complaint
¶ 95. Each limitation of the claim is presumed to have meaning, and the plaintiff presents no
plausible basis for why its claim requiring a round and pitched escutcheon should be rendered
superfluous. See, e.g., Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) ("Allowing
a patentee to argue that physical structures and characteristics specifically [drawn] in a claim are
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merely superfluous would render the scope of the patent ambiguous, leaving examiners and the
public to guess about which [aspect] the drafter deems necessary to his claimed invention and
particularly when viewed alongside the claimed and accused designs, do not state a plausible claim
for infringement of the ’752 patent. See, e.g., Anderson, 570 F. App'x at 933-34.
For this reason alone, Kohler’s infringement allegation for Count VI is implausible.
2. Count III – Signatures Accused Faucets do not Plausibly Infringe the ’988 patent
The ʼ988 patent (pictured left and center) also expressly requires a pitched escutcheon
whereas the Accused ʼ988 Faucet (on the right) has a flat escutcheon:
Complaint, Ex. C (annotated) (left and center); Complaint ¶ 60 (right). There is no allegation or
plausible explanation recited in the complaint for how the accused flat escutcheon meets the
In addition, the asserted claims of the ’988 patent require a horizontal handle with a
diameter that is smaller than (or at least no greater than) the diameter of the vertical portion of the
faucet, as shown below. As shown below, Signature’s Accused ʼ988 Faucet embodies a different
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design and overall appearance, wherein the horizontal portion has a substantially and noticeably
The lack of plausibility of Kohler’s allegation is particularly apparent in this case, where it
is a simple claim with only two claimed features (the escutcheon and the handle attachment). The
features of the accused design are substantially different from each of the claimed features—which
The ʼ824 patent embodies an octagonally contoured design that is plainly dissimilar from
that of the Accused linear ʼ824 Handles. As shown below, the design of the ʼ824 patent contains
wide-cut, angled corner surfaces (highlighted in blue) that are nearly equal in width to the non-
angled surfaces (highlighted in red) to form an octagonal profile at the tip of the handle:
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Signature’s Accused ʼ824 Handles have linear, squared-off designs that do not match the
Complaint, Exs. J (cropped) (left), P (center), and Q (right). Such obvious differences between
contoured and linear designs illustrate the lack of plausible infringement. See, e.g., Ethicon Endo-
Surgery, 796 F.3d at 1336 (affirming summary judgment of non-infringement based upon “the
most obvious differences between the claimed and accused designs as ‘the overall contoured shape’
of the claimed design and ‘the overall linear shape’ of the accused design.”). As can be clearly
observed, it is implausible that the design of the Accused ʼ824 Handles is substantially similar to
or could be confused with the design claimed by the ʼ824 patent. There is no allegation or plausible
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explanation recited in the complaint for how the accused square handles meet the asserted
Kohler accused Signature products that were sold years before the priority dates of the
patents in commercial construction project in the New York City area. To the extent Kohler
maintains its infringement allegations, these prior sales necessarily anticipate and invalidate the
asserted patent. Upsher-Smith Lab'ys, Inc. v. Pamlab, L.L.C., 412 F.3d 1319, 1322 (Fed. Cir. 2005)
(“A century-old axiom of patent law holds that a product which would literally infringe if later in
time anticipates if earlier.”) (citation omitted). These are not close calls with respect to timing.
Signature identified for the plaintiff the particular construction projects, the New York City
addresses for those projects, construction dates, and model numbers sold by Signature for those
projects. Despite having that information since mid-December, 2023, Kohler refused to engage in
discussion to resolve this case and instead decided to bury its head in the sand to force Signature
This portion of Signature’s motion relies on certain information that was not recited in the
complaint. That information falls into two categories: first, publicly-available, prior art images of
the sold and installed accused products from real estate listings available on the internet, and
second, Signature business records corroborating Signature’s prior sales that are depicted in those
public internet listings. Such information was included with and attached to Signature’s Answer.
The Court in its discretion may take judicial notice of the publicly-available materials that
illustrate examples of the prior art offers for sale, sales, and uses of designs that Kohler now
accuses of infringement. See, e.g., Anderson, 570 F. App'x at 930, 934 (taking judicial notice of
fact that certain accused products were manufactured by third parties, as shown by packaging of
commercially available products, and the existence of World Intellectual Property Organization
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In the event the Court determines that Signature’s invalidity arguments with respect to
Counts I, II, V, VI and VII require the Court to consider materials that are not either subject to
judicial notice or otherwise integral to the Complaint, and therefore converts this portion of the
motion pursuant to Rule 12(d) into a question of summary judgment, Signature includes herewith
a Statement of Materials Facts (“SMF”) pursuant to Local Civil Rule 56.1 and the Declaration of
its President, Keith Kugler. Mr. Kugler was personally involved in providing Signature products
to each of the construction projects referenced in the Answer and herein. His declaration attests to
the authenticity of the documents attached to Signature’s Answer and confirms that Signature sold
the products now accused of infringement years prior to Kohler’s patent applications.
The ʼ293 patent has an earliest possible priority date of December 20, 2019. See
Complaint, Ex. B; Affirmative Defenses ¶ 14. Any product meeting the limitations of the claims
offered for sale or sold before that date renders the claim invalid. 35 U.S.C. § 102(a)(1). The
accused product, model number LFH1117BR2PC, was sold in 2013 for use in connection with a
construction project at 250 N. 10th Street, Brooklyn, New York. SMF ¶¶ 3-7; Kugler Decl. ¶¶ 5-
10. The accused Signature faucet that was sold and installed in that building in 2013 can been
seen on the publicly-available promotional picture wheel for that building, which notes its
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Kugler Decl. ¶ 5.
were provided to Kohler in December 2023 and are attached to Signature’s Answer and the Kugler
Declaration as Exhibits 1-4.1 That project and Signature’s sale of the accused product were over
six years prior to Kohler’s application for the ʼ293 patent. SMF ¶¶ 3-7; Kugler Decl. ¶5-10. For
example, the Signature “Quote” (Ex. 1) and the “ProForma Invoice” (Ex. 2) for the 2013 sale of
the accused product specifies the date, the amount, the design, the project and even includes a
picture of the design—the very same picture included by Kohler in its Complaint. Compare Ex.
2 with Complaint ¶ 48 (Ex. H). Those documents are true and correct copies of business records
from Signature’s sales files. Kugler Decl. ¶¶ 5-10; see also Exs. 1-4.
Signature’s prior offer for sale and sale of the accused product anticipates the asserted claim
As described above, Kohler asserts two related patents—the ʼ614 patent and the ʼ752
patents—against products that Signature began selling nearly a decade before the patents were
1
Exhibits 1-11 are attached to the Declaration of Keith Kugler (“Kugler Decl.”), filed herewith.
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filed. The ʼ614 and ʼ752 patents both have an earliest possible priority date of February 27, 2017.
See Complaint, Exs. E-F; Affirmative Defenses ¶¶ 19, 24. A product accused of infringing the
designs of the ’614 and ’752 patents, product number LFH1061BR2, was offered for sale and then
sold in 2008 for use in connection with a construction project at 77 Hudson Street, New York.
SMF ¶¶ 8-11; Kugler Decl. ¶¶ 11-13. The accused Signature faucets that were sold and installed
in that building in 2008 can been seen on public listings for apartment sales and rentals. Id. For
example:
Documentation associated with that project was provided to Kohler in December 2023 and
are attached to Signature’s Answer and the Kugler Declaration as Exhibits 5-6. That project and
Signature’s sale of the accused product was almost a decade prior to Kohler’s application for the
’614 and ’752 patents. SMF ¶¶ 9-10; Kugler Decl. ¶¶11-12. For example, the 2008 Signature
Purchase Order specified, among other things, 230 units of the accused LFH1061BR2 faucet. SMF
¶ 9; Kugler Decl. ¶¶ 11-12; Ex. 5. The LFH1061BR2 faucet sold for the 77 Hudson Street project
is the same as that accused of infringement in the complaint. SMF ¶ 11; Kugler Decl. ¶¶ 13-14.
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Moreover, the product number LFH1061BR2 has only ever referred to a single product design—
the same as the design accused of infringement. SMF ¶¶ 8,11; Kugler Decl. ¶¶ 3,14.
Signature’s prior offer for sale and sale of the accused product anticipates the asserted
3. Signature Sold Earlier Versions of the Product Accused in Counts VII in 2008—
Four Years Prior to Kohler’s 2012 Priority Date
The ’487 patent has an earliest priority date of January 27, 2012. Complaint ¶ 20. A
Signature design accused of infringing the ’487 patent was offered for sale and then sold in 2008
and 2009 for use in connection with a construction project at 305 E. 85th Street, New York. SMF
¶¶ 12-17; Kugler Decl. ¶¶ 15-20. The same bathtub design, in a non-ADA compliant model
number, that was sold and installed in that building in 2008 can been seen on public listings for
Documentation associated with that project was provided to Kohler in December 2023 and
the are attached to Signature’s Answer and the Kugler Declaration as Exhibits 7-8. That project
and Signature’s sale of the accused product was almost four years prior to Kohler’s application for
the ’487 patent. SMF ¶¶ 13-14; Kugler Decl ¶¶ 14-17. For example, Signature provided a packing
slip for the shipment of 18 bathtubs, all with the same design as the accused design, dated October
17, 2008. SMF ¶ 13; Kugler Decl. ¶ 16; Ex. 7. The specification sheet for the bathtubs sold for
the 305 E. 85th Street project, BT2006AC1, provides that the same design is available in a bathtub
that meets the requirements of the Americans with Disabilities Act. SMF ¶¶ 15-17; Kugler Decl.
¶¶ 19-20; Ex. 10 (“Available as ADA and any other custom height”). The accused design,
inch shorter. SMF ¶¶ 12, 15-17; Kugler Decl. ¶¶ 18-20. Besides the one-inch height difference,
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the accused model number (BT2092AC1) and the model sold in 2008-2009 (BT2006AC1) are the
To the extent Kohler maintains that the ADA-compliant tub, BT2092AC1, infringes the
ʼ487 patent, then the 2008 sale of the BT2006AC1, which differs only in the height of the tub,
4. The Design Accused of Infringement in Count I Was Publicly Offered For Sale
By Porcelanosa in 2014, Prior to Kohler’s 2015 Priority Date
The ʼ732 patent has an earliest possible priority date of March 9, 2015. See Complaint,
Ex. A. At the same time Signature provided copies of its business records documenting its own
prior activities, it also identified the 2014 public catalog of third party Porcelanosa as an example
of when the design accused of infringing the ’732 patent was sold prior to Kohler’s patent
Evidence of Porcelanosa’s prior public offers for sale in 2014 includes a dated specification
sheet from Signature’s files and a listing and picture in the 2014 Porcelanosa Home Collection Big
Brochure 2014 catalog, which is publicly accessible on the “Lifestyle Design” site, at
www.lifestyledesign.gi/Porcelanosa%20Home%20Collection%20Big%20Brochure%202014.pdf
The accused design is depicted on Page 149 of the catalog, Item 5. See SMF ¶ 18; Kugler Decl. ¶
21; Ex. 11. The Court may take judicial notice of this public website and decide the invalidity
questions raised here under Rule 12(c). See, e.g., Select Controls v. Am. Elec. Components, Inc.,
No. 07-cv-1306, 2008 WL 216612, at *5 (S.D.N.Y. Jan. 22, 2008) (granting motion for judgment
on the pleadings where on-sale bar invalidated design patent as a matter of law).
The design of the Porcelanosa Urban Faucet is identical in all material respects to the
design claimed by the ʼ732 patent. To the extent that the accused Signature faucet infringes the
design of the ’732 patent, the Porcelanosa Urban Faucet anticipates. See Select Controls, 2008
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Case 1:23-cv-09686-AS Document 26 Filed 02/05/24 Page 24 of 25
WL 216612, at *3-5 (finding design patent invalid as anticipated where drawing of claimed design
was sent to manufacturer and therefore was “on-sale” before critical date of patent). The ʼ732
patent design, as shown on the left below, contains each and every feature and has an overall
appearance that is substantially the same as the Porcelanosa Urban faucet, on the right below:
Complaint, Ex. A (left); Affirmative Defenses ¶ 39 (right). The Porcelanosa Urban Faucet is
identical in all material respects, and therefore anticipates and invalidates the ʼ732 patent.
V. CONCLUSION
For the foregoing reasons, Signature respectfully requests entry of judgment under Federal
Rule of Civil Procedure 12(c) in favor of Signature on each of Kohler’s claims of infringement.
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Case 1:23-cv-09686-AS Document 26 Filed 02/05/24 Page 25 of 25
CERTIFICATE OF SERVICE
I certify that a copy of the foregoing has been served upon all counsel of record via the
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