Case 1:23-cv-09686-AS Document 26 Filed 02/05/24 Page 1 of 25

UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF NEW YORK

KOHLER CO., §
§
Plaintiff, §
§ Civil Action No. 1:23-cv-09686-AS
v. §
§ JURY TRIAL DEMANDED
SIGNATURE PLUMBING SPECIALTIES §
LLC, § ORAL ARGUMENT REQUESTED
§
Defendant. §

MEMORANDUM OF LAW IN SUPPORT OF

DEFENDANT SIGNATURE PLUMBING SPECIALTIES LLC’S
MOTION FOR JUDGMENT ON THE PLEADINGS
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TABLE OF CONTENTS

I. INTRODUCTION ...............................................................................................................1

II. FACTUAL BACKGROUND ..............................................................................................3

A. Kohler’s Complaint ..................................................................................................3

B. Procedural History ...................................................................................................4

III. LEGAL STANDARD ..........................................................................................................5

IV. ARGUMENT .......................................................................................................................6

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

1. Count VI – Signature Ribbon-Style Faucets do not Plausibly

Infringe the ’752 patent ................................................................................9

2. Count III – Signatures Accused Faucets do not Plausibly Infringe

the ’988 patent............................................................................................ 11

3. Count IV – Signature’s Accused Square Handles do not Plausibly

Infringe the Octagonal Designs of the ’824 patent ....................................12

D. Prior Sales of Accused Designs Render Invalid Multiple Asserted Patents ..........14

1. Signature Sold Products Accused in Count II in 2013—Over Six

Years Prior to Kohler’s 2019 Priority Date ................................................15

2. Signature Sold Products Accused in Counts V and VI in 2008—

Nine Years Prior to Kohler’s 2017 Priority Date .......................................16

3. Signature Sold Earlier Versions of the Product Accused in Counts

VII in 2008—Four Years Prior to Kohler’s 2012 Priority Date .................18

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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 ...............................................................................................19

V. CONCLUSION ..................................................................................................................20

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TABLE OF AUTHORITIES

Page(s)

Cases

Anderson v. Kimberly-Clark Corp.,

570 F. App'x 927 (Fed. Cir. 2014) ................................................................................... passim

Bicon, Inc. v. Straumann Co.,

441 F.3d 945 (Fed. Cir. 2006)..................................................................................................10

Blackbird Tech LLC v. Argento SC By Sicura, Inc.,

No. 21CV11018 (DLC), 2022 WL 3701084 (S.D.N.Y. Aug. 26, 2022) ...................................7

Colida v. Nokia, Inc.,

347 F. App’x 568 (Fed. Cir. 2009) ............................................................................................7

Ethicon Endo-Surgery, Inc. v. Covidien, Inc.,

796 F.3d 1312 (Fed. Cir. 2015)............................................................................................7, 13

Hills Point Indus. LLC v. Just Fur Love LLC,

No. CV 22-1256 (GBW), 2023 WL 8804046 (D. Del. Dec. 20, 2023) .....................................6

L-7 Designs, Inc. v. Old Navy, LLC,

647 F.3d 419 (2d Cir. 2011)...................................................................................................5, 9

Nike, Inc. v. Wal-Mart Stores, Inc.,

138 F.3d 1437 (Fed. Cir. 1998)..................................................................................................7

Pop Top Corp. v. Nook Digital, LLC,

No. 20-CV-6598 (VSB), 2022 WL 193064 (S.D.N.Y. Jan. 21, 2022) ......................................5

Select Controls v. Am. Elec. Components, Inc.,

No. 07 CIV. 1306 (DLC), 2008 WL 216612 (S.D.N.Y. Jan. 22, 2008) ..................................19

Upsher-Smith Lab'ys, Inc. v. Pamlab, L.L.C.,

412 F.3d 1319 (Fed. Cir. 2005)................................................................................................14

Zeta Glob. Corp. v. Maropost Mktg. Cloud, Inc.,

610 F. Supp. 3d 535 (S.D.N.Y. 2022)........................................................................................5

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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

pleadings stage, which support the dismissal of all Counts.

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

for pre-suit damages for all Counts should be dismissed.

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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

of willful infringement and pre-suit damages.

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II. FACTUAL BACKGROUND

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

(“Complaint”), ¶¶ 14-21. Kohler identified fourteen Signature products (collectively, the

“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

patent].” Complaint ¶¶ 36, 47, 59, 71, 83, 94, 105.

 “[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

requirement as a predicate for any pre-suit infringement.

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

the parties to explore a possible business resolution.” (Dkt. 13).

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

apparently intent to keep Signature spending money on litigation.

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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

of this motion when determining the schedule.

III. LEGAL STANDARD

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,

conclusory allegations, unwarranted deductions of fact, or unreasonable inferences. Anderson v.

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

Sections A-D, which the Court may consider independently.

A. For All Counts – Kohler Has Not Pled the Elements of Willful Infringement

Kohler’s allegations of willful infringement and the entitlement to enhanced damages

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

the marking requirements under 35 U.S.C. § 287.

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

Gorham Co. v. White, 81 U.S. 511, 528 (1871)).

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,

use, offer for sale, and/or sell” the Accused Products,

 the Accused Products “infringe the [asserted] patent,”

 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

claimed designs in the [asserted] patent.”

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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

Design Patents-in-Suit. Such fundamentally flawed claims are facially implausible.

1. Count VI – Signature Ribbon-Style Faucets do not Plausibly Infringe the ’752

patent

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,

(center and right) illustrates this point:

See Complaint, Exs. F (annotated) (left), I (center), O (right); see also Dkt. 22 at p. 13-35

(“Affirmative Defenses”) ¶¶ 36-38.

Perhaps recognizing this easily observable problem, Kohler’s infringement allegation

concerning the ’752 patent is the only allegation for which Kohler did not include “representative

[images] of Signature’s Infringing Component Ribbon-Style Faucets” in close proximity to the

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

which [aspect] is merely superfluous, nonlimiting elaboration.”). Such conclusory allegations,

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

asserted design patent claims.

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

larger diameter than that of the vertical portion:

Complaint, Ex. C (annotated) (left and center); Complaint ¶ 60 (right).

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

renders the accused design as a whole substantially different.

3. Count IV – Signature’s Accused Square Handles do not Plausibly Infringe the

Octagonal Designs of the ’824 patent

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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Complaint, Ex. D (annotated).

Signature’s Accused ʼ824 Handles have linear, squared-off designs that do not match the

features of the ’824 patent:

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

octagonally contoured design patent claims.

D. Prior Sales of Accused Designs Render Invalid Multiple Asserted Patents

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

to spend more time and money on a frivolous case.

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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publication, which necessarily invalidated asserted patent if plaintiff’s infringement allegations

were accepted as true).

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.

1. Signature Sold Products Accused in Count II in 2013—Over Six Years Prior to

Kohler’s 2019 Priority Date

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

completion in 2014. Id. For example:

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Kugler Decl. ¶ 5.

Signature business records corroborating what is shown in the publicly-available images

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

of the ’293 patent. 35 U.S.C. § 102(a)(1).

2. Signature Sold Products Accused in Counts V and VI in 2008—Nine Years Prior

to Kohler’s 2017 Priority Date

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:

Kugler Decl. ¶ 11.

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

claims of the ’614 patent and ’752 patent. 35 U.S.C. § 102(a)(1).

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

apartment sales and rentals. Id.

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,

BT2092AC1, is the ADA-compliant version of BT2006AC1—which means only that it was an

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

same design, shape, and profile. SMF ¶¶ 15-17.

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,

renders the ʼ487 patent invalid.

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

application. Kohler provided no response on this issue, either.

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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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.

Dated: February 5, 2024 Respectfully submitted,

/s/ Michael P. Kahn

Michael P. Kahn
Megan R. Mahoney
AKIN GUMP STRAUSS HAUER & FELD LLP
One Bryant Park
New York, NY 10036
(212) 872-1000
mkahn@akingump.com
mmahoney@akingump.com

Counsel for Defendant

Signature Plumbing Specialties LLC

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CERTIFICATE OF SERVICE

I certify that a copy of the foregoing has been served upon all counsel of record via the

Court’s CM/ECF system on February 5, 2024.

/s/ Michael P. Kahn

Michael P. Kahn

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