United States District Court, D. Connecticut
RULING AND ORDER ON MOTION TO DISMISS
A. BOLDEN UNITED STATES DISTRICT JUDGE.
September 14, 2017, ArtSkills, Inc.
(“Plaintiff”), filed a Complaint against Royal
Consumer Products, LLC (“Defendant” or
“RCP”), claiming that RCP infringed on two of
ArtSkills's patents. Compl., ECF No. 1. On January 30,
2018, RCP filed an Amended Answer with Counterclaims alleging
that ArtSkills had engaged in false marking of its products.
Am. Answer, ECF No. 34.
now moves to dismiss RCP's counterclaims alleging false
marking. Mot. Dismiss, ECF No. 40. For the following reasons,
the motion is GRANTED.
extent that the deficiencies identified in this ruling can be
addressed, RBC may file a motion for leave to amend its
counterclaims by August 24, 2018.
FACTUAL AND PROCEDURAL BACKGROUND
a Pennsylvania corporation, “develops and sells poster
boards and poster board accessory products, ” including
a “Trifold Display Board with Header.” Compl.
¶ 1. ArtSkills claims that its Trifold Board is “a
patented display board of the type used to display
information for presentation of any kind, such as
presentations in classrooms, science fairs, offices, and
household related displays, ” and that it is
“uniquely designed to remain securely closed and
undamaged until ready for use.” Id. ¶ 2.
alleges that RCP, a Delaware company with headquarters in
Norwalk, Connecticut, “is a supplier of office products
and related accessories for the consumer and business
markets, and sells a variety of products such as printing
paper, poster boards, and poster board accessories, ”
including “the Eco Brites Project Board with
Header” (“RCP Board”). Id.
alleges that it introduced a number of poster board accessory
products in 2005 “in an effort to create a niche
industry for poster board accessory products.”
Id. ¶ 11-12. ArtSkills alleges that its
“poster board accessory products line was an original
and entirely new development in the paper and stationary
industry, ” and that it “now sells poster board
accessory products to more than sixty thousand stores across
the country, including large retailers such as Wal-Mart,
Target, CVS, Walgreens, and Michaels.” Id.
¶ 12. Artskills alleges that because of its efforts at
creating this niche market, “poster board accessory
products became a new category within the stationary
industry, and ArtSkills became the leader of that niche
alleges that RCP, which has been in the paper business for
many years, began to introduce poster board products in the
late 2000's to compete with ArtSkills products.
Id. ¶ 13. ArtSkills argues that “in the
past [RCP] has introduced products that were deliberately
designed to duplicate the appearance of ArtSkills
products.” Id. ¶ 14. ArtSkills also
alleges that “ArtSkills is RCP's chief competitor
in this market, and RCP continues to monitor ArtSkills'
products and competitive activity.” Id. ¶
2012, ArtSkills allegedly began to sell its Trifold Display
Board, “a multi-panel display board of the general
types used [to] display information for presentations of any
kind, such as presentations in classrooms, science fairs,
offices, and household related displays.” Id.
¶ 19. ArtSkills claims that “[a] key advantage of
the ArtSkills Trifold Display Board is that, in contrast to
previous designs, the ArtSkills Board consists of a single
sheet of material, including three display panels and a
header panel, which is uniquely configured to stay securely
closed and intact until used by the consumer.”
alleges that, in 2013, RCP “introduced a product called
Royal Eco Brites Project Board with Header, ” which
allegedly included “all the unique functional features
of the ArtSkills Trifold Display Board, and, like the
ArtSkills Board, is configured in the same manner to stay
securely closed and intact until used by a consumer.”
Id. ¶ 21. ArtSkills alleges that “RCP
copied the appearance, design, and functional features of the
ArtSkills Trifold Display Board in RCP's Project
Board.” Id. ¶ 22.
September 14, 2017, ArtSkills filed a Complaint against RCP,
claiming that RCP had infringed on two of ArtSkills's
patents: No. 9, 495, 886 (“'886 patent”) and
No. 9, 076, 352 (“'352 patent”). Compl.
Specifically, ArtSkills alleged that RCP's Project Board,
the “Royal Eco Brites Project Board with Header,
” infringed on ArtSkills's patent '866,
entitled “Multi-Panel Display Device, Blank, and Method
of Forming the Device, ” and its patent '352,
entitled “Multi-Panel Display Device, Blank, and Method
of Forming the Device.” Id. ¶¶ 24,
40; see also Patent '886, Compl. Ex. A, ECF No.
1-1; Patent '352, Compl. Ex. B, ECF No. 1-2.
January 30, 2018, RCP filed an Amended Answer with
affirmative defenses and counterclaims. Am. Answer.
alleged that the Trifold Display does not practice design
patent Nos. D739, 467, D754, 253, and D706, 872,
“because, among other reasons, the Trifold Display
features slots on the free end of the header panel, ”
while the patent “claims a design with slots on the
edge that is attached to another piece via a
‘preweakened area[.]'” Id. at 9-10;
see also Id. at 12-13 (claiming same for design
patent No. D754, 253); id. at 15-16 (claiming same
for design patent No. D706, 872). RCP alleged that the
Trifold Display “features a slot with a ridge, ”
while the patent “claims a design featuring a slot that
is straight, without any ridge[.]” Id. at 11.
RCP also alleged that the Trifold Board “features a
header panel mounted by adhesive directly on top of a side
panel, ” while the patent “claims a design where
the header panel is attached via a [preweakened] area along
the side of a side panel, such that the device would lie flat
and feature four panels (two side panels, a center panel, and
the header panel), ” and that “[t]here is no
claim that would cover a design where the header panel lies
directly on top of a side panel before it is removed, as
practiced by the Trifold Display.” Id.
February 13, 2018, ArtSkills moved to dismiss RCP's
counterclaims under Federal Rule of Civil Procedure 12(b)(6)
and Rule 9(b). Mot. Dismiss, ECF No. 40. RCP objected to the
motion. Obj. to Mot. Dismiss, ECF No. 43. The Court held a
hearing on Artskills's motion to dismiss on July 6, 2018.
ECF No. 56.