IP Law Daily, PATENT—S.D.N.Y.: Declaratory judgment in appropriate in back shaver design dispute, (Apr 7, 2025)

By Kevin M. Finson, J.D.

A trial court decided it lacked subject matter jurisdiction to consider a declaratory judgment claim relating to design patent infringement by a newly-redesigned back shaver product because there was no indication the patentee viewed the new product design as infringing or intended to pursue an infringement claim.

A seller of back shavers was not able to state a claim for a declaratory judgment over infringement or invalidity of a competitor’s design patent, the U.S. District Court in New York has held. The patentee had not shown any indication it would attempt to enforce the patent against the seller (Foto Electric Supply Co., Inc. v. Marut Enterprises LLC, No. 1:24-cv-05540-JSR (S.D.N.Y. Apr. 1, 2025)).

Foto Electric Supply Co., Inc. (Fesco) was a seller of back shaver products which had engaged in substantial litigation against Marut Enterprises, LLC and Brett Marut (collectively, Marut) over utility and design patent infringement related to U.S. Patent No. 7,856,725 (the ’735 patent), design patent no. 611,653 (the ’653 patent), and common law trade dress rights. This initial case was settled after Fesco redesigned a functional element of its products, and the same day as the settlement was entered Fesco brought suit for a declaratory judgment that its products did not infringe the ’653 design patent or Marut’s common law trade dress rights, and also brought patent misuse and antitrust claims. Marut moved to dismiss.

Design patent and trade dress infringement. The court held that it lacked jurisdiction to consider the design patent and trade dress infringement claims because there was no present case or controversy. The actual litigation between the parties had settled on the same day the declaratory judgment action was filed, and there was no indication that Marut believed the newly redesigned product infringed, except for a years-old cease and desist letter which predated the settlement between the parties.

Patent misuse. Fesco alleged that Marut misused the design patent, which it claimed was invalid, by continuing to assert it while knowing it was invalid and by refusing to withdraw the allegations of infringement. The court held that patent misuse was an affirmative defense, not a claim in itself, and that Fesco could not convert an affirmative defense into a claim for damages by styling it as a declaratory judgment claim.

Antitrust. Fesco argued that Marut asserted the patents in question in bad faith and as part of an attempt to monopolize the market for pivoting back shavers. The court found that Fesco had failed to even attempt to meet the elements of an antitrust claim because it had not made allegations to define the relevant market, to allege an antitrust injury, or to allege violation of antitrust law. The request for declaratory relief and antitrust claims were dismissed.

The court granted the motion to dismiss.

The Case is No. 1:24-cv-05540-JSR.

Judge: Rakoff, J.

Attorneys: Lee A. Goldberg (Goldberg Cohen LLP) for Foto Electric Supply Co., Inc. Mark H. Anania (Stevens & Lee PC) for Marut Enterprises LLC.

Companies: Foto Electric Supply Co., Inc.; Marut Enterprises LLC

Cases: Patent NewYorkNews