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Patent Infringement: GSC Technologies Corporation v. Umbra LLC

U.S. District Court, WDNY 

Patent Infringement 

Breach of Contract 

GSC Technologies Corporation v. Umbra LLC
Judge Skretny 

Background: Presently before the court are the plaintiff GSC Technologies Corporation’s motion for judgment on the pleadings seeking dismissal of the defendants’ counterclaims and the defendants Umbra LLC and Umbra Inc.’s motion to amend their answer. GSC argues that Umbra’s proposed amended answer is a futile re-pleading of insufficient facts and does not cure the alleged deficiencies in Umbra’s counterclaims. Nonetheless, GSC has addressed Umbra’s proposed amended answer and it is therefore not prejudiced by this court considering the amended pleading at this time. 

GSC manufactures folding tables and chairs and injection-molded housewares. On Dec. 29, 1998, Karim Rashid filed a patent application for a design entitled “Chair.” The United States Patent and Trademark Office later issued design patent 417,795 to Umbra, as Rashid’s assignee. Umbra marketed and continues to market what it views as the embodiment of the Rashid patent: a stackable chair with tubular, steel legs. In 2006, the parties litigated Umbra’s claim that GSC was manufacturing a chair that infringed the Rashid patent. The suit settled after GSC agreed to redesign the chair. After this settlement, GSC designed another chair, the V-16 GSC Chair, that GSC maintains does not infringe the Rashid patent. This chair allegedly required GSC to invest in changing the AHHA mold or make a new mold to accommodate the V-16 GSC chair design. 

Umbra has advised GSC, however, that it believes that the V-16 GSC Chair infringes its Rashid patent. Consequently, GSC filed this suit on July 18, 2007, seeking a declaratory judgment “that any manufacture, sale, offer for sale, and distribution of the V-16 GSC Chair in the United States, and any importation thereof into the United States, does not infringe the ‘795 Rashid Patent.” 

Ruling: The plaintiff’s motion is denied and the defendants’ motion is granted. The court finds that Umbra’s proposed amendments are not futile. Umbra’s position is that “a chair” as used in the agreement is singular and refers to GSC making only one chair-the one depicted in the referenced drawing. Umbra’s claim is that by planning to make and market the V-16 GSC chair, which is not the one depicted in the settlement agreement, as amended, GSC has breached the agreement. 

The court finds it cannot conclude as a matter of law that Umbra’s claim is implausible. “Umbra has plead each of the elements of a breach of contract cause of action, which GSC does not dispute, and its claim that the singular ‘a chair’ in the settlement agreement, as amended, refers to a single chair is not implausible or absurd, as GSC argues. Competing interpretations of contract language must be resolved at a later stage,” the court concludes. 

Edward D. Manzo of Husch Blackwell Sanders Welsh & Katz for the plaintiff; and Randolph C. Oppenheimer of Oppenheimer Law Office for the defendants