DCT

1:22-cv-01623

Bee Warehouse LLC v. Blazer

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:22-cv-01623, N.D. Ala., 12/30/2022
  • Venue Allegations: Venue is asserted based on the Defendant’s residence in the Northern District of Alabama and his regular conduct of business within the state.
  • Core Dispute: Plaintiffs seek a declaratory judgment that their "Bee Warehouse Trap" does not infringe Defendant's reissue patent for carpenter bee traps, and further that the patent-in-suit is invalid.
  • Technical Context: The dispute centers on the design of mechanical traps used to capture and kill carpenter bees, a common wood-boring insect pest.
  • Key Procedural History: The complaint notes extensive prior litigation involving the patent-in-suit and its predecessor, including an ongoing action between Plaintiff DPCC and Defendant Blazer in the same district ("the Alabama Action"). Plaintiffs assert that a claim construction order from the Alabama Action and a Federal Circuit opinion from separate litigation define key terms in a way that precludes infringement. The complaint also alleges that the patent-in-suit is invalid for impermissibly broadening claim scope during the reissue process in violation of the recapture rule.

Case Timeline

Date Event
2009-04-27 Priority Date for U.S. Reissue Patent No. 46,421
2017-06-06 U.S. Reissue Patent No. 46,421 Issued
2020 Defendant filed related actions in Texas against Plaintiffs' customers
2022-12-30 Complaint for Declaratory Judgment Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Reissue Patent No. RE46,421 - "CARPENTER BEE TRAPS," Issued Jun. 6, 2017

The Invention Explained

  • Problem Addressed: The patent describes prior art insect traps as being difficult to monitor, having limited capacity, or failing to effectively leverage the natural behavior of carpenter bees to ensure their capture (RE46,421 Patent, col. 2:3-31). Specifically, bees are known to be attracted to light for navigation and escape.
  • The Patented Solution: The invention is a passive carpenter bee trap that exploits the insect's own instincts. It consists of a trap entrance unit, typically made of wood to mimic a natural nest, which contains at least one upward-sloping entrance hole leading into a darker interior plenum (RE46,421 Patent, col. 2:40-52). This design reduces incoming ambient light from the entrance. Below the plenum, a clear or translucent receptacle is attached. Bees entering the trap are drawn towards the brighter light emanating from the receptacle, which they perceive as an exit, and become trapped inside (RE46,421 Patent, col. 2:61-66).
  • Technical Importance: The design creates a high-capacity, low-maintenance trap that uses the bee's phototactic behavior (attraction to light) as the primary trapping mechanism, eliminating the need for complex electronics or proprietary glue boards (RE46,421 Patent, col. 3:1-13).

Key Claims at a Glance

  • The complaint seeks a declaratory judgment of non-infringement of independent claims 1 and 13 (Compl. ¶¶ 20, 21).
  • Independent Claim 1 requires, in part:
    • A trap entrance unit made of wood or a wood substitute, forming a plenum.
    • At least one hole mimicking a natural carpenter bee nest tunnel.
    • A "means to shelter an entrance to said hole is provided to reduce the admittance of ambient light".
    • A "receptacle adapter" at the bottom of the trap unit.
    • A "clear or translucent receptacle" received by the adapter to allow ambient light into the plenum, providing a secondary attractant.
  • Independent Claim 13 requires, in part:
    • A trap entrance unit of wood or wood substitute with at least one entrance hole.
    • The trap entrance unit has an "exit opening."
    • A "receptacle adapter located at the exit opening" adapted to receive a receptacle and allow ambient light to enter.
  • The complaint notes that non-infringement of these independent claims would also mean non-infringement of any dependent claims (Compl. ¶20).

III. The Accused Instrumentality

Product Identification

The "Bee Warehouse Trap" (Compl. ¶10).

Functionality and Market Context

The accused product is a carpenter bee trap manufactured by Plaintiff DPCC and sold by Plaintiff Bee Warehouse (Compl. ¶¶ 2-3). It consists of a wooden block that serves as the entrance unit, mounted on top of a clear plastic box that serves as the receptacle (Compl. p. 5). The complaint alleges that the trap was designed specifically to avoid infringement based on prior court rulings (Compl. ¶10). The central dispute was triggered when Defendant allegedly submitted an infringement notice to Amazon.com, leading to the removal of the Bee Warehouse Trap from the online marketplace (Compl. ¶11). The complaint alleges a key design distinction is that its receptacle is "secured to the trap entrance unit via two (2) screws" rather than using a "receptacle adapter" (Compl. ¶19). A photo included in the complaint shows the overall assembly of the accused product. (Compl. p. 6).

IV. Analysis of Infringement Allegations

The complaint seeks a declaratory judgment of non-infringement. The table below summarizes the Plaintiffs' allegations as to why their product does not meet the limitations of the asserted claims.

RE46,421 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Non-Infringing Functionality Complaint Citation Patent Citation
a means to shelter an entrance to said hole is provided to reduce the admittance of ambient light The Bee Warehouse Trap allegedly does not contain this feature. The complaint asserts that a prior court order construed this means-plus-function limitation as requiring an "overhanging roof," which the accused product lacks. ¶18 col. 4:62-64
said trap unit further comprising a receptacle adapter being substantially located at the bottom of said trap unit The Bee Warehouse Trap allegedly does not have a "receptacle adapter." Instead, the receptacle is attached directly to the wooden entrance unit with two screws. A close-up photo shows this screw-based attachment. (Compl. p. 8). ¶19 col. 2:54-57
  • Identified Points of Contention:
    • Scope Questions: A primary issue is whether the term "receptacle adapter," as construed by the Federal Circuit to be "a structure configured to receive and help retain a receptacle," reads on the two-screw attachment mechanism used in the accused trap (Compl. ¶16). The complaint argues it does not, framing the screws as simple fasteners rather than an "adapter."
    • Technical Questions: The dispute raises the question of whether the accused trap incorporates the claimed "means to shelter." Based on a prior court ruling cited in the complaint, this analysis may focus on whether the accused trap has an "overhanging roof" or a structure that is demonstrably equivalent (Compl. ¶15).

V. Key Claim Terms for Construction

The complaint’s non-infringement theory relies heavily on constructions of two key terms from prior litigation.

  • The Term: "a means to shelter an entrance to said hole is provided to reduce the admittance of ambient light" (Claim 1)

    • Context and Importance: This is a means-plus-function limitation. Plaintiffs' non-infringement argument is premised on a prior district court ruling that allegedly construed the only corresponding structure in the patent to be an "overhanging roof" (Compl. ¶15). The presence or absence of this specific structure, or an equivalent, in the Bee Warehouse Trap is therefore critical.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The claim language itself is functional ("a means to shelter") and does not specify a particular structure, which could suggest that any structure performing the stated function might suffice (’421 Patent, col. 8:49-51).
      • Evidence for a Narrower Interpretation: The specification explicitly describes an "overhanging roof" as the structure performing the sheltering function. For example, it states, "The roof of the trap entrance unit overhangs the sides and provides added shelter" and "The top panel 161 of the entrance unit overhangs side panels 162 to shelter entrance holes 11" ('421 Patent, col. 2:49-52, col. 4:62-64). This provides strong support for limiting the scope of the "means" to this disclosed structure and its equivalents.

  • The Term: "receptacle adapter" (Claims 1, 13)

    • Context and Importance: Plaintiffs allege their trap lacks this element entirely, instead using screws for direct attachment (Compl. ¶19). The complaint cites a Federal Circuit opinion that construed this term as "a structure configured to receive and help retain a receptacle" (Compl. ¶16). The case may turn on whether a set of screws constitutes such a "structure."
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent discloses multiple embodiments for connecting the receptacle, including a "screw type bottle cap" and a "friction fit," which could support an interpretation that "adapter" is a broad term for any coupling mechanism ('421 Patent, col. 5:8-12, col. 5:42-43). A party could argue that the screws, in combination with the wood block, form a "structure" that performs the required function.
      • Evidence for a Narrower Interpretation: The specification consistently depicts the adapter as a discrete intermediate component, such as "reducer section [4] 15" or "adapter coupling [5] 14" ('421 Patent, Fig. 1A, col. 5:3-6). This may support the view that simple fasteners attaching two main components directly are not an "adapter" as envisioned by the patent.

VI. Other Allegations

  • Declaratory Judgment of Invalidity: Plaintiffs seek a declaration that the '421 Patent is invalid for violating the "original patent rule" of 35 U.S.C. § 251 (Compl. ¶43). It is alleged that during the reissue process, Defendant impermissibly broadened claim 13 by removing limitations requiring the receptacle to be on the "bottom" of the trap and to be "clear or translucent," allegedly recapturing subject matter surrendered during the prosecution of the original patent (Compl. ¶44).
  • Tortious Interference and Bad Faith: The complaint includes counts for tortious interference with business relations and violation of Alabama's statute against bad faith patent infringement claims (Compl. ¶¶ 34-41). These allegations are based on Defendant's act of submitting an infringement notice to Amazon, which Plaintiffs characterize as a "frivolous and bad-faith" action taken without a reasonable investigation and with knowledge of non-infringement due to prior court rulings (Compl. ¶¶ 11, 35).

VII. Analyst’s Conclusion: Key Questions for the Case

  1. A central issue will be one of claim scope and judicial precedent: To what extent will the court adopt or be persuaded by the claim constructions of "means to shelter" and "receptacle adapter" from prior proceedings, as cited by the Plaintiffs? The viability of the non-infringement case rests heavily on these pre-defined interpretations.
  2. The case presents a critical validity question under the recapture rule: Does the prosecution history of the original patent show that the patentee surrendered the subject matter that was later added back into the reissue claims, thereby invalidating the '421 Patent under 35 U.S.C. § 251?
  3. A key factual question will be one of structural identity: Assuming the court adopts the prior constructions, does the accused trap’s two-screw attachment mechanism function as a "receptacle adapter," and does its body design incorporate a structure that is equivalent to the patent's disclosed "overhanging roof"?