DCT
1:18-cv-00012
SUNDESA LLC v. Eurark LLC
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Sundesa, LLC (Utah)
- Defendant: Eurark, L.L.C., d/b/a Lifeplus International (Illinois)
- Plaintiff’s Counsel: Kutak Rock LLP
- Case Identification: 1:18-cv-00012, E.D. Ark., 02/13/2018
- Venue Allegations: Venue is alleged to be proper in the Eastern District of Arkansas because Defendant operates a regular and established place of business in Batesville, Arkansas, and conducts substantial business in the district through sales and an interactive commercial website.
- Core Dispute: Plaintiff alleges that Defendant’s shaker cups infringe a utility patent directed to a free-floating mixing agitator and a design patent directed to the ornamental appearance of a shaker bottle.
- Technical Context: The technology relates to portable containers used for mixing powdered nutritional supplements with liquids, a widely used product category in the health and fitness industry.
- Key Procedural History: The complaint alleges that Plaintiff’s products embodying the patents-in-suit have been appropriately marked. It further alleges that on August 23, 2017, Plaintiff sent Defendant a cease and desist letter with copies of the asserted patents, which may serve as a basis for willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 2000-02-18 | U.S. Patent No. 6,379,032 Priority Date |
| 2002-04-30 | U.S. Patent No. 6,379,032 Issue Date |
| 2003-09-09 | U.S. Patent No. D510,235 Priority Date |
| 2005-10-04 | U.S. Patent No. D510,235 Issue Date |
| 2017-08-23 | Plaintiff sends cease and desist letter to Defendant |
| 2018-02-13 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,379,032 - “Flow-Through Agitator” (issued Apr. 30, 2002)
The Invention Explained
- Problem Addressed: The patent's background section describes the difficulty of mixing powdered compositions, such as dietary supplements or baby formulas, into liquids, noting that such powders often form clumps that float, sink, or stick to container walls, resisting dispersion by simple shaking (’032 Patent, col. 1:56-65).
- The Patented Solution: The invention is a "physically independent" agitator, typically a wire-frame object, that is placed unattached inside a shaker container. As the container is shaken, the free-moving agitator travels through the liquid and powder, and its "flow-through" structure with interstitial spaces creates turbulence and a "chopping action" to break up clumps and promote a homogeneous suspension (’032 Patent, Abstract; col. 3:6-14).
- Technical Importance: This approach provides a reusable, easily cleaned agitator that can move freely to all parts of a container, unlike fixed mixing elements, to more effectively disperse powder aggregations (’032 Patent, col. 2:1-4).
Key Claims at a Glance
- The complaint asserts apparatus claims 15 and 17, and method claims 18 and 20 (Compl. ¶17). The asserted independent claims are 15 and 18.
- Independent Claim 15 (Apparatus):
- a hand-held, shakeable container for holding a liquid/powder mixture;
- a lid removably coupled to the container to form a completely enclosed mixing area; and
- a physically independent agitator object removably placed within the container, being free from any structural connection to the container, and having narrow rod-like elements defining a shape with interstitial spaces and a hollow interior space.
- Independent Claim 18 (Method):
- placing a composition of ingredients into a hand-held, shakeable container;
- placing a physically independent agitator (being free of any structural connection and having a framework with significant voids) into the container;
- securing a removable lid to form a completely enclosed mixing area; and
- shaking the container to propel the agitator through the composition.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Design Patent No. D510,235 - “Bottle” (issued Oct. 4, 2005)
The Invention Explained
- Problem Addressed: Design patents protect ornamental appearance rather than functional solutions. This patent secures the specific aesthetic and non-functional visual characteristics of a bottle design.
- The Patented Solution: The patent claims the ornamental design for a bottle as depicted in its figures (’235 Patent, p. 1, "CLAIM"). The design features a generally cylindrical container body that tapers slightly towards the bottom, a screw-on lid, and a flip-cap spout cover integrated into the lid. A key ornamental feature appears to be a recessed, vertically ribbed grip area on the side of the bottle (’235 Patent, Figs. 1-5).
- Technical Importance: In the consumer products market, a distinctive bottle design serves as a source identifier and can be a significant driver of consumer choice.
Key Claims at a Glance
- Design patents contain a single claim.
- Claim 1: "The ornamental design for a bottle, as shown and described."
III. The Accused Instrumentality
Product Identification
The accused products are identified as "counterfeit shaker cups with a whisk type ball" (Compl. ¶17). The complaint alleges Defendant markets the product, at least on its website, as a "Lifeplus Blender Bottle" (Compl. ¶32).
Functionality and Market Context
The products are shaker cups sold by Defendant, a seller of nutritional products and supplements, for the purpose of mixing powdered drinks (Compl. ¶¶17, 20). The complaint alleges the products are marketed as "Great for quickly blending Daily BioBasics, Daily Plus, Triple Protein Shakes, Colon Formula, Real NRG or any other powdered drink" (Compl. ¶20).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’032 Patent Infringement Allegations
| Claim Element (from Independent Claim 15) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a hand-held, shakeable container for holding a liquid/powder mixture; | Defendant sells "shaker cups." | ¶17 | col. 8:6-7 |
| a lid removably coupled to said hand-held shakeable container, wherein said lid serves to allow said mixer to form a completely enclosed mixing area...; | The accused "shaker cups" are used for mixing, which implies a lid to enclose the contents. | ¶17 | col. 8:8-11 |
| a physically independent agitator object removably placed within said hand-held, shakeable container, said physically independent agitator object being free from any structural connection to said hand-held, shakeable container... | The accused products are sold "with a whisk type ball." | ¶17 | col. 8:12-16 |
| ...and having narrow rod-like elements defining a shape with interstitial spaces between said elements and a hollow interior space within said shape... | The complaint alleges the "whisk type ball" embodies this claimed structure. | ¶17 | col. 8:16-19 |
- Identified Points of Contention:
- Structural Equivalence Question: The complaint alleges infringement via a "whisk type ball" but provides no technical details or images of its construction. A primary point of contention will be whether the accused "whisk type ball" in fact has "narrow rod-like elements defining a shape with interstitial spaces... and a hollow interior space," as required by the claim.
- Evidentiary Question: The infringement analysis will depend on evidence, such as physical exemplars or technical diagrams of the accused product, that is not included in the complaint. The court will need to compare the actual structure of the "whisk type ball" to the claim language and the embodiments described in the patent specification.
’235 Patent Infringement Allegations
- The complaint alleges that the design of the Accused Products is "substantially the same as the ornamental design of the '235 Design Patent" (Compl. ¶58). It further alleges that the similarity is sufficient to cause customer deception and confusion, the central test for design patent infringement (Compl. ¶24).
- Identified Points of Contention:
- Visual Comparison Question: The core of the design patent dispute is a visual test: whether an ordinary observer, giving such attention as a purchaser usually gives, would be induced to purchase the accused shaker cup supposing it to be the one protected by the '235 patent.
- Evidentiary Question: As with the utility patent, the complaint lacks any visual depiction of the accused product. The outcome of this claim will depend entirely on a side-by-side comparison of the actual accused product with the drawings in the '235 patent.
V. Key Claim Terms for Construction
For the ’032 Patent:
- The Term: "physically independent agitator object"
- Context and Importance: This term defines the core inventive concept distinguishing the patented technology from agitators that are fixed to or integrated with a container. The infringement determination for the '032 patent hinges on whether the accused "whisk type ball" falls within the scope of this term. Practitioners may focus on this term because its scope will determine whether a wide or narrow range of free-moving mixing devices infringes.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims state the object is "free from any structural connection to said hand-held, shakeable container" ('032 Patent, col. 8:13-14) and "allowed to move freely to every location within said enclosed mixing area" ('032 Patent, col. 8:22-24). This language may support a construction covering any unattached object that performs the agitating function.
- Evidence for a Narrower Interpretation: The specification repeatedly describes the object as having a "wire-frame shape" (e.g., '032 Patent, col. 2:10-11) and provides specific examples like a "single coiled wire-like element" ('032 Patent, col. 4:37-39). A party could argue these specific embodiments limit the term to similar open-frame, wire-like structures.
For the ’235 Patent:
The claim of a design patent is its drawing. As such, formal claim construction of words is rare. The central analysis will be the application of the "ordinary observer" test to the overall visual appearance of the accused product compared to the patented design, not the construction of a specific term.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement of the '032 patent, stating Defendant "markets, describes, encourages, and instructs its customers to use the Accused Products" to perform the patented mixing methods (Compl. ¶¶19, 43). It also alleges contributory infringement, asserting that the Accused Products "have no substantial non-infringing uses" (Compl. ¶¶22, 47).
- Willful Infringement: Willfulness is alleged for both the '032 patent and the '235 patent. The complaint bases this on two grounds: (1) alleged pre-suit knowledge from Plaintiff's marking of its own commercial products (Compl. ¶25) and (2) Defendant's alleged continued infringement after receiving a cease and desist letter on August 23, 2017, which provided actual notice of the patents (Compl. ¶¶26-27, 49, 52, 63).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of evidentiary proof for infringement: Given the lack of technical or visual detail in the complaint, can the Plaintiff produce evidence demonstrating that the accused "whisk type ball" has the specific "narrow rod-like" and "hollow interior" structure required by the '032 patent claims, and that the accused bottle is "substantially the same" as the '235 patent's ornamental design?
- A second key question will relate to willfulness: Assuming infringement is found, did the Defendant have knowledge of the patents, either constructively through product marking or actually via the 2017 cease and desist letter, such that its continued infringement was egregious enough to warrant enhanced damages?
- A final question will be one of claim scope: Will the term "physically independent agitator object" in the '032 patent be construed broadly to cover a wide range of unattached mixing elements, or will it be interpreted more narrowly in light of the "wire-frame" embodiments shown in the specification?