BL United LLC v. Nurserie Farm & Garden Market Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: BL United, LLC and Pipe Me Industry, Inc. (Arkansas)
  • Defendant: The Nurserie Farm & Garden Market, Inc.; Carrie Nichole Galloway; and Robin Lee Galloway (Arkansas)
  • Plaintiff’s Counsel: Rashauna Norment Law Firm, PLLC
• Case Identification: 4:24-cv-00003, E.D. Ark., 01/02/2024
• Venue Allegations: Venue is asserted on the basis that all parties reside in Arkansas, and a substantial part of the events giving rise to the claims occurred in the district.
• Core Dispute: Plaintiffs allege that Defendants, following a failed joint venture, engaged in false marking and false advertising by publicly claiming to have a patent on a vertical farming component that Plaintiffs developed.
• Technical Context: The dispute centers on intellectual property for vertical hydroponic farming systems, a method of growing plants using nutrient-rich water solutions in vertically stacked layers, often in controlled environments.
• Key Procedural History: The complaint is rooted in a failed joint venture between the parties, initiated around April 2022, to establish a vertical farming operation at the Defendants' nursery. Plaintiffs allege that after they provided proprietary products and trade secrets, Defendants misrepresented ownership of the technology, leading to the current lawsuit.

Case Timeline

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

U.S. Design Patent No. D913,962 - "Modular conduit cable management system," issued March 23, 2021.

The Invention Explained

• Problem Addressed: The complaint does not explicitly state a problem addressed by the design patent. However, the patent's title and application for vertical farming suggest a need for modular, configurable structures to support either cables or, in this context, hydroponic cultivation systems (Compl. ¶¶9, 14).
• The Patented Solution: The '962 Patent claims the specific ornamental design of a two-part system: a cylindrical conduit body and a separate pin-like connector. The design features distinctive grooves on the conduit's exterior and a specific internal structure, while the pin has a unique shape for connecting conduit sections (D913,962 Patent, FIG. 1). The patent protects the visual appearance of this system, not its functional or structural characteristics (D913,962 Patent, Claim).
• Technical Importance: The complaint alleges this patented design serves as the foundational technology for a vertical farming system, allowing for the creation of "grow tubes" (Compl. ¶19; Compl. Ex. D, p. 83).

Key Claims at a Glance

• As a design patent, there is only one claim: "The ornamental design for a modular conduit cable management system, as shown and described." (D913,962 Patent, Claim).
• The claim protects the overall visual appearance of the article depicted in the patent's 64 figures.

III. The Accused Instrumentality

• Product Identification: The core of the dispute is not a product that directly infringes the '962 Patent, but rather a "spacer and/or pot holder" that Plaintiffs allege is an unpatented component derived from the '962 Patent's pin design (Compl. ¶¶44, 93). This component is part of a larger vertical hydroponic farming system that was the subject of the joint venture (Compl. ¶18).
• Functionality and Market Context: The complaint alleges that Plaintiffs developed this spacer/pot holder to be used within their conduit pipes for growing crops (Compl. ¶44). In a news interview, Defendant Mr. Galloway allegedly represented this spacer as "patented" and a key component of the vertical farming system his nursery was commercializing (Compl. ¶64; Compl. Ex. H, p. 106). A photograph from Exhibit C shows an early prototype of what appears to be this spacer/pot holder component being fitted into the top of the conduit pipe (Compl. Ex. C, p. 77). The complaint frames the Defendants' business as a local garden center that was not previously involved in inventing or manufacturing such products (Compl. ¶21).

IV. Analysis of Infringement Allegations

The complaint does not contain a count for direct patent infringement of the '962 Patent. The central patent-related cause of action is "COUNT 1 - FALSE MARKING - 35 U.S.C. § 292" (Compl. ¶¶89-103). Plaintiffs allege that Defendants violated this statute by publicly advertising an unpatented article—the "spacer and/or pot holder"—with the word "patent" for the purpose of deceiving the public (Compl. ¶90).

The complaint does not provide a claim chart comparing an accused product to the '962 Patent claim. Instead, its allegations focus on the falsity of Defendants' statements. A THV11 news article, attached as Exhibit H, quotes Defendant Mr. Galloway stating, "We have a patent on the spacers that go inside here too" (Compl. Ex. H, p. 106). Plaintiffs allege this statement is "literally false" because no such patent had been issued to Defendants (Compl. ¶95), and that it was made to improperly bolster Defendants' credibility (Compl. ¶97).

While not a direct infringement claim, the complaint does contain a forward-looking allegation that any "further use, or attempted use, by Defendants of Plaintiff BLU's patented products or... proprietary spacers and pot holders would constitute willful infringement" (Compl. ¶185).

V. Key Claim Terms for Construction

In a design patent case, the single claim covers the overall ornamental design as shown in the drawings. There are no specific text-based terms for construction as in a utility patent. The analysis centers on the scope of the claimed design.

• The Term: "The ornamental design for a modular conduit cable management system, as shown and described."
• Context and Importance: The central question is one of scope: does the claimed ornamental design of the '962 Patent read on the "spacer and/or pot holder" that is the subject of the dispute? The infringement test is whether an "ordinary observer," familiar with the prior art, would be deceived into purchasing the accused article believing it to be the patented design. Here, the issue is inverted for the false marking claim: the key question is whether the spacer/pot holder is, in fact, an "unpatented article" under § 292. The relationship between the patented "pin" and the unpatented "spacer" will be critical.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The parties could argue that the overall visual impression of the system, including the way components interact, is the core of the design. The patent shows multiple embodiments and uses, which may suggest a broader concept for a modular system (D913,962 Patent, Description).
  • Evidence for a Narrower Interpretation: A party could argue the claim is strictly limited to the exact visual features depicted in the patent figures. Figures 1-10 show a specific pin connector, and the photographs of the "spacer" in the complaint's exhibits may be visually distinct from that claimed design (D913,962 Patent, FIG. 1; Compl. Ex. C, p. 77). The court would need to determine if the differences are minor or substantial enough to render the spacer a different, and therefore unpatented, design.

VI. Other Allegations

• Indirect Infringement: The complaint does not allege indirect infringement.
• Willful Infringement: Willfulness is alleged in two primary contexts. First, the complaint alleges Defendants' false marking and advertising were done knowingly and with intent to deceive the public (Compl. ¶¶96, 100). This relates to the state of mind for the false marking claim. Second, the complaint makes a forward-looking statement that any future unauthorized use of Plaintiffs' patented products would constitute willful infringement, implying that the lawsuit has put Defendants on notice (Compl. ¶185).

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

This case appears to be less a classic patent infringement dispute and more a commercial tort case centered on intellectual property claims. The primary questions for the court will likely be:

1. A central question of statutory violation: Did Defendants' statement in a news interview that they have a "patent on the spacers" constitute use "in advertising" under 35 U.S.C. § 292, and was it made with the requisite "purpose of deceiving the public"?
2. An issue of ownership and derivation: Is the "spacer and/or pot holder" an independent creation of the Defendants, or is it an unpatented derivative of Plaintiffs' '962 Patent and proprietary technology, as the complaint alleges? The answer will be critical for both the false marking and the broader unfair competition claims.
3. A question of primary injury: Is the core of this case the alleged patent-related false marking, or is it a more fundamental breach of contract and misappropriation of business opportunity stemming from the failed joint venture, with the patent issue serving as a component of the alleged damages?