DCT
2:18-cv-00027
Thompson Brothers & Co LLC v. Ung
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Thompson Brothers & Company LLC (Minnesota)
- Defendant: Sean Ung and Scrapesation, LLC (Arizona)
- Plaintiff’s Counsel: Patterson Thuente Pedersen, P.A.
- Case Identification: 2:18-cv-00027, D. Ariz., 01/04/2018
- Venue Allegations: Venue is alleged to be proper in the District of Arizona because the defendants reside there.
- Core Dispute: Plaintiff alleges that Defendant’s wooden grill scrapers, and the method of using them, infringe two patents related to grill cleaning tools with conformable scraping edges.
- Technical Context: The technology concerns wooden grill scrapers that, when used on a hot grill, form grooves that match the specific profile of the grill grates, enabling more effective cleaning.
- Key Procedural History: The complaint alleges that Plaintiff sent a letter to Defendant in June 2013 providing notice of a pending patent application that later issued as one of the patents-in-suit. The complaint also cites a 2015 email allegedly from Defendant Sean Ung acknowledging Plaintiff’s “utility patent.” These allegations may be used to support the claim of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2010-04-26 | Priority Date for '068 and '612 Patents |
| 2010-08 | Plaintiff and Defendant first meet at Minnesota State Fair |
| 2013-06-17 | Plaintiff sends notice letter to Defendant regarding pending patent application |
| 2014-06-03 | U.S. Patent No. 8,741,068 ('068 Patent) Issues |
| 2015-10-30 | Email from Defendant Ung allegedly acknowledging Plaintiff's "utility patent" |
| 2017-11-21 | U.S. Patent No. 9,820,612 ('612 Patent) Issues |
| 2018-01-04 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,741,068, "BBQ GRILL SCRAPER," issued June 3, 2014
The Invention Explained
- Problem Addressed: The patent identifies shortcomings with conventional grill cleaning tools, noting that brushes become clogged with debris and rigid scrapers fail to effectively clean the rounded surfaces of grill grates, leaving charred debris behind (’068 Patent, col. 1:40-54).
- The Patented Solution: The invention is a method for cleaning a grill using a scraper made from a "heat-responsive material," such as wood. The method involves scraping a heated grill surface, which causes the scraper's edge to conform to the grate profile by forming grooves that match the grates, thereby enabling a more thorough cleaning (’068 Patent, Abstract; col. 2:15-28). This customization process is illustrated in the patent's Figures 11 through 14, which show a straight edge progressively developing grooves.
- Technical Importance: This approach creates a custom-fitted cleaning tool for a specific grill through the act of using it, which offers a potential advantage over generic, one-size-fits-all tools (’068 Patent, col. 2:1-4).
Key Claims at a Glance
- The complaint asserts infringement of at least Claim 1 of the '068 patent (Compl. ¶50).
- Independent Claim 1 recites a method with the following key steps:
- Providing a grill scraper with a conformable scraping edge made of a heat-responsive material, where the edge is initially straight.
- Scraping a heated grill surface with the conformable edge.
- Forming a plurality of grooves in the edge during scraping, with the arrangement and size of the grooves corresponding directly to the upper profile of the heated grill surface.
- The complaint reserves the right to assert other claims (Compl. ¶28).
U.S. Patent No. 9,820,612, "BBQ GRILL SCRAPER," issued November 21, 2017
The Invention Explained
- Problem Addressed: The '612 Patent, which is a divisional of the application that led to the '068 Patent, addresses the same problems of ineffective grill cleaning by conventional tools (’612 Patent, col. 1:40-54).
- The Patented Solution: Rather than claiming the method of use, this patent claims the apparatus itself: a grill scraper made of wood with specific structural features. These features include a "beveled scraping surface" that forms a "conformable scraping edge," and a "central grasping surface" with a "reduced width" compared to the scraping end, which is intended to make the tool easier to grip and use (’612 Patent, Abstract; col. 4:38-46).
- Technical Importance: The patent describes a specific physical design for a wooden scraper intended to facilitate the custom-forming cleaning process (’612 Patent, col. 2:10-17).
Key Claims at a Glance
- The complaint asserts infringement of at least Claim 1 of the '612 patent (Compl. ¶¶61, 73).
- Independent Claim 1 recites an apparatus with the following key elements:
- A scraper body made of wood with a manipulation end and a scraping end.
- A beveled scraping surface on both the upper and lower surfaces, terminating in a conformable scraping edge that is initially straight.
- A central grasping surface between the manipulation and scraping ends that has a reduced width compared to the scraping end.
- The complaint reserves the right to assert other claims (Compl. ¶29).
III. The Accused Instrumentality
Product Identification
- The accused products are the "Scrapesation small, Scrapesation medium, and Scrapesation large" grill scrapers (Compl. ¶33).
Functionality and Market Context
- The complaint alleges that the accused products are wooden barbecue grill scrapers which, during use, "develop grooves corresponding to the size and shape of the grill surface on which they are used" (Compl. ¶26). This functionality is supported by the defendants' user instructions, included as FIG. A in the complaint, which direct users to "Pre-heat grill 450-500 degrees" and note that "Grooves in the SS will improve with each use" to ensure "customization" (Compl. ¶37, FIG. A). A photograph of the accused products is provided as FIG. B (Compl. ¶39). The complaint alleges the products are sold via the
scrapesation.comwebsite (Compl. ¶27).
IV. Analysis of Infringement Allegations
'068 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| providing a grill scraper... wherein the conformable scraping edge has a straight scraping edge prior to initial use; | Defendants manufacture and sell scrapers, shown in FIG. B, which are alleged to have a conformable scraping edge that is straight before initial use. | ¶¶39, 45 | col. 5:31-34 |
| scraping a heated grill surface with the conformable scraping edge such that heat responsive material is in direct contact with the heated grill surface; | Defendants' instructions (FIG. A) explicitly direct users to pre-heat the grill and use the scraper on the hot grates. | ¶¶37-38, 46 | col. 5:16-29 |
| and forming a plurality of grooves in the conformable scraping edge... wherein the arrangement and size of the grooves correspond directly with an upper profile of the heated grill surface. | The instructions state that grooves will form with use for "customization," and the complaint alleges these grooves correspond to the grill surface profile. | ¶¶37, 48-49 | col. 5:42-50 |
- Identified Points of Contention:
- Scope Questions: As Claim 1 is a method claim, direct infringement occurs when an end-user performs the claimed steps. The complaint alleges direct infringement by the defendants (Compl. ¶28). A potential issue is whether Plaintiff can establish that Defendants themselves performed the full method, or if the case will primarily rely on the indirect infringement allegations described in Section VI.
- Technical Questions: A factual question may arise regarding the extent to which the grooves formed in the accused products "correspond directly with an upper profile of the heated grill surface" as required by the claim.
'612 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a scraper body made of a wood... | The accused products, shown in FIG. B, are alleged to be made of wood. | ¶¶62, 68 | col. 4:10-12 |
| wherein both the upper surface and the lower surface include a beveled scraping surface that terminates at the scraping end to define a conformable scraping edge... | The complaint alleges the products have a conformable scraping edge, D, which extends along the scraping end, B, as depicted in FIG. B. | ¶¶64-65 | col. 4:60-62 |
| wherein the scraper body defines a central grasping surface... having a reduced width as compared to the scraping end; | The products in FIG. B are alleged to have a central grasping surface, C, with a reduced width compared to the scraping end, B. This feature is visible in the complaint's visual evidence. | ¶¶66-67 | col. 4:38-46 |
| wherein the conformable scraping edge defines an initial straight scraping edge made of the wood. | The complaint alleges the scraping edge is straight before initial use. | ¶45 | col. 5:31-34 |
- Identified Points of Contention:
- Scope Questions: The case may turn on whether the accused product's structure meets the definitions of "beveled scraping surface" and "central grasping surface having a reduced width." A court would have to construe these terms and determine if the shape of the accused scrapers, as shown in FIG. B, falls within that scope.
- Technical Questions: A factual question is whether the material of the accused scrapers is a type of "wood" that functions as a "heat-responsive material" in the manner described and claimed in the patents.
V. Key Claim Terms for Construction
The Term: "heat-responsive material" ('068 Patent, Claim 1)
- Context and Importance: This term is fundamental to the invention's operation. Its scope will determine what materials fall under the patent's coverage. The infringement allegation rests on the accused scrapers' wood being "heat-responsive."
- Intrinsic Evidence for a Broader Interpretation: The specification states the term can comprise "suitable non-toxic materials that are conformable in response to heat but that do not deposit or leave debris or ash on a grill surface" (’068 Patent, col. 4:7-9). This language could support an interpretation that is not limited to wood.
- Intrinsic Evidence for a Narrower Interpretation: The patent repeatedly identifies the "preferred embodiment" as a "suitable wood species" and lists examples like oak and hickory (’068 Patent, col. 4:10-13). A party could argue that the invention is functionally limited to materials that char or combust to form grooves, effectively limiting the scope to wood.
The Term: "central grasping surface having a reduced width as compared to the scraping end" ('612 Patent, Claim 1)
- Context and Importance: This structural limitation helps define the unique physical shape of the claimed apparatus. The infringement analysis for the '612 patent depends on whether the handle design of the accused products (Compl. FIG. B) meets this definition.
- Intrinsic Evidence for a Broader Interpretation: The specification explains this feature makes it "easier for a user to wrap their hand about and grasp the grill scraper" (’612 Patent, col. 4:41-43). This functional description could support construing the term to cover any handle section that is narrower than the scraping blade.
- Intrinsic Evidence for a Narrower Interpretation: Figure 7 of the patent depicts a "central grasping surface 306" with specific ergonomic contours. A party might argue that the claim term should be limited to such a contoured design, rather than any simple reduction in width.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement for both patents (Compl. ¶¶28, 29). For the '068 method patent, inducement is specifically supported by the allegation that Defendants provide instructions (Compl. FIG. A) that direct customers to perform the claimed steps of heating a grill and using the scraper to form custom grooves (Compl. ¶¶37-38).
- Willful Infringement: Willfulness is alleged for both patents (Compl. ¶¶31, 56). The allegations are based on asserted pre-suit knowledge, stemming from a June 2013 notice letter sent by Plaintiff regarding the pending application that became the '068 patent (Compl. ¶¶13-17). The claim is further supported by a 2015 email, allegedly from Defendant Sean Ung, which states, "they have a utility patent... Even I have to pay them annual royalties to sell my Scrapesations," referring to the '068 patent (Compl. ¶¶51-53, 57).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be willful infringement. Given the complaint's evidence of a pre-suit notice letter and an email where the defendant appears to explicitly acknowledge the plaintiff's "utility patent," a key question for the court will be whether the alleged infringement was "willful and deliberate," which could expose the defendants to enhanced damages.
- The dispute over the '612 patent will likely involve a question of claim scope: can the term "central grasping surface having a reduced width" be construed to read on the handle design of the accused products, or is it limited to a more specific ergonomic shape as depicted in certain patent figures?
- For the '068 method patent, the case will likely focus on indirect infringement. A key evidentiary question will be whether the defendants' user instructions constitute affirmative acts to encourage infringement, making them liable for the direct infringement committed by their customers.