DCT

2:17-cv-05958

Peter Kao v. BD Restaurant Group

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:17-cv-05958, C.D. Cal., 08/10/2017
  • Venue Allegations: Venue is alleged to be proper based on Defendants having committed acts of infringement within the judicial district, including selling infringing products to consumers and retailers.
  • Core Dispute: Plaintiff alleges that Defendants’ light bulb-shaped beverage containers infringe a design patent covering an ornamental design for a juice bottle.
  • Technical Context: The dispute is in the field of novelty beverage packaging, where unique and distinctive product configurations can be a significant market differentiator.
  • Key Procedural History: The complaint alleges that Plaintiff discovered the alleged infringement in July 2017, one month prior to filing the suit. No prior litigation, licensing, or other procedural events are mentioned.

Case Timeline

Date Event
2007-01-25 '601 Patent Priority Date (Application Filing)
2008-09-30 '601 Patent Issue Date
2017-07-XX Plaintiff allegedly discovers infringement
2017-08-10 Complaint Filing Date

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

U.S. Design Patent No. D577,601 S - "Juice Bottle," Issued September 30, 2008

The Invention Explained

  • Problem Addressed: The patent does not explicitly state a problem in a background section, as is typical for design patents. The filing itself implies a desire to create a new, original, and ornamental design for a beverage container that is aesthetically distinct from prior art designs.
  • The Patented Solution: The patent discloses an ornamental design for a bottle shaped to mimic a classic incandescent light bulb ('601 Patent, Figs. 1-5). The design consists of the overall visual impression created by a bulbous, pear-shaped body that tapers into a narrow neck, which terminates in a threaded opening for a cap ('601 Patent, Fig. 1; Compl. ¶13). The claim protects the specific visual appearance of the bottle itself, as shown in the patent's drawings ('601 Patent, Claim).
  • Technical Importance: The design provides a distinctive and recognizable product configuration in the competitive beverage and food service supply market ('601 Patent, Title; Compl. ¶14).

Key Claims at a Glance

  • The patent contains a single claim for "The ornamental design for juice bottle, as shown and described." ('601 Patent, Claim).
  • The essential ornamental elements that constitute the design are depicted in the patent's figures and include:
    • A pear-shaped, bulbous lower body.
    • A narrow neck extending from the body.
    • A threaded top portion.
    • The overall proportions and curvatures of the bottle as depicted from perspective, front, side, top, and bottom views ('601 Patent, Figs. 1-5).

III. The Accused Instrumentality

Product Identification

The accused products are identified as the "Boba Bulb" beverage container sold by Defendant MJ Café, and the "Bulb P.E.T. Cup" manufactured and/or distributed by Defendants Indee and NT Foods (Compl. ¶¶ 20, 21).

Functionality and Market Context

The accused products are containers for beverages, such as boba tea, sold in a café setting or distributed as food service packaging (Compl. ¶¶ 20, 21). The complaint alleges these products are "nearly identical copies" of Plaintiff's design and were created to compete with Plaintiff's product, suggesting they are positioned in the same novelty beverage container market (Compl. ¶¶ 14, 16). The complaint provides a visual of the "Boba Bulb" product filled with a beverage and pearls, indicating its use in the boba tea market (Compl. ¶20).

IV. Analysis of Infringement Allegations

The standard for design patent infringement is whether an "ordinary observer," giving such attention as a purchaser usually gives, would be deceived into purchasing the accused article thinking it was the patented design. The comparison is of the overall ornamental appearance.

The complaint presents side-by-side photographic comparisons to support its infringement allegations. One visual shows the accused "Bulb P.E.T. Cup" from multiple angles corresponding directly to the patent's figures (Compl. ¶21). Another visual depicts the accused "Boba Bulb" as sold to a consumer, next to the patent's front elevation view (Compl. ¶20).

'601 Patent Infringement Allegations

Claim Element (from single claim) Alleged Infringing Functionality Complaint Citation Patent Citation
The ornamental design for a juice bottle, as shown and described. The accused "Boba Bulb" and "Bulb P.E.T. Cup" products are alleged to be "substantially similar" and "nearly identical copies" of the patented design, embodying the same overall visual appearance of a light bulb, including the pear shape, bulbous bottom, and narrow threaded neck. ¶¶16, 20, 21, 23 '601 Patent, Figs. 1-5, Claim

Identified Points of Contention

  • Scope Questions: The complaint specifies that the accused product would appear substantially similar "without the cap" (Compl. ¶15). The '601 Patent does not show or claim a cap, only a bottle with a threaded neck. This raises the question of whether the design of any cap used with the accused bottles is a distinguishing feature that an ordinary observer would consider, potentially altering the overall visual impression.
  • Technical Questions: A central question for the fact-finder will be a direct visual comparison of the products. The court will need to determine if minor differences in proportion, curvature, or thread design between the patented design and the accused products are significant enough to create a different overall visual appearance to an ordinary observer familiar with the prior art.

V. Key Claim Terms for Construction

In design patent cases, claim construction focuses on the scope of the claimed design as a whole, rather than the definition of specific text-based terms. The "claim" is understood to be the visual design depicted in the patent's figures.

  • The Term: "The ornamental design for juice bottle"
  • Context and Importance: The entire infringement analysis hinges on the scope of the claimed design and how its overall visual appearance compares to that of the accused products. The key question is not the meaning of a word, but what specific ornamental features, and their overall arrangement, are protected by the patent's drawings.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: Parties may argue that the claim covers the general concept of a classic A-type light bulb-shaped bottle, focusing on the overall silhouette and configuration. The complaint itself describes the design in such general terms ("pear shaped form; 2) bulbous bottom; 3) narrow neck; and 4) a threaded top") (Compl. ¶13).
    • Evidence for a Narrower Interpretation: Parties may argue the claim is limited to the exact proportions, surface curvatures, and specific thread design shown in Figures 1-5. Any deviation in these details could be argued to create a distinct visual impression, thereby avoiding infringement ('601 Patent, Figs. 1-5). The precise renderings in the patent drawings provide the primary basis for a narrower interpretation of the design's scope.

VI. Other Allegations

  • Indirect Infringement: The complaint does not contain allegations of indirect or contributory infringement. It asserts direct infringement under 35 U.S.C. §271 by all Defendants for making, using, selling, offering for sale, and/or importing the accused products (Compl. ¶¶ 19, 20, 21).
  • Willful Infringement: The complaint alleges willful infringement. The factual basis asserted is that Defendants had "actual knowledge" of Plaintiff's patent rights and that the accused products are "nearly identical," making the infringement "so obvious that Defendants should have known" (Compl. ¶23). It is also alleged that Defendants were "aware of Plaintiff's rights before it began its infringing activity" (Compl. ¶17).

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

  1. The Ordinary Observer Test: The central issue is one of visual comparison: will an ordinary observer, viewing the accused "Boba Bulb" and "Bulb P.E.T. Cup" and the '601 Patent design, find their overall ornamental appearances to be substantially the same? The outcome will depend on whether any subtle differences in shape or proportion are sufficient to create a distinct visual impression.
  2. Willfulness and Knowledge: A key factual question will be what evidence supports the allegation of pre-suit knowledge. Can the Plaintiff prove that Defendants knew of the '601 patent before the lawsuit, or alternatively, that the similarity between the products was so close as to meet the standard for objective recklessness required for a willfulness finding?
  3. Scope of Remedy: The complaint seeks both damages and Defendants' total profits from infringement, as permitted for design patents under 35 U.S.C. §289. If infringement is found, a significant question will be the proper calculation of the Defendants' profits attributable to the infringing design.