DCT
2:19-cv-07163
Meng Koay Lim v. Richard Pola Associates Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Meng Koay Lim (Connecticut)
- Defendant: Richard Pola & Associates Inc., d/b/a RP & Associates Inc. (California)
- Plaintiff’s Counsel: Shumener, Ohson & Oh, LLP; Sill Cummis & Gross PC
- Case Identification: 2:19-cv-07163, C.D. Cal., 08/16/2019
- Venue Allegations: Venue is alleged to be proper because the Defendant resides in the district, has a regular and established place of business there, and has committed acts of infringement within the district.
- Core Dispute: Plaintiff alleges that Defendant’s "GrubTub" product infringes a design patent for a "Cup Holder for a Plate."
- Technical Context: The dispute concerns the ornamental design of consumer food and beverage accessories, specifically combination plate-and-cup-holder devices often used at events, stadiums, and parties.
- Key Procedural History: The complaint alleges that Defendant had actual notice of the patent-in-suit as of January 28, 2019, and received additional notice via a letter dated April 29, 2019, prior to the filing of the lawsuit.
Case Timeline
| Date | Event |
|---|---|
| 2006-05-02 | U.S. Patent No. D557,072 Priority Date (Application Filing) |
| 2007-12-11 | U.S. Patent No. D557,072 Issued |
| 2019-01-28 | Plaintiff allegedly notified Defendant of the patent |
| 2019-04-29 | Plaintiff allegedly sent additional notice letter to Defendant |
| 2019-08-16 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. D557,072 - “Cup Holder for a Plate”
The Invention Explained
- Problem Addressed: While design patents do not describe problems in the same way as utility patents, the title and figures imply a solution to the common inconvenience of simultaneously holding a beverage cup and a plate of food, particularly in settings without tables (Compl. ¶25; ’072 Patent, Title, FIG. 1).
- The Patented Solution: The patent claims the ornamental design for an article that combines these functions (’072 Patent, Claim). The design, as depicted in the patent’s figures, consists of a plate-like surface with a central aperture for receiving a cup (’072 Patent, FIG. 1, FIG. 4). The patent explicitly states that the broken lines in the figures, which depict a beverage cup, are for illustrative purposes only and "form no part of the claimed design," a key aspect defining the design's scope (’072 Patent, Description).
- Technical Importance: The complaint alleges the accused product, which purportedly embodies the patented design, is "the greatest invention since man discovered fire," suggesting the commercial value placed on this type of integrated food and beverage container solution (Compl. ¶14).
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is: "The ornamental design for a cup holder for a plate, substantially as shown and described."
- The essential ornamental features of the design, shown in solid lines, include:
- A generally circular, plate-like body with a raised outer rim.
- A central, circular opening.
- A short, cylindrical wall descending from the inner edge of the opening.
III. The Accused Instrumentality
- Product Identification: The accused product is the "GrubTub" (Compl. ¶12).
- Functionality and Market Context:
- The GrubTub is a food container designed to fit over a beverage cup, allowing a user to carry both food and a drink in one hand (Compl. ¶13). The complaint presents images of the GrubTub holding snack items while positioned on top of a branded "Cinnabon" beverage cup (Compl. ¶13). This visual evidence shows a product with a wide, plate-like upper section and a central opening designed to fit over a cup.
- The complaint alleges the product is marketed as a major innovation, quoting the defendant's website (Compl. ¶14).
IV. Analysis of Infringement Allegations
The standard for design patent infringement is whether an "ordinary observer," familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented design. The analysis turns on the similarity of the overall ornamental appearance.
- D557,072 Infringement Allegations
| Claim Element (from the sole claim) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design for a cup holder for a plate, as shown in the solid lines of Figures 1-4. | The complaint alleges the GrubTub has an "identical and/or nearly identical" design to the one claimed in the patent (Compl. ¶15). The complaint provides a side-by-side visual comparison, showing the patented design from FIG. 1 next to photos of the accused GrubTub product in use. This comparison highlights a circular, plate-like body with a central opening for a cup, which is the core visual feature of both the patented design and the accused product. | ¶13, ¶15 | ’072 Patent, FIG. 1-4 |
- Identified Points of Contention:
- Scope Questions: The primary question for the court will be whether the overall visual impression of the GrubTub is substantially the same as the claimed design. The analysis must focus only on the features shown in solid lines in the patent drawings, as the patent explicitly disclaims the cup shown in broken lines as part of the design (’072 Patent, Description). Any differences in the cups with which the GrubTub is used are legally irrelevant to the infringement analysis.
- Technical Questions: A factual question for the fact-finder will be how an ordinary observer perceives the designs. The complaint asserts the "resemblances between the patented and accused design is such as to deceive an ordinary observer" (Compl. ¶15). The defense may point to any perceived visual differences in proportion, curvature, or surface texture to argue that the designs are not substantially similar. The complaint's visual evidence shows the accused product holding food, whereas the patent drawing is unadorned; how this affects the ordinary observer's perception could be a point of debate. The image in the complaint shows the GrubTub in use, fitted onto a Cinnabon-branded cup (Compl. ¶13).
V. Key Claim Terms for Construction
In design patent cases, there are typically no textual claim terms to construe. The "claim" is the design itself, as depicted in the drawings. The central issue is defining the scope of the protected design based on those drawings.
- The Term: The ornamental design as a whole.
- Context and Importance: The scope of the design is critical. The infringement analysis depends entirely on what visual features are included within this scope for comparison against the accused product. Practitioners will focus on separating the claimed design (solid lines) from the unclaimed environment (broken lines).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent claims the design for a "cup holder for a plate," and the figures show a simple, unadorned, and generic shape. A party could argue this covers a wide range of similarly-shaped combination products, as the core concept is visually simple and clear.
- Evidence for a Narrower Interpretation: The patent specification contains a critical limiting statement: "The broken lines shown in the Figures are for illustrative purposes as an environment and form no part of the claimed design" (’072 Patent, Description). This explicitly limits the protected design to the plate-and-collar structure itself, excluding the cup. The precise contours and proportions shown in the solid lines of Figures 1-4 define the outer boundary of the claim's scope.
VI. Other Allegations
- Willful Infringement: The complaint alleges that the Defendant's infringement was willful (Compl. ¶20). This allegation is based on Plaintiff's assertion that Defendant had actual knowledge of the ’072 Patent since at least January 28, 2019, and received further notice on April 29, 2019, but continued its allegedly infringing activities (Compl. ¶¶16-18).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual similarity: Applying the ordinary observer test, is the overall ornamental appearance of the accused GrubTub substantially the same as the specific design claimed in the ’072 Patent, such that a purchaser would be deceived? The outcome will depend on a holistic comparison of the designs, not a simple tallying of similarities and differences.
- A second key question will be the impact of the disclaimed subject matter: How will the fact-finder properly compare the designs while correctly ignoring the unclaimed environment (the cup shown in broken lines in the patent) and focusing only on the claimed features (the plate/collar shown in solid lines)? The ability of the parties to educate the court and jury on this distinction will be critical.