DCT
2:20-cv-01761
ETS Express LLC v. FC Brands LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: ETS Express, LLC (California)
- Defendant: FC BRANDS, LLC D/B/A SOMA WATER (Delaware)
- Plaintiff’s Counsel: MILORD & ASSOCIATES, Associates
- Case Identification: 2:20-cv-01761, C.D. Cal., 02/24/2020
- Venue Allegations: Plaintiff alleges venue is proper because Defendant conducts business in the Central District of California, Plaintiff resides in the district, and a substantial part of the events giving rise to the dispute occurred there.
- Core Dispute: Plaintiff seeks a declaratory judgment that its "H2Go Bali Water Bottle" does not infringe Defendant's design patent for a water bottle, and that the patent is invalid and unenforceable.
- Technical Context: The dispute centers on the ornamental design of reusable water bottles, a consumer product category where visual appearance is a significant market differentiator.
- Key Procedural History: The complaint was filed following a cease-and-desist letter sent by Defendant to Plaintiff on January 30, 2020. The complaint also notes that during prosecution, the patent’s figures were amended to add details to the cap, neck, and bottom to overcome a rejection based on obviousness, a fact which may be relevant to the scope of the patent's protection.
Case Timeline
| Date | Event |
|---|---|
| 2016-10-20 | Alleged offer for sale of Homdox prior art water bottle |
| 2016-10-20 | Priority Date for U.S. Design Patent No. D832,650 |
| 2018-11-06 | U.S. Design Patent No. D832,650 Issued |
| 2020-01-30 | Defendant sends cease-and-desist letter to Plaintiff |
| 2020-02-24 | Complaint for Declaratory Judgment Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D832,650 - "Water Bottle"
- Patent Identification: U.S. Design Patent No. D832,650 (“Water Bottle”), issued November 6, 2018.
The Invention Explained
- Problem Addressed: Design patents protect the novel, ornamental appearance of an article of manufacture rather than its utility. The complaint alleges that the market for water bottles is a "crowded field," suggesting a need for distinctive designs to stand out from competitors (Compl. ¶29). The complaint further notes that the patent’s design was amended during prosecution to overcome an obviousness rejection, indicating the problem was to create a design sufficiently distinct from the prior art (Compl. ¶22).
- The Patented Solution: The patent claims the ornamental design for a water bottle as depicted in its figures ('650 Patent, CLAIM, Figs. 1-7). The design features a bottle with a cylindrical main body, a curved upper shoulder that narrows to a neck, a screw-on cap, and a rounded bottom. A key feature is the visual effect of a sheath or sleeve that covers the main body and terminates at the base of the curved shoulder ('650 Patent, Fig. 2). The patent's description explicitly disclaims subject matter shown in broken lines, limiting the claim to the solid-line portions of the drawings ('650 Patent, DESCRIPTION).
- Technical Importance: In the consumer goods market, a unique and aesthetically pleasing ornamental design can be a significant driver of commercial success and brand identity (Compl. ¶29).
Key Claims at a Glance
- As a design patent, the '650 Patent contains a single claim: "The ornamental design for a water bottle, as shown and described." ('650 Patent, CLAIM).
- This claim protects the overall visual impression created by the combination of ornamental features depicted in solid lines in the patent's seven figures.
III. The Accused Instrumentality
Product Identification
- The accused product is the "H2Go Bali Water Bottle" sold by Plaintiff ETS Express, LLC (Compl. ¶23).
Functionality and Market Context
- The H2Go Bali is a glass water bottle with a protective outer sheath and a cap, sold as part of Plaintiff’s line of proprietary drinkware (Compl. ¶¶24, 27). The complaint includes several images of the accused product, illustrating its overall shape and features (Compl. ¶27). A side-by-side comparison image is provided to highlight the alleged similarities and differences between the accused product and Defendant's SOMA® branded water bottle (Compl. Ex. 2, App. C, p. 29). Plaintiff asserts that its product is visually distinct from the patented design, alleging differences in the base, the alignment of the sheath, the shape of the upper portion, and the curvature between the neck and sheath (Compl. ¶37).
IV. Analysis of Infringement Allegations
This action is for declaratory judgment of non-infringement. The following table summarizes the infringement theory attributed to the Defendant (patent owner) in its cease-and-desist letter, as described in the complaint, alongside the features of the patented design.
D832,650 Infringement Allegations
| Claim Element (Feature of the Patented Design) | Alleged Infringing Functionality (as described in the Complaint) | Complaint Citation | Patent Citation |
|---|---|---|---|
| A unique rounded bottle shape, including a rounded bottom. | Defendant allegedly claims the H2Go Bali bottle has a "unique rounded bottle shape." The complaint counters that the H2Go bottle has a flat base, not a rounded one. | Ex. 2, p. 2; ¶37 | Figs. 2, 7 |
| An outer sheath. | The H2Go Bali bottle includes an outer sheath. | ¶27 | Fig. 2 |
| An upper section where the bottle sidewall curves inwardly to form an indentation. | Defendant allegedly claims the H2Go Bali bottle has this feature. An annotated image in the complaint's exhibit points to an "Indentation in Glass Bottle" on the accused product. | Ex. 2, p. 2; Ex. 2, App. B, p. 28 | Fig. 2 |
| The outer sheath extends up the bottle sidewall and stops at the indentation. | Defendant allegedly claims this alignment. The complaint counters that the outer diameter of the accused bottle's sheath is not aligned with the upper portion of the bottle. | Ex. 2, p. 2; ¶37 | Fig. 2 |
| A rounded top cap design. | Defendant allegedly claims the H2Go Bali bottle includes a rounded top cap design. | Ex. 2, p. 2 | Fig. 6 |
- Identified Points of Contention:
- Scope Questions: The primary dispute will turn on the overall visual similarity of the two designs in the eye of an ordinary observer. A central question is how much weight should be given to the specific features allegedly added during prosecution to secure the patent, such as the rounded bottom (Compl. ¶22). Do the alleged differences in the accused product, such as its flat base, create a sufficiently different overall visual impression to avoid infringement?
- Visual Comparison Questions: A key question for the fact-finder will be whether the flat base of the accused H2Go bottle is a minor variation or a significant visual departure from the rounded base depicted in the '650 Patent’s Figure 7 (Compl. ¶37). Similarly, the court may examine whether the alleged differences in the curvature of the bottle’s shoulder and the alignment of the sheath create a distinct visual appearance.
V. Key Claim Terms for Construction
In design patent cases, the "claim" is the design as a whole, and construction focuses on the scope of the visual impression it creates, rather than on discrete text-based terms.
- The Term: "The ornamental design for a water bottle, as shown and described."
- Context and Importance: The entire case hinges on the scope of this design. Practitioners may focus on the prosecution history, where specific features of the "cap, neck and bottom detail" were allegedly added to overcome an obviousness rejection (Compl. ¶22). This history suggests these features are critical to the design's patentable novelty and may cabin the scope of protection to designs that include these specific details.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue the claim covers the overall gestalt of a bottle with a curved shoulder, a cylindrical body, and a sheath that stops at the shoulder indentation, treating minor variations in other elements (like the bottom) as insignificant.
- Evidence for a Narrower Interpretation: The complaint’s reference to amendments made during prosecution to claim "additional features of the bottle and in particular, the cap, neck and bottom detail" may support a narrower interpretation (Compl. ¶22). A party could argue that these features, such as the rounded bottom shown in Figure 7, are not merely incidental but are integral to the claimed design, and that any product lacking these specific details falls outside the claim's scope.
VI. Other Allegations
- Indirect Infringement: Plaintiff seeks a declaration that it has not contributorily infringed or induced infringement of the '650 Patent (Compl. ¶43(b); Prayer for Relief ¶D). The complaint, however, does not provide specific factual allegations regarding these forms of infringement beyond a general denial of liability.
- Willful Infringement: The complaint does not allege willfulness. However, it acknowledges receipt of a cease-and-desist letter from Defendant dated January 30, 2020, which provided Plaintiff with actual notice of the patent and the infringement allegations (Compl. ¶23, Ex. 2). This notice could form the basis for a future counterclaim of willful infringement by the Defendant for any infringing activity occurring after this date.
VII. Analyst’s Conclusion: Key Questions for the Case
Scope and the Impact of Prosecution History: A core issue will be the scope of the patented design. Given the complaint’s allegation that features of the bottom, neck, and cap were added to overcome prior art, the central question is how narrowly the claim will be construed. Is the patent limited to the exact visual representation, including the rounded bottom, or does it cover a broader class of bottles with a similar overall shape?
The Ordinary Observer and Prior Art: The case will likely turn on the classic "ordinary observer" test. A key question is whether an ordinary observer, aware of the prior art cited in the complaint (such as U.S. Design Patent No. D509,433 and the Homdox bottle), would be deceived into believing Plaintiff's H2Go bottle is the same as the patented design. The resolution may depend on whether the differences asserted by Plaintiff, particularly the flat base of the H2Go bottle, are substantial enough to create a different overall visual impression.