DCT
2:20-cv-02227
Ad N Art Inc v. Gloriana Granados
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Ad-N-Art Inc. (Canada)
- Defendant: Gloriana Granados (Costa Rica); Maui's Shop (unknown organization); Maui Store (unknown organization)
- Plaintiff’s Counsel: One LLP
- Case Identification: 2:20-cv-02227, C.D. Cal., 03/06/2020
- Venue Allegations: Venue is based on allegations that Defendants transact business, have committed acts of patent infringement, direct advertising to, and derive substantial revenue from the judicial district. The complaint also asserts that because the defendants are foreign, they may be sued in any district.
- Core Dispute: Plaintiff alleges that Defendants’ line of beverage koozies infringes a design patent and associated trade dress for Plaintiff's ASOBU® Frosty Beer 2 Go product.
- Technical Context: The case concerns the ornamental design of multi-part, insulated beverage containers, commonly known as "koozies," which are designed to hold and insulate standard beverage bottles and cans.
- Key Procedural History: Plaintiff alleges it provided Defendants with actual notice of infringement via a demand letter on December 19, 2019, followed by a second letter including a draft complaint on February 10, 2020.
Case Timeline
| Date | Event |
|---|---|
| 2016-01-03 | 'D992 Patent Priority Date (Application Filing) |
| 2018-03-20 | 'D992 Patent Issued |
| 2019-12-19 | Plaintiff sends first pre-suit notice letter |
| 2020-02-10 | Plaintiff sends second pre-suit notice letter |
| 2020-03-06 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D812,992 - "Insulating Container for Beverage Container"
- Patent Identification: U.S. Design Patent No. D812,992, "Insulating Container for Beverage Container," issued March 20, 2018.
The Invention Explained
- Problem Addressed: Design patents protect ornamental appearance rather than functional solutions. The 'D992 patent addresses the aesthetic challenge of creating a unique and distinctive visual appearance for an insulating beverage container (Compl. ¶11).
- The Patented Solution: The patent claims the specific ornamental design for the container as depicted in its figures ('D992 Patent, Claim). The core of the design is a multi-part container with a distinctive, bottle-like silhouette, comprising a tapered upper section, a broader shoulder section, and a cylindrical base ('D992 Patent, Figs. 1, 2). The design's appearance is shown in configurations for holding both a bottle and a can, indicating versatility in its aesthetic presentation ('D992 Patent, Figs. 9, 10).
- Technical Importance: The complaint alleges that this specific ornamental design is a "hallmark" of the Plaintiff's product line and has become "uniquely associated with Ad-N-Art as its source" in the marketplace (Compl. ¶11, ¶18).
Key Claims at a Glance
- Design patents contain a single claim. The complaint asserts this claim against the Defendants (Compl. ¶¶37-38).
- Claim 1: "The ornamental design for an insulating container for a beverage container, as shown and described." ('D992 Patent, Claim).
- The scope of the claim is defined by the solid lines in the patent's drawings. Key visual features include:
- A multi-part, segmented construction.
- An overall shape that mimics the silhouette of a traditional beverage bottle.
- A tapered top component, a wider middle component, and a cylindrical base component.
- The patent specifies that elements shown in broken lines, such as the internal beverage bottle or can and internal screw threads, "form no part of the claimed design" ('D992 Patent, Description).
III. The Accused Instrumentality
Product Identification
- The "Accused Products" are a line of koozies sold by Defendants, referred to by names including "Beer Bottle Insulator Holder," "Stainless Steel Insulated Can Cooler with Beer Opener," and "Eco Friendly Smart Vacuum Bottle" (Compl. ¶17, ¶20).
Functionality and Market Context
- The Accused Products are described as multi-part insulating containers for beverages, sold through online channels such as Amazon and the website "mauistore.us" (Compl. ¶20). The complaint alleges these products are offered in the same marketing channels as Plaintiff's products and are promoted as being able to hold either bottles or cans (Compl. ¶21). A visual provided in the complaint shows the Accused Product disassembled into a base and a tapered top, similar to Plaintiff's product (Compl. p. 10). The complaint alleges that Defendants copied Plaintiff's design to trade on goodwill established by the Plaintiff (Compl. ¶24).
IV. Analysis of Infringement Allegations
The complaint alleges that the Accused Products have a design that would appear "substantially similar" to the claimed design to an ordinary observer (Compl. ¶38). The infringement theory is presented through side-by-side visual comparisons.
A visual in the complaint presents a side-by-side comparison of the patented design and the Accused Product to support the infringement allegation (Compl. p. 7).
'D992 Patent Infringement Allegations
| Claim Element (Feature of the claimed ornamental design) | Alleged Infringing Functionality (Feature of the Accused Product) | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental appearance of an insulating container, as shown and described. | The Accused Products have a design that is alleged to be substantially similar to the patented design. The complaint provides a side-by-side visual comparison showing a multi-part container with a bottle-like silhouette. | ¶22, ¶38, p. 7 | 'D992 Patent, Fig. 1 |
| A multi-part construction including a tapered upper section and a cylindrical lower section. | The Accused Product is shown to have a multi-part design with a tapered top and cylindrical base that can be separated. A visual in the complaint depicts the Accused Product disassembled. | ¶22, p. 7, p. 10 | 'D992 Patent, Fig. 2 |
| A configuration adaptable for holding different beverage container types (bottles and cans) while maintaining the core design aesthetic. | The Accused Product is marketed for use with both bottles and cans, and complaint visuals show it in both configurations. Another visual shows the Accused Product disassembled next to a can. | ¶22, p. 10, p. 11 | 'D992 Patent, Figs. 9, 10 |
- Identified Points of Contention:
- Scope Questions: The central question for the court will be whether the overall visual impression of the Accused Product is "substantially the same" as the patented design in the eyes of an ordinary observer.
- Technical Questions: The analysis may focus on the visual effect of differences between the designs. For example, what evidentiary weight does the "maui" logo on the Accused Products have in creating a different overall visual impression? A court will have to determine if such differences are sufficient to prevent an ordinary observer from being deceived into purchasing one product believing it is the other.
V. Key Claim Terms for Construction
In a design patent case, claim construction focuses on the scope of the claimed design as a whole, as depicted in the drawings, rather than on discrete text-based terms.
- The "Term": The ornamental design as a whole.
- Context and Importance: The entire infringement analysis rests on the interpretation of the design's visual scope. The court will need to determine which features are central to the overall ornamental impression and how much variation is permissible before a design is no longer "substantially similar."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The design is depicted in line drawings, which typically claim shape and configuration without limitation to color, material, or surface texture. The patent also illustrates the design in multiple configurations (for bottles and cans), which may support an interpretation that the design's scope covers the fundamental shape across these uses ('D992 Patent, Figs. 9-10).
- Evidence for a Narrower Interpretation: The specific proportions, curvatures, and arrangement of the distinct sections as shown in the solid-line drawings could be argued to limit the scope of the design. The patent explicitly disclaims matter shown in broken lines, such as the beverage containers themselves and internal threading, which confines the protected design to the specific external appearance shown ('D992 Patent, Description).
VI. Other Allegations
- Indirect Infringement: The complaint includes boilerplate allegations of active inducement and contributory infringement (Compl. ¶38). However, it does not plead specific facts explaining how Defendants would have induced or contributed to infringement by third parties, beyond the act of selling the accused device itself.
- Willful Infringement: The willfulness claim is supported by allegations that Plaintiff provided Defendants with actual notice of the 'D992 patent and their infringement on two separate occasions prior to filing the suit: December 19, 2019, and February 10, 2020 (Compl. ¶26, ¶27). The complaint also alleges Defendants had knowledge from Plaintiff's statutory marking of its own products and that Defendants deliberately copied the design (Compl. ¶24, ¶39, ¶40).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual similarity: In applying the "ordinary observer" test, is the overall ornamental impression of the Defendants' "Maui" koozie substantially the same as the design claimed in the 'D992 patent, or do differences such as the prominent "maui" logo and any minor variations in proportion create a distinct, non-infringing visual appearance?
- A key question of intent will be whether the infringement, if found, was willful. The analysis will likely focus on Defendants' conduct after receiving two detailed pre-suit notice letters from the Plaintiff, which the complaint alleges were sent months before the lawsuit was filed.