Brio Water Technology Inc v. BHRS Group LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Brio Water Technology, Inc. (California)
  • Defendant: BHRS Group, LLC (New Jersey)
  • Plaintiff’s Counsel: CSReeder, PC
• Case Identification: 2:22-cv-01624, C.D. Cal., 06/07/2022
• Venue Allegations: Venue is based on Defendant having purposefully directed enforcement activities, including cease-and-desist letters and takedown notices, toward Plaintiff in California, and having previously filed a lawsuit against Plaintiff in the same district.
• Core Dispute: Plaintiff seeks a declaratory judgment that its water dispensers do not infringe Defendant's design patents and that those patents are invalid, following Defendant's accusations of infringement and subsequent takedown of Plaintiff's products from major e-commerce platforms.
• Technical Context: The dispute concerns the ornamental designs of countertop and floor-standing hot and cold water dispensers, a mature product category in the consumer and commercial appliance market.
• Key Procedural History: The complaint alleges that Defendant previously filed a lawsuit against Plaintiff in 2020, which was dismissed with prejudice. The current action arises from cease-and-desist letters and takedown requests Defendant sent to Plaintiff and its e-commerce partners beginning in 2021. The complaint’s primary invalidity theories are based on an alleged on-sale bar, asserting Defendant sold products embodying the patented designs more than one year prior to filing the patent applications, and incorrect inventorship.

Case Timeline

Date	Event
2015-07-21	Alleged first sale by Defendant of product embodying '134 Patent design
2016-05-12	Alleged first sale by Defendant of product embodying '147 Patent design
2018-06-25	'134 Patent Application Filed
2018-06-26	'147 Patent Application Filed
2020-02-25	U.S. Design Patent D876,147 Issued
2020-03-17	U.S. Design Patent D878,134 Issued
2022-06-07	First Amended Complaint for Declaratory Judgment Filed

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

U.S. Design Patent No. D876,147 - “Beverage Dispenser”

• Patent Identification: U.S. Design Patent No. D876,147, titled “Beverage Dispenser,” issued on February 25, 2020.
• The Invention Explained:
  • Problem Addressed: As a design patent, the '147 Patent does not articulate a technical problem; its purpose is to protect a new, original, and ornamental design for an article of manufacture (Compl. ¶ 42).
  • The Patented Solution: The patent claims the ornamental design for a countertop beverage dispenser as depicted in its eight figures ('147 Patent, Claim). The claimed design features a compact, rectangular housing with a recessed dispensing area containing two spigots, each with an associated press paddle actuator below it, and a drip tray at the base ('147 Patent, FIG. 1). The broken lines in the figures indicate portions of the beverage dispenser that are not part of the claimed design ('147 Patent, col. 2:13-15).
  • Technical Importance: The complaint suggests the design's importance stems from its commercial use and Defendant's characterization of it as an "innovative ornamental design" in enforcement letters sent to Plaintiff and retailers (Compl. ¶ 68).
• Key Claims at a Glance:
  • The patent contains a single claim for "The ornamental design for a beverage dispenser, substantially as shown and described" ('147 Patent, Claim).
  • The elements of the claim are the visual features of the dispenser shown in solid lines in Figures 1 through 8.
  • The complaint seeks a declaration of non-infringement and invalidity of this claim (Compl. ¶¶ 106-130).

U.S. Design Patent No. D878,134 - “Beverage Dispenser”

• Patent Identification: U.S. Design Patent No. D878,134, titled “Beverage Dispenser,” issued on March 17, 2020.
• The Invention Explained:
  • Problem Addressed: Similar to the '147 Patent, the '134 Patent protects an ornamental design and does not describe a technical problem (Compl. ¶ 44).
  • The Patented Solution: The patent claims the ornamental design for a floor-standing beverage dispenser ('134 Patent, Claim). The design features a tall, slender, rectangular housing with a top section containing a dispensing area visually similar to that of the '147 Patent, including two spigots and press paddles ('134 Patent, FIG. 1). The design is defined by the solid lines in its figures ('134 Patent, col. 2:9-11).
  • Technical Importance: The complaint indicates the design's significance is tied to its commercial embodiment in Defendant's "Avalon" product line and its inclusion in Defendant's intellectual property enforcement efforts (Compl. ¶¶ 38, 68).
• Key Claims at a Glance:
  • The patent contains a single claim for "The ornamental design for a beverage dispenser, substantially as shown and described" ('134 Patent, Claim).
  • The elements of the claim are the visual features of the dispenser shown in solid lines in Figures 1 through 8.
  • The complaint seeks a declaration of non-infringement and invalidity of this claim (Compl. ¶¶ 131-153).

III. The Accused Instrumentality

Product Identification

• Plaintiff’s "BRIO 300 Series" and "320 Series" hot and cold water dispensers (the "Dispensers") (Compl. ¶¶ 25, 55).

Functionality and Market Context

• The Dispensers are hot and cold water coolers sold online through major e-commerce platforms, including Amazon, Shopify, Home Depot, and Wayfair (Compl. ¶¶ 12, 55). The complaint alleges that Plaintiff's products were de-listed from Amazon and Shopify as a result of Defendant's infringement claims, causing significant financial damages (Compl. ¶¶ 29, 31). The complaint asserts the BRIO Dispensers are visually distinguishable from Defendant's products, alleging Plaintiff's design incorporates a "BRIO Paddle Faucet" with unique features such as trapezoidal paddles with a crisscross texture, a ribbed button, and prominent "BRIO" branding, in contrast to the allegedly plain, rectangular features of the design covered by the patents (Compl. ¶ 57). The complaint includes an image, Figure 1, described as the "Midea Paddle Faucet," which Plaintiff alleges is the design developed by a third-party supplier and improperly patented by Defendant (Compl. ¶ 35).

IV. Analysis of Infringement Allegations

The infringement analysis in a design patent case centers on the "ordinary observer" test, which asks 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 complaint argues for non-infringement by highlighting visual differences between Plaintiff's Dispensers and the patented designs.

'147 Patent & '134 Patent Infringement Allegations

The complaint alleges the same set of design differences apply to both the countertop and floor-standing dispenser disputes. The core of Plaintiff's non-infringement argument is that its "BRIO Paddle Faucet" design is distinct from the "Midea Paddle Faucet" design that Plaintiff claims is depicted in the Asserted Patents. The complaint contains an image of the "Midea Paddle Faucet" (Compl. Figure 1, ¶35).

Key Visual Feature (from Asserted Patents)	Alleged Non-Infringing Brio Dispenser Feature	Complaint Citation	Patent Citation
Overall appearance of the press paddles	The Brio Dispenser's press paddles are trapezoidal in shape, whereas the paddles allegedly embodied in the patents are rectangular.	¶57.d	'147, col. 2:3-12; '134, col. 2:1-11
Surface design of the press paddles	The Brio Dispenser's paddles feature a "crisscross design with a rectangular rubber grip on the bottom," whereas the paddles in the patented design are allegedly plain.	¶57.c	'147, col. 2:3-12; '134, col. 2:1-11
Appearance of the rectangular button	The Brio Dispenser's button has a "ribbed texture," while the button in the patented design is allegedly plain.	¶57.b	'147, col. 2:3-12; '134, col. 2:1-11
Spout Covers	The Brio Dispenser's spout covers are black and contain "three swirl-like lines to indicate heat" and a "snowflake" icon, features not shown in the patent drawings.	¶57.a	'147, col. 2:3-12; '134, col. 2:1-11
Branding	Brio prominently displays its "BRIO" mark and tradename on its Dispensers, whereas Defendant's products display the "Avalon" brand name.	¶57.e	'147, col. 2:3-12; '134, col. 2:1-11

• Identified Points of Contention:
  • Aesthetic Scope: A central issue is whether the specific differences in shape (trapezoidal vs. rectangular paddles), texture (ribbed button, crisscross grip), and ornamentation (swirl/snowflake icons) are significant enough to create a different overall visual impression for an ordinary observer, or if they are minor variations that do not escape the scope of the patented designs. The complaint alleges that images of Defendant's own "Avalon" products, sold before the patents were filed, establish prior art that narrows the scope of the patented designs (Compl. Figure 2 and Figure 3, ¶¶37-38).
  • Role of Prior Art: The infringement analysis will depend heavily on the court's view of the prior art. The complaint alleges that Defendant's own prior sales of "Avalon" water coolers (Compl. ¶¶ 124, 149) and other existing designs (Compl. ¶¶ 126, 151) limit the scope of patentable subject matter to only the specific novel features shown in the patent drawings, thus amplifying the visual effect of any differences in the accused BRIO products.

V. Key Claim Terms for Construction

In design patent litigation, formal claim construction is uncommon, as the drawings themselves are the claim. However, the interpretation of the claim's scope is the central issue.

• The Term: "substantially as shown and described"
• Context and Importance: This phrase defines the scope of protection for both the ’147 and ’134 Patents. The entire non-infringement dispute hinges on whether the BRIO Dispensers are "substantially" the same as the designs "shown and described" in the patent figures, as viewed by an ordinary observer. Practitioners may focus on this effective scope because it determines whether the small, detailed differences alleged by Plaintiff are sufficient to avoid infringement.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party arguing for broader scope would contend that "substantially" encompasses the overall visual impression and that the general configuration, proportions, and arrangement of the dispenser housing, recessed dispensing area, and dual spigots are the dominant features, which are shared by the accused products.
  • Evidence for a Narrower Interpretation: The complaint's position supports a narrower interpretation. It argues that the specific details shown in solid lines in the patent figures—such as the plain, rectangular paddles—define the precise scope of the claim (Compl. ¶ 57). The use of broken lines to disclaim other parts of the dispenser in the patent drawings further emphasizes the materiality of the specific elements that are claimed in solid lines ('147 Patent, col. 2:13-15).

VI. Other Allegations

• Indirect Infringement: The complaint states that Plaintiff has not infringed the Asserted Patents either "directly, contributorily, or by inducement" (Compl. ¶¶ 122, 147). It does not provide further factual detail, as its purpose is to seek a declaration of non-infringement.
• Willful Infringement: The complaint does not allege willfulness against Plaintiff. However, it notes that Defendant, in a follow-up cease-and-desist letter to Home Depot, accused Home Depot of "willfully infringing" the Asserted Patents (Compl. ¶ 76). This indicates that Defendant's enforcement strategy included allegations of willfulness based on the notice provided in its letters.

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

This declaratory judgment action appears to center on two fundamental and potentially case-dispositive lines of inquiry.

• A primary issue will be one of patent validity: Can Plaintiff prove by clear and convincing evidence that Defendant’s own sales of its "Avalon" dispensers, allegedly beginning as early as 2015, constitute an invalidating on-sale bar to the patents filed in 2018? A related validity challenge questions whether the named inventor was correct, or if the design was actually created by a third-party supplier, which if proven, could also render the patents unenforceable.
• A key infringement question will be one of aesthetic scope: Assuming the patents are valid, do the alleged visual differences between Plaintiff's dispensers and the patented designs—such as the trapezoidal versus rectangular paddles, textured surfaces, and prominent branding—create a sufficiently distinct overall appearance to an ordinary observer who is aware of the prior art, thereby avoiding infringement?