DCT
2:23-cv-08466
Sunshine Enclosures LLC v. Final Bell Corp
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Sunshine Enclosures LLC (New York)
- Defendant: Final Bell Corp (California)
- Plaintiff’s Counsel: Bochner PLLC
- Case Identification: 2:23-cv-08466, S.D.N.Y., 06/02/2023
- Venue Allegations: Venue is alleged to be proper in the Southern District of New York because Plaintiff resides in the district and Defendant transacts business there, including acts of alleged infringement.
- Core Dispute: Plaintiff alleges that Defendant’s packaging for cannabis products infringes a design patent covering an ornamental design for a box.
- Technical Context: The dispute centers on the ornamental design of packaging for consumer products, specifically in the market for vape cartridges and related cannabis goods.
- Key Procedural History: The complaint alleges that Plaintiff sent two cease-and-desist letters to Defendant, on May 3, 2023, and May 18, 2023, respectively. The complaint states that Defendant did not respond to either letter, which forms the basis for the willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 2020-11-12 | ’604 Patent Priority Date |
| 2022-11-15 | ’604 Patent Issue Date |
| 2023-05-03 | Plaintiff sends first cease-and-desist letter to Defendant |
| 2023-05-15 | Plaintiff-imposed deadline for response to first letter passes |
| 2023-05-18 | Plaintiff sends second cease-and-desist letter to Defendant |
| 2023-05-26 | Plaintiff-imposed deadline for response to second letter passes (Note: Complaint ¶24 states deadline as May 26, 2025, which may be a typographical error) |
| 2023-06-02 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Design Patent No. D969,604, "Inviolate box," issued November 15, 2022.
The Invention Explained
- Problem Addressed: The complaint suggests that conventional packaging for products like vape cartridges, often consisting of cardboard with simple folded flaps, is aesthetically uninspired (Compl. ¶35).
- The Patented Solution: The ’604 Patent discloses an ornamental design for a two-piece box, consisting of an outer sleeve and an inner tray that slides within it (’604 Patent, FIG. 9). The claimed design's primary ornamental features include a rectangular prism shape, an elliptical cutout on one end of the sleeve, and square cutouts on the sleeve's face that interact with the inner tray, creating what the complaint describes as a "more aesthetically pleasing look" (Compl. ¶34; ’604 Patent, FIG. 1, 9). The design is asserted to be a "radical departure from conventional packaging designs" (Compl. ¶35).
- Technical Importance: The complaint alleges the design's value lies in its distinctiveness and aesthetic appeal, which sets products apart in the marketplace (Compl. ¶34).
Key Claims at a Glance
- The single claim of the ’604 Patent is for "The ornamental design for an inviolate box, as shown and described" (’604 Patent, CLAIM).
- The scope of the claim is defined by the visual appearance of the box as depicted in the patent's figures. Key ornamental features shown include:
- A two-part construction of a slidable tray within a sleeve.
- An outer sleeve with a rectangular cross-section.
- An elliptical cutout at one end of the sleeve and square cutouts on a primary face.
- An inner tray with flaps that are visible through or engage with the sleeve's cutouts.
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are packaging products collectively referred to as the "Final Bell Package" (Compl. ¶15). These are offered in at least three variations: the "Alien Labs Package," the "Connected Package," and the "Nightshade Package" (Compl. ¶16).
Functionality and Market Context
- The accused products are used as packaging for cannabis vape products (Compl. ¶¶16, 35). The complaint includes photographs showing the accused "Connected Package" and "Nightshade Package" are two-piece, sleeve-and-tray style boxes for these goods (Compl. ¶17). A screenshot from Defendant's website shows the "Alien Labs Package" and "Connected Package" offered as part of its portfolio (Compl. ¶18, p. 5). The complaint alleges these products are sold through online retailers such as weedmaps.com and weedbates.com (Compl. ¶19).
IV. Analysis of Infringement Allegations
Design patent infringement is determined by the "ordinary observer" test, which asks whether an ordinary observer, familiar with the prior art, would be deceived into believing the accused design is the same as the patented design. The complaint alleges that the accused products are "indistinguishable from the ’604 Patent" to an ordinary observer (Compl. ¶1). A side-by-side comparison provided in the complaint shows the accused "Connected Package" and "Nightshade Package" alongside the patent's exploded-view Figure 9 (Compl. ¶44).
’604 Patent Infringement Allegations
| Key Ornamental Feature (from ’604 Patent Figures) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental appearance of a two-piece, slide-open box comprising an outer sleeve and an inner tray. | The accused "Connected Package" and "Nightshade Package" are depicted as two-piece, sleeve-and-tray boxes. | ¶¶17, 35, 44 | FIG. 9 |
| A rectangular prism-like shape for the outer sleeve. | The accused packages are shown to have a rectangular prism shape. | ¶¶17, 44 | FIG. 1 |
| An elliptical cutout at one end of the sleeve to facilitate opening. | The accused "Connected Package" is shown with an elliptical cutout on its end. | ¶44 | FIG. 1, 4 |
| One or more square cutouts on the face of the sleeve that reveal or interact with the inner tray. | The accused "Connected Package" and "Nightshade Package" are shown with square cutouts on their faces. | ¶¶17, 44 | FIG. 1, 2 |
- Identified Points of Contention:
- Scope Questions: A central question will be whether the overall visual impression of the accused packages is substantially the same as the claimed design. The analysis will depend on the similarities in shape, proportions, and the arrangement of the cutouts.
- Technical Questions: The complaint presents the design as purely aesthetic and non-functional (Compl. ¶¶36-39). A likely point of contention will be whether the specific shapes and locations of the cutouts are dictated by functional requirements (e.g., for locking, child resistance, or manufacturing efficiency) rather than ornamental choice. The court's view on this issue will directly impact the scope of the protected design.
V. Key Claim Terms for Construction
In design patent cases, the "claim" is the visual design itself. Claim construction involves describing the claimed design in words to distinguish its ornamental features from its functional aspects.
- The Term: The scope of the "ornamental design for an inviolate box."
- Context and Importance: The core of the dispute will likely turn on what aspects of the design are purely ornamental and therefore protected. Defendant may argue that features like the interlocking tray and sleeve cutouts are functional and thus not part of the protected design. Plaintiff has preemptively addressed this by arguing the entire design is non-functional (Compl. ¶¶36-39). Practitioners may focus on this issue because excluding elements as "functional" can significantly narrow the scope of the design patent and weaken an infringement claim.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader (more ornamental) Interpretation: The patent claims the design for an "inviolate box" as a whole, without disclaiming any specific features as functional (’604 Patent, CLAIM, Figs. 1-16). The complaint argues that the design choices, such as using "heavier and non-economical material" like cardboard instead of cheaper paperboard, result in higher costs "without any functional benefit," suggesting the purpose is purely aesthetic (Compl. ¶¶37-38).
- Evidence for a Narrower (more functional) Interpretation: A defendant could argue that the "square cutouts configured to receive the flaps located on the tray" (Compl. ¶34) serve the function of locking the tray within the sleeve. The patent title, "Inviolate box," could itself be interpreted as suggesting a functional purpose of security or integrity, which might support an argument that certain features are not merely ornamental.
VI. Other Allegations
- Indirect Infringement: The complaint does not plead a specific count for indirect patent infringement (inducement or contributory infringement). The patent infringement count focuses on direct infringement under 35 U.S.C. § 271 (Compl. ¶1, 41).
- Willful Infringement: The complaint alleges willful infringement based on Defendant's alleged pre-suit knowledge of the ’604 Patent. This allegation is supported by two cease-and-desist letters Plaintiff claims to have sent, dated May 3, 2023, and May 18, 2023, and Defendant's alleged failure to respond to either (Compl. ¶¶21-26).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual comparison: Applying the "ordinary observer" test, is the overall ornamental appearance of the accused "Final Bell" packaging substantially the same as the design claimed in the ’604 Patent, particularly when viewed in the context of prior art packaging designs for similar products?
- A second key issue will be one of functionality: Will the court determine that the key features of the patented design—specifically the sleeve cutouts and their interaction with the inner tray—are primarily ornamental, as Plaintiff alleges, or are they dictated by functional considerations that would place them outside the scope of design patent protection?
- Finally, a key evidentiary question will concern willfulness: Does the evidence of the pre-suit cease-and-desist letters and Defendant's alleged lack of response establish the "wanton disregard" required for a finding of willful infringement, potentially leading to enhanced damages?