DCT
2:25-cv-06321
Lerman Container Corp v. A&A Global Imports LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Lerman Container Corp. (Florida)
- Defendant: A&A Global Imports, LLC (California)
- Plaintiff’s Counsel: WILLENKEN LLP
- Case Identification: 2:25-cv-06321, C.D. Cal., 07/10/2025
- Venue Allegations: Venue is asserted based on Defendant’s headquarters and regular and established place of business being located within the Central District of California, where acts of alleged infringement and breach of contract are claimed to have occurred.
- Core Dispute: Plaintiff alleges that Defendant’s cannabis concentrate jars infringe two of Plaintiff's design patents and that Defendant's sales of these jars violate a prior supply agreement between the parties.
- Technical Context: The case concerns the ornamental design of small, thick-walled glass jars used for packaging and sale of cannabis concentrates, a product category in the commercial cannabis industry.
- Key Procedural History: The complaint notes a significant history between the parties, including a 2016 supply agreement. Notably, the '151 patent-in-suit survived an ex parte reexamination requested by an anonymous party, with a certificate confirming patentability issued in 2021. The complaint also states that the Patent Trial and Appeal Board (PTAB) denied institution of an Inter Partes Review (IPR) petition filed by the Defendant in 2024, which challenged the validity of the same '151 patent.
Case Timeline
| Date | Event |
|---|---|
| 2016-06-08 | Priority Date for '151 and '559 Patents |
| 2016-09-30 | Plaintiff and Defendant enter into supply Agreement |
| 2017-03-14 | U.S. Design Patent No. D781,151 issues |
| 2017-09-19 | U.S. Design Patent No. D797,559 issues |
| 2019-02-11 | Ex Parte Reexamination of '151 Patent requested |
| 2021-11-30 | Reexamination Certificate for '151 Patent issues, confirming claim |
| 2022-06-28 | Alleged infringement begins |
| 2024-07-01 | Defendant files IPR petition challenging '151 Patent |
| 2025-01-22 | PTAB denies institution of Defendant’s IPR |
| 2025-07-10 | Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D781,151
- Patent Identification: U.S. Design Patent No. D781,151, titled "JAR," issued on March 14, 2017.
- The Invention Explained:
- Problem Addressed: The complaint suggests the need for a distinctive and recognizable product appearance in the competitive cannabis packaging market (Compl. ¶4, ¶18-20). The complaint includes a photograph of Plaintiff's authentic "9mm Thick Wall Jar" to illustrate the commercial embodiment of the design (Compl. p. 5).
- The Patented Solution: The patent claims the ornamental design for a jar. The design is defined by the visual characteristics shown in the patent's figures, which depict a short, wide-mouthed jar with a thick base and specific proportions and curvatures ('151 Patent, Figs. 1-7). The complaint describes the design as "novel" and "symmetrical" (Compl. ¶4).
- Technical Importance: The complaint alleges that this distinctive design allowed the "Thick Wall Jars" to become well-known and command a premium price in the cannabis industry (Compl. ¶16-17).
- Key Claims at a Glance:
- Design patents contain a single claim. The asserted claim is: "The ornamental design for a jar, as shown and described."
- The "elements" of this claim are the visual features of the jar as depicted in Figures 1-7 of the patent, including its overall shape, the proportions of the base to the body, and the curvature of its surfaces ('151 Patent, Figs. 1-7).
U.S. Design Patent No. D797,559
- Patent Identification: U.S. Design Patent No. D797,559, titled "JAR," issued on September 19, 2017.
- The Invention Explained:
- Problem Addressed: As with the '151 patent, this design patent addresses the need for a distinct ornamental appearance for a container in the cannabis packaging market (Compl. ¶4, ¶20). The '559 patent is a divisional of the application that led to the '151 patent ('559 Patent, p. 1).
- The Patented Solution: The patent claims the ornamental design for a jar, which the complaint identifies as protecting its "5ml EB Thick Wall Jar" (Compl. ¶17). The design, shown in the patent's figures, is visually similar to the '151 patent's design but with different proportions, creating a distinct overall appearance ('559 Patent, Figs. 1-7).
- Technical Importance: The complaint alleges that this design, like that of the '151 patent, established a recognizable and premium product in the market (Compl. ¶16-17).
- Key Claims at a Glance:
- The single asserted claim is: "The ornamental design for a jar, as shown and described."
- The claim covers the visual features illustrated in Figures 1-7 of the patent, defining a specific aesthetic for a small jar ('559 Patent, Figs. 1-7).
III. The Accused Instrumentality
- Product Identification: The accused products are 5ml and 9ml jars sold by Defendant, referred to in the complaint as the "Infringing Jars" (Compl. ¶6). These are allegedly sold under Defendant's part numbers EBJCR5 and EBJCR9 (Compl. ¶37).
- Functionality and Market Context: The accused products are small glass containers used for cannabis concentrates (Compl. ¶20). The complaint alleges that Defendant markets and sells these jars through multiple websites, including marijuanapackaging.com (Compl. ¶12). The complaint provides visual evidence of boxes of the accused jars labeled with Defendant's product codes, discovered at a customer's warehouse (Compl. p. 9). Plaintiff alleges that these jars are sold at prices lower than its authentic products, thereby undercutting its distributors and harming its market position (Compl. ¶38, ¶42).
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.
D781,151 Patent Infringement Allegations
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a jar, as shown and described. | The complaint alleges that the design of the 9ml "Infringing Jar" is "virtually identical" and "substantially the same" as the ornamental design depicted in the figures of the '151 Patent. A side-by-side comparison of the accused 9ml jar and Figure 1 of the patent is provided to illustrate the alleged visual similarity (Compl. p. 15). | ¶66, ¶67 | '151 Patent, col. 1:57-58 |
D797,559 Patent Infringement Allegations
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a jar, as shown and described. | The complaint alleges that the design of the 5ml "Infringing Jar" is "virtually identical" and "substantially the same" as the ornamental design depicted in the figures of the '559 Patent. A side-by-side comparison of the accused 5ml jar and figures from the patent is provided to support this allegation (Compl. p. 19). | ¶82, ¶83 | '559 Patent, col. 1:51-52 |
- Identified Points of Contention:
- Scope Questions: The central dispute will be a visual comparison. The key question for the court will be whether the overall aesthetic impression of the accused jars is "substantially the same" as the patented designs. The analysis will focus on the designs in their entireties rather than on a comparison of discrete features.
- Technical Questions: While not a "technical" question in the utility patent sense, a key evidentiary question will be whether any visual differences between the accused jars and the patent drawings are significant enough to prevent an ordinary observer from being deceived. The complaint alleges the designs are "virtually identical," setting a high bar for comparison (Compl. ¶66, ¶82).
V. Key Claim Terms for Construction
In design patent litigation, the claim is typically not construed through the definition of written terms. Instead, the claim is understood to be the design itself as shown in the patent's drawings. Courts generally avoid translating the visual design into a verbal description. Therefore, a traditional claim construction proceeding focusing on specific terms is not anticipated. The infringement analysis will likely rely directly on a comparison of the accused products to the patent figures.
VI. Other Allegations
- Willful Infringement: The complaint alleges that Defendant’s infringement was and is willful. The allegations are based on both pre-suit and post-suit knowledge of the patents and the infringing activity (Compl. ¶70, ¶86).
- The complaint alleges Defendant had actual knowledge of the '151 patent since at least January 2017, when Plaintiff informed Defendant its underlying application was allowed (Compl. ¶53).
- It further alleges constructive notice through Plaintiff's continuous patent marking on the authentic jars sold to Defendant since 2017 (Compl. ¶54). The complaint includes a photograph comparing the patent-marked bottom of an authentic jar to the unmarked bottoms of the accused jars (Compl. p. 11).
- The complaint also cites multiple cease-and-desist letters and Defendant's own IPR filing against the '151 patent as evidence of knowledge (Compl. ¶39, ¶58).
- Plaintiff alleges Defendant could not have formed a reasonable belief of non-infringement or invalidity, particularly after the PTAB denied institution of its IPR, thus meeting the standard for willfulness (Compl. ¶59, ¶70).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual identity: From the perspective of an ordinary observer in the cannabis packaging market, is the overall ornamental appearance of Defendant's 5ml and 9ml jars substantially the same as the respective designs claimed in the '559 and '151 patents?
- A second key issue will be willfulness and damages: Given the extensive history alleged in the complaint—including a prior business relationship, multiple notices, and Defendant's unsuccessful IPR challenge—will the court find that Defendant's alleged infringement was willful, which could expose Defendant to enhanced damages under 35 U.S.C. § 284?
- Finally, the case presents a question of remedies: How will the court resolve the interplay between damages sought for patent infringement (which for design patents can include the infringer's total profits under 35 U.S.C. § 289) and damages sought for the alleged breach of the parties' supply agreement?