DCT
8:19-cv-02473
Small Axe Enterprises v. Takeya USA Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Small Axe Enterprises, Inc. (California)
- Defendant: Takeya USA Corporation (California)
- Plaintiff’s Counsel: Kyle Harris LLP
- Case Identification: 8:19-cv-02473, C.D. Cal., 12/20/2019
- Venue Allegations: Plaintiff alleges venue is proper because Defendant has committed acts of infringement in the district and maintains a regular and established place of business in Costa Mesa, California.
- Core Dispute: Plaintiff alleges that Defendant’s "Bumper" accessories for water bottles infringe a patent related to deformable, cup-shaped coasters for beverage containers.
- Technical Context: The technology pertains to accessories for beverage containers designed to prevent condensation from dripping, absorb minor spills, and improve stability on surfaces.
- Key Procedural History: The complaint alleges that Plaintiff licensed the patent-in-suit to other companies and sent Defendant five notices of infringement seeking to engage in licensing discussions prior to filing suit. A subsequent ex parte reexamination of the patent-in-suit, concluded on June 22, 2021, resulted in the cancellation of all claims, including the asserted claim. This post-filing development presents a significant challenge to the viability of the infringement action.
Case Timeline
| Date | Event |
|---|---|
| 2000-09-22 | U.S. Patent 6,578,809 Priority Date |
| 2003-06-17 | U.S. Patent 6,578,809 Issue Date |
| 2009-01-01 | Plaintiff Small Axe acquired rights to the '809 Patent (approximate) |
| 2019-06-07 | Plaintiff's first alleged notice of infringement to Defendant |
| 2019-12-20 | Complaint Filing Date |
| 2020-02-27 | Request for Ex Parte Reexamination of '809 Patent filed |
| 2021-06-22 | Reexamination Certificate issued, cancelling all claims of '809 Patent |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,578,809 - "FLEX GRIP MIMPI APPARATUS"
- Patent Identification: U.S. Patent No. 6,578,809, "FLEX GRIP MIMPI APPARATUS", issued June 17, 2003.
The Invention Explained
- Problem Addressed: The patent seeks to solve two common problems associated with beverage containers: spillage from tipping and condensation ("dew formation") dripping from cold vessels onto users' clothing or sensitive surfaces. ('809 Patent, col. 2:21-39). The background notes that conventional coasters do not adequately protect surfaces beyond the one on which the vessel rests. ('809 Patent, col. 3:11-16).
- The Patented Solution: The invention is a flexible, cup-shaped apparatus that is form-fitted to the bottom of a beverage container. ('809 Patent, Abstract; col. 4:46-52). Made from materials like foam rubber or neoprene, the device is designed to be absorbent, provide insulation to reduce condensation, and create a stable, non-slip base for the vessel. ('809 Patent, col. 7:22-28; Fig. 5A).
- Technical Importance: The invention proposed a low-cost, reusable, and environmentally friendly alternative to disposable paper products like napkins or coasters by using durable, flexible materials to manage condensation and improve stability. ('809 Patent, col. 6:49-56).
Key Claims at a Glance
- The complaint asserts infringement of Claim 8, an independent claim. (Compl. ¶11).
- The essential elements of Claim 8 are:
- An article of manufacture, comprising, in combination: a low profile cup shaped coaster means for deformably conforming to the contours of a vessel, made up of a single strip;
- the means stretches from a first unconformed position to a second conformed position when placed on the bottom of the vessel;
- whereby said means further comprises inner and outer surfaces defining a substantially flat bottom portion connected to side walls extending therefrom; and,
- whereby the vessel is maintained in substantially orthogonal relationship to a planar surface upon which it rests, when said article is in the second conformed position on the bottom of said vessel.
- The complaint states that the accused products infringe "one or more claims" but only provides an analysis of Claim 8. (Compl. ¶11, ¶15).
III. The Accused Instrumentality
Product Identification
- The "Accused Products" are "Bumpers" sold either with or as accessories for stainless-steel water bottles under the Takeya and ThermoFlask® brand names. (Compl. ¶9, ¶10).
Functionality and Market Context
- The complaint describes the Bumpers as flexible, deformable, and removable products made from a single piece of material that stretch to fit onto the bottom of water bottles. (Compl. ¶11). The complaint includes three photographs showing the accused Bumpers installed on different Takeya and ThermoFlask® bottles, illustrating their use in practice. (Compl. p. 4). The Bumpers are sold for various bottle sizes, including 14-18 oz., 24 oz., and 32-40 oz. models. (Compl. ¶9).
IV. Analysis of Infringement Allegations
’809 Patent Infringement Allegations
| Claim Element (from Independent Claim 8) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a low profile cup shaped coaster means for deformably conforming to the contours of a vessel, made up of a single strip | The Accused Products are articles of manufacture comprising a low-profile cup-shaped coaster means that conform to the outer contours of Takeya and/or ThermoFlask® bottles... made from a single piece of flexible material. | ¶11 | col. 10:29-32 |
| the means stretches from a first unconformed position to a second conformed position when placed on the bottom of the vessel | The Accused Products all stretch from a resting position to a second position so that they can be placed on and conform to Takeya and/or ThermoFlask® water bottles. | ¶11 | col. 10:33-35 |
| whereby said means further comprises inner and outer surfaces defining a substantially flat bottom portion connected to side walls extending therefrom | The Accused Products all have inner surfaces that contact the exterior portion of... bottles, outer surfaces on the exterior..., and substantially flat bottom portions connected to the substantially vertical side walls... | ¶11 | col. 10:36-38 |
| whereby the vessel is maintained in substantially orthogonal relationship to a planar surface upon which it rests, when said article is in the second conformed position | Takeya and/or ThermoFlask® water bottles are maintained in a substantially orthogonal relationship to a planar surface on which they rest when the Accused Products are installed... | ¶11 | col. 10:39-44 |
Identified Points of Contention
- Scope Questions: Claim 8 uses means-plus-function language ("coaster means for..."). Under 35 U.S.C. § 112(f), the scope of this element is limited to the corresponding structures disclosed in the specification and their equivalents. A central question would be whether the material of the accused "Bumpers" constitutes an equivalent to the "neoprene," "sponge foam," and "foam rubber" disclosed in the patent. ('809 Patent, col. 7:22-28; col. 3:62-65).
- Technical Questions: The complaint alleges the accused products are "made from a single piece of flexible material" to meet the "single strip" limitation. ('Compl. ¶11). A factual question is whether the accused products are indeed of unitary construction, and a legal question is how the term "single strip" would be construed, given potential ambiguities in the patent's specification.
V. Key Claim Terms for Construction
The Term: "coaster means for deformably conforming to the contours of a vessel"
- Context and Importance: As a means-plus-function limitation, the construction of this term is central to the infringement analysis. The dispute would focus on identifying the corresponding structure in the specification and determining the scope of its equivalents.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification discloses a range of potential materials for the apparatus, including "neoprene... sponge foam, conventional plastics, known rubbers, PTFE compounds..., urethanes, polysiloxanes, and the like synthetics," which could support a broader scope of equivalents. ('809 Patent, col. 7:22-28).
- Evidence for a Narrower Interpretation: The patent repeatedly emphasizes "neoprene" from "wetsuit material" and "foam rubber" as preferred embodiments, which could be used to argue for a narrower construction limited to those specific materials and their closest equivalents. ('809 Patent, col. 3:62-65; col. 8:59-65).
The Term: "made up of a single strip"
- Context and Importance: This structural limitation could be a key point of dispute. Practitioners may focus on this term because the patent itself creates ambiguity; while Claim 8 recites a "single strip," the specification and other claims contemplate multi-piece construction.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Claim 2, which depends from Claim 1 (containing a similar "single strip" limitation), explicitly recites a device "constructed of two pieces of identical material bonded together by glue." ('809 Patent, col. 10:5-7). This suggests that the term "single strip" in the independent claim might not strictly require a monolithic structure, potentially encompassing items bonded into a single functional unit.
- Evidence for a Narrower Interpretation: The specification refers to a "unitary neoprene construction," supporting a literal interpretation that the device must be fabricated from one continuous piece of material. ('809 Patent, col. 8:51-52).
VI. Other Allegations
Indirect Infringement
- The complaint includes conclusory allegations of indirect infringement through both inducement and contribution. (Compl. ¶16). It does not, however, allege specific facts to support the knowledge and intent elements, such as citing defendant's marketing materials or user instructions that direct an infringing use.
Willful Infringement
- The complaint alleges that Defendant’s infringement has been willful since at least June 7, 2019. (Compl. ¶18). This allegation is supported by specific factual claims that Plaintiff sent five pre-suit letters to Defendant between June and November 2019, notifying Defendant of the '809 Patent and its alleged infringement. (Compl. ¶12).
VII. Analyst’s Conclusion: Key Questions for the Case
- The foremost issue is one of case viability: given that all claims of the '809 patent were cancelled in an ex parte reexamination that concluded after the complaint was filed, the primary question is whether the plaintiff has any remaining legal basis to pursue damages for past infringement. The cancellation of the asserted claim is likely dispositive.
- Assuming the claims were valid, a key question would be one of claim scope: would the "coaster means" of Claim 8, a means-plus-function element, be construed broadly enough to cover the materials used in the accused "Bumpers," or would its scope be limited to the specific neoprene and foam rubber embodiments emphasized in the specification?
- Finally, the case would raise a question of definitional consistency: how should the court resolve the apparent contradiction between the "single strip" limitation in independent Claim 8 and the specification's contemplation of a multi-piece construction, as reflected in dependent Claim 2?