DCT

8:24-cv-00340

Chubby Gorilla Inc v. FH Packaging LLC

I. Executive Summary and Procedural Information

Parties & Counsel:
- Plaintiff: Chubby Gorilla, Inc. (California)
- Defendant: FH Packaging LLC (California) and Wolfgang Enterprises, Inc. (California)
- Plaintiff’s Counsel: Knobbe, Martens, Olson & Bear, LLP
Case Identification: 8:24-cv-00340, C.D. Cal., 05/10/2024
Venue Allegations: Venue is asserted based on Defendants having committed acts of infringement and maintaining a regular and established place of business within the Central District of California.
Core Dispute: Plaintiff alleges that Defendants’ line of dispensing bottles and caps for e-liquids infringes ten of Plaintiff's U.S. design patents.
Technical Context: The dispute concerns the ornamental design of plastic dispensing bottles, known as "unicorn" bottles, a prevalent packaging format in the electronic cigarette and vaping industry.
Key Procedural History: Plaintiff alleges it sent Defendants a cease-and-desist letter on December 27, 2023, identifying the accused products and a subset of the asserted patents. This event is cited to support allegations of willful infringement.

Case Timeline

Date	Event
2016-08-06	Earliest Priority Date for D'004, D'172, D'173 Patents
2016-11-13	Earliest Priority Date for D'188, D'850 Patents
2017-07-13	Earliest Priority Date for D'500, D'637, D'037, D'703, D'704 Patents
2019-09-17	Issue Date: U.S. Patent No. D860,004
2021-01-12	Issue Date: U.S. Patent No. D907,500
2021-02-23	Issue Date: U.S. Patent No. D911,172
2021-02-23	Issue Date: U.S. Patent No. D911,173
2021-02-23	Issue Date: U.S. Patent No. D911,188
2023-03-28	Issue Date: U.S. Patent No. D981,850
2023-07-04	Issue Date: U.S. Patent No. D991,037
2023-09-26	Issue Date: U.S. Patent No. D999,637
2023-12-27	Plaintiff allegedly sent cease-and-desist letter to Defendants
2024-01-30	Issue Date: U.S. Patent No. D1,012,703
2024-01-30	Issue Date: U.S. Patent No. D1,012,704
2024-05-10	First Amended Complaint Filed

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

U.S. Design Patent No. D860,004 - "Dispensing Bottle Cap," Issued September 17, 2019

The Invention Explained

Problem Addressed: Design patents do not articulate a technical problem and solution in the manner of utility patents. They protect the novel, non-functional, ornamental appearance of an article of manufacture (D'004 Patent, CLAIM).
The Patented Solution: The patent claims the specific ornamental design for a dispensing bottle cap. The design, as depicted in the patent's figures, features a cap with a generally cylindrical main body and a conical top portion that tapers to a flat tip. The cylindrical portion is characterized by fine, vertical ribbing, while the conical top is smooth (D'004 Patent, FIG. 1-2). The bottle portion is depicted in broken lines, indicating it is for illustrative purposes only and not part of the claimed design (D'004 Patent, DESCRIPTION).
Technical Importance: The complaint alleges that Plaintiff is a "leading manufacturer" of such bottles and that its unique designs have become associated with the company, suggesting the claimed design serves as a significant source identifier in the marketplace (Compl. ¶¶8, 31-33).

Key Claims at a Glance

A design patent consists of a single claim. The claim asserted is for "The ornamental design for a dispensing bottle cap, as shown and described" (D'004 Patent, CLAIM).
The essential visual elements comprising the overall design include:
- The specific proportions of the cap's height to its diameter.
- A conical upper portion tapering to a flat top surface.
- A cylindrical lower portion with a surface texture of vertical ribbing.

U.S. Design Patent No. D911,172 - "Dispensing Bottle Cap," Issued February 23, 2021

The Invention Explained

Problem Addressed: This patent protects the ornamental design for a dispensing bottle cap, not a functional solution to a technical problem (D'172 Patent, CLAIM).
The Patented Solution: The patent claims a specific visual appearance for a dispensing bottle cap. The design features a cap with a vertically ribbed cylindrical base and a smooth, convexly curved conical top that tapers toward a dispensing orifice (D'172 Patent, FIG. 1, 5). Similar to the '004 Patent, the bottle itself is shown in broken lines to illustrate the environment and is not part of the claimed design (D'172 Patent, DESCRIPTION).
Technical Importance: As with the '004 Patent, the commercial value of this design is linked to Plaintiff's market position and the distinctive appearance of its product line (Compl. ¶¶8, 31-33).

Key Claims at a Glance

The asserted claim is for "The ornamental design for a dispensing bottle cap, as shown and described" (D'172 Patent, CLAIM).
The essential visual elements contributing to the overall design include:
- The overall proportions of the cap.
- A curved, tapering upper portion.
- A cylindrical lower portion featuring vertical ribbing.

Multi-Patent Capsule: U.S. Design Patent No. D911,173

Patent Identification: D911173, "Dispensing Bottle Cap," Issued February 23, 2021.
Technology Synopsis: This design patent protects the ornamental appearance of a dispensing bottle cap. The design is characterized by a vertically ribbed cylindrical base and a smooth conical top.
Asserted Claims: The single claim for the ornamental design as shown and described (D'173 Patent, CLAIM).
Accused Features: The overall ornamental design of Defendants' "Unicorn Cap" product is alleged to infringe (Compl. ¶¶63, p.17).

Multi-Patent Capsule: U.S. Design Patent No. D911,188

Patent Identification: D911188, "Dispensing Bottle," Issued February 23, 2021.
Technology Synopsis: This design patent protects the ornamental appearance of an entire dispensing bottle, including both the bottle and the cap. The design features a slender, cylindrical bottle body combined with a cap having a ribbed base and a curved, tapering top.
Asserted Claims: The single claim for the ornamental design as shown and described (D'188 Patent, CLAIM).
Accused Features: The overall ornamental design of Defendants' bottle and cap product is alleged to infringe (Compl. ¶¶73, p.19).

Multi-Patent Capsule: U.S. Design Patent No. D981,850

Patent Identification: D981850, "Dispensing Bottle," Issued March 28, 2023.
Technology Synopsis: This design patent protects the ornamental appearance of a complete dispensing bottle. The design consists of a cylindrical bottle and a cap with a ribbed cylindrical portion and a faceted, tapering top.
Asserted Claims: The single claim for the ornamental design as shown and described (D'850 Patent, CLAIM).
Accused Features: The overall ornamental design of Defendants' bottle and cap product is alleged to infringe (Compl. ¶¶83, p.22).

Multi-Patent Capsule: U.S. Design Patent No. D907,500

Patent Identification: D907500, "Bottle," Issued January 12, 2021.
Technology Synopsis: This design patent protects the ornamental appearance of a dispensing bottle assembly. The claimed design includes a cylindrical bottle body and a cap with a vertically ribbed grip and a conical top.
Asserted Claims: The single claim for the ornamental design as shown and described (D'500 Patent, CLAIM).
Accused Features: The overall ornamental design of Defendants' bottle and cap product is alleged to infringe (Compl. ¶¶93, p.24).

Multi-Patent Capsule: U.S. Design Patent No. D999,637

Patent Identification: D999637, "Bottle," Issued September 26, 2023.
Technology Synopsis: This patent protects the ornamental design for a bottle and cap combination. The design features a cylindrical bottle and a cap with a ribbed base and a smooth, tapering conical top.
Asserted Claims: The single claim for the ornamental design as shown and described (D'637 Patent, CLAIM).
Accused Features: The overall ornamental design of Defendants' bottle and cap product is alleged to infringe (Compl. ¶¶103, p.27).

Multi-Patent Capsule: U.S. Design Patent No. D991,037

Patent Identification: D991037, "Bottle," Issued July 4, 2023.
Technology Synopsis: This patent protects the ornamental design for a bottle assembly. The design shows a cylindrical bottle body paired with a cap having a vertically ribbed grip surface and a conically tapering top.
Asserted Claims: The single claim for the ornamental design as shown and described (D'037 Patent, CLAIM).
Accused Features: The overall ornamental design of Defendants' bottle and cap product is alleged to infringe (Compl. ¶¶113, p.29).

Multi-Patent Capsule: U.S. Design Patent No. D1,012,703

Patent Identification: D1012703, "Bottle," Issued January 30, 2024.
Technology Synopsis: This patent protects the ornamental design of a bottle and cap assembly. The claimed design features a cylindrical bottle body and a cap with a ribbed grip section and a smooth, conically tapered top portion.
Asserted Claims: The single claim for the ornamental design as shown and described (D'703 Patent, CLAIM).
Accused Features: The overall ornamental design of Defendants' bottle and cap product is alleged to infringe (Compl. ¶¶123, p.32).

Multi-Patent Capsule: U.S. Design Patent No. D1,012,704

Patent Identification: D1012704, "Bottle," Issued January 30, 2024.
Technology Synopsis: This patent protects the ornamental design of a bottle assembly. The design shows a cylindrical bottle combined with a cap featuring a vertically ribbed base and a smooth, tapering conical top.
Asserted Claims: The single claim for the ornamental design as shown and described (D'704 Patent, CLAIM).
Accused Features: The overall ornamental design of Defendants' bottle and cap product is alleged to infringe (Compl. ¶¶133, p.34).

III. The Accused Instrumentality

Product Identification

The complaint identifies the accused products as, for example, the "30ML PET BOTTLE WITH CRC/TE 24-NECK CLEAR UNICORN CAP WITH PRE-INSERTED CLEAR TIP" (Compl. ¶20).

Functionality and Market Context

The accused product is described as a 30ml PET (Polyethylene Terephthalate) bottle featuring a child-resistant (CRC) and tamper-evident (TE) cap with a pre-inserted tip for dispensing liquids (Compl. p.6).
The complaint provides a screenshot from the Defendants' website, www.fhpkg.com, showing the product and describing it as "Ideal for CBD and E-Liquid" (Compl. p.6). This screenshot shows the product advertised as a "30 ml PET Bottle with CRC/TE 24-Neck Clear Unicorn Cap with Pre-Inserted Clear Tip" (Compl. p.6).
The complaint alleges that Defendants' use of the term "Unicorn Cap" on their website is an effort to trade on Plaintiff's reputation (Compl. ¶22).

IV. Analysis of Infringement Allegations

The complaint alleges infringement of ten design patents under 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 (Compl. ¶21). The core of the infringement allegation is that the overall visual appearance of the Defendants' products is substantially the same as the designs claimed in the asserted patents. The complaint presents side-by-side visual comparisons for each asserted patent to support this theory.

D860,004 Infringement Allegations

Plaintiff supports its allegation with a visual comparison of the accused product and a figure from the '004 Patent (Compl. p.12).

Ornamental Feature of Claimed Design (as shown in D'004 Patent, FIG. 2)	Corresponding Feature of Accused Product (as shown in Compl. p.12)	Complaint Citation
The overall shape and proportions of the cap, comprising a cylindrical base and a conical top.	The accused product's cap is alleged to have a substantially similar overall shape and proportions.	¶43
A smooth, conical upper surface that tapers to a flattened tip.	The accused cap is alleged to feature a similar conical upper surface.	¶43
A cylindrical lower portion featuring a surface texture of fine, vertical ribs.	The accused cap is alleged to feature a similar vertically ribbed surface on its cylindrical portion.	¶43

D911,172 Infringement Allegations

Plaintiff provides a similar side-by-side visual comparison to allege infringement of the '172 Patent (Compl. p.15).

Ornamental Feature of Claimed Design (as shown in D'172 Patent, FIG. 6)	Corresponding Feature of Accused Product (as shown in Compl. p.15)	Complaint Citation
The overall visual impression created by the cap's proportions and shape.	The accused product's cap is alleged to be substantially the same in its overall visual impression.	¶53
A convexly curved, tapering upper portion.	The accused cap is alleged to have a similarly curved and tapering top section.	¶53
A cylindrical base with a vertically ribbed surface texture.	The accused cap is alleged to have a nearly identical ribbed texture on its base.	¶53

Identified Points of Contention

Scope Questions: A central question will be whether the scope of the claimed designs, when properly construed, is broad enough to read on the accused products. This will involve comparing the overall visual effect, not just an element-by-element match. The analysis for patents claiming only the "cap" (e.g., '004, '172) will differ from those claiming the entire "bottle" (e.g., '188, '500), which may present different infringement questions.
Technical Questions: The primary dispute will likely center on visual, not technical, mismatches. The court will assess whether the subtle differences in curvature, proportion, and surface texture between the patented designs and the accused product are sufficient to differentiate them in the eye of an ordinary observer. A key defense argument may be that any similarities are dictated by function (e.g., ribbing for grip, tapered tip for dispensing), and are therefore not protectable by a design patent. The complaint preemptively addresses this, arguing the "CG Trade Dress is not functional" (Compl. ¶34).

V. Key Claim Terms for Construction

In design patent litigation, there are typically no textual claim terms to construe in the traditional sense. The "claim" is the design itself, as depicted in the drawings. The analysis focuses on the scope of the claimed ornamental design as a whole.

The Term: "The ornamental design for a [dispensing bottle cap / bottle] as shown and described."
Context and Importance: The scope of protection is the pivotal issue. The infringement analysis will depend entirely on a comparison between the overall visual appearance of the claimed designs and the accused products. Practitioners may focus on this analysis because the outcome of the "ordinary observer" test hinges on it. A key aspect of the analysis will be separating protectable ornamental features from unprotectable functional aspects.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party arguing for broader scope may emphasize the overall visual impression created by the combination of features, arguing that minor deviations in the accused product do not change the fundamental look and feel of the patented design. The solid lines in the drawings define the bounds of the claimed design (e.g., D'004 Patent, FIG. 1).
- Evidence for a Narrower Interpretation: A party arguing for a narrower scope may point to the specific details and proportions depicted in the solid-line drawings as limitations on the claim. Furthermore, the broken lines showing the environment (e.g., the bottle in the '004 and '172 patents) are explicitly disclaimed and serve to frame the claimed design, but are not part of it. A defense may argue that any protectable design is limited to the exact visual representation, making even small differences in the accused product legally significant.

VI. Other Allegations

Indirect Infringement: The complaint does not contain explicit counts for induced or contributory infringement.
Willful Infringement: The complaint alleges that Defendants’ infringement was and is "knowingly, intentionally, and willfully" for all ten asserted patents (e.g., Compl. ¶¶43, 53). The allegations are based on two grounds: (1) alleged pre-suit knowledge, based on the assertion that Plaintiff's designs are "well-known throughout the industry" and that Defendants' products are a "nearly identical copy" (Compl. ¶44); and (2) post-suit knowledge, based on a cease-and-desist letter Plaintiff allegedly sent on December 27, 2023, which identified the accused products and patents (Compl. ¶¶44, 54).

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

Infringement and Scope: The central issue will be a series of ten infringement analyses under the ordinary observer test. A key question for the court will be: Is the overall ornamental design of the accused bottle and cap assembly "substantially the same" as each of the ten distinct patented designs, such that an ordinary observer would be deceived? This will require a holistic visual comparison that properly accounts for the scope of each individual patent.
Functionality vs. Ornamentation: A critical question will be whether the visual features shared between the patented designs and the accused products are primarily ornamental or dictated by function. The court will need to determine if features like the vertical ribbing (for grip) or the tapered tip (for dispensing) are functional elements that should be filtered out of the infringement comparison, a determination that could significantly impact the outcome.
Validity: While not yet at issue, a likely defense will be to challenge the validity of the ten asserted design patents. A key question will be whether each claimed design was novel and non-obvious over the prior art at the time of its filing. The existence of a large family of similar-looking design patents, as asserted here, may itself raise questions about the patentable distinctiveness of each design from the others and from the broader prior art field.