DCT
1:25-cv-03252
Kona Ice Inc v. Liu
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Kona Ice, Inc. (Kentucky)
- Defendant: Al Liu (Colorado)
- Plaintiff’s Counsel: Ogborn Mihm, LLP
- Case Identification: 17-cv-02301, D. Colo., 09/22/2017
- Venue Allegations: Venue is based on the Defendant residing and having a regular and established place of business within the District of Colorado.
- Core Dispute: Plaintiff alleges that Defendant’s mobile shaved ice truck infringes a patent related to an external, customer-accessible liquid toppings dispensing system.
- Technical Context: The technology addresses operational efficiency in mobile food vehicles by relocating the flavor-dispensing function to an exterior, self-service station to increase customer throughput.
- Key Procedural History: The patent-in-suit is a continuation of a prior application that issued as U.S. Patent No. 9,321,387 and is subject to a terminal disclaimer, which may limit the patent's enforceable term to that of the parent patent.
Case Timeline
| Date | Event |
|---|---|
| 2013-02-27 | ’447 Patent Priority Date |
| 2017-09-05 | ’447 Patent Issue Date |
| 2017-09-22 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 9,751,447, "Liquid Toppings Dispensing System," issued September 5, 2017 (’447 Patent).
- The Invention Explained:
- Problem Addressed: The patent’s background section identifies service speed as a critical factor for profitability in the mobile confectionary business, noting that lines are often slowed by customers, particularly children, taking time to select flavorings from an employee inside the vehicle (’447 Patent, col. 1:42-65). This process creates a bottleneck at the service window, potentially deterring new customers.
- The Patented Solution: The invention moves the task of applying liquid toppings, such as flavored syrups, from an employee inside the truck to a self-service station located on the vehicle's exterior (’447 Patent, Abstract). As illustrated in Figure 1, after a customer receives a container of plain ice from the service window (30), they can move along the side of the vehicle to a separate dispensing system (12) to apply their own choice of toppings, thereby parallelizing the service workflow and reducing wait times (’447 Patent, col. 5:26-41).
- Technical Importance: This design directly addresses the commercial need to maximize customer throughput at time-sensitive venues like festivals or concerts, where a vendor's profitability can be determined by how many sales can be completed in a short period (’447 Patent, col. 1:46-56).
- Key Claims at a Glance:
- The complaint asserts independent claim 1 and dependent claims 2, 3, 4, 6, 7, and 10 of the ’447 Patent (Compl. ¶11).
- The essential elements of independent claim 1 include:
- A mobile confectionary apparatus comprising a vehicle with at least one upstanding side wall.
- An interior space within the wall configured to receive at least one person.
- An opening through the side wall for passing items from the interior to the exterior.
- A liquid toppings dispensing system with a housing and multiple liquid dispensers.
- The dispensers are in fluid communication with at least one liquid reservoir.
- The liquid toppings dispensing system is located externally of the side wall and "spaced entirely laterally therefrom by a gap."
III. The Accused Instrumentality
- Product Identification: The accused instrumentality is "Defendant's Service Vehicle," a mobile truck used to offer and sell frozen treats, including flavored shaved ice (Compl. ¶¶9, 14).
- Functionality and Market Context: The complaint describes the accused product as a service truck that operates as a mobile confectionary business (Compl. ¶14). Its relevant features include an interior space for an operator, a window for serving customers, and an externally mounted flavoring station (Compl. ¶¶16-18). An image of the Defendant's vehicle is referenced as Exhibit 2 in the complaint (Compl. ¶9). The complaint alleges, on information and belief, that the Defendant operates as a franchisee of Tikiz Shaved Ice & Ice Cream (Compl. ¶20).
IV. Analysis of Infringement Allegations
The complaint’s infringement theory alleges that the physical structure of the Defendant's Service Vehicle maps directly onto the elements of claim 1 of the ’447 Patent. The allegations rely on an image of the accused vehicle, attached to the complaint as Exhibit 2, to identify each claimed physical feature (Compl. ¶¶14-18).
- ’447 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A mobile confectionary apparatus, comprising: a vehicle including at least one upstanding side wall; an interior space surrounded by the at least one upstanding side wall and configured to receive at least one person; an opening extending through the at least one upstanding side wall and through which an item may be passed from the interior space to outside of the vehicle | The accused instrumentality is a mobile service truck with walls enclosing a rear portion designed for at least one person and a window for passing items to customers. | ¶¶14-17 | col. 4:7-9; col. 4:55-58; col. 5:8-12 |
| and a liquid toppings dispensing system including a housing being positioned adjacent to, and opposing, the at least one upstanding side wall and including a plurality of liquid dispensers configured to dispense at least one liquid topping onto the item | The vehicle includes a system with multiple spigots enclosed by a frame, which is positioned in close proximity to and opposing the truck's side wall, used to dispense liquid flavoring. | ¶18 | col. 7:1-5 |
| each of the plurality of liquid dispensers being in fluid communication with at least one reservoir holding the at least one liquid topping | Each spigot is attached through a hose to containers that house liquid toppings. | ¶18 | col. 7:29-34 |
| with the liquid toppings dispensing system being located externally of the at least one upstanding side wall and spaced entirely laterally therefrom by a gap. | The dispensing system is mounted on the outside of the truck, with a space between it and the side wall of the truck. | ¶18 | col. 6:37-39 |
- Identified Points of Contention:
- Scope Questions: A central dispute may arise over the meaning of "spaced entirely laterally therefrom by a gap." The question for the court will be whether this limitation is met by any physical separation between the dispensing system and the truck wall, as the complaint alleges, or if the patent’s specification limits the term to a gap of a particular size, configuration, or function, such as one enabling the pivoting movement described in an embodiment (’447 Patent, col. 6:37-39).
- Technical Questions: The complaint’s allegations appear to describe a direct, one-to-one correspondence between claimed elements and the physical features of the accused truck. Barring a significant claim construction dispute, the primary technical question may be whether the "space between it and the side wall of the truck" factually constitutes the claimed "gap" (Compl. ¶18).
V. Key Claim Terms for Construction
- The Term: "spaced entirely laterally therefrom by a gap"
- Context and Importance: This final limitation of claim 1 appears to be the most specific and potentially contested element. The outcome of the infringement analysis may depend on the construction of "gap," as it is the primary feature distinguishing the external system from one that is merely surface-mounted.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Plaintiff may argue that the claim language requires only that the system be located external to the wall and separated by some lateral space. The claim itself does not recite any specific function, size, or characteristic for the "gap," suggesting its plain and ordinary meaning should apply.
- Evidence for a Narrower Interpretation: Defendant may counter that the only explicit disclosure of a "gap" in the specification appears in the context of a pivoting embodiment, where "gap 39" facilitates the system's movement between a first and second position (’447 Patent, col. 6:37-39; Fig. 4B). This may support an argument that the term is not met by any incidental space but requires a specific configuration related to adjustability or movement.
VI. Other Allegations
- Indirect Infringement: While the prayer for relief requests a judgment of induced infringement (Compl. p. 5, ¶A), the body of the complaint does not contain factual allegations to support the required elements of knowledge and intent, such as instructing others to use the vehicle in an infringing manner. The allegations focus exclusively on direct infringement by the Defendant’s "operation and use" of the vehicle (Compl. ¶11).
- Willful Infringement: The complaint alleges willfulness based on a multi-step inference: (1) Defendant is a franchisee of Tikiz; (2) Tikiz is aware of and monitors patents owned by its competitor, Kona Ice; and (3) therefore, Defendant "is or should be aware" or "may be aware" of the ’447 Patent through its interactions with Tikiz (Compl. ¶20).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "spaced entirely laterally therefrom by a gap," which is described in the specification in the context of a pivoting mechanism, be construed to cover the physical separation created by the mounting of an apparently fixed dispensing system on the exterior of the accused vehicle?
- A key pleading question will be one of imputed knowledge: do the complaint's allegations—that a franchisee "may be aware" of a patent because its franchisor allegedly monitors a competitor—provide a sufficient factual basis to sustain a claim for willful infringement against the individual franchisee Defendant?