DCT

1:23-cv-00129

Blue Sky Innovation Group Inc v. Forcome Co Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-00129, D. Del., 02/13/2024
  • Venue Allegations: Venue is alleged to be proper based on Defendants transacting business in Delaware and, as non-U.S. residents, being subject to suit in any judicial district.
  • Core Dispute: Plaintiff alleges that its former manufacturing partners breached contractual exclusivity and confidentiality obligations and misappropriated trade secrets by using Plaintiff's proprietary meat grinder designs to manufacture and sell competing products.
  • Technical Context: The dispute centers on the designs for consumer-grade electric meat grinders, a product category within the outdoor sports and recreational market.
  • Key Procedural History: The complaint alleges a business relationship governed by a 2013 Non-Disclosure Agreement and a 2014 Cooperation Agreement. Plaintiff alleges that after receiving its proprietary designs, Defendants secretly filed for and obtained their own patents in China based on those designs. The complaint also notes that Defendants subsequently filed a patent infringement lawsuit in China against Plaintiff's new manufacturer, Yuchi, but that the Chinese court found in favor of Yuchi and invalidated the Defendants' patent.

Case Timeline

Date Event
2013-04-25 Blue Sky and Forcome entities began discussions to develop meat grinders.
2013-05-20 Blue Sky and Forcome Shanghai entered into a Non-Disclosure Agreement (NDA).
2014-09-02 Blue Sky and Forcome Shanghai entered into a Cooperation Agreement.
2014-10-31 Blue Sky sent final designs for the Carnivore Grinders to Forcome.
2015-11-25 Forcome allegedly obtained a Chinese utility model patent on the safety cover, based on Blue Sky's design.
2015-12-09 Forcome allegedly obtained a Chinese utility model patent on the Carnivore Grinder, based on Blue Sky's design.
2016-05-26 Priority Date for U.S. Patent No. D831,080.
2017-07-07 Forcome allegedly obtained a Chinese design patent on the Carnivore Grinder, based on Blue Sky's design.
2017-07-27 Blue Sky and a new manufacturer, Yuchi, executed a Sales and Confidential Agreement.
2018-10-04 Blue Sky and Yuchi signed a manufacturing agreement for sale to Bass Pro Shops.
2018-10-16 Issue Date for U.S. Patent No. D831,080.
2020-07-01 Blue Sky informed Forcome it was terminating the Cooperation Agreement (approximate date).
2020-10-21 Shipment of Yuchi Grinders from Yuchi to Bass Pro was allegedly blocked due to Forcome's lawsuit in China.
2022-07-01 Shenzhen Intermediate People’s Court allegedly found in favor of Yuchi and invalidated Forcome's patent.
2024-02-13 Second Amended Complaint filed.

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

Although the complaint does not assert a claim for patent infringement, it references Plaintiff's patents as the culmination of the designs that are the subject of the alleged trade secret misappropriation and breach of contract. The analysis below is based on the design patent provided.

U.S. Design Patent No. D831,080 - GRINDER MOTOR AND BASE, issued October 16, 2018

The Invention Explained

  • Problem Addressed: Design patents do not articulate a technical problem and solution; rather, they protect the novel, non-functional, ornamental appearance of a manufactured article (D'080 Patent, Claim).
  • The Patented Solution: The patent claims the specific ornamental design for a "grinder motor and base" as depicted in its eight figures (D'080 Patent, Figs. 1-8). The design features a cylindrical motor housing attached to a rectangular base with rounded corners, a distinct handle or grip feature on the top of the base, and specific ventilation patterns and contours on the motor and base housings (D'080 Patent, Figs. 1, 6, 7). The claimed design is for the visual appearance of the product, separate from its mechanical function.
  • Technical Importance: The complaint alleges that Blue Sky invested significant resources into designing the Carnivore Grinders, suggesting the unique design was intended to be a key market differentiator (Compl. ¶125).

Key Claims at a Glance

  • The patent contains a single claim: Claim 1.
  • The claim protects: "The ornamental design for a grinder motor and base, as shown and described" (D'080 Patent, Claim). This incorporates all visual features depicted in the patent's drawings, including:
    • The overall configuration of a cylindrical motor housing mounted on a rectangular base.
    • The specific proportions and curvature of the motor and base.
    • The design and placement of a handle on the base.
    • The visual pattern of surface features and vents.

III. The Accused Instrumentality

Product Identification

The complaint identifies two sets of accused products:

  1. The "AOB Violative Products," sold by American Outdoor Brand, Inc. under the brand name "Meat! Your Maker" (Compl. ¶55).
  2. The "Sausage Maker Violative Products," sold by The Sausage Maker, Inc. (Compl. ¶61).

Functionality and Market Context

  • The complaint alleges that these products are meat grinders manufactured and imported by the Forcome Defendants (Compl. ¶¶ 55, 61).
  • The central allegation is that the design and tooling for these products are based on Blue Sky’s proprietary designs for its "Carnivore Grinder," which were provided to Forcome under the terms of the Cooperation Agreement (Compl. ¶¶ 60, 65). The complaint asserts the designs of the accused products are "substantially the same" or have "identical" component parts to the Carnivore Grinder (Compl. ¶¶ 57-59, 63-64).
  • One side-by-side photograph compares the overall appearance of Plaintiff's "Carnivore Grinder" with the accused "AOB Violative Products," highlighting their visual similarity (Compl. p. 10).

IV. Analysis of Infringement Allegations

The Second Amended Complaint does not assert a cause of action for patent infringement. The allegations center on breach of contract and trade secret misappropriation. However, the complaint provides direct visual comparisons between its product (the "Carnivore Grinder," which embodies the D'080 patent design) and the accused products to support its claim that Defendants copied its designs.

The visual evidence presented raises the question of design similarity. For instance, a side-by-side comparison of component parts shows identical food trays, plates, and retaining rings for the Carnivore Grinder and the AOB Violative Products (Compl. p. 12). Another image juxtaposes the front and rear views of the grinder bodies, suggesting that the overall shape, motor housing design, and base are substantially similar (Compl. pp. 10-11). While not framed as an infringement analysis, this evidence is central to the complaint's underlying theory of copying.

V. Key Claim Terms for Construction

This section is not applicable. In a design patent case, there are typically no claim terms to construe. The analysis rests on the "ordinary observer" test, which involves a visual comparison of the claimed design as a whole with the accused design.

VI. Other Allegations

The complaint does not allege patent-specific claims like indirect or willful infringement. Instead, it asserts five primary causes of action:

  • Breach of Contract (Exclusivity): Alleges that Forcome Shanghai breached the Cooperation Agreement by manufacturing and selling "similar commercial grinders" to Blue Sky's competitors, in violation of a clause granting Blue Sky exclusive rights (Compl. ¶¶ 68-81; Exhibit B § 2).
  • Breach of Contract (Confidentiality): Alleges that Forcome Shanghai breached confidentiality provisions by disclosing Blue Sky's product designs and pricing information and by using the confidential designs to file for its own patents in China (Compl. ¶¶ 82-101; Exhibit B § 7).
  • Tortious Interference: Alleges that Defendants interfered with Blue Sky's business relationships with its new manufacturer (Yuchi) and its customer (Bass Pro) by, among other things, filing a baseless patent infringement lawsuit in China to block shipments of competing products (Compl. ¶¶ 102-117).
  • Trade Secret Misappropriation (Ohio Law & Federal DTSA): Alleges that Blue Sky's grinder designs constituted trade secrets and that Defendants misappropriated them by using the designs to file for Chinese patents and to manufacture competing products for sale to third parties. The complaint specifies that the designs were trade secrets "until the time at which relevant information became available following grant of certain patents for the Grinders by the PTO" (Compl. ¶¶ 118-134, 135-149).

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

  1. A central contractual question will be whether the "AOB" and "Sausage Maker" products are "similar products" within the meaning of the Cooperation Agreement's exclusivity clause, and whether Defendants' alleged use of Plaintiff's designs and disclosure of pricing information constituted a breach of the agreement's confidentiality provisions.
  2. A key issue for the trade secret claims will be temporal: the court will need to determine precisely when Blue Sky's designs ceased to be protected as trade secrets due to their public disclosure in patent filings. The analysis will likely focus on comparing the dates of Defendants' alleged misappropriating acts against the publication dates of Blue Sky's various U.S. and Forcome's Chinese patent documents.
  3. An underlying evidentiary question will be whether the visual and component-part similarity between Blue Sky's Carnivore Grinder and the accused products is sufficient to prove that Defendants used the specific, confidential designs provided by Blue Sky, thereby supporting the breach of contract and misappropriation claims.