Stache Products LLC v. Green Brothers Wholesale Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Stache Products, LLC (Maryland)
  • Defendant: GREEN BROTHERS WHOLESALE INC dba MR GREEN WHOLESALE FLORIDA (Florida)
  • Plaintiff’s Counsel: Sriplaw PLLC
• Case Identification: 3:24-cv-00519, M.D. Fla., 05/21/2024
• Venue Allegations: Venue is alleged to be proper because Defendant maintains a regular and established place of business in the district and has committed the alleged acts of infringement within the district.
• Core Dispute: Plaintiff alleges that Defendant’s sale and importation of "RIG IN ONE" branded vaporization devices infringes three utility patents and one design patent related to portable vaporizers.
• Technical Context: The technology pertains to portable vaporization devices, known as "dab rigs," which are designed for one-handed operation by integrating a heating element (e.g., a torch) with the vaporization rig itself.
• Key Procedural History: The complaint notes that U.S. Patent Nos. 11,497,244 and 11,497,252 are continuations of U.S. Patent No. 10,786,006, indicating a shared specification that may be relevant for claim construction across the patent family.

Case Timeline

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

U.S. Patent No. 10,786,006 - "Vaporization Device"

• Patent Identification: U.S. Patent No. 10,786,006, "Vaporization Device," issued September 29, 2020 (the "’006 Patent").

The Invention Explained

• Problem Addressed: The patent describes conventional vaporization rigs as "large, burdensome, hard to transport, indiscreet, and hard to use with one hand," because a user must typically hold the rig in one hand and a separate torch in the other ('006 Patent, col. 1:38-44).
• The Patented Solution: The invention is a vaporization apparatus that integrates a heating element and a vaporization rig into a single handheld unit. It comprises a "support structure" with a receptacle on top to hold the rig and a hole in the front to hold a heating element, such as a torch. This configuration aligns the heat source with the rig's "nail" (the heatable portion), enabling one-handed operation ('006 Patent, col. 2:50-65; Fig. 4).
• Technical Importance: The design seeks to improve the safety, portability, and convenience of using vaporization rigs by eliminating the need to handle a separate, hot heating element ('006 Patent, col. 4:51-60).

Key Claims at a Glance

• The complaint asserts independent Claim 1 (Compl. ¶34).
• Essential elements of Claim 1 include:
  • A "support structure" with a top "receptacle" and a front "hole."
  • A "heating element" insertable into the hole.
  • A "vaporization rig" securable in the receptacle, which itself comprises a main body, a "nail" with a receptacle for an inhalable substance, and a mouthpiece.
  • A specific structural arrangement wherein securing the rig in the support structure "aligns" the "heatable portion" of the rig with the "heat generating portion" of the heating element.

U.S. Patent No. 11,497,244 - "Vaporization Device"

• Patent Identification: U.S. Patent No. 11,497,244, "Vaporization Device," issued November 15, 2022 (the "’244 Patent").

The Invention Explained

• Problem Addressed: The '244 Patent, a continuation of the '006 Patent, addresses the same problem of conventional vaporization rigs being cumbersome and requiring two hands for operation ('244 Patent, col. 1:35-47).
• The Patented Solution: This patent claims a similar integrated device but describes it using different terminology. It claims a "support structure" that defines both a "first receptacle" (for the rig) and a "second receptacle" (for the heating element). The claim requires the first receptacle to "frictionally engage" the rig and for the two receptacles to be spaced such that the rig's heatable portion "longitudinally aligns" with the heating element's heat generating portion ('244 Patent, Claim 1).
• Technical Importance: As part of a continuing patent application strategy, this patent aims to protect the core inventive concept using different claim language, potentially capturing variations of the integrated device design.

Key Claims at a Glance

• The complaint asserts independent Claim 1 (Compl. ¶40).
• Essential elements of Claim 1 include:
  • A "support structure" defining a "first receptacle" and a "second receptacle."
  • A "heating element" insertable into the second receptacle.
  • A "vaporization rig" securable in the first receptacle.
  • A functional requirement that the first receptacle is configured to "frictionally engage" the rig to "removably secure" it.
  • A spatial requirement that the second receptacle is spaced from the first to "longitudinally align" the heatable portion of the rig with the heating element.

U.S. Patent No. 11,497,252 - "Vaporization Device"

• Patent Identification: U.S. Patent No. 11,497,252, "Vaporization Device," issued November 15, 2022 (the "’252 Patent").
• Technology Synopsis: The ’252 Patent describes a vaporization apparatus with a body containing two receptacles. A first receptacle, at an opening in the front or back, is for removably supporting a heating element so it can be used either as part of the apparatus or separately. A second receptacle on the top surface supports the vaporization rig, with the two receptacles positioned to align the heat source and rig (’252 Patent, Claim 1).
• Asserted Claims: The complaint asserts independent Claim 1 (Compl. ¶46).
• Accused Features: The complaint alleges the accused device’s body, torch, and glass rig components infringe by having the claimed structure of two receptacles that align the heating element and the vaporization rig (Compl. ¶¶ 17, 18, 46).

U.S. Design Patent No. D872,933 S - "Vaporization rig"

• Patent Identification: U.S. Design Patent No. D872,933 S, "Vaporization rig," issued January 14, 2020 (the "D’933 Patent").
• Technology Synopsis: This patent claims the ornamental design for a "vaporization rig," specifically the visual appearance of the support structure as depicted in the patent's figures (D’933 Patent, Claim; Figs. 1-8).
• Asserted Claims: The single claim for the ornamental design as shown and described (Compl. ¶51).
• Accused Features: The overall ornamental appearance of the accused "RIG IN ONE" device is alleged to be substantially the same as the claimed design, inviting a visual comparison to the product photos provided (Compl. ¶¶ 19, 51-52).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are "RIG IN ONE" branded "dab rig products" (Compl. ¶¶ 17-18).

Functionality and Market Context

The complaint alleges the accused product is an "all-in-one rig device that flash heats cannabinoid concentrates to the point of vaporization, utilizing a torch," which is then inhaled (Compl. ¶18). It is alleged that the Defendant imports, offers for sale, distributes, and sells these products through its physical store(s) and its Facebook page (Compl. ¶¶ 26-27). The complaint provides a screenshot from Defendant's Facebook page showing multiple "RIG IN ONE" products for sale in a retail display (Compl. ¶26, p. 9). The complaint also includes a photo of the accused product, which shows a base unit holding both a glass rig component and what appears to be a torch-style heating element (Compl. ¶17, p. 7).

IV. Analysis of Infringement Allegations

’006 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: The complaint's allegations are conclusory. A primary question will be whether the accused device contains a "support structure" and a "vaporization rig" as two distinct, securable components as claimed, or if the device is a single, integrated unit that does not meet this structural limitation. The construction of "securable" will be relevant.
  • Technical Questions: Claim 1 requires the nail receptacle to be positioned at a "first predetermined distance" beyond the support structure's front or back end. The complaint provides no evidence or argument as to how the accused product meets this specific dimensional limitation.

’244 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: The ’244 Patent uses the terms "first receptacle" and "second receptacle," a change from the "receptacle" and "hole" language in the parent ’006 Patent. The infringement analysis may turn on whether this change in terminology imposes a different, and potentially narrower, structural meaning that the accused product's simple openings do not satisfy.
  • Technical Questions: The complaint does not provide sufficient detail for analysis of whether the accused device meets the specific functional limitation of "frictionally engage[ing]" the rig to "removably secure" it. Evidence will be required to show how the components of the accused product actually interact.

V. Key Claim Terms for Construction

For the ’006 Patent:

• The Term: "support structure"
• Context and Importance: This term defines the foundational component of the claimed invention. The dispute may center on whether the accused device's main body constitutes a "support structure" for a separate "vaporization rig," or if the entire product is a single, indivisible unit that falls outside the claim's scope.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification describes the "support structure" in functional terms as something that "houses/receives the heating element and the vaporization rig" ('006 Patent, col. 4:24-28), which could support a construction covering any body that performs this role.
  • Evidence for a Narrower Interpretation: The figures and claim language consistently distinguish between the "support structure" (100) and the "vaporization rig" (200) as separate, physically distinct components that are secured together ('006 Patent, Fig. 4; Claim 1). This could support a narrower construction requiring two separable parts.

For the ’244 Patent:

• The Term: "frictionally engage"
• Context and Importance: This functional language in Claim 1 of the ’244 Patent is a specific requirement for how the rig is secured in the first receptacle. Practitioners may focus on this term because infringement will depend on whether the accused device achieves its connection through friction, as opposed to other means like a simple loose fit or a different mechanical interlock.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The term is not explicitly defined, so a party might argue for its plain and ordinary meaning, covering any interaction where resistance to motion is caused by surfaces rubbing together.
  • Evidence for a Narrower Interpretation: The specification discusses using a "grip member" to "increase an amount of friction" or having receptacle sides configured to "frictionally engage sidewalls" of the rig ('244 Patent, col. 2:5-16). A party could argue this points to an intentional, designed frictional fit, rather than incidental contact.

VI. Other Allegations

• Indirect Infringement: The complaint does not contain counts for indirect infringement.
• Willful Infringement: The complaint alleges that Defendant had "knowledge of the patents" during the period of infringement (Compl. ¶20) and requests a finding of willfulness in the prayer for relief (Compl., p. 17, ¶C). The complaint does not, however, plead any specific facts to support this allegation of knowledge, such as the sending of a notice letter or prior litigation.

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

• Structural Correspondence: A central issue will be one of claim construction and factual correspondence: are the claimed "support structure," "vaporization rig," and "heating element" required to be distinct, separable components, and if so, does the accused "RIG IN ONE" device embody this specific multi-component architecture? The case may turn on whether the accused product is found to be a single, integrated device that does not map onto the elements of the asserted claims.
• Design Patent Similarity: For the design patent claim, a key question for the trier of fact will be a visual one: from the perspective of an ordinary observer, is the overall ornamental appearance of the accused product "substantially the same" as the design claimed in the D'933 patent, or are the visual differences significant enough to avoid infringement?
• Basis for Willfulness: A key evidentiary question will be whether the Plaintiff can produce evidence that the Defendant had pre-suit knowledge of the patents-in-suit. The current complaint’s conclusory allegation of "knowledge" is insufficient on its own to support a finding of willful infringement, which requires a showing of egregious conduct.