DCT

6:17-cv-00315

Kevin McGarry v. Global Consumer Innovations

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 6:17-cv-00315, M.D. Fla., 07/11/2017
  • Venue Allegations: Venue is alleged to be proper in the Middle District of Florida because several defendants reside in the district and a substantial part of the events giving rise to the action occurred there.
  • Core Dispute: Plaintiff alleges he is an un-named inventor of two design patents owned by Defendants and seeks a declaratory judgment to correct inventorship, claiming the patented designs were derived from his concepts for a bucket with an integrated base handle.
  • Technical Context: The dispute centers on the ornamental design of integrated handles on the bottom of containers, such as five-gallon buckets, intended to improve the ease and safety of pouring contents.
  • Key Procedural History: The complaint alleges that Plaintiff, the inventor of a prior U.S. Patent No. 6,471,221 for a handled trash can, developed an improved concept called "Grip-N-Grab Buckets." He allegedly disclosed this concept and related designs to the Defendants under non-disclosure and licensing agreements. Subsequently, Defendants allegedly filed for and obtained two design patents based on this disclosed information without naming Plaintiff as an inventor.

Case Timeline

Date Event
2013-09-20 Plaintiff files provisional patent application for "Grip-N-Grab Buckets" concept
2014-05-06 Priority date for U.S. Design Patent No. D726,385
2014-12-10 Priority date for U.S. Design Patent No. D762,032
2015-04-07 U.S. Design Patent No. D726,385 issues
2016-07-19 U.S. Design Patent No. D762,032 issues
2017-07-11 Second Amended Complaint filed

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

U.S. Design Patent No. D726,385 - "Container with Handle," Issued April 7, 2015

The Invention Explained

  • Problem Addressed: The complaint describes a need for a "new and improve[d] container for emptying trash and liquids" (Compl. p. 6). The underlying problem is the difficulty and potential messiness of pouring from large containers like five-gallon buckets that lack a secure secondary grip point at the base (Compl. ¶ 21, p. 6).
  • The Patented Solution: The ’385 Patent claims the ornamental design for a container that incorporates a recessed handle into its base (D726385 Patent, Figs. 1, 4, 5). The complaint alleges this design is derived from Plaintiff's concept for a "tubular handle located at the bottom portion of trash cans and buckets" (Compl. ¶ 26), intended to provide a "firm and secure method for the consumer while emptying or pouring liquids" (Compl. p. 6).
  • Technical Importance: The integration of a base handle provides a practical ergonomic improvement for controlling the pouring of contents from otherwise unwieldy containers (Compl. p. 6).

Key Claims at a Glance

  • The patent contains a single claim for "The ornamental design for a container with handle, as shown and described" (D726385 Patent, Claim).
  • The claim's scope is defined by the visual appearance of the container as depicted in the patent's five figures.
  • The complaint alleges that Plaintiff "conceived of at least one claim taught by the '385... Patent" (Compl. ¶ 58).

U.S. Design Patent No. D762,032 - "Bucket Handle," Issued July 19, 2016

The Invention Explained

  • Problem Addressed: The patent addresses the same functional problem as the '385 Patent: providing a better grip for pouring from a bucket (Compl. p. 6).
  • The Patented Solution: The ’032 Patent claims the ornamental design for a bucket handle itself (D762032 Patent, Claim). The patent drawings show the handle in solid lines as the claimed design, while the bucket to which it would attach is shown in broken lines to provide environmental context and is not part of the claim (D762032 Patent, Description). The complaint alleges this design is also a "derivative" of Plaintiff's '221 Patent and his subsequent "Grip-N-Grab Buckets" concept (Compl. ¶ 51).
  • Technical Importance: The design provides a specific aesthetic appearance for a handle intended to be integrated into a container's base (Compl. ¶¶ 49-51).

Key Claims at a Glance

  • The patent contains a single claim for "The ornamental design for a bucket handle, as shown and described" (D762032 Patent, Claim).
  • The claim's scope is defined by the visual appearance of the handle itself, as depicted in the solid lines of the patent's seven figures.
  • The complaint alleges that Plaintiff "collaborated on the claims" and "conceived of at least one claim taught by the... '032 Patent" (Compl. ¶ 58).

III. The Accused Instrumentality

Product Identification

The subject of the dispute is not a commercial product but the patented designs themselves, specifically the ornamental designs claimed in U.S. Design Patent Nos. D726,385 and D762,032, to which Plaintiff claims inventive contribution (Compl. ¶ 58).

Functionality and Market Context

The complaint alleges that the patented designs embody the technology of Plaintiff's "Grip-N-Grab Buckets" concept (Compl. ¶¶ 21, 38, 49). This concept is described as an improvement upon Plaintiff's earlier '221 Patent, which disclosed a trash can with a tubular handle in its lower portion (Compl. ¶ 20). The complaint alleges that Defendants are "publicly passing off the underlying technology behind the '385 Patent, the '032 Patent, and the utility patent application as its own" (Compl. ¶ 53), and that Plaintiff is harmed by being unable to "share in profits derived from the '385 and '032 Patents" due to his non-joinder as an inventor (Compl. ¶ 65).

No probative visual evidence provided in complaint.

IV. Analysis of Inventorship Contribution Allegations

The complaint does not allege infringement but rather seeks to correct inventorship under 35 U.S.C. § 256. The central allegation is that Plaintiff conceived of the patented designs and disclosed them to Defendants, who then filed patent applications without naming him as an inventor.

D726,385 Patent Inventorship Allegations

Claimed Design Feature (from Figs. 1-5) Alleged Plaintiff Contribution Complaint Citation Patent Citation
The overall ornamental appearance of a container with an integrated, recessed handle feature in its base. Plaintiff's conception of "Grip-N-Grab Buckets," which improved upon his '221 Patent by applying a "tubular handle located at the bottom portion of... buckets." The concept was allegedly disclosed to Defendants under an NDA and formed the basis for the patented design. ¶¶ 21, 26, 38, 40, 58 '385 Patent, Figs. 1-5
A handle feature curved to conform with the base of a commercial container. The description from Plaintiff's provisional patent application, which taught a handle that is "Curved to conform with the base of the 5 gallon commercial container." p. 6 '385 Patent, Fig. 4

D762,032 Patent Inventorship Allegations

Claimed Design Feature (from Figs. 1-7) Alleged Plaintiff Contribution Complaint Citation Patent Citation
The overall ornamental appearance of a handle designed for integration into a bucket base. The patented design is alleged to be a "derivative" of Plaintiff's '221 Patent and his "Grip-N-Grab" concept. The complaint alleges Plaintiff "collaborated on the claims" with the named inventors. ¶¶ 51, 58 '032 Patent, Figs. 1-7
  • Identified Points of Contention:
    • Scope Questions: The core legal and factual question is whether Plaintiff's contribution amounted to conception of the specific ornamental designs claimed in the patents, or merely the general functional idea of a handle on the bottom of a bucket. For design patents, inventorship requires conception of the specific visual appearance.
    • Technical Questions: A central evidentiary question will be what specific "pictures, drawings, [and] designs" (Compl. ¶ 33) Plaintiff can prove he disclosed to the Defendants. The court would need to compare that evidence to the designs shown in the '385 and '032 patents to determine if Plaintiff conceived of the claimed designs. The complaint's allegation that Plaintiff "collaborated on the claims" (Compl. ¶ 58) suggests a joint inventorship theory that will depend on evidence of a significant contribution to the final design.

V. Key Issue for Determination: Conception of the Ornamental Design

As the patents-in-suit are design patents, the "claim" consists of the ornamental design as depicted in the drawings. There are no specific textual claim terms that require construction in the manner of a utility patent. Instead, the dispositive issue is the legal standard for inventorship of a design.

  • The Standard: Conception of an Ornamental Design
  • Context and Importance: The case will turn on whether Plaintiff can prove he conceived of the definite and permanent idea of the specific aesthetic appearance of the container and handle as claimed in the patents. Practitioners may focus on this issue because a contribution of only a general concept or functional goal, without contributing to the particular ornamental appearance, is insufficient to establish inventorship of a design patent.
  • Intrinsic Evidence for Plaintiff's Conception: The complaint alleges Plaintiff disclosed "proprietary pictures, drawings, designs, and intellectual property" to Defendants under an NDA (Compl. ¶ 33). It further cites language from his provisional application describing a handle "Curved to conform with the base of the 5 gallon commercial container" (Compl. p. 6). This language may be argued to show conception of a key feature of the claimed design in the '385 Patent.
  • Evidence for a Narrower View of Plaintiff's Contribution: The Defendants may argue that while Plaintiff suggested the functional concept of a bottom handle, the named inventors were solely responsible for creating the specific, non-functional, aesthetic choices that constitute the patentable ornamental design. The complaint does not include the specific drawings Plaintiff allegedly disclosed, making the content and detail of those disclosures a critical, and currently open, question of fact.

VI. Other Allegations

  • Misappropriation of Trade Secrets: The complaint alleges that Defendants used Plaintiff's confidential information and trade secrets, disclosed under an NDA, to "covertly [file] a utility patent application on the Grip-N-Grab Buckets" (Compl. ¶ 73).
  • Unfair and Deceptive Trade Practices: The complaint alleges Defendants engaged in unfair trade practices by "passing off the ‘385 Patent, ‘032 Patent, and utility patent application as intellectual property created solely by" the named inventors (Compl. ¶ 78) and by "intentionally and with deceptive intent, omitting Kevin McGarry as a named inventor on the ‘385 and ‘032 Patents" (Compl. ¶ 79).

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

  • A core issue will be one of conception versus general idea: Can Plaintiff produce corroborating evidence to demonstrate that he conceived of the specific ornamental appearance of the handles as claimed in the design patents, or was his contribution limited to the functional goal of a base handle, with the named inventors conceiving the particular aesthetic design?
  • A key evidentiary question will be the content of the disclosures: What specific "pictures, drawings, [and] designs" (Compl. ¶ 33) did Plaintiff actually disclose to Defendants, and does that evidence show a contribution to the final claimed designs that is "not insignificant in quality, when that contribution is measured against the dimension of the full invention"?
  • The dispute may also turn on the interpretation of prior agreements: How do the terms of the existing licensing agreements, particularly the definition of "invention" as including "derivative patent applications" (Compl. ¶ 94), impact the parties' rights and obligations regarding inventorship of the '385 and '032 patents?