DCT
8:23-cv-02976
Thousand Oaks Barrel Co LLC v. Partnerships Companies Unincorp Associations
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Thousand Oaks Barrel Co., LLC (Virginia)
- Defendant: The Partnerships, Companies, and Unincorporated Associations Identified on Schedule A (jurisdictions unknown)
- Plaintiff’s Counsel: WHITESTONE LAW PLLC
- Case Identification: 8:23-cv-02976, E.D. Va., 11/16/2023
- Venue Allegations: Venue is alleged based on Defendants’ sales of accused products into the Eastern District of Virginia through interactive e-commerce websites and, for non-U.S. defendants, as foreign entities subject to suit in any judicial district.
- Core Dispute: Plaintiff, the exclusive licensee, alleges that numerous online sellers of cocktail smoker devices infringe a patent directed to a device for imparting smoked flavors to beverages and foodstuffs.
- Technical Context: The technology addresses the market for cocktail and culinary accessories, specifically devices that allow a user to quickly infuse smoke from burning wood chips directly into a beverage in a glass.
- Key Procedural History: The complaint is filed against a schedule of largely unidentified defendants who sell products on e-commerce platforms like Amazon. Plaintiff alleges it is the exclusive licensee with the right to enforce the patent. The complaint includes a parallel count for federal trade dress infringement based on Plaintiff's "Foghat" product line. An allegation is made that Plaintiff's CEO encountered a Chinese factory owner at a 2023 convention offering to sell products that would fall under the patent's claims.
Case Timeline
| Date | Event |
|---|---|
| 2020-11-20 | '256 Patent Application Filing Date |
| c. 2020-11 | First advertisement/sale of Plaintiff's "Foghat" product |
| 2023-09-05 | '256 Patent Issue Date |
| 2023-11-16 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,744,256
- Patent Identification: U.S. Patent No. 11,744,256, "Device and method for Imparting Smoked Flavors to Beverages and Foodstuffs," issued September 5, 2023.
The Invention Explained
- Problem Addressed: The patent's background describes prior art methods for smoking beverages as cumbersome and indirect. For example, methods using a large glass box to envelop a drinking glass resulted in unwanted smoke residue on the outside of the glass, while methods using a burning wood stave could only smoke an empty, inverted glass, not an actual beverage. (’256 Patent, col. 1:14-38).
- The Patented Solution: The invention is a compact device designed to sit directly on top of a drinking glass. It features an upper fuel chamber to hold combustible material (e.g., wood chips) and a lower conduit portion that extends down into the glass. When the fuel is ignited, the device's geometry is designed to facilitate a downward flow of smoke through the conduit and out of one or more apertures directly into the container, infusing the beverage or foodstuff inside. (’256 Patent, Abstract; col. 2:5-14; Fig. 7).
- Technical Importance: The design provides a self-contained, portable, and direct method for infusing smoke into a liquid already present in its serving container, aiming to simplify the process for both professional and home use. (’256 Patent, col. 1:39-46).
Key Claims at a Glance
- The complaint asserts infringement of claims 1-19, and identifies claims 1, 9, and 10 as independent claims (Compl. ¶¶ 21, 31).
- The essential elements of independent claim 1 include:
- A base having a fuel chamber portion at its upper end and a conduit portion at its lower end.
- The fuel chamber portion includes an upper wall portion and a floor with an opening.
- The fuel chamber portion is oriented to hold fuel.
- The conduit portion is disposed below the floor and has a channel.
- The channel is configured to facilitate the downward flow of smoke from the ignited fuel.
- The smoke exits through at least one aperture that extends from the channel through a wall of the conduit portion.
- The complaint reserves the right to assert all claims, including dependent claims (Compl. ¶¶ 31, 52).
III. The Accused Instrumentality
Product Identification
- The accused products are "various smoker devices for imparting smoked flavors to cocktail beverages and foods," sold by numerous defendants on e-commerce platforms (Compl. ¶22). The complaint identifies an exemplary product as the "Cocktail Smoker Kit Including Torch & 4 Flavors Wood Chips" sold by Defendant Doe#68 (Compl. ¶28).
Functionality and Market Context
- The accused products are sold as kits, often including the smoker device, a butane torch, and various types of wood chips (Compl. ¶28, p. 8). Based on the complaint's photographic evidence, the device is a single piece of wood shaped to sit on a glass, with a top recess for wood chips and a lower portion that extends into the glass (Compl. ¶28, pp. 9-10). The complaint alleges that these products are flooding online marketplaces and are often manufactured in and imported from China (Compl. ¶¶ 15, 18).
IV. Analysis of Infringement Allegations
'256 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a base having a fuel chamber portion at its upper end and a conduit portion at its lower end | The complaint identifies the main body of the accused device as the "base," which has an upper "fuel chamber portion" and a lower "conduit portion." An annotated photograph depicts these components (Compl. ¶28, p. 9). | ¶28 | col. 6:18-24 |
| the fuel chamber portion comprising an upper wall portion defining a perimeter edge...and a floor defining a bottom end...the floor extending from the upper wall portion to an opening in the floor | The complaint presents a photograph pointing to the "upper wall portion" and the "floor" of the accused device's top recess (Compl. ¶28, p. 9). | ¶28 | col. 6:20-22 |
| wherein the fuel chamber portion is oriented to hold fuel | An instructional image shows the accused device's upper recess holding wood chips (Compl. ¶28, p. 10). | ¶28 | col. 6:25 |
| wherein the conduit portion is disposed below the floor and comprises a channel through the conduit portion | An annotated image explicitly labels the lower part of the accused device as the "conduit portion...disposed below the floor" and comprising a channel (Compl. ¶28, p. 10). | ¶28 | col. 6:27-34 |
| so that, when the fuel...is ignited, the channel facilitates flow of smoke down-ward...through at least one aperture that extends from the channel space through a wall of the conduit portion | A sequence of "How to Use" images shows a user igniting wood chips with a torch, causing smoke to flow downward and exit the device into the glass below (Compl. ¶28, p. 10). | ¶28 | col. 6:29-34 |
- Identified Points of Contention:
- Scope Questions: Claim 1 recites "a base having a fuel chamber portion... and a conduit portion." The accused product appears to be a single, unitary piece. A potential question for the court is whether this unitary construction meets the "base having" limitation, or if the claim requires a more complex assembly of distinct components.
- Technical Questions: The complaint's evidence consists of publicly available product photography, which does not detail the internal geometry of the accused device's "floor" or the apertures in the conduit. A factual question will be whether the internal structure of the actual products matches the specific geometric relationships required by the claims, such as the floor extending "from the upper wall portion to an opening in the floor."
V. Key Claim Terms for Construction
The Term: "base"
- Context and Importance: This term appears in the preamble of independent claim 1. Its construction is critical because the accused product is alleged to be a single, monolithic piece of wood. Practitioners may focus on this term because its construction will determine whether a unitary body can satisfy the "base having a fuel chamber portion... and a conduit portion" limitation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification refers to the overall lower assembly as "base 102" and states it "can be formed with a...fuel chamber portion 106...and a...conduit portion 108," suggesting the base is the entire structure incorporating these features ('256 Patent, col. 3:8-20). The figures also depict the base as a single integrated unit ('256 Patent, Figs. 1, 3).
- Evidence for a Narrower Interpretation: A party could argue that "base" implies a foundational or separate support structure to which the other portions are attached. However, the specification's language that the base is "formed with" the other portions may weigh against such a narrow construction.
The Term: "floor"
- Context and Importance: Claim 1 requires a "floor defining a bottom end" of the fuel chamber. The specific structure of this element is central to how the device separates fuel from the smoke channel. The precise definition of "floor" will be critical to the infringement analysis, as its shape and relationship to the "opening" are key limitations.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term could be construed broadly to mean any surface at the bottom of the fuel chamber. The specification notes that in some embodiments the "floor 112 rise and screen upper portion 122 may be flat" ('256 Patent, col. 4:67-68).
- Evidence for a Narrower Interpretation: The specification also describes a specific embodiment where the "inner base floor 112' can be disposed at a rising angle" away from the opening ('256 Patent, col. 4:35-37; Fig. 5B). A party might argue that this disclosed geometry is integral to the invention's function of funneling fuel, potentially limiting the scope of the term "floor" to such angled constructions.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement under 35 U.S.C. § 271(b), stating that Defendants provide the accused products "with instructions, which are used for imparting smoked flavors" (Compl. ¶34). The "How To Use" graphics from the e-commerce listing, which show the step-by-step process of using the device, are presented as evidence supporting this claim (Compl. ¶28, p. 10).
- Willful Infringement: Willfulness is alleged based on Defendants having "been willfully infringing...since at least as early as they became aware of the Patents-in-Suit" (Compl. ¶39). The complaint further alleges that Plaintiff’s CEO met a Chinese factory owner at a 2023 convention who was offering infringing products for wholesale, which may be used to argue pre-suit knowledge (Compl. ¶18).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of claim construction: Can the term "base having a fuel chamber portion... and a conduit portion," as recited in claim 1, be construed to read on the single, unitary wooden bodies of the accused products? The resolution of this question may significantly impact the infringement analysis for the entire suit.
- A key procedural and enforcement question is viability: Given the defendants are a large number of unidentified, and potentially foreign, online sellers operating through third-party platforms, a core challenge for the plaintiff will be the practical ability to identify, serve, establish jurisdiction over, and ultimately enforce a judgment against this diffuse and anonymous network of actors.
- A final question will be evidentiary: Beyond the surface-level marketing images, what will an inspection of the actual accused products reveal about their internal geometry? The factual determination of whether these products contain a "floor" and "apertures" that meet the specific structural and functional limitations of the asserted claims will be critical.