DCT
0:18-cv-60237
Tikiz Franchising LLC v. Kona Ice Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Tikiz Franchising, LLC and Tikiz Enterprises, LLC (Florida)
- Defendant: Kona Ice, Inc. (Kentucky)
- Plaintiff’s Counsel: Law Offices of Mark C. Perry, P.A.
- Case Identification: 0:18-cv-60237, S.D. Fla., 02/02/2018
- Venue Allegations: Venue is alleged to be proper in the Southern District of Florida on the basis that Defendant Kona Ice, Inc. has over 40 franchisees operating in Florida, including within the judicial district.
- Core Dispute: Plaintiff seeks a declaratory judgment that its mobile confectionary kiosks do not infringe Defendant’s patents, that the patents are invalid and unenforceable, and that Defendant has breached a prior settlement agreement by suing Plaintiff's franchisees.
- Technical Context: The technology concerns mobile food trucks for selling frozen confections, with a specific focus on the design and placement of external, customer-accessible liquid topping dispensing systems.
- Key Procedural History: The parties have a significant litigation history. A 2012 patent infringement suit brought by Kona against Tikiz’s predecessor over a related patent (U.S. Patent No. 8,157,136) was resolved by a settlement agreement. Tikiz alleges that Kona used information about Tikiz’s subsequent kiosk redesign, disclosed as part of that settlement, to prosecute the patents-in-suit. The complaint further alleges that Kona made material misrepresentations to the U.S. Patent and Trademark Office to overcome a rejection based on Tikiz’s own published patent application, forming the basis for allegations of invalidity due to derivation and unenforceability due to inequitable conduct. This action follows Kona’s filing of at least 16 separate infringement suits against Tikiz’s franchisees.
Case Timeline
| Date | Event |
|---|---|
| 2007-07-16 | '136 Patent Provisional Application Filing Date |
| 2012-05-25 | Kona sues Tikiz predecessor over '136 Patent |
| 2012-07-27 | Tikiz files its own patent application ('679 Patent) |
| 2012-11-30 | Prior litigation dismissed following settlement agreement |
| 2013-02-27 | ’387 Patent Application Filing Date (Earliest priority for '387/'447 Patents) |
| 2015-09-30 | ’447 Patent Application Filing Date (Continuation of '387 Patent app) |
| 2016-04-26 | '387 Patent Issue Date |
| 2017-09-05 | '447 Patent Issue Date |
| 2018-02-02 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,751,447 - "Liquid Toppings Dispensing System"
- Patent Identification: U.S. Patent No. 9,751,447, “Liquid Toppings Dispensing System,” issued September 5, 2017.
The Invention Explained
- Problem Addressed: The patent’s background section identifies that profitability and customer satisfaction for mobile confectionary vendors are highly dependent on fast service, which can be hindered by the time customers, particularly children, take to select toppings (’447 Patent, col. 1:40-62).
- The Patented Solution: The invention proposes a mobile vehicle with a self-serve liquid toppings dispensing system located on the exterior of the vehicle. This allows the primary transaction to be completed at a service window, after which the customer can move to the separate station to apply their own toppings, thereby improving the flow of customers (’447 Patent, Abstract; col. 2:14-23). The system features a housing that is positioned "adjacent to, and opposing" the vehicle's side wall but is "spaced entirely laterally therefrom by a gap" (’447 Patent, cl. 1).
- Technical Importance: This design seeks to increase customer throughput by decoupling the core product sale from the more time-consuming topping selection process (’447 Patent, col. 1:62-65).
Key Claims at a Glance
- The complaint identifies independent claim 1 as asserted by Kona in its suits against Tikiz franchisees (Compl. ¶19).
- Essential elements of independent claim 1 include:
- A mobile confectionary apparatus comprising a vehicle with at least one upstanding side wall and an interior space for an operator.
- An opening through the side wall for passing items.
- A liquid toppings dispensing system with a housing and a plurality of liquid dispensers.
- The housing is "positioned adjacent to, and opposing, the at least one upstanding side wall."
- The system is in fluid communication with a reservoir holding the liquid topping.
- The system is "located externally of the at least one upstanding side wall and spaced entirely laterally therefrom by a gap."
- The complaint does not mention dependent claims.
U.S. Patent No. 9,321,387 - "Liquid Toppings Dispensing System"
- Patent Identification: U.S. Patent No. 9,321,387, “Liquid Toppings Dispensing System,” issued April 26, 2016.
The Invention Explained
- Problem Addressed: The patent addresses the same service-speed bottleneck at mobile confectionaries as the ’447 Patent (’387 Patent, col. 1:40-62).
- The Patented Solution: The invention is a mobile confectionary vehicle with an external liquid toppings dispensing system that is "pivotable relative to the rear wall via a hinge mechanism." This allows the system to be moved between a first position (e.g., extended for customer use) and a second position (e.g., folded against the vehicle for transport or use in confined spaces) (’387 Patent, Abstract; col. 2:24-38). The patent describes how this reconfigurability can provide an overall "lengthening" of the apparatus when deployed (’387 Patent, col. 4:18-21).
- Technical Importance: The claimed invention provides a reconfigurable external dispensing station, allowing the vehicle to adapt its operational footprint to different environments while retaining the throughput benefits of self-service toppings (’387 Patent, col. 4:30-42).
Key Claims at a Glance
- The complaint seeks a declaratory judgment of non-infringement and invalidity for the ’387 Patent generally but does not single out a specific claim (Compl. ¶¶32, 44-46). Independent claim 1 is representative.
- Essential elements of independent claim 1 include:
- A mobile confectionary apparatus comprising a vehicle with opposing side walls and a "fixed rear wall."
- A liquid toppings dispensing system that is "pivotable relative to the rear wall via a hinge mechanism."
- The system is pivotable between a first position (displaced away from the rear wall) and a second position (axis of dispensers is generally parallel to the rear wall).
- The system is located "externally of the at least one upstanding side wall in each of the first and second positions."
III. The Accused Instrumentality
Product Identification
- The "mobile kiosk" that Plaintiff Tikiz designs, builds, and provides to its franchisees for marketing frozen treats (Compl. ¶¶5, 30).
Functionality and Market Context
- The accused instrumentality is a truck outfitted for the mobile sale of frozen treats, such as flavored shaved ice (Compl. ¶5). The dispute centers on the design and placement of its customer-facing topping/flavoring system. Tikiz alleges that its kiosk design was changed in 2012 and again in 2016 in response to Kona’s patent enforcement activities (Compl. ¶¶10, 15). The complaint alleges that Kona’s infringement actions against Tikiz’s franchisees, based on these patents, have thwarted Tikiz's commercial activity and its ability to expand its franchise operations (Compl. ¶30). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
This is a declaratory judgment action where the Plaintiff (Tikiz) alleges non-infringement. The following chart summarizes the specific non-infringement contentions for the ’447 Patent made in the complaint.
'447 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality (per Tikiz) | Complaint Citation | Patent Citation |
|---|---|---|---|
| a liquid toppings dispensing system including a housing being positioned adjacent to, and opposing, the at least one upstanding side wall | The complaint alleges that the Tikiz mobile kiosk "lacks the limitations... namely 'a housing being positioned adjacent to, and opposing, the at least one upstanding side wall'" | ¶20 | col. 10:38-40 |
| 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 complaint alleges that the Tikiz mobile kiosk fails to meet this limitation. | ¶20 | col. 10:4-6 |
The complaint makes a general allegation of non-infringement for the ’387 Patent but does not provide a specific, element-by-element theory as it does for the ’447 Patent (Compl. ¶32). The central dispute for the ’387 Patent would likely concern whether the Tikiz kiosk has a dispensing system that is "pivotable relative to the rear wall" as claimed.
- Identified Points of Contention:
- Scope Questions: The dispute over the ’447 Patent raises the question of how the terms "adjacent to, and opposing" and "spaced entirely laterally therefrom by a gap" will be construed. The outcome may depend on whether these terms require a physically distinct, standalone unit set off from the truck body, or if they can read on a system that is more integrated into a recess or contour of the vehicle wall.
- Technical Questions: A central factual question is the actual physical configuration of the Tikiz mobile kiosk's dispensing system. As the complaint lacks any diagrams or photos, it is unclear how the system is mounted or integrated with the vehicle's side wall, making it difficult to assess Tikiz's non-infringement arguments without further evidence.
V. Key Claim Terms for Construction
For the ’447 Patent
The Term: "spaced entirely laterally therefrom by a gap"
Context and Importance: This term is critical because Tikiz explicitly alleges its kiosk does not meet this limitation (Compl. ¶20). The definition will determine whether a system mounted flush or within a recess of a truck wall can infringe.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification does not define a minimum size for the "gap." A party could argue any physical separation, however small, meets this limitation.
- Evidence for a Narrower Interpretation: The figures, such as Fig. 3A and Fig. 4B, depict a clear and distinct space between the housing (12) and the side/rear wall (20/26). The description of the system as "pivotable" in the related ’387 Patent (incorporated by reference) suggests a gap is necessary to accommodate movement (’387 Patent, Fig. 3A, arrow 58).
The Term: "housing being positioned adjacent to, and opposing, the at least one upstanding side wall"
Context and Importance: This is the other key phrase central to Tikiz's non-infringement defense (Compl. ¶20). Its construction will define the required spatial relationship between the dispenser and the vehicle.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: "Adjacent" could be read broadly to mean "next to" or "near," while "opposing" could mean generally "facing." This would cover a wide range of configurations.
- Evidence for a Narrower Interpretation: The term "opposing" may be construed more narrowly to require two substantially parallel surfaces facing each other. The figures consistently show the housing (12) as a distinct box-like structure separate from the main vehicle wall (’447 Patent, Figs. 1, 3A). A party could argue this precludes systems built into the wall itself.
VI. Other Allegations
The complaint does not allege infringement, but rather seeks a declaratory judgment of non-infringement and invalidity. The following points arise from that context and the extensive procedural history.
- Invalidity and Unenforceability: The complaint’s primary focus is on invalidating and rendering the patents unenforceable. It alleges that Kona derived the invention from a Tikiz redesign disclosed during a prior settlement (Compl. ¶21), constituting invalidity under pre-AIA 35 U.S.C. § 102(f). It further alleges that Kona’s inventor and attorney made false statements of inventorship and reduction to practice to the USPTO to overcome prior art, which forms the basis for a claim of inequitable conduct (Compl. ¶¶24, 26, 42, 48).
- Breach of Contract: Tikiz includes a claim for breach of the 2012 settlement agreement, alleging that Kona’s patent suits against Tikiz franchisees violate a "Release and Covenant not to Sue" granted to Tikiz and related persons (Compl. ¶¶10, 50).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of inventorship and derivation: Did Kona, as Tikiz alleges, improperly derive the claimed invention from a confidential disclosure of Tikiz’s redesigned kiosk? The case may turn on evidence surrounding the 2012 settlement and the subsequent prosecution of the ’387 and ’447 patents.
- A key question on infringement will be one of claim construction and factual evidence: Does the design of Tikiz’s current mobile kiosk meet the limitations of being "adjacent to, and opposing" the vehicle wall and "spaced entirely laterally therefrom by a gap"? The resolution will require a judicial construction of these terms and discovery into the kiosk's actual structure.
- A significant legal question will be the scope of the 2012 settlement agreement: Does the "Covenant not to Sue," as alleged by Tikiz, bar Kona from suing Tikiz’s franchisees for infringement of the later-issued ’387 and ’447 patents? The specific language of that confidential agreement will be dispositive.