DCT
1:18-cv-21403
Kona Ice Inc v. Liu
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Kona Ice, Inc. (Kentucky)
- Defendant: Al Liu (Colorado)
- Plaintiff’s Counsel: Ogborn Mihm, LLP; Wood Herron & Evans, L.L.P.
- Case Identification: 1:17-cv-02301, D. Colo., 09/22/2017
- Venue Allegations: Venue is alleged to be proper in the District of Colorado because the Defendant, an individual, resides in and has a principal place of business in Aurora, Colorado, constituting a regular and established place of business within the district.
- Core Dispute: Plaintiff alleges that Defendant’s mobile service vehicle, used for selling frozen treats, infringes a patent related to an external, self-serve liquid toppings dispensing system.
- Technical Context: The technology relates to the design of mobile food service vehicles, specifically aiming to increase customer throughput by allowing customers to apply their own flavorings at a separate station.
- Key Procedural History: The patent-in-suit is subject to a terminal disclaimer over a related, earlier patent (U.S. Pat. No. 9,321,387), which may be relevant for claim scope and potential obviousness-type double patenting analysis. The complaint was filed only 17 days after the patent issued.
Case Timeline
| Date | Event |
|---|---|
| 2013-02-27 | U.S. Patent No. 9,751,447 Priority Date |
| 2017-09-05 | U.S. Patent No. 9,751,447 Issued |
| 2017-09-22 | Complaint Filed |
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 background identifies that profitability in the mobile confectionary industry depends on fast service, but service lines are often slowed down by customers, particularly children, taking a long time to select flavorings for products like shaved ice (’447 Patent, col. 1:41-65).
- The Patented Solution: The invention is a mobile confectionary vehicle (e.g., a truck) with a liquid toppings dispensing system mounted to its exterior (’447 Patent, Abstract). This configuration creates a two-step service flow: an employee serves a base confection from a window, and the customer then moves to the external, self-serve dispensing system to apply their own toppings, which is intended to reduce wait times and increase customer throughput (’447 Patent, col. 3:51-64). The system is described as being located externally and separate from the main service window.
- Technical Importance: This design attempts to solve a business process problem (customer queueing) with a specific structural apparatus, separating the core transaction from the time-consuming customization step.
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 2, 3, 4, 6, 7, and 10 (’447 Patent, col. 9:28 - col. 10:46; Compl. ¶11).
- Independent Claim 1 requires:
- A mobile confectionary apparatus, comprising:
- a vehicle including at least one upstanding side wall;
- an interior space surrounded by the at least one upstanding side wall and configured to receive at least one person;
- an opening extending through the at least one upstanding side wall and through which an item may be passed from the interior space to outside of the vehicle; and
- a liquid toppings dispensing system including a housing being positioned adjacent to, and opposing, the at least one upstanding side wall and including a plurality of liquid dispensers...
- each of the plurality of liquid dispensers being in fluid communication with at least one reservoir holding the at least one liquid topping,
- 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 reserves the right to assert additional claims (’447 Patent, col. 9:28 - col. 10:46; Compl. ¶11).
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is identified as "Defendant's Service Vehicle," a truck used to offer frozen treats, including flavored shaved ice (Compl. ¶9).
Functionality and Market Context
- The complaint alleges the Defendant's vehicle is a mobile apparatus that includes an interior space for an operator, a service window for passing items to customers, and an external system for dispensing liquid flavorings (Compl. ¶¶14-18). An image of the vehicle is provided as Exhibit 2, which shows a truck with a side-mounted, multi-spigot dispensing station separate from the main service window (Compl. ¶9, Ex. 2). The complaint alleges the Defendant operates as a franchisee of Tikiz Shaved Ice & Ice Cream and/or Tikiz Franchising, LLC (Compl. ¶20).
IV. Analysis of Infringement Allegations
’971,447 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A mobile confectionary apparatus, comprising: a vehicle including at least one upstanding side wall; | The accused instrumentality is a service truck that can be moved and incorporates at least one wall enclosing a rear portion of the truck. The complaint references an image of this vehicle in Exhibit 2 (Compl. ¶9, Ex. 2). | ¶¶14, 15 | col. 3:4-8 |
| an interior space surrounded by the at least one upstanding side wall and configured to receive at least one person; | The rear portion of the truck is designed to allow at least one person to be present therein. | ¶16 | col. 3:64 - col. 4:1 |
| an opening extending through the at least one upstanding side wall and through which an item may be passed from the interior space to outside of the vehicle; | The truck has a window in the side wall that is used to pass items to customers from the inside of the rear portion of the truck. | ¶17 | col. 5:8-14 |
| and a liquid toppings dispensing system including a housing being positioned adjacent to, and opposing, the at least one upstanding side wall and including a plurality of liquid dispensers... each... in fluid communication with at least one reservoir... | The vehicle includes a system with multiple spigots, enclosed by a frame, used to dispense liquid flavoring. This system is in close proximity to the side wall. The spigots are attached through hoses to containers that house the liquid toppings. | ¶18 | col. 7:1-9 |
| 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 dispensing system is mounted on the outside of the truck, with a space between it and the side wall of the truck. | ¶18 | col. 9:3-5 |
- Identified Points of Contention:
- Technical Questions: A central question may be whether the accused vehicle's dispenser, described as "multiple spigots, enclosed by and supported by a frame," meets the claim requirement of a "housing" (Compl. ¶18). The analysis may turn on the specific structure of the accused dispenser versus the embodiments described in the patent (e.g., ’447 Patent, Fig. 3A).
- Scope Questions: The complaint's allegation for the "spaced entirely laterally therefrom by a gap" limitation is that the system "is mounted on the outside of the truck, and there is a space between it and the side wall of the truck" (Compl. ¶18). This raises the question of whether any space suffices, or if the claim term, in light of the specification, requires a more specific structural separation or a gap of a particular nature (e.g., ’447 Patent, Fig. 4B, element 39).
V. Key Claim Terms for Construction
Term: "a liquid toppings dispensing system including a housing"
- Context and Importance: This term defines the core apparatus of the invention. The scope of "housing" will be critical, as the complaint alleges infringement based on a system "enclosed by and supported by a frame" (Compl. ¶18). Practitioners may focus on this term because the defendant could argue that a simple frame is not a "housing" as contemplated by the patent, which shows a more substantial, enclosed structure.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification does not provide an explicit definition of "housing," which could support giving the term its plain and ordinary meaning, potentially encompassing a frame that encloses the components.
- Evidence for a Narrower Interpretation: The patent figures consistently depict the housing (44) as a box-like enclosure with distinct side, front, and back panels that contains the dispensing components and protects them (e.g., ’447 Patent, Figs. 3A, 4A, 5A-C). The specification also describes the housing as having "utility access openings" and a "door," features which may suggest a more substantial structure than a simple frame (’447 Patent, col. 7:15-16, col. 7:61-63).
Term: "spaced entirely laterally therefrom by a gap"
- Context and Importance: This limitation spatially defines the relationship between the dispensing system and the vehicle wall, and appears to be a key element distinguishing the invention. The infringement analysis depends on whether the physical space on the accused truck qualifies as the claimed "gap."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself does not specify the size or nature of the "gap," which may support an interpretation that any physical separation between the dispensing system and the side wall meets the limitation.
- Evidence for a Narrower Interpretation: Figure 4B explicitly labels a "gap 39" between the side wall (20) and the dispensing system (12), showing a clear, unobstructed air gap when the system is in a particular position (’447 Patent, Fig. 4B). A defendant may argue this embodiment limits the term to a similar, distinct separation, rather than merely the incidental space resulting from mounting one object onto another.
VI. Other Allegations
Indirect Infringement
- The prayer for relief seeks a judgment that the Defendant induced infringement, but the body of the complaint does not contain a separate count for indirect infringement or allege specific facts supporting the required element of intent to cause infringing acts by others (Compl. p. 5, ¶A).
Willful Infringement
- The complaint alleges willful infringement based on the theory that the Defendant, as a franchisee of Tikiz, "is or should be aware" that Tikiz "is aware of and monitors the patents owned by Kona Ice" (Compl. ¶20). This allegation appears to predicate knowledge on the Defendant's business relationship with a third-party franchisor.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of structural interpretation: Does the accused vehicle’s external dispenser, described as being supported by a "frame," constitute a "housing" as required by Claim 1? And does the physical separation between that dispenser and the truck wall satisfy the specific limitation of being "spaced entirely laterally therefrom by a gap"? The resolution will likely depend on claim construction.
- A key pleading and evidentiary question will be one of imputed knowledge: Do the complaint’s allegations—that a franchisee "is or should be aware" of a patent because its franchisor allegedly monitors the patentee's portfolio—satisfy the pleading requirements for pre-suit knowledge to support a claim of willful infringement?