DCT
1:18-cv-21406
Kona Ice Inc v. Bailey
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Kona Ice, Inc. (Kentucky)
- Defendant: Scott Bailey and Renee Bailey (Florida)
- Plaintiff’s Counsel: Boyles & Boyles, PLLC; Wood, Herron & Evans, LLP.
- Case Identification: 1:18-cv-21406, N.D. Fla., 09/21/2017
- Venue Allegations: Venue is based on Defendants' residence and principal place of business in Freeport, Florida, within the district.
- Core Dispute: Plaintiff alleges that Defendants’ mobile shaved ice truck infringes a patent related to an externally-mounted, customer-accessible liquid toppings dispensing system.
- Technical Context: The technology concerns the operational layout of mobile food service vehicles, specifically aiming to improve customer throughput by allowing self-service of toppings.
- Key Procedural History: The patent-in-suit issued on September 5, 2017, just 16 days prior to the filing of this complaint.
Case Timeline
| Date | Event |
|---|---|
| 2013-02-27 | ’447 Patent Priority Date (filing of parent application) |
| 2017-09-05 | '447 Patent Issue Date |
| 2017-09-21 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 9,751,447, “Liquid Toppings Dispensing System,” issued September 5, 2017.
The Invention Explained
- Problem Addressed: The patent describes a common issue for mobile confectionary vendors: long customer lines and reduced profitability caused by service delays. A specific bottleneck identified is the time customers, particularly children, take to select and have an employee apply various flavored toppings to items like shaved ice, which slows down the entire service process (’447 Patent, col. 1:40-65).
- The Patented Solution: The invention is a "mobile confectionary apparatus" (e.g., a food truck) featuring a liquid toppings dispensing system mounted on the vehicle's exterior. After a customer receives a plain confection from a service window, they can move to the separate, external station to self-apply one or more toppings from a plurality of dispensers (’447 Patent, col. 3:50-64). This parallelizes the transaction and topping application steps, aiming to increase the overall speed of service and customer throughput (’447 Patent, col. 3:58-64). The system is described as being located externally from the vehicle's interior workspace (’447 Patent, col. 4:59-63).
- Technical Importance: This design physically separates the order-taking and payment function from the final product customization step, a workflow optimization intended to increase revenue in high-volume, time-sensitive environments like festivals or events (’447 Patent, col. 1:46-56).
Key Claims at a Glance
- The complaint asserts independent Claim 1 and dependent Claims 2, 3, 4, 6, 7, and 10 (Compl. ¶11).
- Independent Claim 1 requires:
- A mobile confectionary apparatus, comprising: a vehicle with at least one upstanding side wall;
- An interior space surrounded by the side wall for at least one person;
- An opening through the side wall for passing an item from the interior to the exterior; and
- A liquid toppings dispensing system that includes a housing, is positioned adjacent to and opposing the side wall, has a plurality of liquid dispensers in fluid communication with a reservoir, and is located externally of the side wall and "spaced entirely laterally therefrom by a gap."
III. The Accused Instrumentality
Product Identification
- The "Defendants' Service Vehicle," a truck used to offer frozen treats, including flavored shaved ice (Compl. ¶¶9, 11).
Functionality and Market Context
- The complaint alleges the accused instrumentality is a mobile service truck that provides confections to customers (Compl. ¶14). The complaint includes a photograph of the accused vehicle, described as "Exhibit 2" (Compl. ¶9).
- The vehicle is alleged to include an interior space for an operator, a service window for passing items to customers, and an externally mounted liquid dispensing system (Compl. ¶¶16-18). This system is described as having "multiple spigots, enclosed by and supported by a frame," which customers use to dispense liquid flavoring onto their items (Compl. ¶18). The complaint alleges this external system is mounted on the outside of the truck with a space between it and the side wall (Compl. ¶18).
IV. Analysis of Infringement Allegations
'447 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A mobile confectionary apparatus, comprising: | Defendants' Service Vehicle is a mobile apparatus, being a service truck that can be moved and is used to provide confections. | ¶14 | col. 1:14-18 |
| a vehicle including at least one upstanding side wall; | The vehicle is a truck that incorporates at least one wall enclosing a rear portion. | ¶15 | col. 4:6-8 |
| 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. 4:55-59 |
| 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 vehicle has a window in the side wall used to pass items to customers. | ¶17 | col. 5:7-14 |
| and a liquid toppings dispensing system including a housing being positioned adjacent to, and opposing, the at least one upstanding side wall... | The vehicle includes a system with multiple spigots in a frame, positioned in close proximity to and opposing the side wall of the truck. | ¶18 | col. 5:16-24 |
| ...and including a plurality of liquid dispensers configured to dispense at least one liquid topping onto the item... | The system has more than one spigot used to dispense liquid flavoring. | ¶18 | col. 5:60-63 |
| ...each of the plurality of liquid dispensers being in fluid communication with at least one reservoir holding the at least one liquid topping... | The spigots are attached to containers holding liquid toppings via hoses. | ¶18 | col. 7:26-34 |
| ...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. The complaint references an image of the vehicle to support this spatial relationship (Compl. Exhibit 2). | ¶18 | col. 6:38-40 |
- Identified Points of Contention:
- Scope Questions: The complaint alleges the dispensing system is "adjacent to, and opposing, the... side wall" (Compl. ¶18). The patent figures depict an embodiment where the system is mounted to the rear wall, adjacent to a side wall corner (e.g., ’447 Patent, Fig. 3B). The resolution of the infringement question may depend on whether the accused vehicle's specific geometry meets the spatial limitations of "adjacent to" and "opposing" as they are construed.
- Technical Questions: A central factual question will be whether the accused dispensing system is "spaced entirely laterally therefrom by a gap," as required by Claim 1. The complaint alleges such a space exists (Compl. ¶18), but the nature and extent of this "gap" on the actual vehicle will be a critical evidentiary point.
V. Key Claim Terms for Construction
- The Term: "spaced entirely laterally therefrom by a gap"
- Context and Importance: This limitation, found at the end of Claim 1, appears designed to distinguish the invention from systems that might be flush-mounted or integrated directly into a vehicle's wall. The existence and sufficiency of a "gap" on the accused vehicle is a direct allegation in the complaint (Compl. ¶18) and will likely be a focal point of the infringement analysis.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term "gap" is not explicitly defined, which could support an argument that any discernible physical separation between the dispensing system housing and the vehicle wall meets the limitation, regardless of its size.
- Evidence for a Narrower Interpretation: The specification includes Figure 4B, which explicitly illustrates a "gap 39" showing a clear, unambiguous lateral spacing between the dispensing system (12) and the upstanding side wall (20). A defendant may argue that this figure illustrates the required character of the "gap," suggesting it must be a distinct, measurable lateral displacement, not merely a seam from surface mounting.
VI. Other Allegations
- Indirect Infringement: The prayer for relief seeks a judgment for induced infringement (Compl. ¶A, p. 6), but the factual allegations in Count I describe direct infringement by the Defendants through their "operation and use" of the service vehicle (Compl. ¶11). The complaint does not plead specific facts to support a theory of inducement, such as encouraging a third party to infringe.
- Willful Infringement: The complaint alleges willful infringement based on a theory of imputed knowledge (Compl. ¶20). It alleges that the Defendants are franchisees of a third party ("Tikiz") and that Tikiz "is aware of and monitors the patents owned by Kona Ice." The complaint argues that through this franchise relationship, the Defendants "are or should be aware" of Kona Ice's patent rights, including the '447 patent, which had issued only 16 days prior to the suit's filing (Compl. ¶20).
VII. Analyst’s Conclusion: Key Questions for the Case
The case presents several focused questions for the court:
A central evidentiary question will be one of physical configuration: Does the Defendants' service vehicle, as actually constructed, possess a liquid toppings dispensing system that is "spaced entirely laterally therefrom by a gap" as required by Claim 1? The outcome will depend on the physical evidence and the construction of this key claim phrase.
A key legal question will concern willfulness: Can the Plaintiff's theory of imputed knowledge—alleging that a franchisee should be aware of a competitor's patent because its franchisor is allegedly aware—suffice to establish the knowledge and intent required for willful infringement, particularly for a patent that issued just over two weeks before the complaint was filed?
Finally, the case may turn on a question of definitional scope: How will the court construe the spatial terms "adjacent to, and opposing, the at least one upstanding side wall"? The application of these terms to the specific layout of the accused vehicle, as depicted in the complaint's Exhibit 2 photograph, will be critical to the infringement determination.