Kona Ice Inc v. Hodgson

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Kona Ice, Inc. (Kentucky)
  • Defendant: Derek Hodgson and Kelly Hodgson (Texas)
  • Plaintiff’s Counsel: WOLFE, TIDWELL & McCOY, LLP; Wood, Herron & Evans, LLP.
• Case Identification: 4:17-cv-00667, E.D. Tex., 09/21/2017
• Venue Allegations: Venue is alleged to be proper because the Defendants reside in the district and have a regular and established place of business within the district.
• Core Dispute: Plaintiff alleges that Defendants’ mobile shaved ice truck infringes a patent related to a mobile confectionary apparatus featuring an external, customer-accessible liquid toppings dispensing system.
• Technical Context: The technology addresses operational efficiency in the mobile food vendor industry by allowing customers to apply their own toppings, thereby reducing service times and customer queues.
• Key Procedural History: The patent-in-suit, which is subject to a terminal disclaimer, is a continuation of a prior application that issued as U.S. Patent No. 9,321,387. The complaint alleges willfulness based on Defendants' status as franchisees of a competitor, Tikiz, through which they allegedly were or should have been aware of Plaintiff's patent rights.

Case Timeline

Date	Event
2013-02-27	'447 Patent Priority Date
2017-09-05	'447 Patent Issue Date
2017-09-21	Complaint Filing Date

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

U.S. Patent No. 9,751,447 - Liquid Toppings Dispensing System

• Issued: September 5, 2017

The Invention Explained

• Problem Addressed: The patent background identifies long wait times as a key challenge for mobile confectionary vendors, noting that the process of applying toppings and accommodating customer (especially children's) choices can slow down service and deter potential customers (’447 Patent, col. 2:41-65).
• The Patented Solution: The invention proposes a mobile confectionary vehicle, such as a truck, equipped with an external liquid toppings dispensing system (’447 Patent, Abstract). After an employee serves a base product (e.g., shaved ice) from a service window, the customer can move to the external station to self-apply various liquid toppings, which is intended to increase the overall speed of service and customer throughput (’447 Patent, col. 4:51-60). The patent also describes embodiments where this external system is pivotable, allowing it to be repositioned for transport or use in confined spaces (’447 Patent, col. 2:27-31).
• Technical Importance: This design aims to improve the profitability of mobile food businesses by increasing customer satisfaction and the number of customers that can be served in a given period (’447 Patent, col. 2:63-65).

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 of the ’447 Patent recites the following essential elements for a mobile confectionary apparatus:
  • A vehicle including at least one upstanding side wall;
  • An interior space surrounded by the side wall and configured to receive at least one person;
  • An opening through the side wall for passing an item from the interior to the outside; and
  • A liquid toppings dispensing system with a housing and a plurality of liquid dispensers, where the system is positioned adjacent to and opposing the side wall, in fluid communication with a reservoir, located externally of the side wall, and "spaced entirely laterally therefrom by a gap."

III. The Accused Instrumentality

Product Identification

The accused instrumentality is identified as "Defendants' Service Vehicle," a truck used to offer and sell frozen treats like flavored shaved ice (Compl. ¶¶9, 14).

Functionality and Market Context

The complaint alleges the accused vehicle is a mobile truck with an interior space for an operator, a window for serving customers, and an external system for dispensing liquid flavorings (Compl. ¶¶15-18). This external system is described as having "multiple spigots, enclosed by and supported by a frame" (Compl. ¶18). The complaint states, on information and belief, that the Defendants operate as a franchisee of Tikiz Shaved Ice & Ice Cream (Compl. ¶20).

IV. Analysis of Infringement Allegations

The complaint's infringement theory relies on mapping the features of the Defendants' vehicle, as allegedly shown in an image attached as Exhibit 2, to the elements of Claim 1. The complaint includes a photograph of the accused vehicle, described as an "image of Defendants' Service Vehicle," which serves as the primary visual evidence for the infringement allegations (Compl. ¶9, Ex. 2).

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 mobile service truck that incorporates at least one wall enclosing a rear portion of the truck.	¶¶14, 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. 4:64-col. 5:1
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 inside the rear portion.	¶17	col. 5:8-14
and a liquid toppings dispensing system including a housing... a plurality of liquid dispensers... in fluid communication with at least one reservoir...	The vehicle includes multiple spigots in a frame to dispense liquid flavoring, with each spigot attached via a hose to containers that house the liquid toppings.	¶18	col. 6:60-63; col. 7:30-32
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 truck's side wall.	¶18	col. 6:35-39

• Identified Points of Contention:
  • Technical Questions: A central evidentiary question is whether the accused vehicle's dispensing system is, in fact, "spaced entirely laterally" from the truck's side wall "by a gap," as required by the claim. The complaint alleges there is "a space between it and the side wall of the truck" (Compl. ¶18), but the sufficiency of this "space" to meet the "gap" limitation, which the patent specification illustrates in Figure 4B, will likely be a point of dispute. The infringement analysis appears to depend heavily on the content of the photograph in Exhibit 2.
  • Scope Questions: The case raises the question of how broadly the term "mobile confectionary apparatus" can be read. While its application to a shaved ice truck seems direct, any dual use or alternative function of the accused vehicle could be raised to challenge this characterization.

V. Key Claim Terms for Construction

• The Term: "spaced entirely laterally therefrom by a gap"
• Context and Importance: This phrase defines the specific spatial relationship between the core components of the claimed apparatus. The infringement case hinges on whether the accused vehicle's configuration meets this limitation. Practitioners may focus on this term because the patent specification explicitly illustrates a "gap 39" in a figure depicting a pivotable embodiment, suggesting the term may have a specific functional significance (’447 Patent, col. 6:35-39, Fig. 4B).
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party could argue that the plain and ordinary meaning of "gap" is simply any discernible space, and "entirely" means that no portion of the dispenser housing is in physical contact with the vehicle side wall.
  • Evidence for a Narrower Interpretation: A party could argue that the term should be read in light of the specification's disclosure of a pivotable system, where the gap facilitates movement (’447 Patent, col. 6:35-44). This might support a construction requiring a space sufficient to enable such functionality, rather than just any minimal separation.

VI. Other Allegations

• Indirect Infringement: The complaint's prayer for relief requests a judgment of induced and contributory infringement (Compl., Prayer ¶A). However, the body of the complaint does not provide specific factual allegations detailing acts of inducement (e.g., instructions to another party) or contributory infringement (e.g., sale of a non-staple component).
• Willful Infringement: Willfulness is alleged based on Defendants' status as a franchisee of Plaintiff's competitor, Tikiz. The complaint posits that through this relationship, Defendants "are or should be aware" of Kona Ice's patents generally, and "may be aware" of the ’447 patent specifically (Compl. ¶20). These allegations appear to assert pre-suit knowledge based on industry awareness and a competitor relationship.

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

• A key evidentiary question will be one of physical configuration: does the accused vehicle, as depicted in the complaint's Exhibit 2 and in reality, possess a dispensing system that is "spaced entirely laterally" from the vehicle wall "by a gap"? The resolution of this issue will depend on the factual evidence of how the system is mounted.
• The case will likely involve a central issue of claim construction: whether the term "gap," as used in Claim 1, requires only a minimal physical separation, or if the patent's specification constrains its meaning to a more substantial space tied to the disclosed functionality of a pivotable system.
• A significant legal question for the willfulness claim will be sufficiency of pleading: whether the allegation that a defendant "should be aware" of a patent portfolio due to its status as a competitor's franchisee is sufficient to plausibly plead the knowledge required for willful infringement.