DCT
1:25-cv-22836
Nitrocream LLC v. Chill N Nitrogen Ice Cream Franchising LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: NitroCream LLC (Washington)
- Defendant: CHILL-N NITROGEN ICE CREAM FRANCHISING LLC, et al. (Florida)
- Plaintiff’s Counsel: Bochner PLLC
- Case Identification: 1:25-cv-22836, S.D. Fla., 08/27/2025
- Venue Allegations: Venue is alleged to be proper in the Southern District of Florida on the basis that a substantial part of the events giving rise to the claims occurred in the district.
- Core Dispute: Plaintiff alleges that Defendants’ method of making nitrogen-based ice cream for its franchisees and customers infringes a patent related to a method for making ice cream using cryogenic liquefied gas.
- Technical Context: The technology concerns methods for making ice cream products on-demand by flash-freezing ingredients with a cryogenic liquid, such as liquid nitrogen, in a process designed to be a visual spectacle for customers.
- Key Procedural History: The complaint details a prior business relationship where Defendants were licensees of the patent-in-suit. This license was terminated by Defendants in July 2020, based on an assertion that the patent was invalid due to a final rejection during an ex parte reexamination. The patent subsequently survived reexamination with amended claims in October 2020, a fact Plaintiff allegedly communicated to Defendants. The infringement allegations center on Defendants' activities after terminating the license.
Case Timeline
| Date | Event |
|---|---|
| 2002-12-03 | ’868 Patent Priority Date |
| 2008-11-25 | U.S. Patent No. 7,455,868 Original Issue Date |
| 2018-10-17 | "Chill-N Agreement" license executed between Plaintiff and Defendants |
| 2018-11-29 | Request for ex parte reexamination of the ’868 Patent filed with USPTO |
| 2020-05-20 | USPTO issues final rejection of ’868 Patent claims during reexamination |
| 2020-07-06 | Defendants terminate license agreement, citing patent invalidity |
| 2020-10-26 | Reexamination Certificate for ’868 Patent issued, confirming validity of amended claims |
| 2020-12-02 | Plaintiff allegedly notifies Defendants that the ’868 Patent emerged from reexamination with valid claims |
| 2021-03-29 | Earliest date alleged for Defendants' advertising of "patent & patent pending processes" |
| 2025-08-27 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,455,868 C1 - "Apparatus and Method for Making Ice Cream Products"
- Patent Identification: U.S. Patent No. 7,455,868 C1, "Apparatus and Method for Making Ice Cream Products," originally issued November 25, 2008, and amended via a Reexamination Certificate issued October 26, 2020.
The Invention Explained
- Problem Addressed: The patent's background describes traditional ice cream preparation as occurring well in advance of sale, precluding customers from selecting custom ingredients at the time of their order (’868 Patent, col. 1:15-21). Prior art methods for on-demand production using liquid nitrogen utilized closed containers, which failed to create a visually engaging customer experience (’868 Patent, col. 1:26-33).
- The Patented Solution: The invention is a method for making ice cream products by mixing ingredients with a cryogenic liquefied gas in an open container. This approach is designed to produce visible clouds of cold vapor, creating an "unusual, pleasing spectacle" that entertains the customer and makes them part of the experience (’868 Patent, col. 2:40-43; Abstract). The process is explicitly intended to be performed where customers can see and feel the vapor (’868 Patent, col. 2:27-34).
- Technical Importance: The claimed method combines on-demand food customization with experiential retail, turning the production process itself into a marketable feature.
Key Claims at a Glance
- The complaint asserts independent Claim 1 and dependent claims 2, 4, 6, 7, 9, 10, 11, 12, and 13 (Compl. ¶90).
- The essential elements of the reexamined independent Claim 1 include:
- placing ingredients of the ice cream product into a container having an open top;
- Using a control valve to selectively dispense a cryogenic liquefied gas from a cryogenic tank into the container through a line having an opening mounted above the ingredients;
- Mechanically mixing, with a powered mixer, the ingredients with the cryogenic liquefied gas in the open top container while flowing the gas;
- Freezing the ingredients with the gas while mixing to produce the ice cream product;
- transferring, after freezing, the ice cream product from the container to a serving container;
- Wherein a sufficient amount of liquefied gas is introduced to produce a visible amount of cryogenic vapor flowing from the open top of the container; and
- Wherein the powered mixer comprises a support having a bottom surface positioned on a work surface, with the bottom surface configured to support the container above the work surface.
- The complaint also asserts infringement of several dependent claims adding further limitations (Compl. ¶90).
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is the "method of making an ice cream product" practiced and taught by Defendants Chill-N through their franchise system (Compl. ¶34, ¶91).
Functionality and Market Context
- The complaint alleges that Defendants' process involves using a commercial stand mixer with an open-top bowl, into which ingredients are placed (Compl. ¶35). Liquid nitrogen is then dispensed from an overhead line, controlled by a valve, into the bowl while the mixer is operating (Compl. ¶38, ¶42). The process is performed in view of customers and generates significant amounts of visible vapor (Compl. ¶39, ¶41). A photo provided in the complaint shows Defendants' in-store signage advertising that Chill-N "operates under patent & patent pending processes" (Compl. p. 15, ¶47). Defendants are alleged to be direct competitors of the Plaintiff and to require franchisees to pay a monthly "IP Fee" for use of the "Patent" as part of the franchise system (Compl. ¶18, ¶51).
IV. Analysis of Infringement Allegations
'868 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| placing ingredients of the ice cream product into a container having an open top | Defendants' method includes placing solid ingredients and other mix-ins into an open-top mixing bowl. A video still shows a hand adding ingredients to a metal bowl. (Compl. p. 8). | ¶35-36 | col. 4:10-12 |
| Using a control valve to selectively dispense a cryogenic liquefied gas ... through a line having an opening mounted above the ingredients | Defendants use an apparatus with a control valve to dispense liquid nitrogen from a tank through an overhead line into the mixing bowl. The complaint includes annotated photos pointing to these components. (Compl. p. 10). | ¶38 | col. 4:12-17 |
| Mechanically mixing, with a powered mixer, the ingredients with the cryogenic liquified gas ... while flowing the cryogenic liquified gas | Defendants use a powered stand mixer to agitate the ingredients while the liquid nitrogen is being dispensed into the bowl. | ¶42 | col. 4:18-21 |
| Freezing, with the cryogenic liquified gas, the ingredients while mixing ... to produce the ice cream product | The liquid nitrogen freezes the ingredients as they are being mixed by the powered mixer. | ¶44 | col. 2:49-51 |
| transferring, after freezing, the ice cream product from the container to a serving container | After the product is frozen, it is transferred from the mixing bowl to a separate serving container to be given to the customer. | ¶44 | col. 3:50-54 |
| Wherein a sufficient amount of the liquified gas ... is introduced ... to produce a visible amount of cryogenic vapor flowing from the open top of the container | The process creates a large, visible cloud of vapor that flows from the mixing bowl. A photograph from a Yelp review shows the production area filled with vapor. (Compl. p. 11). | ¶39 | col. 4:21-24 |
| Wherein the powered mixer comprises a support having a bottom surface positioned on a work surface, the bottom surface being configured to support the container above the work surface | Defendants use a stand mixer with a base that rests on a countertop and is configured to hold the mixing bowl. An annotated image labels the "SUPPORT" and "WORK SURFACE" of the accused setup. (Compl. p. 13). | ¶43 | col. 2:56-57 |
Identified Points of Contention
- Scope Questions: Several limitations in asserted Claim 1, including the "transferring... to a serving container" step and the specific "powered mixer... support" structure, were added during reexamination. A central question may be whether Defendants' process invariably includes these exact steps and configurations, or if there are variations in practice across franchises that might fall outside the scope of the amended claims. The prosecution history leading to these amendments may be critical in defining their scope.
- Technical Questions: The complaint's evidence relies heavily on publicly available videos and photographs. A potential point of contention is whether this evidence provides a complete and technically accurate depiction of every step required by the claims. For instance, the precise interplay between the "flowing" and "mixing" steps may be scrutinized to determine if they occur simultaneously as required by the claim language.
V. Key Claim Terms for Construction
- The Term: "transferring, after freezing, the ice cream product from the container to a serving container"
- Context and Importance: This limitation was added to independent Claim 1 during reexamination. Its interpretation will be critical because if Defendants can show that they sometimes serve the product directly from the mixing bowl (the initial "container"), or that their process does not always include this "transferring" step, it could support a non-infringement defense.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification discusses the finished product being "scooped out of the container and moved to another container for serving" ('868 Patent, col. 3:50-52), which supports a plain meaning of the term.
- Evidence for a Narrower Interpretation: The same passage in the specification also contemplates an alternative where the ice cream is "made in a disposable container that the customer can carry out" ('868 Patent, col. 3:52-54). While this alternative is not part of the reexamined claim, a defendant may argue it informs the context and that the patentee's choice to add the "transferring" limitation during reexamination implies a strict requirement that two distinct containers must be used.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement through Defendants' Franchise Agreements, operations manuals, and training, which allegedly instruct franchisees to use the patented method (Compl. ¶92-94). It further alleges that the specific equipment systems specified by Defendants for franchisees have no substantial non-infringing uses and were designed to practice the claimed method, supporting a claim for contributory infringement (Compl. ¶95-96).
- Willful Infringement: Willfulness allegations are based on Defendants' alleged knowledge of the ’868 Patent through their prior license agreement. The complaint asserts that after Plaintiff notified Defendants on December 2, 2020, that the patent had survived reexamination with valid claims, Defendants' continued infringement became willful (Compl. ¶60, ¶98, ¶104).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of prosecution history estoppel: How will the specific limitations added to Claim 1 during reexamination—particularly the "transferring" step and the "mixer support" configuration—affect the infringement analysis? The case may turn on whether Defendants' accused method, as practiced across its franchises, meets every element of the narrowed, post-reexamination claims.
- A second central question will be one of scienter and bad faith: Given the detailed factual allegations of a prior licensing relationship, a termination based on a mistaken belief of invalidity, and a subsequent notice that the patent remained valid, the litigation will likely focus heavily on whether Defendants' post-notification conduct rises to the level of willful infringement, potentially exposing them to enhanced damages.