DCT

9:22-cv-81723

Lerman Container Corp v. Greenlane Holdings LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 9:22-cv-81723, S.D. Fla., 11/03/2022
  • Venue Allegations: Venue is based on allegations that Defendants maintain a regular and established physical place of business in the district and have committed acts of infringement within the district.
  • Core Dispute: Plaintiff alleges that Defendants’ concentrate jar products infringe a U.S. design patent covering the ornamental design of a jar.
  • Technical Context: The dispute concerns the ornamental design of glass concentrate jars, a packaging component used across various consumer industries, including the cannabis accessories market.
  • Key Procedural History: The complaint notes that the patent-in-suit, U.S. Design Patent No. D781,151, was the subject of an ex parte reexamination requested by an anonymous party. The patentability of the claimed design was confirmed by the USPTO, and a Reexamination Certificate was issued on November 30, 2021. This proceeding may strengthen the patent's presumption of validity against the prior art considered. The complaint also alleges Plaintiff provided pre-suit notice of infringement to Defendant Pollen Gear.

Case Timeline

Date Event
2016-06-08 '151 Patent Priority Date (Filing Date)
2017-03-14 U.S. Design Patent No. D781,151 ('151 Patent) Issued
2018-01-31 Plaintiff sends notice of infringement to Pollen Gear
2019-01-14 Greenlane acquires Pollen Gear
2019-02-11 Ex Parte Reexamination of '151 Patent requested
2021-11-30 Reexamination Certificate for '151 Patent issued
2022-11-03 Complaint Filing Date

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

U.S. Patent No. D781,151 - "JAR"

  • Patent Identification: U.S. Design Patent No. D781,151 (the "'151 Patent"), titled "JAR", issued on March 14, 2017.

The Invention Explained

  • Problem Addressed: As a design patent, the patent does not articulate a technical problem. Instead, it presents a new, original, and ornamental design for an article of manufacture—in this case, a jar (Compl. ¶12; ’151 Patent, Claim). The complaint describes Plaintiff's commercial embodiment as an "elegant, symmetrical jar" (Compl. ¶12).
  • The Patented Solution: The patent protects the specific visual appearance of the jar as depicted in the solid lines of its seven figures (’151 Patent, FIGS. 1-7). The claimed design features a body with a wide, flat base that transitions to a narrower, threaded neck (’151 Patent, DESCRIPTION, col. 1:53-67). The broken lines in the drawings, which illustrate the interior of the jar and a portion of its bottom surface, indicate aspects that are not part of the claimed design (’151 Patent, DESCRIPTION, col. 1:62-67).
  • Technical Importance: The complaint alleges that Plaintiff is a "leading supplier" of jars to a wide spectrum of industries, suggesting that unique container designs serve as a key market differentiator (Compl. ¶10-11).

Key Claims at a Glance

  • The complaint asserts the single claim of the ’151 Patent (Compl. ¶40).
  • As is typical for a design patent, the claim is directed to the visual appearance of the article: "The ornamental design for a jar, as shown and described" (’151 Patent, Claim). The scope is defined by the patent's drawings rather than a list of textual elements.

III. The Accused Instrumentality

Product Identification

  • The complaint identifies Defendants' "LoPro 5ml Jar" and "Pollen Gear's Ecliptic Concentrate Jar" as the "Infringing Jars" (Compl. ¶25, ¶26, ¶28).

Functionality and Market Context

  • The accused products are jars marketed and sold by Defendants, including through Defendant Pollen Gear, which the complaint identifies as a "supplier of child-resistant packaging to the cannabis industry" (Compl. ¶21, ¶22). The complaint provides an image from Greenlane's 2022 wholesale catalog showing the accused "LoPro" and "Ecliptic" jar products (Compl. ¶29). Plaintiff alleges these jars are "virtually identical" to the design protected by the ’151 Patent (Compl. ¶25).

IV. Analysis of Infringement Allegations

The complaint alleges that the accused jars are "nearly identical" to the patented design and that "an ordinary observer would be deceived into thinking" the accused jar is the one depicted in the patent (Compl. ¶27). This language directly invokes the legal standard for design patent infringement.

The complaint includes a side-by-side visual comparison of the patented design and an accused LoPro Jar, highlighting their alleged similarity in overall appearance (Compl. ¶26). Another image displays the accused "Ecliptic Concentrate Jar," which also appears to share the core design features (Compl. ¶28).

Claimed Ornamental Design (U.S. Patent No. D781,151) Alleged Infringing Functionality Complaint Citation Patent Citation
The overall ornamental design for a jar as shown in solid lines in FIGS. 1-7, characterized by its proportions, including a wide circular base, a concave transition to a cylindrical body, and a threaded neck. The complaint alleges the accused LoPro and Ecliptic jars embody an overall design that is "virtually identical" or "nearly identical" to the patented design, such that an ordinary observer would be deceived. ¶25, ¶27 col. 1:53-67

Identified Points of Contention

  • Scope Questions: The primary legal question is whether the accused designs are "substantially the same" as the patented design in the eyes of an ordinary observer. The analysis will compare the overall visual impression of the designs, not minor differences. The prior art that was overcome during the patent's ex parte reexamination will be relevant to determining the scope of the claimed design and the significance of any differences between the patented and accused designs.
  • Technical Questions: A key factual question is whether any visual differences between the accused jars and the patent drawings are significant enough to defeat a finding of infringement. The analysis will focus on the ornamental features shown in solid lines in the patent's figures, as these constitute the protected design.

V. Key Claim Terms for Construction

The Term

  • "The ornamental design for a jar, as shown and described."

Context and Importance

  • Practitioners recognize that formal claim construction, as conducted for utility patents, is generally not performed for design patents. The "claim" is understood to be the design itself as depicted in the drawings. The central legal inquiry is not the definition of a word but a visual comparison of the accused product to the patented design.

Intrinsic Evidence for Interpretation

  • The patent specification provides the primary guide for understanding the claim's scope.
    • Evidence for a Broader Interpretation: The claim is for the design as a whole, not any single feature. An argument could be made that the overall visual impression should govern, and minor deviations should not avoid infringement.
    • Evidence for a Narrower Interpretation: The description explicitly states that "The broken lines shown in the drawings are included for the purpose of illustrating portions of the article that form no part of the claimed design" (’151 Patent, col. 1:62-67). This statement expressly limits the scope of the protected design to the elements shown in solid lines.

VI. Other Allegations

Indirect Infringement

  • The complaint alleges induced and contributory infringement, stating that Defendants provide the "Infringing Jars to distributors or retailers" with the intent that they resell the infringing products (Compl. ¶50, ¶52). This allegation is supported by claims of Defendants' knowledge of the ’151 Patent (Compl. ¶52).

Willful Infringement

  • Willfulness is alleged based on Defendants' purported knowledge of the ’151 Patent and their continued infringement despite that knowledge (Compl. ¶34, ¶42). The complaint asserts pre-suit knowledge based on a notice letter sent to Pollen Gear on January 31, 2018, and alleges Greenlane gained knowledge upon its acquisition of Pollen Gear (Compl. ¶32, ¶33).

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

  • A core issue will be one of visual comparison: In the eye of an ordinary observer, is the overall ornamental appearance of Defendants' LoPro and Ecliptic jars substantially the same as the design claimed in the '151 Patent?
  • A second key question will involve the impact of prior art on infringement: How will the prior art that the '151 Patent survived during reexamination inform the infringement analysis? The court will likely focus on whether the similarities between the accused and patented designs reside in the novel ornamental aspects of the patent or in more conventional features.
  • Finally, should infringement be found, a central question for damages will be willfulness: Do the allegations of a pre-suit notice letter to Pollen Gear and Greenlane's subsequent acquisition of the company support a finding of willful infringement, potentially leading to enhanced damages or an award of the infringer's total profits?