DCT
1:18-cv-04566
Southern Visions LLP v. Red Diamond Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Southern Visions, LLP (Alabama)
- Defendant: Red Diamond, Inc. (Alabama)
- Plaintiff’s Counsel: Thomas Horstemeyer L.L.P.
- Case Identification: 1:18-cv-04566, N.D. Ga., 09/28/2018
- Venue Allegations: Plaintiff alleges venue is proper in the Northern District of Georgia because Defendant maintains a regular and established physical place of business, conducts business, owns property, and has committed acts of infringement within the district.
- Core Dispute: Plaintiff alleges that Defendant’s "Simple Sweet Tea" product infringes five patents related to pre-packaged, single-use pouches containing a blend of tea and sugar for consistent beverage brewing.
- Technical Context: The technology addresses the market for consistent, large-batch sweet tea preparation in commercial settings, aiming to replace manual, often inconsistent, addition of sugar after brewing.
- Key Procedural History: The complaint alleges that the parties engaged in unsuccessful licensing negotiations prior to the issuance of the asserted patents. Following the filing of the complaint, Inter Partes Review (IPR) proceedings were initiated against several of the asserted patents. The lead asserted claims of U.S. Patent Nos. 9,468,222; 9,468,330; 9,549,634; and 9,725,232 were subsequently cancelled, a development that substantially impacts the viability of the infringement claims for those specific patents.
Case Timeline
| Date | Event |
|---|---|
| 2013-04-22 | Earliest Priority Date for all Asserted Patents |
| 2016-01-XX | Plaintiff and Defendant allegedly begin licensing negotiations |
| 2016-04-XX | Negotiations terminated by Defendant |
| 2016-10-18 | '222 and '330 Patents Issue |
| 2016-10-19 | Defendant allegedly requests license to newly issued patents |
| 2016-11-01 | Plaintiff sends formal notice letter for '222 and '330 Patents |
| 2017-01-24 | '634 Patent Issues |
| 2017-08-08 | '232 Patent Issues |
| 2018-09-11 | '852' Patent (10,071,852) Issues |
| 2018-09-28 | Complaint Filed |
| 2022-01-21 | IPR Certificates issue cancelling asserted claims of '222, '330, '634, and '232 patents |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,468,222 - "Tea Brewing and Sweetening Product and Process," issued October 18, 2016
The Invention Explained
- Problem Addressed: The patent's background describes the lack of consistency in commercial tea brewing, where sugar is manually added to brewed tea, resulting in varying sweetness levels from one batch to the next. ( '222 Patent, col. 1:11-40).
- The Patented Solution: The invention is a single-use, water-permeable mesh pouch containing a pre-blended mixture of tea particles and sugar granules of a specific size. ('222 Patent, Abstract). When placed in a brewing basket, hot water steeps both ingredients simultaneously, dissolving the sugar and extracting the tea to produce a consistent, concentrated sweet tea solution directly. ('222 Patent, col. 4:25-34).
- Technical Importance: This approach aims to streamline commercial beverage preparation by combining the brewing and sweetening steps, thereby improving consistency and efficiency. ('222 Patent, col. 1:41-44).
Key Claims at a Glance
- The complaint asserts at least Claim 1. (Compl. ¶17).
- Independent Claim 1 requires:
- A water permeable mesh pouch for placement in a brewing basket.
- Tea particles and sugar granules contained in the pouch.
- Sugar granules sized within the range of U.S. mesh sieve nos. 3-35.
- Mesh openings smaller than the tea and sugar particles to retain them.
- The tea and sugar being brewed and dissolved in the basket by hot water to produce a concentrated sweet tea solution.
- The complaint reserves the right to assert claims 1-24. (Compl. ¶41). It should be noted that an Inter Partes Review Certificate (IPR2019-01661) indicates that Claim 1 has been cancelled.
U.S. Patent No. 9,468,330 - "Domestic Sweet Tea Brewing Product and Process," issued October 18, 2016
The Invention Explained
- Problem Addressed: Similar to the '222 Patent, the '330 Patent addresses inconsistent sweetness in both commercial and domestic tea preparation. ('330 Patent, col. 1:15-20).
- The Patented Solution: The patent describes a product for producing a concentrated sweet tea solution that is subsequently mixed with a proportioned amount of water. ('330 Patent, Abstract). The core of the invention remains a permeable pouch containing a blend of tea and specifically-sized sugar granules that are steeped together in hot water. ('330 Patent, col. 4:29-35).
- Technical Importance: This method allows for the creation of a shelf-stable or easily-stored concentrate, providing flexibility for making single servings or larger batches of sweet tea with consistent sweetness. ('330 Patent, col. 3:4-8).
Key Claims at a Glance
- The complaint asserts at least Claim 1. (Compl. ¶21).
- Independent Claim 1 requires:
- A water permeable pouch for placement in a container.
- Tea particles and sugar granules contained in the pouch.
- Sugar granules sized within the range of U.S. mesh sieve nos. 3-35.
- Permeable pouch openings smaller than the tea and sugar for retention.
- Extraction and dissolution of the tea and sugar in the container during steeping to produce a concentrated solution to be mixed with water.
- The complaint reserves the right to assert claims 1-12. (Compl. ¶42). An Inter Partes Review Certificate (IPR2019-01671) indicates that Claim 1 has been cancelled.
U.S. Patent No. 9,549,634 - "Domestic Sweet Tea Brewing Product and Process," issued January 24, 2017
- Technology Synopsis: This patent is technologically similar to the '330 Patent, describing a product for creating a concentrated sweet tea solution for later dilution. The claims use the term "sieve" instead of "pouch" to describe the container for the tea and sugar granules. ('634 Patent, Abstract, Claim 1).
- Asserted Claims: At least Claim 1. (Compl. ¶25). An Inter Partes Review Certificate (IPR2020-00001) indicates that Claim 1 has been cancelled.
- Accused Features: The "Simple Sweet Tea" product is alleged to function as a "water permeable sieve" containing tea and sugar for producing a concentrate. (Compl. ¶24).
U.S. Patent No. 9,725,232 - "Beverage Brewing Product," issued August 8, 2017
- Technology Synopsis: This patent broadens the invention to a general "beverage brewing product" rather than just tea. It claims a water-permeable "sieve" containing "beverage material" and granulated sugar for producing a sweetened beverage. ('232 Patent, Abstract).
- Asserted Claims: At least Claim 17. (Compl. ¶29). An Inter Partes Review Certificate (IPR2019-01662) indicates that Claim 17 has been cancelled.
- Accused Features: The "Simple Sweet Tea" product is alleged to be a "beverage brewing product" comprising a "sieve" with "beverage material" (tea) and sugar. (Compl. ¶28).
U.S. Patent No. 10,071,852 - "Beverage Brewing Product," issued September 11, 2018
- Technology Synopsis: The complaint alleges this patent covers a beverage brewing product with a "water permeable sieve" containing beverage particles and "uncoated granulated sugar." The size limitation for the sugar granules is specified as "U.S. mesh sieve no. 35 or lower." (Compl. ¶32). Note: The complaint is internally inconsistent, referencing both '852 patents 10,017,852 and 10,071,852; the latter is technologically consistent with the family and is presumed to be the correct patent-in-suit.
- Asserted Claims: At least Claim 13. (Compl. ¶33).
- Accused Features: The "Simple Sweet Tea" product is alleged to contain "uncoated granulated sugar" of the claimed size within a water-permeable sieve. (Compl. ¶32).
III. The Accused Instrumentality
Product Identification
- Defendant’s "Simple Sweet Tea" product. (Compl. ¶15).
Functionality and Market Context
- The complaint describes the "Simple Sweet Tea" product as a tea brewing product designed for use in a brewing machine. (Compl. ¶16). It allegedly consists of a water-permeable mesh pouch (or sieve) that contains a mixture of tea particles and sugar granules. (Compl. ¶16, ¶24).
- The functionality alleged is that hot water passes through the pouch, steeping the tea and dissolving the sugar simultaneously to create a sweet tea solution or concentrate. (Compl. ¶16, ¶20). The complaint specifically alleges the sugar granules in the product are within the size range claimed by the patents. (Compl. ¶16(3)).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint references preliminary infringement contention exhibits that were not provided. The following analysis is based on the narrative allegations in the complaint body.
'222 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a sweet tea brewing product for brewing and sweetening tea in a brewing basket of a tea making machine, comprising: (1) a water permeable mesh pouch for placing in a brewing basket during brewing | Defendant's Simple Sweet Tea product is described as being for brewing sweet tea and includes a water permeable mesh pouch. | ¶16(1) | col. 4:5-9 |
| (2) tea particles and sugar granules contained in said mesh pouch | The accused product's mesh pouch is alleged to contain tea particles and sugar granules. | ¶16(2) | col. 4:11-12 |
| (3) wherein the size of the sugar granules is in the range of U.S. mesh sieve nos. 3-35 | The complaint alleges the sugar granules in the accused product are within this specific size range. | ¶16(3) | col. 4:50-53 |
| (4) with the mesh pouch having openings smaller than the size of the sugar granules and tea particles for retention thereof | The accused product's mesh pouch is alleged to have openings appropriately sized to retain the tea and sugar. | ¶16(4) | col. 2:51-54 |
| (5) the tea particles and sugar granules being brewed and dissolved in the brewing basket during steeping...to produce a concentrated sweet tea solution delivered from the basket | The accused product is alleged to operate by having its tea and sugar brewed and dissolved by hot water in the brewing basket. | ¶16(5) | col. 4:25-34 |
'330 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A sweet tea brewing product for producing a concentrated sweet tea solution for mixing with a proportioned amount of water to make sweet tea, comprising: (1) a water permeable pouch for placing in a container | The accused product is alleged to produce a concentrated sweet tea solution and to comprise a water permeable pouch. | ¶20(1) | col. 4:56-60 |
| (2) tea particles and sugar granules contained in the pouch | The pouch of the accused product allegedly contains both tea particles and sugar granules. | ¶20(2) | col. 4:32-34 |
| (3) wherein the size of the sugar granules is in the range of U.S. mesh sieve nos. 3-35 | The sugar granules in the accused product are alleged to be within the specified size range. | ¶20(3) | col. 5:14-16 |
| (4) with the mesh pouch having openings smaller than the size of the sugar granules and tea particles for retention thereof | The accused product's pouch is alleged to have openings sized to retain the contents. | ¶20(4) | col. 3:1-4 |
| (5) the tea particles and sugar granules are extracted and dissolved in the container during steeping...whereby a concentrated sweet tea solution is produced to be mixed with a proportioned amount of water | The intended use of the accused product is alleged to involve steeping in hot water to create a concentrate that is later mixed with water to make sweet tea. | ¶20(5) | col. 4:45-55 |
Identified Points of Contention
- Claim Viability: The most significant issue is that the asserted claims from the '222, '330, '634, and '232 patents have been cancelled via IPR. An action cannot be maintained on cancelled claims, raising the fundamental question of how the case can proceed on these four patents without amendment to assert any surviving claims.
- Factual Scope: For any surviving claim, a central question will be factual: does the granulated sugar in Defendant's "Simple Sweet Tea" product actually have a particle size distribution that falls "in the range of U.S. mesh sieve nos. 3-35" as required by the claims? (Compl. ¶16(3)). This is a specific, testable limitation that will likely be a focus of expert discovery.
V. Key Claim Terms for Construction
The Term: "mesh pouch" ('222 Patent) / "sieve" ('634 Patent)
- Context and Importance: The patents in the family use different terms for the container holding the tea and sugar. The '222 Patent claims a "mesh pouch," while later patents like the '634 Patent claim a "sieve." The definitional relationship between these terms is critical; if "sieve" is construed more broadly than "pouch," it could alter the infringement analysis for different patents.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specifications appear to use the terms to describe the same functional object—a water-permeable container for holding solids during brewing. A party might argue that "sieve" is a generic term encompassing a "mesh pouch." ('634 Patent, col. 3:3-7, describing a "filtering means").
- Evidence for a Narrower Interpretation: A party could argue that "pouch" implies a flexible, bag-like structure as shown in the figures ('222 Patent, Fig. 2), while "sieve" could be construed to include rigid structures. The choice to use different terms in different patents of the same family may suggest an intended difference in scope.
The Term: "wherein the size of said sugar granules is in the range of U.S. mesh sieve nos. 3-35" ('222 Patent, Claim 1)
- Context and Importance: This limitation is the core technical differentiator claimed by the patents. The patent argues that using these larger-than-standard sugar granules is key to achieving simultaneous and complete dissolution with the tea. ('222 Patent, col. 4:50-57). Infringement hinges on whether the accused product's sugar meets this specific size requirement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation (or Plaintiff's likely view): A plaintiff might argue that the claim is met if a substantial or effective portion of the sugar granules fall within this range, or if the average granule size is within the range.
- Evidence for a Narrower Interpretation (or Defendant's likely view): The claim language "wherein the size of the sugar granules is in the range" suggests that all, or nearly all, of the granules must fall within the specified range. A defendant could argue that if their product contains a significant amount of sugar outside this range (e.g., smaller, standard-size granules), it does not meet the limitation as claimed.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement, stating that Defendant has had knowledge of the patents since at least November 1, 2016, and provides instructions on its website and with its products that direct customers to use the "Simple Sweet Tea" product in an infringing manner (i.e., in a brewing machine). (Compl. ¶52-53, 59).
- Willful Infringement: The complaint alleges a strong basis for willfulness. It claims Defendant had pre-suit knowledge of Plaintiff's technology from licensing negotiations in early 2016, that Defendant requested a license to the patents the day after they issued, and that Plaintiff sent a formal notice letter. (Compl. ¶34, 36-37, 46). The complaint further alleges that Defendant proceeded to "copy Southern Visions technology." (Compl. ¶35).
VII. Analyst’s Conclusion: Key Questions for the Case
- A primary issue for the court will be one of procedural viability: Given that the specific claims asserted against four of the five patents-in-suit were cancelled in post-filing IPR proceedings, can Plaintiff maintain its action on those patents? The case may depend on whether Plaintiff can amend its complaint to assert other, surviving claims from those patents.
- For any surviving claims, the central dispute will likely be a question of fact: Does the accused "Simple Sweet Tea" product contain sugar granules that fall within the specific size range of "U.S. mesh sieve nos. 3-35," as strictly required by the patent claims?
- A secondary legal question will be one of claim scope: How should the court construe the term "sieve" as used in the later patents in relation to the term "mesh pouch" in the earlier patent, and does this distinction impact the infringement analysis?