DCT
1:19-cv-05058
Smokewarenet LLC v. Premier Specialty Brands LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Smokeware.net, LLC (Florida)
- Defendant: Premier Specialty Brands, LLC d/b/a Kamado Joe (Delaware)
- Plaintiff’s Counsel: Thomas | Horstemeyer LLP
- Case Identification: 1:19-cv-05058, N.D. Ga., 11/07/2019
- Venue Allegations: Venue is alleged to be proper in the Northern District of Georgia because Defendant resides there, maintains a regular and established place of business, has committed alleged acts of infringement in the district, and a substantial part of the events giving rise to the claim occurred there.
- Core Dispute: Plaintiff alleges that Defendant’s "Kontrol Tower" top vent cap for kamado-style grills infringes a patent related to an adjustable, weather-resistant vented chimney cap system.
- Technical Context: The technology concerns accessories for kamado-style ceramic grills, specifically vented chimney caps designed to provide precise temperature control while preventing rain from entering the grill.
- Key Procedural History: The complaint alleges that in May 2013, a Smokeware representative met with a Kamado Joe co-founder to discuss a potential business relationship, provided a sample of Smokeware’s chimney cap for testing, and disclosed that Smokeware had pending patent applications for the product. Kamado Joe allegedly declined to purchase the product and, in or around 2017, released its own redesigned cap, the accused product.
Case Timeline
| Date | Event |
|---|---|
| 2012-02-23 | '693 Patent Priority Date |
| 2013-05-23 | Email from Smokeware to Kamado Joe discussing a meeting and testing of Smokeware's chimney cap |
| 2015-05-19 | '693 Patent Application Filing Date |
| 2017-04-11 | '693 Patent Issue Date |
| 2019-11-07 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 9,615,693, “Vented Chimney Cap System and Method Thereof,” issued April 11, 2017 (’693 Patent).
- The Invention Explained:
- Problem Addressed: The patent's background section describes an issue with conventional chimney openings on kamado-style grills: they are susceptible to weather elements like rain, sleet, and hail, which can enter the grill and interfere with the cooking process (’693 Patent, col. 1:40-47).
- The Patented Solution: The invention is a two-part chimney cap system designed to solve this problem. It consists of a tubular base member that mounts on the grill's chimney and a separate cap member that sits on and rotates relative to the base (’693 Patent, col. 2:50-56). The cap member has a cover that overhangs the assembly to shed rain, while vents in both the cap and base can be aligned or misaligned by rotating the cap, allowing for fine control over the amount of hot gas and smoke that escapes (’693 Patent, col. 2:15-24; Fig. 1).
- Technical Importance: This design allows a user to precisely regulate cooking temperature by adjusting airflow while simultaneously protecting the cooking chamber from precipitation, a combination of features not offered by the prior "daisy wheel" style caps (’693 Patent, col. 1:36-47).
- Key Claims at a Glance:
- The complaint asserts infringement of at least independent Claim 1 (’693 Patent, col. 12:40-54).
- The essential elements of independent Claim 1 are:
- A base member with an open top, open bottom, and a base member vent having a "first geometry."
- A cap member with a cover, a cap member vent having a "second geometry," where the second geometry is "different relative to the first geometry."
- The cap member is "slidingly engaged" with and "rotatable relative to" the base member to regulate gas flow by aligning the vents.
- An "annular gasket disposed within the base member" that "frictionally resist[s] removal of the base member when...installed."
- The complaint does not explicitly reserve the right to assert dependent claims, but the infringement allegations are for "one or more claims of the '693 Patent" (Compl. ¶27).
III. The Accused Instrumentality
- Product Identification: The accused product is the "Kontrol Tower top vent cap," also referred to as the "Kontrol Tower" (Compl. ¶24).
- Functionality and Market Context: The Kontrol Tower is a redesigned chimney cap for Kamado Joe grills, offered as standard equipment on newer models and as a replacement part for older models that used a "daisy wheel" style cap (Compl. ¶¶24, 26). The complaint alleges the Kontrol Tower provides features similar to the patented invention, including a cover to prevent rain from entering the grill, the ability to maintain vent settings when the grill dome is opened, and a gasket to prevent the cap from falling off the chimney (Compl. ¶25). A photograph provided in the complaint shows the Accused Product, the Kamado Joe Kontrol Tower, which has a distinct multi-part construction with adjustable side vents (Compl. p. 7, Photograph of a Kontrol Tower).
IV. Analysis of Infringement Allegations
'693 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a base member comprising an open top, an open bottom and a base member vent, the base member vent having a first geometry | The Kontrol Tower includes a base with an open top, open bottom, and a vent with a first geometry. | ¶34(i) | col. 5:8-20 |
| a cap member comprising a cover member, a cap member vent positioned within the cap member and having a second geometry, wherein the second geometry is different relative to the first geometry | The Kontrol Tower includes a cap that has a cover and a vent with a second geometry that is different from the geometry of the base vent. | ¶34(ii) | col. 7:3-9 |
| wherein said cap member is slidingly engaged with said base member such that said cap member is rotatable relative to said base member, and an alignment of the cap member vent with the base member vent regulates...smoke and...hot gasses flowing through the vents | The Kontrol Tower's cap slidingly engages with the base, rotates relative to it, and the alignment of the respective vents regulates the flow of smoke and hot gasses. | ¶34(iii) | col. 11:18-24 |
| and an annular gasket disposed within the base member, the annular gasket frictionally resisting removal of the base member when the base member is installed | The Kontrol Tower has an annular gasket inside its base that creates a friction fit to resist removal of the base from a Kamado Joe grill. | ¶34(iv) | col. 11:46-54 |
- Identified Points of Contention:
- Scope Questions: The claim requires that the cap vent geometry be "different relative to" the base vent geometry. A central question will be how the court defines "different." The complaint does not specify the geometries of the accused product's vents, raising the question of whether any variation meets this limitation or if a more specific type of difference, as disclosed in the patent's embodiments (e.g., rectangular vs. asymmetrical), is required.
- Technical Questions: The complaint alleges the Kontrol Tower has an "annular gasket within the base that frictionally resists...removal." The factual inquiry will focus on the existence, location, and function of the gasket in the accused product. The court will need to determine if the accused gasket is "annular," if it is "disposed within the base member" as claimed, and if its primary function is to "frictionally resist removal," as opposed to merely sealing against smoke leakage.
V. Key Claim Terms for Construction
The Term: "second geometry is different relative to the first geometry"
- Context and Importance: This term is a point of novelty recited in the claim. The infringement analysis will depend heavily on whether the specific vent geometries of the Kontrol Tower are found to be "different" in the manner required by the claim. Practitioners may focus on this term because its interpretation could either broadly cover many two-part vent designs or narrow the claim scope to the specific asymmetrical/symmetrical pairings shown in the patent's figures.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim uses the general term "different" without further qualification, which may support a construction that encompasses any non-identical shape between the base and cap vents.
- Evidence for a Narrower Interpretation: The specification provides specific examples where this difference is material to the function, such as pairing an asymmetrical, tapering base vent (35) with a rectangular cap vent (24) to achieve "fine tuning" of airflow ('693 Patent, col. 7:3-9, col. 8:36-45; Fig. 14). A party could argue this context limits the term "different" to geometries that are not just superficially distinct but functionally complementary in this specific way.
The Term: "annular gasket disposed within the base member"
- Context and Importance: This limitation defines a specific structural element and its location. The presence and placement of a corresponding gasket in the accused product is a critical factual question for infringement. Practitioners may focus on this term because its construction will dictate what physical arrangement meets the claim, turning on the precise meanings of "annular," "disposed within," and the gasket's primary function.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term "within" could be read broadly to mean anywhere inside the vertical confines of the base member's structure. The specification notes the base member may be secured using "an annular seal or gasket 17" ('693 Patent, col. 6:41-42), suggesting its presence is the key feature.
- Evidence for a Narrower Interpretation: Claim 2, which depends from Claim 1, further specifies "the annular gasket being disposed between the base member and the portion of the chimney received in the base member" ('693 Patent, col. 12:55-58). This language, along with figures showing the gasket (17) creating a friction fit on the grill's chimney (98) inside the base member (10), suggests "disposed within" requires the gasket to be located on the interior surface of the base member's bore to engage the grill chimney ('693 Patent, Fig. 3).
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement, stating that Kamado Joe provides instructions on how to install and use the Kontrol Tower in an infringing manner and directs its customers and distributors to do so (Compl. ¶¶29, 40-41). It also alleges contributory infringement, asserting the Kontrol Tower is "especially made for" infringing use with Kamado Joe grills and has "no substantial non-infringing use" (Compl. ¶¶30, 51).
- Willful Infringement: The complaint alleges deliberate and willful infringement based on both pre- and post-suit knowledge (Compl. ¶37). The claim of pre-suit knowledge is based on a May 2013 meeting where Kamado Joe's co-founder was allegedly given a sample of Plaintiff's product and put on notice of its pending patent applications, years before Defendant launched the accused Kontrol Tower (Compl. ¶¶20-24).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this dispute may turn on two central questions:
A core issue will be one of definitional scope: Can the claim term "different," referring to vent geometries, be construed broadly to cover any non-identical shapes, or is its meaning limited by the patent's disclosure to a specific functional pairing of asymmetrical and symmetrical vents?
A key evidentiary question will be one of structural and functional correspondence: Does the accused Kontrol Tower contain an "annular gasket" that is "disposed within the base member" and functions to "frictionally resist removal" in the precise manner claimed, or is there a material difference in the location, structure, or primary purpose of the gasket used in the accused product?