1:18-cv-00531
Huhtamaki Inc v. Blue Apple Marketing LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Huhtamaki, Inc. (Kansas)
- Defendant: Blue Apple Marketing, LLC (Idaho)
- Plaintiff’s Counsel: Husch Blackwell LLP
- Case Identification: 1:18-cv-00531, D. Idaho, 11/27/2018
- Venue Allegations: Plaintiff Huhtamaki, Inc. alleges that venue is proper in the District of Idaho because the defendant, Blue Apple Marketing, LLC, is an Idaho limited liability company that resides in the judicial district.
- Core Dispute: Plaintiff seeks a declaratory judgment that its disposable food plates do not infringe Defendant's design patent for a segmented food plate, and further alleges that the patent-in-suit is invalid in light of prior art.
- Technical Context: The dispute centers on the ornamental design of disposable, multi-compartment food plates used in the institutional foodservice market, such as for school lunch programs.
- Key Procedural History: The lawsuit was precipitated by a September 14, 2018 cease and desist letter from Blue Apple to Huhtamaki, which included a draft complaint threatening litigation in the Eastern District of Texas. Following an exchange of correspondence where Huhtamaki asserted non-infringement and invalidity, Huhtamaki filed this declaratory judgment action.
Case Timeline
| Date | Event |
|---|---|
| 1950-08-02 | T. W. Kyte files application for prior art dish design (later U.S. D168,161) |
| 1952-11-11 | U.S. Design Patent D168,161 ('161 Patent) issues to T. W. Kyte |
| c. 1970s | Pukeberg Glasbruk plate (prior art) allegedly designed and manufactured |
| c. 1980s | STAUB Fondue plate (prior art) allegedly designed and sold |
| c. 1996 | The Chinet Company begins selling a prior art segmented plate |
| 2013-01-25 | Application filed for the '370 Patent |
| 2013-11-01 | NYCDOE allegedly distributes bid request with photo of Blue Apple plate |
| 2014-01-14 | U.S. Design Patent D697,370 ('370 Patent) issues |
| 2017-02-01 | Accused Huhtamaki plate appears in a foodservice product catalog |
| 2018-09-14 | Blue Apple sends cease and desist letter to Huhtamaki |
| 2018-10-09 | Huhtamaki responds to Blue Apple, asserting non-infringement and invalidity |
| 2018-10-18 | Blue Apple replies to Huhtamaki, reaffirming its infringement position |
| 2018-11-27 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D697,370 - "Segmented Food Plate"
- Patent Identification: U.S. Design Patent No. D697,370, "Segmented Food Plate," issued January 14, 2014.
The Invention Explained
- Problem Addressed: As a design patent, the '370 Patent does not articulate a technical problem. However, the complaint alleges the design was featured in a New York City Department of Education bid request for "compostable" plates with "5 compartments able to hold 5 meal components including a milk carton\bottle," suggesting a demand for a plate with a specific configuration for institutional meals (Compl. ¶20, ¶22).
- The Patented Solution: The patent claims the ornamental appearance of a food plate as depicted in its seven figures ('370 Patent, Claim, col. 2:1-3). The design's overall visual impression is defined by a generally circular plate with a raised outer rim, a central square-like compartment, and four peripheral compartments of varying shapes and sizes created by ridges radiating from the corners of the central compartment ('370 Patent, Fig. 6). The specification consists solely of descriptions of the different views provided by the figures (e.g., "FIG. 1 is a top perspective view of the segmented food plate") ('370 Patent, col. 2:5-18).
- Technical Importance: The complaint alleges the design was considered noteworthy enough to be featured by photograph in a major municipal bid request, indicating its perceived suitability for large-scale institutional foodservice programs (Compl. ¶20-21).
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is for: "The ornamental design for a segmented food plate, as shown and described" ('370 Patent, Claim, col. 2:1-3).
- The overall ornamental design is defined by the visual characteristics depicted in the patent's figures, including:
- A generally circular perimeter shape with a raised rim.
- A central compartment with a generally square shape.
- Four peripheral compartments defined by ridges extending from the central compartment to the outer rim.
- The four peripheral compartments are of unequal size and shape: one large, two medium, and one small compartment ('370 Patent, DESCRIPTION, col. 2:5-18).
III. The Accused Instrumentality
Product Identification
The accused product is "Huhtamaki's Savaday® by Chinet® Round 5-Compartment Cafeteria Plate," identified by Item No. 21040, 21033, and Code Name SLP52W (the "Huhtamaki Plate") (Compl. ¶17).
Functionality and Market Context
The Huhtamaki Plate is a disposable, five-compartment plate sold for foodservice applications (Compl. ¶4, ¶17). A photograph of the plate is provided from a February 2017 catalog (Compl. ¶18). Huhtamaki asserts that its plate is visually distinct from the patented design, alleging its plate has a "racetrack" shape (two straight sides and two curved sides) rather than being circular, and that its four outer compartments are "all of substantially equal size and of a similar shape" (Compl. ¶43-44). The complaint presents a side-by-side comparison of the accused plate and the patented design to highlight these alleged differences (Compl. ¶42, p. 12). Huhtamaki contends that the relevant "ordinary observer" for assessing infringement is a "foodservice procurement professional" (Compl. ¶41).
IV. Analysis of Infringement Allegations
As this is a declaratory judgment action, the following chart summarizes the infringement theory that Plaintiff Huhtamaki attributes to Defendant Blue Apple.
D697,370 Infringement Allegations
| Claim Element (from '370 Patent Design) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A similarly round shape having a raised rim around the circumference of the plate. | The Huhtamaki Plate is alleged to have a round shape and a raised rim. | ¶19(a) | Fig. 6 |
| Five compartments able to hold five meal components including a milk carton or bottle. | The Huhtamaki Plate has five compartments for food. | ¶19(b) | Fig. 6 |
| A similarly square center compartment able to hold a ½ pint of milk carton or bottle. | The Huhtamaki Plate has a central compartment that is generally square. | ¶19(c) | Fig. 6 |
| A similarly square center compartment defined by four ridges. | The Huhtamaki Plate's central compartment is defined by four ridges. | ¶19(d) | Fig. 6 |
| Four compartments defined by ridges extending out from the four corners of the similarly square center compartment to the raised rim... | The Huhtamaki Plate has four peripheral compartments formed by ridges extending from the center. | ¶19(e) | Fig. 6 |
Identified Points of Contention
The complaint identifies several specific visual differences that will likely form the core of the non-infringement argument. The key question for the court will be whether these differences are significant enough to prevent an ordinary observer from finding the designs "substantially the same."
Scope Questions
The primary scope question is how broadly the claimed "ornamental design" ('370 Patent, col. 2:1-3) can be interpreted. Does it cover all five-compartment plates with a central square, or is its scope limited to the specific combination of a circular perimeter, asymmetric peripheral compartments, and offset center shown in the figures?
Design Questions
- Perimeter Shape: Does the accused plate's "racetrack" shape create a different overall visual impression from the patented design's circular shape (Compl. ¶43)?
- Compartment Symmetry: How significant is the difference between the patented design's four unequally-sized outer compartments and the accused plate's four "substantially equal size" outer compartments (Compl. ¶44)?
- Ridge and Center Placement: Does the patented design's offset center compartment and varied ridge angles constitute a key ornamental feature that is absent from the accused plate's centered design and uniform ridges (Compl. ¶45-46)? The complaint includes a side-by-side image juxtaposing the patented design's Figure 6 with the accused Huhtamaki Plate to emphasize these asserted differences (Compl. ¶42, p. 12).
V. Key Claim Terms for Construction
While design patents do not have textual claim terms that are construed in the same manner as utility patents, the infringement analysis will focus on the scope of the claimed "ornamental design" as a whole, which is informed by its constituent visual features.
The "Term"
The overall "ornamental design for a segmented food plate"
Context and Importance
The dispositive issue in the infringement analysis is whether the accused Huhtamaki Plate is "substantially the same" as the design claimed in the '370 Patent from the perspective of an ordinary observer. Practitioners may focus on whether the specific features highlighted by Huhtamaki (e.g., perimeter shape, compartment symmetry) are considered mere minor variations or are integral parts of the patented design that, if absent, would lead an ordinary observer to distinguish the two designs.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: A party could argue that the essence of the design is the general configuration of a five-compartment plate with a central square and four radiating dividers. The single claim covers the design "as shown and described" ('370 Patent, col. 2:1-3), which could be argued to encompass minor variations in proportion or overall shape that do not alter this fundamental layout.
- Evidence for a Narrower Interpretation: The patent's figures explicitly depict a design with a combination of specific features: a circular perimeter, four distinctly unequal peripheral compartments, and an offset center ('370 Patent, Figs. 1, 6). The inclusion of multiple side-view figures (Figs. 2-5) showing the precise contours from different perspectives could be used to argue that these specific details are not trivial but are essential elements of the claimed ornamental design, thereby narrowing its scope.
VI. Other Allegations
Willful Infringement
Huhtamaki is responding to a threatened allegation of willfulness from Blue Apple. The complaint states that Blue Apple's basis for this allegation is that "Huhtamaki knowingly and willfully copied its segmented-plate design after learning of it through the photograph that the NYCDOE attached to its bid request in November 2013" (Compl. ¶23). Huhtamaki denies that it "knowingly and willfully" copied the design (Compl. ¶56).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this declaratory judgment action will likely depend on the court's findings on two central questions:
A core issue will be one of visual comparison: For the purposes of the "ordinary observer" test, are the asserted visual differences—particularly the accused plate's "racetrack" perimeter and symmetric compartments versus the patented design's circular shape and asymmetric compartments—sufficient to render the two designs visually distinct?
A key challenge for the patent holder will be one of validity: Does the asserted prior art, especially the 1996 Chinet Plate depicted in the complaint as also having a five-compartment design with a central square, render the specific ornamental design of the '370 Patent obvious to a designer of ordinary skill, thereby invalidating the patent? The complaint's side-by-side comparison of the patented design and this prior art plate will be a focal point of this inquiry (Compl. ¶28, p. 8).