OnMyWhey LLC v. Partnerships Unincorp Associations

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: OnMyWhey, LLC (Delaware)
  • Defendant: The Partnerships and Unincorporated Associations Identified on Schedule “A” (Jurisdiction unknown, alleged to be People's Republic of China or other foreign jurisdictions)
  • Plaintiff’s Counsel: Greer, Burns & Crain, Ltd.
• Case Identification: 1:22-cv-00912, N.D. Ill., 02/18/2022
• Venue Allegations: Venue is based on allegations that Defendants operate interactive e-commerce stores that directly target and make sales to consumers in Illinois.
• Core Dispute: Plaintiff alleges that Defendants’ e-commerce stores are making, using, selling, and/or importing bottles that infringe three of Plaintiff's U.S. design patents.
• Technical Context: The technology at issue is the ornamental design of portable containers, specifically those marketed as workout accessories for supplements.
• Key Procedural History: The complaint targets numerous, unidentified e-commerce operators, a common procedural posture in anti-counterfeiting litigation. U.S. Patent No. D865,527 is a continuation of the applications that matured into U.S. Patent Nos. D844,435 and D844,436, which may be relevant to the scope and prosecution history of the claimed designs.

Case Timeline

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

U.S. Patent No. D844,435 - “BOTTLE”

Issued April 2, 2019

The Invention Explained

• Problem Addressed: As a design patent, the specification does not explicitly state a technical problem. The filing seeks to protect a unique ornamental appearance for an article of manufacture, distinguishing it from other products in the marketplace (Compl. ¶7).
• The Patented Solution: The patent claims the specific visual characteristics of a portable container. The design features a main body with smooth, rounded vertical surfaces, a screw-on cap with an integrated loop for a clip, and a distinct, screw-on bottom compartment ('435 Patent, FIG. 9). The combination of these elements creates the overall ornamental design protected by the patent ('435 Patent, Claim).
• Technical Importance: The complaint alleges this "first of a kind design" created a broadly recognized and innovative aesthetic for workout accessories (Compl. ¶7).

Key Claims at a Glance

• The complaint asserts the single claim of the patent (Compl. ¶24).
• The claim is for "The ornamental design for a bottle, as shown and described," which protects the overall visual impression of the bottle depicted in solid lines in the patent's figures.

U.S. Patent No. D865,527 - “BOTTLE”

Issued November 5, 2019

The Invention Explained

• Problem Addressed: This patent, like the '435 Patent, protects ornamental features to create a distinct product identity (Compl. ¶7).
• The Patented Solution: The '527 Patent claims the ornamental design for only specific components of a bottle. The drawings show the main cylindrical body of the bottle in broken lines, indicating it is not part of the claimed design ('527 Patent, DESCRIPTION). Protection is limited to the features shown in solid lines: the screw-on cap with its integrated loop and the separate screw-on base ('527 Patent, FIG. 1). This allows the patent to cover products that incorporate the claimed cap and base, regardless of the appearance of the central container portion.
• Technical Importance: This approach protects core design elements of a product line, potentially preventing competitors from creating derivative products by changing only one part of the overall assembly.

Key Claims at a Glance

• The complaint asserts the single claim of the patent (Compl. ¶32).
• The claim is for "The ornamental design for a bottle, as shown and described," which protects the visual appearance of the cap and base components only, as depicted in solid lines.

U.S. Patent No. D844,436 - “BOTTLE”

Issued April 2, 2019

• Technology Synopsis: This patent claims the ornamental design for a complete bottle assembly. The drawings and overall visual impression protected by the ’436 Patent appear to be the same as those in the '435 Patent, covering the combination of the cap, body, and base ('436 Patent, FIGS. 1-10).
• Asserted Claims: The single design claim is asserted (Compl. ¶28).
• Accused Features: The complaint alleges that the overall ornamental design of the accused "Infringing Products" infringes the claim of the ’436 Patent (Compl. ¶28).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are "unauthorized and unlicensed" bottles referred to as the "Infringing Products" (Compl. ¶3).

Functionality and Market Context

The complaint alleges that Defendants sell these bottles through various e-commerce stores operating under multiple "Seller Aliases" (Compl. ¶¶2, 3). These online stores are allegedly designed to appear as sophisticated, authorized retailers, accepting payment in U.S. dollars via credit cards and other services (Compl. ¶14). The complaint contends that these sales trade upon the reputation and goodwill of the OnMyWhey brand and that the defendants are part of an interrelated network of infringers based in foreign jurisdictions (Compl. ¶¶3, 9, 17).

IV. Analysis of Infringement Allegations

The complaint does not provide a detailed claim chart or a side-by-side visual comparison between the patented designs and the accused products. The infringement theory rests on the allegation that the accused products are copies that are visually indistinguishable from the patented designs.

D844,435 Infringement Allegations

D865,527 Infringement Allegations

Identified Points of Contention

• Factual Question: The central issue for all asserted patents will be a factual comparison under the "ordinary observer" test: Is an ordinary observer, familiar with the prior art, likely to be deceived into believing the accused bottle is the patented design? The outcome will depend on visual evidence of the accused products, which is not included in the complaint document itself but is referenced as "Exhibit 1" (Compl. ¶3).
• Scope Question: A point of contention may arise regarding the scope of the '527 Patent. The infringement analysis for this patent must focus only on the visual similarity of the cap and base components of the accused product, filtering out any visual impact from the product's main body, which is disclaimed in the patent.

V. Key Claim Terms for Construction

In design patent cases, the "claim" is understood to be the design itself as depicted in the drawings. Formal construction of text is rare, but disputes often center on the scope of the design and the role of functional elements.

• The Term: "The ornamental design for a bottle, as shown and described."
• Context and Importance: The interpretation of this phrase defines the scope of the protected design. The court's analysis will involve determining which aspects of the drawings are ornamental and which are dictated by function. Practitioners may focus on this issue because excluding functional features from the comparison can significantly narrow the scope of the patent and make it easier for a defendant to avoid infringement.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: Plaintiff may argue that the claim covers the overall visual impression created by the unique combination of all features shown in solid lines, and that this overall aesthetic is what is being copied.
  • Evidence for a Narrower Interpretation: A defendant could argue that elements such as the screw threads for the cap and base, or the basic cylindrical shape of the container, are purely functional. The patent's exploded views, which illustrate how the parts functionally connect (e.g., ’435 Patent, FIG. 9), might be used to support an argument that these mechanical features should be given little weight in the infringement analysis.

VI. Other Allegations

• Indirect Infringement: The complaint includes conclusory allegations of indirect infringement and aiding and abetting (Compl. ¶¶24, 28, 32; Prayer for Relief ¶1(b)). The provided facts, however, focus primarily on the Defendants' own alleged acts of direct infringement through making, using, and selling the accused products.
• Willful Infringement: Willfulness is alleged based on the assertion that Defendants are "working in active concert to knowingly and willfully" sell the Infringing Products (Compl. ¶20). The complaint further alleges that operators like the Defendants communicate in online chat rooms about tactics for evading detection and litigation, which may be presented as evidence of knowledge and intent (Compl. ¶18).

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

1. A central question will be one of visual comparison: Will an ordinary observer, giving the attention a purchaser usually gives, be deceived into purchasing an accused bottle, believing it to be the patented design? The answer will depend entirely on the visual evidence of the accused products presented during litigation.
2. The case presents a key question of design scope: Does the '527 patent, which disclaims the bottle's main body and protects only the cap and base, provide a distinct and enforceable right against products that copy those specific components, even if the overall bottle appearance differs from the designs in the '435 and '436 patents?
3. A significant evidentiary hurdle for the Plaintiff will be to prove its allegations of a coordinated enterprise, connecting the various anonymous "Seller Aliases" to a group of defendants acting in concert and demonstrating that the products sold under these aliases are, in fact, colorable imitations of the patented designs.