DCT

1:22-cv-06072

OnMyWhey LLC v. Partnerships Unincorp Associations

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
    • Plaintiff: OnMyWhey, LLC (Delaware)
    • Defendant: The Partnerships and Unincorporated Associations Identified on Schedule “A” (allegedly based in the People's Republic of China or other foreign jurisdictions)
    • Plaintiff’s Counsel: Greer, Burns & Crain, Ltd.
  • Case Identification: 1:22-cv-06072, N.D. Ill., 11/03/2022
  • Venue Allegations: Venue is asserted based on Defendants allegedly targeting and conducting business with consumers in the United States, including Illinois, through interactive e-commerce websites.
  • Core Dispute: Plaintiff alleges that Defendants’ unauthorized e-commerce sales of portable containers infringe three U.S. design patents covering the ornamental appearance of a bottle.
  • Technical Context: The dispute concerns the ornamental design of consumer products, specifically portable containers marketed as workout accessories for holding powders or supplements.
  • Key Procedural History: The action is brought against a schedule of unidentified e-commerce operators, alleging they operate under fictitious aliases to evade enforcement of intellectual property rights. U.S. Design Patent No. D865,527 is a continuation of the applications that matured into U.S. Design Patent Nos. D844,435 and D844,436, indicating the three designs are part of a related development effort.

Case Timeline

Date Event
2016-12-12 Priority Date for ’435 and ’436 Patents
2016-12-12 Earliest Priority Date for ’527 Patent
2019-04-02 ’435 Patent Issued
2019-04-02 ’436 Patent Issued
2019-11-05 ’527 Patent Issued
2022-11-03 Complaint Filing Date

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

U.S. Design Patent No. D844,435 - "Bottle," Issued April 2, 2019

The Invention Explained

  • Problem Addressed: Design patents do not solve technical problems but instead protect the novel, non-functional, ornamental appearance of an article of manufacture. This patent provides a new ornamental design for a bottle.
  • The Patented Solution: The patent claims the specific ornamental design for a bottle as depicted in its figures (D844,435 Patent, CLAIM, Figs. 1-10). The design features a short, stout bottle with three primary components shown in an exploded view: a cap with an integrated loop for a clip, a main body, and a screw-on base compartment (D844,435 Patent, Fig. 9). A distinguishing feature of this design is the series of vertical fluted indentations around the main body. The broken lines showing a carabiner-style clip indicate that the clip itself is not part of the claimed design (D844,435 Patent, DESCRIPTION).
  • Technical Importance: The complaint alleges that the patented bottle designs are a "first of a kind design" and are "broadly recognized by consumers" (Compl. ¶7).

Key Claims at a Glance

  • The patent asserts a single claim for "The ornamental design for a bottle, as shown and described" (D844,435 Patent, CLAIM).
  • Key ornamental features that constitute the design "as shown" include:
    • A multi-part construction with a main body, a threaded cap, and a threaded, detachable base.
    • A cap with a raised, integrated loop for attachment.
    • A generally cylindrical body with rounded shoulders and a flat bottom.
    • A pattern of vertical, recessed fluting on the exterior of the main body.

U.S. Design Patent No. D844,436 - "Bottle," Issued April 2, 2019

The Invention Explained

  • Problem Addressed: As with the ’435 Patent, this patent protects a novel, ornamental appearance for a bottle.
  • The Patented Solution: The patent claims a specific ornamental bottle design nearly identical in form and proportion to the ’435 Patent, including the same three-part construction with a cap, body, and detachable base (D844,436 Patent, Fig. 9). The critical distinction is that the main body of the bottle in this design is smooth and unadorned, lacking the vertical fluting of the ’435 Patent design (D844,436 Patent, Fig. 3).
  • Technical Importance: The complaint groups this design with the other patented designs, alleging they are distinctive and associated with the quality and innovation of Plaintiff's products (Compl. ¶7).

Key Claims at a Glance

  • The patent asserts a single claim for "The ornamental design for a bottle, as shown and described" (D844,436 Patent, CLAIM).
  • Key ornamental features that constitute the design "as shown" include:
    • A multi-part construction with a main body, a threaded cap, and a threaded, detachable base.
    • A cap with a raised, integrated loop for attachment.
    • A generally cylindrical body with rounded shoulders and a flat bottom.
    • A smooth, unornamented exterior surface on the main body.

U.S. Design Patent No. D865,527 - "Bottle," Issued November 5, 2019

  • Technology Synopsis: The ’527 Patent claims an ornamental design for a bottle with a similar overall shape, cap, and base configuration as the ’435 and ’436 Patents. The figures depict a smooth-bodied bottle, similar to the ’436 Patent, but with slightly different proportions and line work shown in the drawings (D865,527 Patent, Fig. 1; Compl. ¶31-32).
  • Asserted Claims: The single claim for "The ornamental design for a bottle, as shown and described" is asserted (D865,527 Patent, CLAIM; Compl. ¶32).
  • Accused Features: The complaint alleges that the entirety of the "Infringing Products" embodies the ornamental design claimed in the ’527 Patent (Compl. ¶32).

III. The Accused Instrumentality

Product Identification

The complaint identifies the accused instrumentalities as "the bottles shown in Exhibit 1," which are referred to as the "Infringing Products" (Compl. ¶3). However, Exhibit 1 was not included with the complaint as filed, so no image of an accused product is available for analysis.

Functionality and Market Context

The complaint alleges the accused products are unauthorized bottles sold by Defendants through various e-commerce stores operating under multiple "Seller Aliases" (Compl. ¶2, ¶3). These stores are allegedly designed to appear as authorized retailers to consumers and are part of a coordinated effort by a network of infringers (Compl. ¶14, ¶17). The complaint provides an image from the '435 patent showing its multi-part construction. (Compl. p. 4). This image depicts a bottle with a detachable base and a cap with an attachment loop, features alleged to be part of the infringing products.

IV. Analysis of Infringement Allegations

The complaint does not contain a claim chart or specific, element-by-element allegations. The infringement theory is based on the general assertion that the accused products sold by Defendants are "the same unauthorized and unlicensed product" that infringes the overall ornamental designs of the patents-in-suit (Compl. ¶3). The complaint presents figures from the patents to illustrate the claimed designs, such as the perspective views of the bottle from the '436 patent. (Compl. p. 5). The central allegation is that the accused products create a visual impression that is substantially the same as the patented designs.

Identified Points of Contention

  • Factual Question: The dispositive issue will be a factual comparison. Because the complaint lacks any image of an accused product, the primary question is whether discovery will reveal that the Defendants' products are "substantially the same" as the patented designs in the eye of an "ordinary observer."
  • Scope Question: A point of contention may arise regarding the scope of the designs. The existence of separate patents for a fluted design (’435 Patent) and a smooth design (’436 Patent) raises the question of how important that specific surface ornamentation is to the infringement analysis for each respective patent. The court will have to determine if an accused product must replicate that specific feature to infringe, or if similarity in the overall shape and configuration is sufficient.

V. Key Claim Terms for Construction

Formal claim construction of express terms is generally not performed for design patents. The "claim" is understood to be the design itself, as depicted in the drawings. Analysis focuses on the overall visual appearance of the claimed design rather than the definition of words. However, the litigation will likely focus on a comparison of key ornamental features.

  • The Feature: The overall three-dimensional configuration and proportions of the bottle.

    • Context and Importance: This is the foundational aspect of the design. The infringement analysis will depend on the visual similarity of the overall shape, including the relative size and form of the cap, body, and detachable base.
    • Intrinsic Evidence for Interpretation: The collective views in each patent, particularly the perspective and exploded views, define the holistic design (e.g., ’435 Patent, Figs. 1, 9; ’436 Patent, Figs. 1, 9). Parties may dispute whether the design as a whole is novel or if it is primarily a combination of functional and well-known features.

  • The Feature: The surface ornamentation of the main body.

    • Context and Importance: This feature is the primary distinction between the ’435 Patent (fluted) and the ’436 Patent (smooth). Practitioners may focus on this feature because the patentee sought and obtained separate protection for these two variations, suggesting the surface treatment is a significant part of the ornamental design.
    • Intrinsic Evidence for Interpretation: The front views of the respective patents clearly show the evidence for each interpretation. Figure 3 of the ’435 Patent depicts the fluted design, while Figure 3 of the ’436 Patent depicts the smooth design. This will be a critical point of comparison against any accused product.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that Defendants infringe "directly and/or indirectly" and seeks to enjoin those who "aid, abet, or contribute" to infringement (Compl. ¶24; Prayer for Relief, ¶1.b). The factual basis alleged is that Defendants operate as an interrelated network, using common tactics and sources, and communicate through online chat rooms to coordinate activities and evade detection (Compl. ¶17, ¶18, ¶20).
  • Willful Infringement: Willfulness is explicitly alleged (Compl. ¶21). The complaint asserts this is based on Defendants "working in active concert to knowingly and willfully manufacture, import, distribute, offer for sale, and sell Infringing Products" (Compl. ¶20).

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

  1. An Evidentiary Question of Appearance: As the complaint does not include an image of the accused product, the case currently rests on a threshold evidentiary question: will discovery show that the products sold by Defendants create a visual impression that is substantially the same as the patented designs in the view of an ordinary observer?
  2. The Significance of Design Variation: The case raises a question about the scope of protection afforded by multiple, similar design patents. A core issue will be whether infringement requires an accused product to copy the specific surface ornamentation (fluted vs. smooth) that differentiates the ’435 and ’436 patents, or if similarity in the product's overall shape and configuration is sufficient to infringe either patent.
  3. A Procedural Hurdle of Identification: A key procedural challenge, common in cases of this type, will be for the Plaintiff to successfully identify the anonymous Defendants, pierce their multiple aliases, and establish that the court has personal jurisdiction over these foreign-based e-commerce operators.