DCT
1:22-cv-06331
Ad N Art Inc v. Does 1 230
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Ad-N-Art, Inc. (Canada)
- Defendant: Does 1-230 (Foreign Jurisdictions)
- Plaintiff’s Counsel: Keener & Associates, P.C.
- Case Identification: 1:22-cv-06331, N.D. Ill., 11/14/2022
- Venue Allegations: Venue is alleged based on Defendants targeting and selling products to consumers in Illinois through interactive websites, thereby transacting business and causing tortious injury within the district.
- Core Dispute: Plaintiff alleges that numerous unidentified foreign entities are selling counterfeit combination water bottle and pill organizer products through online marketplaces, infringing Plaintiff's utility and design patents.
- Technical Context: The technology involves consumer products that integrate a beverage container with a detachable, multi-compartment pill organizer for user convenience.
- Key Procedural History: The complaint is filed against 230 "Doe" defendants, whose true identities are stated to be unknown. Plaintiff alleges these defendants are part of an interrelated "cabal of foreign counterfeiters" who intentionally conceal their identities and operate through interchangeable online storefronts.
Case Timeline
| Date | Event |
|---|---|
| 2015-01-11 | Priority Date for U.S. Patent No. 9,856,053 |
| 2015-01-11 | Priority Date for U.S. Design Patent No. D778,173 |
| 2017-02-07 | U.S. Design Patent No. D778,173 Issued |
| 2018-01-02 | U.S. Patent No. 9,856,053 Issued |
| 2022-11-14 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,856,053 - "DETACHABLE STORAGE CONTAINER FOR A DRINKS CONTAINER" (Issued Jan. 2, 2018)
The Invention Explained
- Problem Addressed: The patent identifies a need for a convenient way for individuals to carry both their medications or vitamins and a liquid for ingestion in a single, integrated unit, rather than two separate containers. ('053 Patent, col. 1:19-28).
- The Patented Solution: The invention is a two-part system: a drinks container and a detachable storage container. The drinks container features a "deep wide groove" with slide tracks integrated into its wall. The storage container, which functions as a pillbox with multiple lidded compartments, has corresponding slide tracks allowing it to be slid into and out of the groove on the bottle. The system also includes stabilizing supports on the bottle and a cap with a flat base that can be used as a drinking cup. ('053 Patent, col. 2:12-18, 50-62).
- Technical Importance: The design provides a unified and portable solution for consumers who regularly take pills with liquids, enhancing convenience and organization. ('053 Patent, col. 1:24-28).
Key Claims at a Glance
- The complaint asserts "all claims" of the patent, which consists of a single independent claim. (Compl. ¶46).
- Claim 1 requires a system comprising:
- A detachable storage container with a body, a plurality of storage compartments, a plurality of individual openable and closable lids with indicia, and slide tracks on its side.
- A drinks container with a generally cylindrical body, a deep wide groove in its wall with corresponding slide tracks, stabilizing supports, and a removable cap with a flat base for use as a cup.
- The storage container is "slidable into and out of the groove" to attach and detach.
U.S. Design Patent No. D778,173 S - "COMBINATION BOTTLE AND PILL BOX" (Issued Feb. 7, 2017)
The Invention Explained
- Problem Addressed: Design patents protect the novel ornamental, non-functional appearance of an article of manufacture. The goal is to create a unique and visually identifiable product design.
- The Patented Solution: The patent claims the specific ornamental design for a "combination bottle and pill box" as depicted in its seven figures. The design features a cylindrical bottle with a slightly rounded cap, and a seven-compartment pill organizer set vertically into a recess on the side of the bottle. The overall aesthetic is defined by the specific proportions, curves, and arrangement of these elements. ('173 Patent, FIG. 1-7).
- Technical Importance: The design creates a distinctive aesthetic for a combination beverage and pill container, which can serve as a source identifier for consumers.
Key Claims at a Glance
- The complaint asserts the single claim of the design patent. (Compl. ¶44).
- Design patents have one claim, which reads: "The ornamental design for a combination bottle and pill box, as shown and described." ('173 Patent, CLAIM).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are the "Counterfeit Products" or "Unauthorized Products" sold by the Doe defendants. (Compl. ¶4, ¶18). These products are offered for sale on "fully interactive commercial websites hosted on Amazon.com." (Compl. ¶4).
Functionality and Market Context
- The complaint alleges the accused products are "similar and substandard copies" of Plaintiff's own products and are "designed to resemble" them. (Compl. ¶18, ¶28). The infringement allegations imply that the accused products are combination water bottles and pill organizers that incorporate the functional features of the '053 Patent and the ornamental appearance of the '173 Patent. (Compl. ¶44, ¶46). The complaint alleges these products are sold by a large, interrelated group of foreign counterfeiters who use online marketplaces to target U.S. consumers. (Compl. ¶2, ¶6, ¶9).
IV. Analysis of Infringement Allegations
The complaint does not provide a detailed element-by-element mapping of the accused products to the patent claims. The infringement theory is based on the general allegation that the "Counterfeit Products" are copies that infringe all claims of the utility patent and the single claim of the design patent. (Compl. ¶44, ¶46).
No probative visual evidence provided in complaint.
'053 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a detachable storage container, the storage container comprising: a body having a flat bottom, a side and a top; a plurality of storage compartments in the body; a plurality of individual lids on the top of said body, each lid openable and closable over a storage compartment; indicia on each lid; and slide tracks on the side that are useful to attach and detach the storage container to and from a drinks container | The complaint alleges the accused products include a detachable pill organizer with these features. (Compl. ¶13, ¶46). | ¶46 | col. 2:51-62 |
| a drinks container comprising: a generally cylindrical body for holding drinks...; a deep wide groove in the wall with slide tracks on each side of the groove to interact with the slide tracks of the storage container; the groove having an opening on the bottom of the drinks container | The complaint alleges the accused products include a drinks container with a corresponding groove and slide track mechanism. (Compl. ¶13, ¶46). | ¶46 | col. 2:63-col. 3:2 |
| the storage container being slidable into and out of the groove through the opening to attach and detach the storage container to and from the drinks container | The complaint alleges the accused products' components are designed to slide and attach in the claimed manner. (Compl. ¶13, ¶46). | ¶46 | col. 3:3-5 |
| stabilizing supports on the drinks container to support the drinks container when attaching and detaching the storage container | The complaint makes a blanket allegation of infringement of all claims, which would necessarily include this element. (Compl. ¶46). | ¶46 | col. 3:6-8 |
| a cap with a flat base, the cap for closing off the top of the drinks container... and for use as a cup to hold drinks for consumption, the flat base for supporting the cap when it is used as a cup | The complaint makes a blanket allegation of infringement of all claims, which would necessarily include this element. (Compl. ¶46). | ¶46 | col. 3:9-12 |
- Identified Points of Contention:
- Evidentiary Question: The complaint's allegations are generalized across 230 Doe defendants. A primary question will be whether Plaintiff can produce evidence showing that the specific products sold by each defendant contain every limitation of Claim 1, including potentially subtle features like the "stabilizing supports" or the "flat base" on the cap for use as a cup.
- Technical Question: The complaint does not provide any technical details about the accused products. The court will need to evaluate evidence of how the accused products are actually constructed and operate to determine if they meet limitations such as the "deep wide groove" and the "slide tracks."
V. Key Claim Terms for Construction
'053 Patent
The Term: "deep wide groove"
Context and Importance: This term defines the nature of the recess in the bottle that receives the pill container. The scope is not defined by specific dimensions, raising the question of how substantial a recess must be to infringe. A defendant with a product featuring a shallow or narrow recess might argue it falls outside the claim's scope.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the groove's function—to receive the storage container via a "sliding motion." ('053 Patent, col. 2:15-18). This functional language could support an interpretation covering any groove sufficient to perform that attachment function.
- Evidence for a Narrower Interpretation: The figures depict a groove that is quite prominent relative to the bottle's diameter. ('053 Patent, Fig. 1, 2). A party could argue that the term should be limited to a recess of a similar relative size and visual prominence as shown in the patent's own drawings.
The Term: "stabilizing supports"
Context and Importance: This is a specific structural element required by the claim. If an accused product lacks any structure that could be construed as a "stabilizing support," it would not infringe. Practitioners may focus on this term because it appears to be a distinct feature that a low-cost imitation might omit.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes their function as being able to "support the container in a lying down position." ('053 Patent, col. 2:38-41). This could be argued to cover any structure on the bottle, such as bumps, feet, or flattened areas, that achieves this purpose.
- Evidence for a Narrower Interpretation: Figure 4 shows the supports (420) as four small, distinct, circular protrusions on the rear of the bottle. A party could argue this specific embodiment limits the term to small, leg-like structures, rather than a generally flattened surface.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that through the operation of their online stores, defendants are "personally contributing to, inducing and engaging in the sale of Counterfeit Products." (Compl. ¶5). The allegations for infringement of the design patent also include indirect infringement. (Compl. ¶44). The factual basis is tied to the act of offering the products for sale online.
- Willful Infringement: Willfulness is alleged based on Defendants having "full knowledge of Plaintiff's ownership of the Asserted Patents" and the infringement being "obvious and notorious." (Compl. ¶27, ¶47). The complaint does not allege specific facts regarding pre-suit notice to any particular defendant.
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be evidentiary and procedural: given the large number of anonymous "Doe" defendants, can the Plaintiff effectively link each individual defendant to the sale of an infringing product and establish personal jurisdiction? The success of the case hinges on piercing the anonymity of the alleged counterfeiters and substantiating the generalized allegations with specific proof for each party.
- A key substantive question will be one of claim scope versus product features: for the utility patent, the case may turn on whether the accused products, which are alleged to be "substandard copies," include every claimed element, such as the "stabilizing supports" and the specific "cap with a flat base." For the design patent, the question is whether the visual appearance of the accused products is substantially the same as the patented design in the eyes of an ordinary observer.