DCT
1:22-cv-07214
OnMyWhey LLC v. RNB Digital LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: OnMyWhey, LLC (Delaware)
- Defendant: RNB Digital LLC (New Jersey)
- Plaintiff’s Counsel: Greer, Burns & Crain, Ltd.
- Case Identification: 1:22-cv-07214, N.D. Ill., 12/22/2022
- Venue Allegations: Plaintiff alleges venue is proper in the Northern District of Illinois because Defendant targets and sells the accused products to Illinois residents through an interactive e-commerce store.
- Core Dispute: Plaintiff alleges that Defendant’s portable supplement container infringes the ornamental designs claimed in three of Plaintiff's U.S. design patents.
- Technical Context: The dispute concerns workout accessories, specifically small, portable containers designed for transporting single servings of powdered supplements like protein.
- Key Procedural History: U.S. Patent No. D865,527 is a continuation of the applications that matured into the D'435 and D'436 patents. The '527 patent was issued with a terminal disclaimer, which may limit its enforceable term to that of the parent patents.
Case Timeline
| Date | Event |
|---|---|
| 2016-12-12 | Earliest Priority Date ('435, '436, '527 Patents) |
| 2019-04-02 | Issue Date (U.S. Patent No. D844,435) |
| 2019-04-02 | Issue Date (U.S. Patent No. D844,436) |
| 2019-11-05 | Issue Date (U.S. Patent No. D865,527) |
| 2022-11-03 | Date of screenshot showing accused product for sale |
| 2022-12-22 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D844,435 - "BOTTLE"
- Patent Identification: U.S. Design Patent No. D844,435, “BOTTLE,” issued April 2, 2019.
- The Invention Explained:
- Problem Addressed: The complaint suggests a need for workout accessories with a "distinctive" and "first of a kind design" that is recognizable to consumers. (Compl. ¶7).
- The Patented Solution: The patent claims the ornamental design for a bottle. The design, shown in the figures, consists of a multi-part container with a specific visual appearance: a main body with rounded shoulders, a screw-on cap with a ribbed texture and an integrated loop, and a screw-off base. (D'435 Patent, FIG. 9). The carabiner clip, shown in broken lines in several figures, is explicitly disclaimed and does not form part of the patented design. (D'435 Patent, DESCRIPTION; FIGs. 3-6).
- Technical Importance: The design provides a unique aesthetic for a portable supplement container, which the Plaintiff alleges has become "instantly recognizable" to the public. (Compl. ¶5).
- Key Claims at a Glance:
- The patent contains a single claim for "The ornamental design for a bottle, as shown and described." (D'435 Patent, CLAIM).
- The essential visual features of the claimed design include:
- The overall three-part configuration (cap, body, base) and its proportions.
- The cylindrical cap with vertical ribbing and a top-mounted attachment loop.
- The main container body with a smooth surface and curved upper shoulders.
- The distinct, separable screw-off bottom compartment.
U.S. Design Patent No. D844,436 - "BOTTLE"
- Patent Identification: U.S. Design Patent No. D844,436, “BOTTLE,” issued April 2, 2019.
- The Invention Explained:
- Problem Addressed: As with the '435 Patent, the design addresses the desire for a distinctive and recognizable aesthetic for a workout accessory. (Compl. ¶7).
- The Patented Solution: The '436 Patent claims an ornamental design nearly identical to that of the '435 Patent, with one critical distinction. In the '436 Patent, the carabiner-style clip attached to the cap's loop is depicted in solid lines in all figures, indicating that the clip itself is an integral part of the claimed ornamental design. (D'436 Patent, FIGs. 1-10). The claim covers the visual appearance of the bottle and the attached carabiner as a single design.
- Technical Importance: This design secures rights to the specific combination of the bottle shape and the attached carabiner clip, providing a different scope of protection than the '435 Patent. (Compl. ¶7).
- Key Claims at a Glance:
- The patent contains a single claim for "The ornamental design for a bottle, as shown and described." (D'436 Patent, CLAIM).
- The essential visual features of the claimed design include the features of the '435 Patent, plus:
- A carabiner-style clip shown attached to the cap's loop.
Multi-Patent Capsule: U.S. Design Patent No. D865,527 - "BOTTLE"
- Patent Identification: U.S. Design Patent No. D865,527, “BOTTLE,” issued November 5, 2019.
- Technology Synopsis: This patent protects a more focused ornamental design. Through the use of broken lines, the patent explicitly disclaims the main body of the container. The claimed design consists only of the combination of the bottle's cap, its integrated loop, the attached carabiner, and the screw-off base. (D'527 Patent, DESCRIPTION; FIG. 1). This allows the patent to cover products that use this specific cap-and-base combination, regardless of the shape or size of the central container.
- Asserted Claims: The patent asserts a single claim for the ornamental design as shown and described. (D'527 Patent, CLAIM).
- Accused Features: The complaint alleges that the cap, carabiner, and screw-off base of the Defendant's product infringe the claimed design. (Compl. ¶¶ 16, 28, p. 11).
III. The Accused Instrumentality
- Product Identification: The accused product is the "RNB Digital Protein Powder and Supplement Funnel Keychain" sold through Defendant's e-commerce store on Amazon.com. (Compl. ¶¶ 11, 12, Fig. 1).
- Functionality and Market Context: The complaint presents the accused product as a portable container for nutritional supplements. (Compl. Fig. 1). A screenshot from the product's Amazon listing describes it as a "portable to-go container for the gym, workouts, fitness, and travel." (Compl. Fig. 1, p. 8). Visual evidence provided in the complaint shows a small, black, multi-part container with a screw-on lid, a carabiner clip attached to the lid, and a separable screw-off base, which appears to function as a funnel. (Compl. p. 9). The complaint alleges an investigator purchased the product, which was shipped to Illinois. (Compl. ¶¶ 13, 14).
IV. Analysis of Infringement Allegations
The infringement analysis for a design patent centers on the "ordinary observer" test, which asks whether an ordinary observer, familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented design. The complaint provides side-by-side visual comparisons to support its allegations. (Compl. pp. 9-11).
D'435 Patent Infringement Allegations
The complaint provides a visual comparison of the patented design and the accused product, which is shown in an exploded view. (Compl. p. 9).
| Visual Feature (from D'435 Patent) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| Overall three-part configuration of a cap, a central body, and a detachable base. | The accused product is composed of three visually similar parts: a cap with a clip, a central body, and a detachable base. | ¶¶16, 20; p. 9 | D'435 Patent, FIG. 9 |
| Cylindrical cap with vertical ribbing and a centered, integrated attachment loop. | The accused product's cap is cylindrical with similar ribbing and features a centered loop for attachment. | ¶¶16, 20; p. 9 | D'435 Patent, FIG. 7 |
| Main body with rounded upper shoulders and a smooth exterior surface. | The accused product's main body has a similar shape, including rounded upper shoulders. | ¶¶16, 20; p. 9 | D'435 Patent, FIG. 3 |
| Detachable, cup-like base that screws onto the main body. | The accused product has a detachable base of a similar shape and proportion that attaches to the main body. | ¶¶16, 20; p. 9 | D'435 Patent, FIG. 9 |
- Identified Points of Contention:
- Scope Questions: A central question for the '435 Patent will be whether the prominent carabiner on the accused product, a feature explicitly disclaimed from the '435 design, is sufficient to create a different overall visual impression for the ordinary observer. The test requires comparing the accused product to the claimed design, not to the patentee's commercial embodiment.
- Technical (Visual) Questions: The accused product shown in the complaint's photographs features prominent branding ("GOLD STANDARD 100% WHEY") on its side. (Compl. p. 9). A key point of contention may be whether this surface ornamentation is significant enough to distinguish the accused product's design from the unadorned design claimed in the patent.
V. Key Claim Terms for Construction
In a design patent case, claim construction focuses on the scope of the claimed design as a whole, rather than on textual terms. The primary "term" for construction is the overall visual impression created by the drawings.
- The Term: "The ornamental design for a bottle, as shown and described."
- Context and Importance: The scope of this "term" is the entire case. The court's interpretation of what is included within the design's scope—and what is not—will determine the outcome of the infringement analysis. Practitioners may focus on the visual differences between the three asserted patents (e.g., the inclusion or exclusion of the carabiner and the main body) as evidence of distinct design scopes.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that the "design" is the overall visual impression and that minor differences in proportion or surface finish on an accused product do not change the general appearance that an ordinary observer would perceive. The similarity in the overall three-part structure could be argued to be the dominant visual feature.
- Evidence for a Narrower Interpretation: A party could argue that the design is strictly limited to the exact shapes and contours depicted in the solid lines of the patent figures. The use of broken lines in the '435 Patent to disclaim the carabiner and in the '527 Patent to disclaim the bottle's body is strong intrinsic evidence that the scope of each claimed design is precisely defined and limited. Any deviation in the accused product from these solid-line features could support a finding of a different overall design.
VI. Other Allegations
- Indirect Infringement: The complaint does not plead a separate count for indirect infringement. However, the prayer for relief requests an injunction against Defendant and any "persons acting for, with, by, through, under or in active concert with them," as well as those "aiding, abetting, [or] contributing to" infringement. (Compl. Prayer for Relief ¶1). The complaint also specifically requests that Amazon.com be ordered to disable advertisements associated with the Defendant. (Compl. Prayer for Relief ¶2).
- Willful Infringement: The complaint alleges that Defendant's infringement was "knowingly and willfully" committed. (Compl. ¶¶12, 17). It does not, however, plead specific facts to support this claim, such as allegations of pre-suit notice of the patents or copying of the Plaintiff's product.
VII. Analyst’s Conclusion: Key Questions for the Case
- Scope and the Ordinary Observer Test: A core issue will be one of design scope: how will an ordinary observer perceive the accused product when compared to the distinct visual scopes of the three asserted patents? This question hinges on the differing treatment of the carabiner clip (unclaimed in '435, claimed in '436) and the bottle body (claimed in '435 and '436, unclaimed in '527), and whether these distinctions are legally significant when assessing infringement.
- The Role of Surface Ornamentation: A key evidentiary question will be one of visual distinction: does the prominent branding applied to the surface of the accused product create a substantially different overall visual impression from the unadorned designs claimed in the patents? The case may turn on whether the court views the underlying three-dimensional shape or the two-dimensional surface graphics as the dominant element of the design.
- The Cumulative Effect of Minor Differences: The infringement analysis will likely involve assessing the cumulative effect of any minor differences in proportion, curvature, and features between the patented designs and the accused product. The question for the court will be whether these small variations, taken together, are sufficient to lead an ordinary observer to conclude the designs are not substantially the same.