OnMyWhey LLC v. BRND Products LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: OnMyWhey, LLC (Delaware)
  • Defendant: BRND Products LLC (Illinois)
  • Plaintiff’s Counsel: Greer, Burns & Crain, Ltd.
• Case Identification: 1:22-cv-07343, N.D. Ill., 12/30/2022
• Venue Allegations: Venue is based on Defendant being an Illinois corporation that allegedly targets sales to Illinois residents through an e-commerce store and has sold the accused products within the state.
• Core Dispute: Plaintiff alleges that Defendant’s portable supplement container infringes three design patents covering the ornamental appearance of a bottle.
• Technical Context: The dispute is in the field of workout accessories, specifically portable, keychain-style containers for carrying and dispensing powdered supplements.
• Key Procedural History: U.S. Patent No. D865,527 is a continuation of the applications that resulted in U.S. Patent Nos. D844,435 and D844,436. The '527 patent is subject to a terminal disclaimer, meaning its term is tied to that of the parent patents.

Case Timeline

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: As a design patent, the '435 Patent does not articulate a technical problem but instead protects a novel, ornamental design for an article of manufacture (Compl. ¶7).
• The Patented Solution: The patent claims the specific ornamental design for a bottle, which includes a short, wide-mouthed container body, a screw-on cap with a ribbed texture and an integrated loop, and a screw-off bottom base (’435 Patent, Figs. 1, 9). A distinguishing feature of this particular design is the presence of vertical panels or fluting on the main body of the bottle, as depicted in the patent's drawings (’435 Patent, Fig. 3). The broken lines in the drawings, such as those depicting a carabiner clip, illustrate the environment and are not part of the claimed design (’435 Patent, DESCRIPTION).
• Technical Importance: The complaint alleges these bottle designs are a "first of a kind design" that has become "broadly recognized by consumers" (Compl. ¶7).

Key Claims at a Glance

• Design patents contain a single claim. The asserted claim is: "The ornamental design for a bottle, as shown and described" (’435 Patent, CLAIM).
• The key ornamental features shown in solid lines include:
  • The overall proportions of the bottle.
  • A cap with a textured grip and an attachment loop.
  • A main body featuring vertical fluting.
  • A separable bottom portion.

U.S. Design Patent No. D844,436 - "Bottle" (issued April 2, 2019)

The Invention Explained

• Problem Addressed: Similar to the ’435 Patent, the '436 Patent protects an ornamental design for a bottle rather than a technical solution (Compl. ¶7).
• The Patented Solution: This patent claims an ornamental design for a bottle that shares the general three-part construction (cap, body, base) of the ’435 Patent design but is distinguished by a smooth, non-paneled cylindrical body (’436 Patent, Figs. 3, 9). The claimed design consists of the visual appearance of the bottle as depicted in the solid lines of the patent's figures, which includes the bottle's overall shape, the ribbed cap with its attachment loop, the smooth body, and the screw-off base (’436 Patent, DESCRIPTION; Figs. 1-10).
• Technical Importance: The complaint groups this design with the other patented designs, alleging they are innovative and recognizable to the public (Compl. ¶¶ 5, 7).

Key Claims at a Glance

• The asserted claim is: "The ornamental design for a bottle, as shown and described" (’436 Patent, CLAIM).
• The key ornamental features shown in solid lines include:
  • The overall proportions of the bottle.
  • A cap with a textured grip and an attachment loop.
  • A smooth, non-fluted main body.
  • A separable bottom portion.

U.S. Design Patent No. D865,527 - "Bottle" (issued November 5, 2019)

• Technology Synopsis: This patent protects an ornamental design for portions of a bottle. Unlike the ’435 and ’436 patents, the ’527 Patent uses broken lines to disclaim the middle body of the bottle, focusing the claimed design exclusively on the appearance of the top cap assembly and the separable bottom portion (’527 Patent, Figs. 1-6; DESCRIPTION). The patent is a continuation of the applications for the '435 and '436 patents and is subject to a terminal disclaimer (’527 Patent, p.1).
• Asserted Claims: One claim for "The ornamental design for a bottle, as shown and described" (’527 Patent, CLAIM).
• Accused Features: The complaint alleges that the cap and base of the accused product have an ornamental appearance that is substantially similar to the design claimed in the ’527 Patent (Compl. ¶¶ 16, 28; image on p. 11).

III. The Accused Instrumentality

Product Identification

The accused product is the "Black Ice Coffee 100% Whey Protein and Supplement Gym Keychain Portable Funnel Container" (the "Accused Product") (Compl. ¶12, Fig. 1).

Functionality and Market Context

The Accused Product is a portable container for nutritional supplements, featuring a screw-on cap with an attached carabiner clip and a screw-off base that allows the device to be used as a funnel (Compl. ¶12, Fig. 1; image on p. 10). The complaint alleges Defendant BRND Products LLC manufactures, imports, offers for sale, and sells the Accused Product through an interactive e-commerce store on Amazon.com, including targeted sales to residents of Illinois (Compl. ¶¶ 11, 12, 14). The complaint includes a screenshot of the Amazon.com product listing for the Accused Product (Compl. ¶12, Fig. 1).

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.

D844,435 Infringement Allegations

D844,436 Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: A primary question will be whether the overall visual impression of the Accused Product is "substantially the same" as any of the patented designs. The analysis may focus on whether the differences in detail between the products are sufficient to avoid infringement in the eye of an ordinary observer.
  • Technical Questions: A factual question arises regarding the surface texture of the Accused Product underneath its label. The infringement allegation against the ’435 Patent (paneled body) may depend on evidence of corresponding fluting on the Accused Product, which is not clearly visible in the complaint's exhibits.
  • The Role of Branding: A potential point of dispute is the effect of the prominent "NUTREND" and "100% WHEY PROTEIN" branding on the Accused Product. A defendant may argue this branding is sufficient to prevent the deception or confusion required by the ordinary observer test, while the plaintiff may argue that infringement is based on the similarity of the underlying product designs, not the trade dress applied to them.

V. Key Claim Terms for Construction

In design patent cases, there are typically no terms to construe in the traditional sense; the claim is defined by the drawings. The central issue is the scope of the claimed design.

• The Term: "The ornamental design for a bottle, as shown and described."
• Context and Importance: The interpretation of this phrase, through the lens of the patent figures, will be determinative. The dispute will center on the visual scope of the elements depicted in solid lines versus those in broken lines. Practitioners may focus on this distinction because elements shown in broken lines are disclaimed and cannot form the basis of an infringement claim. This is particularly relevant for the ’527 Patent, which disclaims the entire middle body of the bottle.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The plaintiff may argue that the overall visual effect and the novel combination of proportions, a three-part construction, and a cap with an integrated clip attachment are the core of the designs, rendering minor deviations immaterial (’435 Patent, Fig. 1; ’436 Patent, Fig. 1).
  • Evidence for a Narrower Interpretation: The defendant may argue that the scope of protection is limited to the exact designs shown, emphasizing any subtle differences in curvature, proportion, or texture. The explicit disclaimer language in each patent—"The broken lines shown in the drawings...form no part of the claimed design"—will be key evidence for limiting the scope of the comparison to only those features shown in solid lines (’435 Patent, DESCRIPTION; ’436 Patent, DESCRIPTION; ’527 Patent, DESCRIPTION).

VI. Other Allegations

• Indirect Infringement: The complaint makes conclusory allegations of indirect infringement for each patent (Compl. ¶¶ 20, 24, 28) and requests relief for "aiding, abetting, [or] contributing to" infringement (Compl. Prayer for Relief ¶1(b)). However, the complaint does not plead specific facts to support the knowledge and intent elements required for such claims.
• Willful Infringement: The complaint alleges that Defendant's infringement was "knowing[] and willful[]" (Compl. ¶¶ 12, 17). It does not allege any facts to support pre-suit knowledge of the patents, such as a cease-and-desist letter or prior litigation.

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

1. A core issue will be one of design similarity: In the eye of an ordinary observer familiar with the prior art, is the accused portable container, with its prominent branding, substantially the same as the specific ornamental designs claimed in the '435, '436, and/or '527 patents?
2. A key evidentiary question will be one of differentiating infringement: Given the distinct features claimed in the patents (e.g., a paneled vs. a smooth body), what evidence will show that the accused product infringes the specific design elements of one patent over another, or whether it infringes multiple patents simultaneously?
3. A central legal and factual question will be the impact of prior art: While not detailed in the complaint, the scope of the asserted design patents will be construed in light of prior art designs. The case may turn on whether the similarities between the accused product and the patented designs are found in features that were already common in the field, which would narrow the scope of protection and weigh against a finding of infringement.