OnMyWhey LLC v. CB Wholesale

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: OnMyWhey, LLC (Delaware)
  • Defendant: CB Wholesale (an unknown entity, allegedly operated by an individual in California)
  • Plaintiff’s Counsel: Greer, Burns & Crain, Ltd.
• Case Identification: 1:22-cv-07345, N.D. Ill., 12/30/2022
• Venue Allegations: Venue is alleged based on Defendant’s operation of an e-commerce store that targets and ships products to consumers in Illinois, thereby committing tortious acts and causing substantial injury within the state.
• Core Dispute: Plaintiff alleges that Defendant’s portable supplement container infringes three U.S. design patents covering the ornamental appearance of a workout accessory bottle.
• Technical Context: The dispute is in the consumer market for fitness accessories, where product design and portability are key differentiators for items like single-serving supplement containers.
• Key Procedural History: U.S. Patent No. D865,527 is a continuation of the applications that matured into U.S. Patent Nos. D844,435 and D844,436 and is subject to a terminal disclaimer. The assertion of related design patents with subtle variations in claimed scope is a notable feature of this case.

Case Timeline

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, titled "Bottle," issued on April 2, 2019 (the ’435 Patent).

The Invention Explained

• Problem Addressed: The complaint does not specify a technical problem but asserts that Plaintiff's products feature "distinctive patented designs" that are a "first of a kind" and are "broadly recognized by consumers" (Compl. ¶7).
• The Patented Solution: The ’435 Patent protects the ornamental design for a bottle as depicted in its figures (D’435 Patent, CLAIM; DESCRIPTION). The claimed design consists of the visual characteristics of a short, wide-mouthed container with a rounded bottom, a screw-on base, and a cap with an integrated loop. Notably, the patent drawings explicitly disclaim the carabiner-style clip by rendering it in broken lines, indicating it is not part of the claimed design (D’435 Patent, col. 2:6-9).
• Technical Importance: The complaint alleges the design is associated with quality and innovation, making genuine products "instantly recognizable" to the public (Compl. ¶¶ 5, 7).

Key Claims at a Glance

• The single claim asserted is for "The ornamental design for a bottle, as shown and described" (D’435 Patent, col. 1:57-58).
• The essential visual elements of the claimed design include:
  • The overall proportions and configuration of the container body and cap.
  • The two-part container body with a separable, screw-on bottom portion.
  • A cap with a ridged side wall and an integrated top loop.
• The complaint asserts infringement of the patent generally, which encompasses the single claim (Compl. ¶¶ 19-22).

U.S. Design Patent No. D844,436 - "Bottle"

• Patent Identification: U.S. Design Patent No. D844,436, titled "Bottle," issued on April 2, 2019 (the ’436 Patent).

The Invention Explained

• Problem Addressed: As with the ’435 Patent, the focus is on creating a unique and recognizable aesthetic for a workout accessory (Compl. ¶7).
• The Patented Solution: The ’436 Patent also protects an ornamental design for a bottle, claiming "the ornamental design for a bottle, as shown and described" (D’436 Patent, CLAIM). The overall container shape is visually very similar to that of the ’435 Patent. However, a critical distinction is that the carabiner-style clip attached to the cap is rendered in solid lines, making it an integral part of the claimed design, unlike in the ’435 Patent (D’436 Patent, Figs. 1-4, 9-10).
• Technical Importance: The design contributes to the same brand recognition and quality association alleged for the family of OnMyWhey designs (Compl. ¶¶ 5, 7).

Key Claims at a Glance

• The single claim asserted is for "The ornamental design for a bottle, as shown and described" (D’436 Patent, col. 1:57-58).
• The essential visual elements include those of the ’435 Patent, plus the specific ornamental appearance of the attached carabiner-style clip.
• The complaint asserts infringement of the patent generally, which encompasses the single claim (Compl. ¶¶ 23-26).

U.S. Design Patent No. D865,527 - "Bottle"

• Patent Identification: U.S. Design Patent No. D865,527, titled "Bottle," issued on November 5, 2019 (the ’527 Patent).
• Technology Synopsis: The ’527 Patent protects an ornamental design for a bottle that shares a strong family resemblance with the designs in the ’435 and ’436 patents. The design includes a container body, cap with a loop, and an attached carabiner shown in solid lines, making the carabiner part of the claimed design (D’527 Patent, Figs. 1-6). The patent is a continuation of the applications that resulted in the ’435 and ’436 patents and includes a terminal disclaimer, which may limit its enforceable term (D’527 Patent, (63), (*)).
• Asserted Claims: The single claim for "The ornamental design for a bottle, as shown and described" (D’527 Patent, CLAIM).
• Accused Features: The complaint alleges that the overall ornamental appearance of the Defendant’s "Portable Protein Powder and Supplement Powder Container" infringes the ’527 Patent (Compl. ¶¶ 12, 16, 28).

III. The Accused Instrumentality

Product Identification

The accused product is identified as the "RNB Digital Portable Protein Powder and Supplement Powder Container Storage to go for Gym and Travel," sold under the brand "Generic" (Compl. ¶12, Fig. 1).

Functionality and Market Context

The product is a small, portable container intended for storing and transporting workout supplements like protein powder (Compl. ¶12). A screenshot from an Amazon.com product listing shows the accused product offered for sale by "CB WHOLESALE" (Compl. p. 8, Fig. 1). The complaint includes photographs of a purchased unit, depicting its three-part construction: a main container body, a screw-on base, and a screw-on cap with an attached carabiner (Compl. p. 9). The complaint alleges the product was purchased by an investigator and shipped to Illinois (Compl. ¶¶ 13-14).

IV. Analysis of Infringement Allegations

D'435 Infringement Allegations

D'436 Infringement Allegations

Identified Points of Contention

• Scope Questions: The primary infringement question is whether an "ordinary observer," familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented design. A key point of contention will arise from the different claim scopes of the patents. The ’435 Patent disclaims the carabiner, while the ’436 and ’527 patents claim it. This raises the question of whether the accused product, which has a carabiner, can infringe a design that expressly excludes that feature.
• Technical Questions: A factual question for the court will be the visual impact of the branding ("GOLD STANDARD WHEY") and other surface ornamentation present on the accused product but absent from the patented designs (Compl. p. 11). The court will have to determine whether these differences are sufficient to prevent an ordinary observer from finding the designs substantially the same.

V. Key Claim Terms for Construction

For design patents, claim construction focuses on the scope of the claimed ornamental features as depicted in the drawings, rather than on textual terms.

• The "Term": The scope of "the ornamental design for a bottle" defined by the solid lines in the patent figures.
• Context and Importance: The central issue in a design patent case is delineating the protected ornamental aspects from unprotected functional elements and disclaimed matter. Practitioners may focus on the broken lines in the ’435 Patent, as they create a clear line of demarcation regarding claim scope that differs from the related ’436 and ’527 patents.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim covers the design "as shown and described," suggesting the overall visual impression created by the combination of all features shown in solid lines is what is protected (D’435 Patent, col. 1:57-58).
  • Evidence for a Narrower Interpretation: The ’435 Patent specification explicitly states: "The broken lines shown in the drawings are included for purposes of illustrating portions of the bottle and form no part of the claimed design" (D’435 Patent, col. 2:6-9). This language provides a definitive basis for arguing that the carabiner is outside the scope of the ’435 patent’s claim, which could be a significant factor in the infringement analysis for that specific patent.

VI. Other Allegations

• Indirect Infringement: The complaint alleges that Defendant infringes "directly and/or indirectly" and asks for an injunction against "aiding, abetting, [or] contributing to" infringement (Compl. ¶20; p. 15, ¶1(b)). However, the complaint does not plead specific facts to support the knowledge and intent elements required for claims of induced or contributory infringement, relying on the same facts as the direct infringement claim.
• Willful Infringement: The complaint alleges that Defendant’s infringement was "knowingly and willfully" committed (Compl. ¶12, ¶17). The pleading does not assert any facts regarding pre-suit knowledge of the patents-in-suit, such as a cease-and-desist letter.

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

1. A core issue will be one of claim scope and disclaimer: Can the accused product, which includes a carabiner, be found to infringe the ’435 Patent, which explicitly disclaims the carabiner through the use of broken lines in its drawings? The answer will depend on whether the remaining claimed features are themselves substantially similar in the eyes of an ordinary observer.
2. The central merits question will be one of visual comparison: For the ’436 and ’527 patents (which claim the carabiner), does the overall ornamental appearance of the accused product, including its specific carabiner, replicate the patented designs to a degree that would deceive an ordinary observer? This analysis will likely discount functional aspects and weigh the visual impact of the third-party branding on the accused product.
3. A key procedural and damages question will be the relationship between the patents: Given the assertion of three related patents with slightly different scopes, the court may need to address issues of double patenting (partially addressed by the terminal disclaimer on the ’527 patent) and how to apportion damages or profits if the accused product is found to infringe more than one design.