DCT
1:22-cv-07349
OnMyWhey LLC v. Element Monkey LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: OnMyWhey, LLC (Delaware)
- Defendant: Element Monkey LLC (New York)
- Plaintiff’s Counsel: Greer, Burns & Crain, Ltd.
- Case Identification: [OnMyWhey, LLC](https://ai-lab.exparte.com/party/onmywhey-llc) v. [Element Monkey LLC](https://ai-lab.exparte.com/party/element-monkey-llc), 1:22-cv-07349, N.D. Ill., 12/30/2022
- Venue Allegations: Venue is based on Defendant’s operation of an e-commerce store that targets and sells products to consumers in Illinois.
- Core Dispute: Plaintiff alleges that Defendant’s portable supplement container infringes the ornamental designs protected by three of Plaintiff's U.S. design patents.
- Technical Context: The patents relate to the ornamental design of portable containers used for storing and transporting nutritional supplements, a product category within the fitness and workout accessories market.
- 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, indicating a related design evolution and shared priority for common design elements. The complaint does not mention any other prior litigation or administrative proceedings.
Case Timeline
| Date | Event |
|---|---|
| 2016-12-12 | Priority Date for D'435 and D'436 Patents |
| 2018-02-06 | Filing Date for D'527 Patent |
| 2019-04-02 | Issue Date for D'435 Patent |
| 2019-04-02 | Issue Date for D'436 Patent |
| 2019-11-05 | Issue Date for D'527 Patent |
| 2022-11-21 | Date of screenshot of Defendant's E-Commerce Store |
| 2022-12-30 | 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 protect ornamental appearance rather than functional solutions. The patent does not describe a technical problem, but instead claims a novel ornamental design for a bottle. (D'435 Patent, Claim).
- The Patented Solution: The patent protects the specific visual appearance of a portable container. The claimed design consists of a short, wide-bodied bottle with a rounded upper shoulder, a threaded neck, and a cap featuring a textured or ridged side surface and an integrated loop for attachment. The bottom of the bottle is a separate, screw-on compartment of similar diameter. The overall impression is established by the specific proportions and contours depicted in the patent's figures. (D'435 Patent, FIG. 1, 9). The design explicitly disclaims the carabiner-style clip, which is shown in broken lines and forms no part of the claimed design. (D'435 Patent, Description).
- Technical Importance: The complaint alleges that the patented bottle design is a "first of a kind design" and that products incorporating it have become "enormously popular" and are "broadly recognized by consumers." (Compl. ¶¶ 5, 7).
- Key Claims at a Glance:
- The patent asserts a single claim for "The ornamental design for a bottle, as shown and described." (D'435 Patent, Claim).
- The essential ornamental elements comprising the design include:
- The overall proportions of the bottle, cap, and base compartment.
- The rounded shoulder profile of the main body.
- The specific ridged texture on the side of the cap.
- The integrated loop structure on the top of the cap.
- The presence of a distinct, screw-on bottom compartment.
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 an ornamental design for a bottle, not a functional utility. (D'436 Patent, Claim).
- The Patented Solution: The design claimed in the '436 Patent is visually almost identical to that of the '435 Patent. It claims the specific ornamental appearance of a bottle composed of a main body, a screw-on cap with an attachment loop, and a screw-on base compartment. (D'436 Patent, FIG. 1, 9). Like its companion patent, it disclaims the carabiner clip shown in broken lines. (D'436 Patent, Description). The two patents originated from separate applications filed on the same day.
- Technical Importance: The commercial significance alleged for the '435 Patent design applies equally to this patent, as they cover nearly indistinguishable designs. (Compl. ¶¶ 5, 7).
- Key Claims at a Glance:
- The patent asserts a single claim for "The ornamental design for a bottle, as shown and described." (D'436 Patent, Claim).
- The essential ornamental elements are the same as those listed for the '435 Patent, concerning the overall shape, proportions, cap design, and multi-part construction.
U.S. Design Patent No. D865,527, "Bottle", issued November 5, 2019
- Technology Synopsis: This patent claims an ornamental design for a bottle that is a variation of the designs in the '435 and '436 patents. A notable difference in the '527 Patent is the use of broken lines around the mid-section and base of the bottle body, indicating that the surface appearance of those areas is not part of the claimed design. ('527 Patent, FIG. 1, 3). This potentially broadens the scope of the design to cover bottles with different bottom configurations or mid-section textures.
- Asserted Claims: The patent asserts a single claim for "The ornamental design for a bottle, as shown and described." ('527 Patent, Claim).
- Accused Features: The complaint alleges that the overall ornamental appearance of Defendant's "Element Monkey" container infringes this design. (Compl. ¶¶ 28, 16). The complaint provides a visual comparison of the accused product to the drawings of the '527 Patent. (Compl. p. 11).
III. The Accused Instrumentality
- Product Identification: The accused product is the "Element Monkey 3.7 oz, Portable Protein and Supplement Powder Container Storage on The go for Gym and Travel." (Compl. ¶12, Fig. 1).
- Functionality and Market Context: The product is a portable, multi-compartment container designed for storing and carrying items like protein and supplement powder. (Compl. ¶12, Fig. 1). Defendant allegedly sells the product throughout the United States, including to residents of Illinois, through a "fully interactive e-commerce store" on Amazon.com under the alias "Element Monkey." (Compl. ¶¶ 10, 11). The Amazon product listing for the accused product is included as Figure 1 in the complaint. (Compl. p. 8).
IV. Analysis of Infringement Allegations
Design patent infringement is determined from the perspective of an "ordinary observer." Infringement is found if, in the eye of an ordinary observer, the resemblance between the patented design and the accused design is such as to deceive the observer into purchasing one supposing it to be the other. The complaint alleges infringement through direct side-by-side visual comparisons.
A photograph from the complaint shows the accused product, which consists of a black, multi-part container with a cap, an integrated loop, and a main body. (Compl. p. 9).
D'435 Patent Infringement Allegations
| Claim Element (from the Design "as shown") | Alleged Infringing Feature | Complaint Citation | Patent Citation |
|---|---|---|---|
| Overall visual impression created by the combination of a cap, main body, and screw-on base compartment | The accused product is a multi-part container with a cap, main body, and screw-on base, creating a substantially similar overall appearance. | ¶16; p. 9 | FIG. 9 |
| A cap with a ridged side surface and an integrated top loop | The accused product's cap features a ridged side surface and an integrated loop for attachment. | ¶16; p. 9 | FIG. 1, 7 |
| A short, wide main body with a rounded upper shoulder | The accused product’s main body has a short, wide profile with a rounded upper shoulder, visually matching the patented design's contour. | ¶16; p. 9 | FIG. 3 |
| A distinct bottom compartment of similar diameter to the main body | The accused product features a distinct, screw-on bottom compartment with a diameter that matches the main body. | ¶16; p. 9 | FIG. 9 |
- Identified Points of Contention:
- Overall Impression: The central question will be whether an ordinary observer would find the overall visual appearance of the accused product to be substantially the same as the '435 design. This will involve comparing the claimed features as a whole rather than as individual elements.
- Impact of Surface Ornamentation: A key issue may be the effect of the large text ("DON'T THINK JUST DO") printed on the accused product. The defense may argue this text distinguishes the product's appearance, while the plaintiff may argue it does not change the underlying "substantially similar" shape and structure protected by the patent.
D'436 Patent Infringement Allegations
The infringement allegations for the '436 Patent are substantively identical to those for the '435 Patent, as the claimed designs are nearly indistinguishable. The complaint uses the same visual evidence to support infringement of both patents. (Compl. pp. 9-10). The points of contention are therefore the same as those identified above for the '435 Patent.
V. Key Claim Terms for Construction
In design patent cases, the "claim" is understood to be the design itself as depicted in the drawings. The court's task is not to construe words but to determine the scope of the claimed design as a whole.
- The Term: "The ornamental design for a bottle, as shown and described"
- Context and Importance: The scope of protection is defined by the visual characteristics of the design shown in solid lines in the patent figures. The central dispute will be whether the accused product's design is "substantially the same" as this claimed design. Practitioners may focus on the distinction between what is shown in solid lines (claimed) and what is shown in broken lines (unclaimed), as this is critical to defining the boundaries of the protected design.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent claims the design for a "bottle" generally, not one for a specific purpose, which could support application to any container with the claimed appearance. The use of multiple views (perspective, side, top, bottom, exploded) collectively defines the design from all angles. (D'435 Patent, FIG. 1-10).
- Evidence for a Narrower Interpretation: The explicit disclaimer of the carabiner clip via broken lines is a clear limitation on the scope of the design. The patent 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, Description). This language definitively excludes the clip from the protected design and focuses the infringement analysis only on the elements shown in solid lines.
VI. Other Allegations
- Indirect Infringement: The complaint makes conclusory allegations of indirect infringement. (Compl. ¶¶ 20, 24, 28). It does not, however, plead specific facts to support the knowledge and intent elements required for a claim of induced infringement, nor does it detail any non-staple components for a contributory infringement theory.
- Willful Infringement: Plaintiff alleges that Defendant's infringement was "knowingly and willfully" committed. (Compl. ¶12, 17). The complaint does not allege pre-suit notice was provided to the Defendant. The basis for willfulness appears to rest on the alleged copying of a "first of a kind design" and continued sales after the lawsuit was filed. (Compl. ¶¶ 7, 12).
VII. Analyst’s Conclusion: Key Questions for the Case
- The "Ordinary Observer" Test: A core issue will be one of visual comparison: Will an ordinary observer, giving such attention as a purchaser usually gives, be deceived into purchasing the Element Monkey product believing it to be the patented OnMyWhey design? The analysis will have to account for both the similarities in overall shape and proportions and the differences, such as the prominent text on the accused product.
- Scope of the Claimed Design: A key legal question will be the impact of unclaimed features. How will the court weigh the effect of the unclaimed carabiner clip (disclaimed in the patents) and the surface branding on the accused product when assessing whether the overall ornamental impressions are substantially the same?
- Distinguishing Between Patents: Given the visual similarity of the asserted designs, particularly between the D'435 and D'436 patents, a question arises as to whether the infringement analysis will differ meaningfully for each patent, especially for the D'527 patent, which disclaims different portions of the bottle's surface via broken lines.