OnMyWhey LLC v. Avc13

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: OnMyWhey, LLC (Delaware)
  • Defendant: Avc13 (Panama)
  • Plaintiff’s Counsel: Greer, Burns & Crain, Ltd.
• Case Identification: 1:22-cv-07357, N.D. Ill., 12/30/2022
• Venue Allegations: Plaintiff alleges venue is proper because Defendant operates an interactive e-commerce store that targets and sells products to consumers in Illinois.
• Core Dispute: Plaintiff alleges that Defendant’s portable supplement containers infringe three of its design patents for a "bottle."
• Technical Context: The technology at issue is the ornamental design of workout accessories, specifically small, portable containers for carrying supplement powders.
• Key Procedural History: The 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 the three designs share a common origin and priority date. The complaint identifies Defendant as an "unknown entity" operating an e-commerce store on Amazon.com, a common fact pattern in cases against third-party online sellers.

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: Design patents do not contain a "problem/solution" narrative like utility patents. The filing of the application itself suggests a perceived need for a new, original, and ornamental design for a bottle in the marketplace (Compl. ¶7).
• The Patented Solution: The patent protects the specific ornamental design for a bottle as depicted in its figures (’435 Patent, Claim). The design consists of a small, stout bottle body featuring distinct vertical indentations, a proportionally wide, textured cap, and an eyelet on the cap for an attachment. The drawings show a carabiner-style clip in broken lines, indicating the clip itself is not part of the claimed design, but its environment is shown for context ('435 Patent, Figs. 1, 9).
• Technical Importance: The design provides a distinctive visual appearance for a portable supplement container, intended to be recognizable to consumers in the workout accessories market (Compl. ¶¶ 5, 7).

Key Claims at a Glance

• The single claim is for "The ornamental design for a bottle, as shown and described." ('435 Patent, Claim).
• As a design patent, the claim is defined by the visual representations in the drawings. Key ornamental features include:
  • The overall stout, compact proportions of the bottle.
  • A main body section featuring multiple vertical, recessed panels.
  • A cap with a textured or ribbed side surface.
  • A screw-off bottom compartment.
  • An integrated loop on the top of the cap.

U.S. Design Patent No. D844,436 - "Bottle", Issued April 2, 2019

The Invention Explained

• Problem Addressed: Similar to the '435 patent, this patent addresses the need for a new, original, and ornamental design for a bottle (Compl. ¶7).
• The Patented Solution: The patent protects the specific ornamental design for a bottle as depicted in its figures (’436 Patent, Claim). This design is substantially similar in proportion, cap design, and overall configuration to the '435 patent. The critical distinction is that the main body of the bottle is smooth and does not feature the vertical indentations shown in the '435 patent ('436 Patent, Figs. 1-6). The carabiner clip is also shown in broken lines and is not part of the claimed design.
• Technical Importance: This design offers an alternative aesthetic to the '435 patent, focusing on a smooth, unadorned body while retaining the same overall shape and functional components, creating another recognizable product identity (Compl. ¶¶ 5, 7).

Key Claims at a Glance

• The single claim is for "The ornamental design for a bottle, as shown and described." ('436 Patent, Claim).
• Key ornamental features are nearly identical to the '435 patent, with one key exception:
  • The main body section is smooth and cylindrical, lacking any vertical panels or indentations.

U.S. Design Patent No. D865,527 - "Bottle", Issued November 5, 2019

• Technology Synopsis: The ’527 Patent claims an ornamental design for a bottle that is visually similar to the '436 Patent, featuring a smooth body, a textured cap with an attachment loop, and a screw-off bottom. The broken lines in the figures, including a line around the circumference of the lower body, define the specific boundaries of this claimed design ('527 Patent, Figs. 1-6).
• Asserted Claims: The single claim is for "The ornamental design for a bottle, as shown and described." ('527 Patent, Claim).
• Accused Features: The complaint alleges that the overall visual appearance of Defendant's portable supplement container infringes the design claimed in the '527 patent (Compl. ¶¶ 16, 28).

III. The Accused Instrumentality

Product Identification

"Portable Protein Powder and Supplement Powder Container BPA Free; Pre Workout Storage to go for Gym & Travel; Funnel with Durable Key-Chain" ("Infringing Products") (Compl. ¶12, Fig. 1).

Functionality and Market Context

The accused product is a small, portable container with a screw-off top and bottom, designed for storing and transporting powdered supplements like protein or pre-workout formulas (Compl. ¶12, Fig. 1). It includes a keychain clip for portability. The complaint alleges the product is sold through an Amazon.com e-commerce store operated by Defendant under the alias "AVC13," which targets sales to consumers throughout the United States, including in Illinois (Compl. ¶¶ 2, 11). The complaint includes a screenshot from the accused product's Amazon listing as of November 2, 2022 (Compl. p. 8, Fig. 1).

IV. Analysis of Infringement Allegations

The infringement test for a design patent is whether an "ordinary observer," giving such attention as a purchaser usually gives, would be deceived into purchasing the accused product supposing it to be the patented design. The complaint presents its allegations through side-by-side visual comparisons. The complaint shows a photograph of the accused product, which appears to have a smooth body, alongside drawings from the patents (Compl. ¶16, p. 9).

D'436 Patent Infringement Allegations

Identified Points of Contention

• Scope Questions: A central question will be whether the overall visual impression of the accused product is substantially the same as the patented designs. A defense may focus on differences in specific proportions, the exact texture of the cap, or the visual effect of the prominent branding ("ON GOLD STANDARD 100% WHEY") on the accused product, which is absent from the patented design.
• Technical Questions: A key question for the '435 Patent is whether a smooth-bodied product can infringe a design whose prominent ornamental feature is a set of vertical indentations. The infringement case for the '436 and '527 patents, which claim smooth-bodied designs, appears more direct based on the photographic evidence provided. The court will have to compare one accused product against three distinct (though related) patented designs.

V. Key Claim Terms for Construction

In design patent cases, the "claim" is construed by reference to the figures. The analysis focuses on the overall ornamental design rather than the definition of specific words.

• The Term: "The ornamental design for a bottle, as shown and described."
• Context and Importance: The construction of this "claim" will determine the scope of protection. The analysis will distinguish between ornamental features, which are protected, and any purely functional aspects, which are not. Practitioners may focus on whether the shared features between the patented designs and the accused product (e.g., the general size, the screw-off bottom, the keychain loop) are primarily ornamental or are dictated by function.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party arguing for broader scope might emphasize the overall visual impression created by the combination of the stout proportions, the wide textured cap, the top loop, and the screw-off bottom, arguing these create a distinctive look that the accused product copies.
  • Evidence for a Narrower Interpretation: A party arguing for a narrower scope would point to the specific details and the disclaimer of the carabiner via broken lines ('436 Patent, Fig. 1) as evidence that the claim is limited to the precise visual representation shown. For the '435 patent, the vertical panels would be argued as a critical, non-severable limitation of the design.

VI. Other Allegations

• Indirect Infringement: The complaint includes boilerplate allegations of indirect infringement and requests an injunction against "aiding, abetting, [or] contributing to" infringement (Compl. ¶¶ 20, 24, 28; p. 15, ¶1(b)). However, the factual allegations focus on Defendant's own acts of making, using, offering for sale, and selling the accused products through its Amazon store, which primarily supports a claim of direct infringement (Compl. ¶¶ 11-12).
• Willful Infringement: The complaint asserts that Defendant's infringement was "willful" (Compl. ¶17). The basis for this allegation is the assertion that Defendant acted "knowingly and willfully" (Compl. ¶12). No specific facts supporting pre-suit knowledge of the patents are alleged.

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

1. The Ordinary Observer Test: Will the court find that an ordinary observer would be deceived by the accused product's appearance into believing it is the Plaintiff's patented design, particularly in light of the prominent third-party branding on the accused product and any other minor visual differences?
2. Scope of Distinct Designs: How will the court apply the infringement test when the accused product (which appears smooth-bodied) is compared against three separate designs, one of which ('435 Patent) explicitly claims vertical ridges as a key feature while the other two ('436 and '527 Patents) claim a smooth body? This may lead to different infringement outcomes for each patent.
3. Functionality vs. Ornamentality: A potential issue for the court will be to assess whether the similarities in overall shape, size, and configuration between the accused product and the patented designs are driven by protected ornamental choices or by unprotectable functional constraints for a container of this type.