MD LLC v. Partnerships Unincorp Associations

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Milkmen Design, LLC (Ohio)
  • Defendant: The Partnerships and Unincorporated Associations Identified in Schedule “A” (China/Foreign)
  • Plaintiff’s Counsel: Flener IP Law, LLC
• Case Identification: 1:23-cv-00877, N.D. Ill., 02/13/2023
• Venue Allegations: Venue is alleged to be proper based on Defendants directly targeting business activities and selling products to consumers in Illinois through interactive e-commerce websites.
• Core Dispute: Plaintiff alleges that Defendants’ online sales of counterfeit vehicle condiment holders infringe three of Plaintiff's design patents.
• Technical Context: The technology at issue is a consumer product designed to hold standard fast-food dipping sauce containers by clipping onto a vehicle's air vent, enabling mess-free use while driving.
• Key Procedural History: The complaint does not mention any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patents-in-suit.

Case Timeline

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. D899,196

• Patent Identification: U.S. Design Patent No. D899,196, “Condiment Holder,” issued October 20, 2020.
• The Invention Explained:
  • Problem Addressed: The complaint identifies a need for a way to allow a vehicle occupant to "enjoy dipping sauce in their vehicles without creating a mess" (Compl. ¶6).
  • The Patented Solution: The patent discloses an ornamental design for a condiment holder. The claimed design consists of the specific aesthetic appearance of the receptacle portion, which is depicted from multiple perspectives in the patent's figures (’196 Patent, Figs. 1-8). The patent explicitly states that the clip mechanism, shown in broken lines, is for illustrative purposes only and forms "no part of the claimed design" (’196 Patent, Description).
  • Technical Importance: The design provides a dedicated, purpose-built solution for securing a common type of food packaging within a vehicle, addressing a widespread consumer inconvenience (Compl. ¶6).
• Key Claims at a Glance:
  • The patent contains a single claim for "The ornamental design for a condiment holder, as shown and described" (’196 Patent, Claim).
  • The scope of the claim is defined by the visual appearance of the elements shown in solid lines in Figures 1-8.

U.S. Patent No. D960,653

• Patent Identification: U.S. Design Patent No. D960,653, “Condiment Holder,” issued August 16, 2022.
• The Invention Explained:
  • Problem Addressed: The patent addresses the same problem of consuming dipping sauces in a vehicle without making a mess (Compl. ¶6).
  • The Patented Solution: The patent protects an ornamental design for a condiment holder. The portion of the design shown in solid lines, which constitutes the claimed invention, appears visually identical to the design claimed in the ’196 Patent (’653 Patent, Figs. 1-8). This patent shows the claimed holder design in the context of a different, unclaimed clip structure, which is depicted in broken lines (’653 Patent, Description).
  • Technical Importance: The design provides the same functional solution as described for the ’196 Patent (Compl. ¶6).
• Key Claims at a Glance:
  • The patent contains a single claim for "The ornamental design for a condiment holder, as shown and described" (’653 Patent, Claim).
  • The scope is defined by the solid-line drawings in Figures 1-8.

Multi-Patent Capsule

• Patent Identification: U.S. Design Patent No. D960,654, “Condiment Holder,” issued August 16, 2022.
• Technology Synopsis: The patent protects the ornamental design for a vehicle condiment holder intended to solve the problem of mess-free dipping sauce consumption in a car (Compl. ¶6). The claimed design, depicted in solid lines, appears identical to that in the ’196 and ’653 patents, but is shown with a third variation of an unclaimed clip structure (’654 Patent, Figs. 1-9; Compl. ¶8).
• Asserted Claims: The single design claim is asserted (Compl. ¶34).
• Accused Features: The overall ornamental design of the condiment holders sold by Defendants is accused of infringing the patent (Compl. ¶37).

III. The Accused Instrumentality

• Product Identification: The accused instrumentalities are "Infringing Products" described as "counterfeit" and "inferior imitations" of Plaintiff's SAUCEMOTO-branded vehicle condiment holders (Compl. ¶¶3, 18, 34).
• Functionality and Market Context: The complaint alleges that Defendants manufacture, import, and sell these physical products through numerous online storefronts on platforms including Alibaba, AliExpress, Amazon, DHgate, eBay, and Wish (Compl. ¶19). These products are designed to hold condiment containers and are sold and shipped to consumers throughout the United States, including Illinois (Compl. ¶¶17, 26). The complaint alleges Defendants operate an "interrelated group" that creates stores designed to appear to be selling genuine SAUCEMOTO products (Compl. ¶18).

IV. Analysis of Infringement Allegations

The complaint does not contain a claim chart. The infringement theory for a design patent rests on the "ordinary observer" test, which the complaint alleges is met.

D'196, D'653, and D'654 Infringement Allegations

The complaint asserts that Defendants infringe the patents-in-suit by making, using, selling, and importing products with ornamental designs that are "substantially the same, if not identical" to the patented designs (Compl. ¶37). The core allegation is that the resemblance is close enough "to deceive an ordinary observer, inducing such observer to purchase" an infringing product believing it to be the product protected by Plaintiff's patents (Compl. ¶37). The complaint provides a table with figures of the three asserted design patents, illustrating the ornamental designs for the condiment holders that are subject to comparison. (Compl. ¶8).

• Identified Points of Contention:
  • Scope Questions: A central issue will be the proper scope of the comparison. The analysis must focus only on the ornamental features shown in solid lines in the patent drawings, while ignoring the different clip structures shown in broken lines, as those are explicitly disclaimed (’196 Patent, Description). The fact that Plaintiff patented the same holder design with three different unclaimed clips may suggest an intent to claim the holder design broadly, irrespective of the attachment mechanism.
  • Technical Questions: The ultimate question for the fact-finder will be whether an ordinary observer, giving the attention a purchaser usually gives, would find the accused products' designs substantially the same as the claimed designs. This comparison must be made in light of the prior art of record. The complaint does not provide images of the accused products, which will be essential evidence for this comparison.

V. Key Claim Terms for Construction

As this is a design patent case, the "claim" is the visual design depicted in the drawings rather than a set of text-based limitations. Consequently, traditional claim construction of specific terms is not the central issue. Instead, the focus is on the overall ornamental appearance of the claimed design as a whole.

• The "Term": The ornamental design for a condiment holder.
• Context and Importance: The interpretation of the design's scope is the crux of the infringement analysis. The key dispute will likely involve defining the legally protected visual elements and distinguishing them from unclaimed functional or environmental aspects. Practitioners may focus on the visual boundary between the solid (claimed) and broken (unclaimed) lines.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patents claim the design for a "condiment holder" generally, without limitation to a particular type of condiment or vehicle (’196 Patent, Title). The consistent claiming of the same holder design across three patents with different environmental structures may be argued to show that the holder design itself is the core invention with broad application.
  • Evidence for a Narrower Interpretation: The scope is strictly defined by the specific visual appearance shown in the drawings, including the proportions, contours, and surface configuration (’196 Patent, Figs. 1-8). The express disclaimer that "broken lines illustrate portions... which form no part of the claimed design" provides a clear and explicit limitation on the scope of the claim (’196 Patent, Description).

VI. Other Allegations

• Indirect Infringement: While not pleaded as a separate count, the complaint alleges that Defendants are an "interrelated group of infringers working in active concert" (Compl. ¶28). The prayer for relief requests an injunction against "aiding, abetting, contributing to, or otherwise assisting anyone in infringing" the designs (Prayer for Relief, I.ii), which suggests that theories of indirect or joint infringement may be advanced.
• Willful Infringement: The complaint alleges that Defendants' infringement was "willful" (Compl. ¶29). This allegation is based "upon information and belief" that Defendants have had "full knowledge of Plaintiff's ownership of the... design patents" (Compl. ¶21).

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

• A core issue will be one of visual comparison: from the perspective of an ordinary observer familiar with the prior art, is the ornamental design of the accused products substantially the same as the specific claimed design shown in solid lines in the patents-in-suit? The case will depend on a visual, side-by-side comparison of the accused products and the patent drawings.
• A key question will be the evidentiary basis for liability: the complaint sues a large, unidentified group of online sellers. A central challenge for the Plaintiff will be to present sufficient evidence linking the specific accused products to each of the named Defendant entities and establishing that their conduct meets the "ordinary observer" test for infringement.
• A final question involves the interplay of intellectual property rights: the complaint alleges trademark counterfeiting, copyright infringement, and design patent infringement. While related, the legal test for design patent infringement is distinct. A key issue will be how the court and the parties distinguish the "substantially the same" test for design patents from the "likelihood of confusion" test for trademarks.