OnMyWhey LLC v. Partnerships Unincorp Associations

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: OnMyWhey, LLC (Delaware)
  • Defendant: The Partnerships and Unincorporated Associations Identified on Schedule "A" (Jurisdiction unknown, alleged to be primarily People's Republic of China)
  • Plaintiff’s Counsel: Greer, Burns & Crain, Ltd.
• Case Identification: 1:23-cv-03431, N.D. Ill., 05/31/2023
• Venue Allegations: Venue is based on allegations that Defendants operate interactive e-commerce stores that target and make sales to consumers in Illinois.
• Core Dispute: Plaintiff alleges that Defendants’ sale of certain portable supplement containers via online marketplaces infringes three of Plaintiff's U.S. design patents.
• Technical Context: The patents relate to the ornamental designs of portable, multi-compartment containers, commonly used in the fitness market for supplements like protein powder.
• Key Procedural History: The complaint is structured as an action against a group of unidentified defendants, defined by their online "Seller Aliases." This procedural posture suggests an initial focus on obtaining discovery from third-party e-commerce platforms to identify the responsible parties and halt ongoing sales.

Case Timeline

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

U.S. Patent No. D844,435 - "BOTTLE" (issued April 2, 2019)

The Invention Explained

• Problem Addressed: Design patents do not articulate a technical problem in the manner of utility patents. The implicit goal is to create a novel, non-obvious, and ornamental design for an article of manufacture, which the complaint alleges is a "first of a kind design" in the field of workout accessories (Compl. ¶7).
• The Patented Solution: The patent claims the ornamental design for a bottle. The design, as shown in the patent's figures, consists of a squat, jar-like container body with rounded shoulders, a threaded neck, a screw-on cap with an integrated loop, and a separate, detachable screw-on base compartment ('435 Patent, Figs. 1, 9, 10). The broken lines in the drawings, including the carabiner clip, indicate features that are for illustrative purposes only and do not form part of the claimed design ('435 Patent, DESCRIPTION).
• Technical Importance: The complaint alleges that this and related designs are "distinctive" and "broadly recognized by consumers," associating them with the quality and innovation of the OnMyWhey brand (Compl. ¶7).

Key Claims at a Glance

• Design patents have a single claim. The asserted claim is for "The ornamental design for a bottle, as shown and described." ('435 Patent, Claim).
• The core visual elements protected by the claim include the overall shape and proportions of the bottle, the configuration of the cap with its integrated loop, and the presence and look of the detachable bottom compartment.

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

The Invention Explained

• Problem Addressed: As with the '435 Patent, the goal is the creation of a unique ornamental design for a bottle used as a workout accessory (Compl. ¶7).
• The Patented Solution: The '436 Patent claims an ornamental design for a bottle that is visually very similar to the '435 Patent. It features the same general configuration of a main body, a screw-on cap with a loop, and a detachable base ('436 Patent, Figs. 1, 9). A critical distinction is that the carabiner-style clip attached to the cap's loop is depicted in solid lines, indicating that the specific ornamental appearance of the clip itself is part of the claimed design, in combination with the bottle ('436 Patent, Figs. 1-10).
• Technical Importance: The complaint alleges this design is a core part of the "OnMyWhey Designs" that are recognizable to consumers and symbolize quality (Compl. ¶5, ¶7).

Key Claims at a Glance

• The single asserted claim is for "The ornamental design for a bottle, as shown and described." ('436 Patent, Claim).
• The core visual elements include those of the '435 Patent, plus the specific ornamental design of the carabiner clip shown in the drawings.

U.S. Patent No. D865,527 - "BOTTLE" (issued Nov. 5, 2019)

Technology Synopsis

The '527 patent protects the ornamental design for a bottle with an integrated cap loop. This design is a continuation of the applications that led to the '435 and '436 patents ('527 Patent, (63)). It differs from the earlier designs in its specific proportions and contours; the main body features a more continuous, rounded profile compared to the more angular, jar-like shape of the '435 and '436 designs ('527 Patent, Fig. 1). The carabiner clip and dividing lines on the bottle body are shown in broken lines, indicating they are not part of the claimed design ('527 Patent, DESCRIPTION).

Asserted Claims

The single claim for "The ornamental design for a bottle, as shown and described" is asserted ('527 Patent, Claim; Compl. ¶32).

Accused Features

The complaint alleges that the "Infringing Products" sold by Defendants embody and infringe the ornamental design claimed in the '527 patent (Compl. ¶32).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are "bottles" sold by Defendants under various "Seller Aliases" on e-commerce platforms such as Amazon, eBay, AliExpress, and others (Compl. ¶3, ¶11). These are collectively referred to as the "Infringing Products" (Compl. ¶3).

Functionality and Market Context

The products are described as "workout accessories" (Compl. ¶5). The complaint alleges that Defendants' e-commerce stores are intentionally designed to appear as authorized retailers to "unknowing consumers," using common templates, images, and marketing tactics (Compl. ¶14, ¶17). The complaint includes several images representing the patented designs, which the accused products are alleged to infringe (Compl. pp. 4-6). For example, the complaint provides an exploded-view drawing of the '435 and '436 design, illustrating its multi-component nature (Compl. pp. 4-5).

IV. Analysis of Infringement Allegations

Design patent infringement is determined by 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

• Factual Question: The central dispute will be a factual comparison of the accused products' designs to the designs claimed in the patents. The outcome will depend on whether the overall visual impression of the accused products is "substantially the same" as the patented designs.
• Scope Questions: The court will need to determine the scope of the claimed designs, focusing only on the features shown in solid lines. For the '435 Patent, the question is whether the accused bottle itself is infringing, regardless of any clip. For the '436 Patent, the question is whether the combination of the bottle and the specific clip design is infringing. An accused product could potentially infringe one but not the other.
• Evidentiary Question: A key question will be what evidence of the "Infringing Products" is presented. The complaint does not contain photographs of the actual accused products, relying instead on images of the patented designs and allegations that the accused products embody them (Compl. pp. 4-6).

V. Key Claim Terms for Construction

In design patent cases, formal claim construction is less common than in utility patent cases, as the drawings themselves typically define the scope of the claim. The analysis focuses on the overall visual appearance rather than the definition of specific words.

• The Term: "The ornamental design for a bottle, as shown and described."
• Context and Importance: This is the entire claim. Its interpretation is the entire case. Practitioners may focus on which specific visual features are most prominent in creating the "overall visual impression" and how much deviation from the drawings is permissible before a design is no longer "substantially the same." The distinction between the claimed features (solid lines) and unclaimed environment (dashed lines) will be critical.
• Intrinsic Evidence for Interpretation: The patent figures are the primary evidence.
  • Evidence for a Broader Interpretation: A party may argue that the overall concept—a squat, multi-part container with a distinctive cap loop and a separable base—creates a unique visual impression that should be protected against products with minor differences in curvature or proportion. The perspective views could be cited to support an argument for protection of the general three-dimensional form ('435 Patent, Figs. 1, 9, 10).
  • Evidence for a Narrower Interpretation: A party may argue that the design is defined by the precise proportions, surface contours, and specific shapes shown in the front, side, and top views ('435 Patent, Figs. 3-8). Any noticeable difference in the accused product's dimensions or curves could be argued to create a different overall visual impression, thus avoiding infringement.

VI. Other Allegations

• Indirect Infringement: The complaint makes conclusory allegations of indirect infringement and requests injunctive relief against those "aiding, abetting, [or] contributing to" infringement (Compl. ¶24; Prayer ¶1(b)). However, the factual allegations in the complaint focus on Defendants' direct acts of making, using, and selling, and do not plead specific facts to support a claim for either induced or contributory infringement.
• Willful Infringement: The complaint alleges that Defendants' infringement was willful (Compl. ¶21). This allegation is based on assertions that Defendants are "working in active concert to knowingly and willfully" sell infringing products and participate in online forums discussing tactics for evading enforcement of intellectual property rights (Compl. ¶18, ¶20). This suggests an allegation of pre-suit knowledge and intent.

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

• A central issue will be one of visual identity: Will the specific designs of the Defendants' accused products, once identified and presented as evidence, be considered "substantially the same" as the patented designs in the eyes of an ordinary observer? This factual determination will be the core of the infringement analysis.
• The case presents a significant procedural question regarding enforcement: Can the Plaintiff successfully identify, serve, and obtain jurisdiction over the anonymous online sellers operating under fictitious aliases, and can any resulting injunction be effectively enforced against both the sellers and the third-party e-commerce platforms they use?
• Finally, a key question will be one of design differentiation: Given the assertion of three related but distinct design patents, the court will need to parse the specific visual elements protected by each. The analysis may turn on subtle differences, such as whether an accused product includes a clip that matches the one claimed in the '436 patent or has a body shape closer to that claimed in the '527 patent.