DCT
1:18-cv-03714
Smart Solar Inc v. Best Choice Products Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Smart Solar Inc. d/b/a Smart Living Home & Garden (Wyoming)
- Defendant: Sky Billiards, Inc. d/b/a Best Choice Products (California)
- Plaintiff’s Counsel: McDonnell Boehnen Hulbert & Berghoff LLP; Woodard, Emhardt, Moriarty, McNett & Henry LLP
- Case Identification: 1:18-cv-03714, S.D. Ind., 11/27/2018
- Venue Allegations: Venue is alleged to be proper based on Defendant’s distribution facility in Indiana, its business transactions in the district, and an admission by Defendant in a prior related action that venue would be proper in this district for the patent claim.
- Core Dispute: Plaintiff alleges that Defendant’s solar-powered birdbaths and fountains infringe a patent related to an integrated, submersible solar panel and pump assembly for water features.
- Technical Context: The technology concerns self-contained, solar-powered water features, such as decorative garden fountains and birdbaths, which do not require external power sources or separate solar panels.
- Key Procedural History: Plaintiff alleges it sent a notice letter to Defendant regarding the patent-in-suit on February 22, 2017. The complaint also notes a prior lawsuit between the parties in the Northern District of Illinois involving copyright and trademark claims, from which the current patent claim was effectively transferred. The parties allegedly engaged in an unsuccessful mediation regarding the patent infringement claims on September 21, 2018, prior to the filing of this complaint.
Case Timeline
| Date | Event |
|---|---|
| 2002-01-01 | Plaintiff begins selling Smart Living Portsmouth Birdbath product |
| 2003-07-31 | '671 Patent Priority Date |
| 2005-01-01 | Plaintiff begins selling Country Gardens and Chatsworth products |
| 2009-02-03 | '671 Patent Issue Date |
| 2017-02-22 | Plaintiff sends letter to Defendant apprising it of the '671 Patent |
| 2018-09-21 | Parties engage in unsuccessful mediation on patent infringement |
| 2018-11-27 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,484,671 - "Water Feature" (issued February 3, 2009)
The Invention Explained
- Problem Addressed: The patent describes two problems with prior art solar-powered water features. First, motor-driven pumps suffer from premature brush wear, especially in low-light conditions where insufficient current causes sparking without useful operation ('671 Patent, col. 1:48-58). Second, conventional designs require a separate solar panel placed some distance from the water feature, connected by an unsightly and inconvenient electrical cable ('671 Patent, col. 2:47-56).
- The Patented Solution: The invention solves these problems with a self-contained water feature where the operating components are integrated and submerged. It describes a vessel containing a water pump and a solar panel, where the solar panel is positioned above the pump but below the water's surface ('671 Patent, col. 3:1-4). A key aspect is an "insert" that holds the solar panel and separates the vessel into an upper water-containing portion and a lower portion housing the pump, with a "return path" allowing water to circulate from the upper portion back to the pump in the lower portion ('671 Patent, Abstract; Fig. 1).
- Technical Importance: This integrated design improves aesthetics and user convenience by eliminating external components and wiring, creating a single, compact unit that is easy to install and visually unobtrusive ('671 Patent, col. 3:5-12).
Key Claims at a Glance
- The complaint asserts independent Claim 1 and dependent Claims 2-4, 6, 8, and 10-11 (Compl. ¶47).
- Independent Claim 1 recites the following essential elements:
- A vessel for containing water;
- An electrically powered submersible water pump within the vessel;
- A solar panel to power the pump;
- The solar panel is disposed within the vessel, above the pump, and beneath the water level in use;
- An insert carrying the solar panel separates the vessel into an upper water containing portion and a lower water containing portion;
- The water pump is positioned in the lower water containing portion below the insert;
- A return path, defined by the insert, allows water to flow from the upper portion to the lower portion.
III. The Accused Instrumentality
Product Identification
- The complaint identifies four accused products: the "Best Choice SKY3258 Birdbath product," "Best Choice SKY3151 Birdbath product," "Best Choice SKY2532 Fountain product," and "Best Choice SKY3150 Fountain product" (collectively, the "Accused Products") (Compl. ¶47).
Functionality and Market Context
- The Accused Products are described as solar-powered birdbaths and fountains that operate by recycling water (Compl. ¶¶53, 57). The complaint alleges that these products are "knock-offs or imitations" of Plaintiff's own products and are sold through the same online channels of trade, such as Amazon.com and Walmart.com (Compl. ¶¶23, 26-27). The complaint provides a side-by-side photographic comparison of Plaintiff's Country Gardens Birdbath and Defendant's SKY3258 product, showing similar overall aesthetic and functional designs (Compl. ¶28, p. 7). This visual suggests the products share a common form factor with a pedestal base, a basin, and a central, integrated solar fountain mechanism (Compl. p. 7). Functionally, the complaint alleges the products operate using a "discreet hidden reservoir" and a "concealed water pump," which it maps to the claimed structure of a separated vessel with upper and lower water chambers (Compl. ¶¶53, 57).
IV. Analysis of Infringement Allegations
'671 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A water feature comprising: (a) a vessel for containing water; | The accused SKY3258 Birdbath product is a water feature that includes a vessel (basin) for containing water. | ¶52 | col. 8:17-18 |
| (b) an electrically powered submersible water pump within the vessel for pumping water within the vessel to an outlet of the water feature; | The product includes an electrically powered submersible water pump within the vessel. The instruction manual allegedly refers to a "solar pump." | ¶52 | col. 8:19-22 |
| and (c) a solar panel arranged to provide electrical power to said water pump; | The product includes a solar panel to power the pump. | ¶52 | col. 8:23-24 |
| wherein the solar panel is disposed within said water vessel above the water pump and so as to be beneath the water level in the vessel in use; | The product's instruction manual allegedly directs users to "make sure the pump is fully submerged in water when placing the solar pump on the birdbath," indicating the solar panel assembly is submerged. | ¶53 | col. 8:25-27 |
| and wherein an insert carrying the solar panel separates the vessel into an upper water containing portion and a lower water containing portion; the water pump is positioned in the lower water containing portion of the vessel... | The complaint alleges this structure is present, citing Defendant's website which states the "fountain recycles water from a discreet hidden reservoir." This hidden reservoir is alleged to be the lower water containing portion, separated from the upper portion by the insert that carries the solar panel. | ¶53 | col. 8:28-32 |
| and a return path is defined by the insert for water from the upper water containing portion of the vessel to the lower water containing portion of the vessel. | This element is alleged to be met by the structure that allows water to be recycled from the main basin back into the "discreet hidden reservoir" to supply the pump. | ¶53 | col. 8:32-34 |
- Identified Points of Contention:
- Scope Questions: A primary dispute may arise over the interpretation of an "insert carrying the solar panel" that "separates the vessel." The case may turn on whether the accused products' integrated pump-and-panel module can be considered an "insert" and whether it achieves the claimed "separation" into two distinct water-containing portions, or if its structure is materially different.
- Technical Questions: The complaint relies on marketing language like "discreet hidden reservoir" to evidence the claimed structure (Compl. ¶53). A key question for the court will be whether the physical construction of the Accused Products actually corresponds to the claimed architecture. The nature and location of the "return path" will also require factual evidence beyond the general allegation that water is "recycled."
V. Key Claim Terms for Construction
The Term: "insert"
- Context and Importance: This term is central to the claimed structure. The infringement analysis depends on whether the accused products' solar panel module qualifies as an "insert" that both carries the panel and separates the vessel. Practitioners may focus on this term because its definition will determine whether a single, integrated solar/pump housing meets the limitation, or if a more distinct component is required.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes "an insert 5... On the top of the insert 5 is provided a solar panel 4 the insert and solar panel constituting a solar panel assembly" ('671 Patent, col. 5:19-24). This language suggests that the "insert" and "solar panel" can be part of a single, unified "assembly," which may support reading the claim on an integrated module.
- Evidence for a Narrower Interpretation: The claim recites "an insert carrying the solar panel," and Figure 1 depicts the insert (5) and solar panel (4) as separately numbered components. This could support an argument that the "insert" must be a structurally distinct component from the solar panel itself, rather than a single molded housing that contains the solar cells.
The Term: "separates the vessel into an upper water containing portion and a lower water containing portion"
- Context and Importance: This phrase defines the fundamental architecture of the invention. The dispute will hinge on what degree of physical division is required to "separate" the vessel.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent itself requires a "return path" between the two portions, indicating the separation is not absolute or hermetic ('671 Patent, col. 8:32-34). This suggests that any structure creating two functionally distinct water volumes, one above the other, would meet the limitation.
- Evidence for a Narrower Interpretation: The specification describes the insert as being "supported on a peripheral ridge 103" of the vessel ('671 Patent, col. 5:20-21). This could imply that to "separate" the vessel, the insert must extend to the vessel's periphery, creating a more definitive partition than a centrally located module might provide.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendant induces infringement by providing instruction manuals and website content that instruct customers to assemble and use the Accused Products in a manner that directly infringes the '671 patent (Compl. ¶¶48, 59).
- Willful Infringement: The willfulness allegation is based on alleged pre-suit knowledge of the '671 Patent. Plaintiff claims it sent a notice letter to Defendant on February 22, 2017, nearly two years before filing suit (Compl. ¶¶44, 60). The complaint further alleges that Defendant's infringement continued after this notice and after a failed mediation on the patent issue, and points to a list of prior intellectual property lawsuits against Defendant as evidence of a pattern of disregard for IP rights (Compl. ¶¶24, 45, 60).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of structural interpretation: does the accused products' integrated solar pump module constitute an "insert carrying the solar panel" that "separates" the birdbath's basin into two distinct water portions as required by Claim 1, or is there a material difference in the physical construction?
- A key evidentiary question will be one of factual correspondence: does the marketing language cited in the complaint, such as "discreet hidden reservoir," accurately reflect a physical structure in the accused products that maps onto the specific limitations of the patent's claims, particularly the "separation" and "return path" elements?
- A third significant question will concern willfulness: given the specific allegations of a pre-suit notice letter and a subsequent failed mediation, the court will likely scrutinize the evidence regarding Defendant’s knowledge and intent, both before and after being formally apprised of the '671 patent.