DCT

2:06-cv-09170

Southern Snow Mfg Co Inc v. SnoWizard Holdings Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:06-cv-09170, E.D. La., 08/27/2011
  • Venue Allegations: Venue is alleged to be proper in the Eastern District of Louisiana because the Defendants are subject to personal jurisdiction, conduct business in the district, and the acts complained of occurred or originated there.
  • Core Dispute: Plaintiffs, a group of competitors and distributors, allege that Defendant SnoWizard and its principal engaged in a fraudulent scheme to monopolize the snowball shaved-ice market by asserting and obtaining invalid patent and trademark rights.
  • Technical Context: The technology concerns horizontal block ice-shaving machines and related components used in the commercial production of "snowball" shaved-ice confections.
  • Key Procedural History: The complaint alleges a long history of intellectual property disputes, including a 1984-1986 litigation that found SnoWizard had no patent or trade-dress rights in its ice-shaving machine at that time. The current complaint is an amended complaint consolidating several related cases and brings claims for declaratory judgment of patent invalidity, in addition to numerous claims related to trademark fraud and unfair competition. The invalidity claims are based on allegations of an on-sale bar and inequitable conduct before the U.S. Patent and Trademark Office (USPTO), specifically related to the revival of patent applications that were abandoned for 20 months.

Case Timeline

Date Event
1984-01-01 Prior litigation (Sno-Wizard v. Eisenmann) begins, ultimately finding SnoWizard had no patent rights in its machine.
1995-04-09 U.S. Patent No. 4,655,403, related to "stabilization means" for the SnoWizard machine, is abandoned.
2002-01-03 SnoWizard allegedly places Purchase Order for 350 units of the new cast-steel ratchet linkage from PMI.
2002-01-01 SnoWizard allegedly began public use and sale of its new ratchet linkage, the subject of the future '871 Patent.
2004-01-29 Priority Date: Provisional patent application for the leg design ('459 Patent) filed.
2004-02-06 Priority Date: Provisional patent application for the new ratchet linkage ('871 Patent) filed.
2005-01-31 Non-provisional patent applications for both the '871 and '459 patents filed.
2007-06-13 Patent applications for both the '871 and '459 patents become abandoned for non-payment of issue fees.
2009-02-16 Ronald Sciortino signs statements declaring the 20-month delay in seeking revival of the patent applications was "unintentional".
2009-05-26 Issue Date: U.S. Patent No. 7,536,871 issues.
2009-06-09 Issue Date: U.S. Patent No. 7,543,459 issues.
2011-04-12 SnoWizard sues Southern Snow for infringement of the '871 Patent.
2011-08-27 Complaint Filing Date.

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

U.S. Patent No. 7,536,871 - "Icemaker with Improved Cam Assembly"

The Invention Explained

  • Problem Addressed: The patent's background describes prior art cam assemblies for advancing a block of ice in an icemaker as being composed of multiple parts held together by pins. This multi-part construction was allegedly labor-intensive to manufacture and prone to wear, particularly the pin that engages the ratchet teeth, leading to a short in-use life and the need for frequent replacement (’871 Patent, col. 1:51-68).
  • The Patented Solution: The invention is a cam assembly featuring a "single elongated structure," or unitary cam member, that replaces the prior multi-part assembly (’871 Patent, col. 2:51-53). This one-piece design, suitable for manufacturing via injection molding, includes an "indented cavity" on its bottom surface specifically shaped to receive a ratchet tooth, which allows the cam member to complete a full arc-of-rotation and advance the ice block more effectively (’871 Patent, col. 4:1-24; Fig. 4).
  • Technical Importance: This design approach seeks to reduce manufacturing complexity and cost while increasing the durability and useful life of a critical mechanical component in the ice-shaving machine (’871 Patent, col. 2:18-26).

Key Claims at a Glance

  • The complaint seeks a declaratory judgment of invalidity of the patent as a whole, not specific claims (Compl. ¶909). Independent claim 1 is representative:
    • A cam assembly for an icemaker having a pusher arm with ratchet teeth comprising:
    • a cam connector... adapted to be coupled to a handle of said icemaker; and,
    • a cam member having a single elongated structure that has a gradually tapering width from back to front, the back having a forked end pivotally coupled to said cam connector and the front having a second end, the second end has formed in a bottom surface thereof, a indented cavity for receipt of a ratchet tooth.

U.S. Patent No. 7,543,459 - "Leg Support Assembly for an Icemaker"

The Invention Explained

  • Problem Addressed: The patent's background explains that prior icemaker support legs had a design, specifically a lower bar, that would sit in a catch pan and trap water. This trapped water led to the development of "scum and mold," and cleaning was described as "awkward and cumbersome" because the entire machine had to be lifted (’459 Patent, col. 1:30-46).
  • The Patented Solution: The invention is a leg support with an "A-line contour" where the two side-by-side legs are separated by a lower "elevated crossbar" (’459 Patent, col. 2:21-25). This elevation of the crossbar creates a space underneath, allowing water that collects in the catch pan to flow freely around and through the leg assembly to a drain, thereby preventing water from being trapped and minimizing the formation of scum (’459 Patent, col. 2:30-35; Fig. 1).
  • Technical Importance: The design is intended to improve the sanitation and ease of maintenance for commercial food equipment by facilitating better drainage in the machine's catch pan (’459 Patent, col. 2:35-39).

Key Claims at a Glance

  • The complaint seeks a declaratory judgment of invalidity of the patent as a whole (Compl. ¶917). Independent claim 1 is representative:
    • A leg support assembly for use with an icemaker comprising:
    • a first pair of leg members arranged to have an A-line contour and adapted to be affixed to a first end of said icemaker, wherein said leg members are separated by a first elevated crossbar for the flow of draining water thereunder; and,
    • a second pair of leg members arranged to have said A-line contour and adapted to be affixed to a second end of said icemaker wherein said leg members of said second pair are separated by a second elevated crossbar.

III. The Accused Instrumentality

Product Identification

  • The patents-in-suit relate to components of the SnoWizard brand horizontal block ice-shaving machine (Compl. ¶112, ¶140).

Functionality and Market Context

  • The complaint alleges that Defendant SnoWizard began selling its ice-shaving machines incorporating the new "ratchet linkage" (the subject of the '871 Patent) in 2002 (Compl. ¶120). This linkage is a mechanical part that transfers rotational movement from a user-operated handle into linear movement of a toothed bar, which in turn pushes a block of ice against a cutting wheel (Compl. ¶112).
  • The '459 Patent relates to the plastic leg design for the SnoWizard ice-shaving machine, which was allegedly modified to meet a new National Sanitation Foundation (NSF) standard requiring a two-inch clearance for the legs of food preparation equipment (Compl. ¶139-140).
  • The complaint positions these ice-shaving machines as a key product in the "snowball" confection business, noting that customers who purchase a machine tend to make repeat purchases of higher-margin flavor concentrates from the same company (Compl. ¶111).

IV. Analysis of Invalidity Allegations

No probative visual evidence provided in complaint.

The complaint seeks a declaratory judgment of invalidity rather than alleging direct infringement. The primary invalidity theories are based on the on-sale bar and inequitable conduct during prosecution.

U.S. Patent No. 7,536,871 Invalidity Allegations (On-Sale Bar)

The central allegation is that the invention was in public use or on sale more than one year before the patent's priority date, rendering it invalid under 35 U.S.C. § 102(b).

Claim Element (from Independent Claim 1) Alleged Invalidating Activity Complaint Citation Patent Citation
a cam member having a single elongated structure... the second end has formed in a bottom surface thereof, a indented cavity for receipt of a ratchet tooth. The complaint alleges that "SnoWizard publicly used and sold its new ratchet linkage in the U.S., as alleged above, in 2002, more than one year before its earliest patent application date of 6 February 2004." This alleged 2002 public use and sale forms the basis of the on-sale bar invalidity claim. ¶902 col. 4:18-24
a cam connector... adapted to be coupled to a handle of said icemaker The same alleged public use and sale in 2002 of the "new ratchet linkage" would necessarily include the entire claimed "cam assembly." ¶902, ¶904 col. 4:4-13

U.S. Patent No. 7,543,459 Invalidity Allegations (Inequitable Conduct)

The complaint’s invalidity argument for the ’459 Patent is not based on a technical prior art challenge but on alleged inequitable conduct during prosecution. It is alleged that the patent application went abandoned and was revived 20 months later based on a "material misrepresentation" to the USPTO that the "entire delay" was "unintentional" (Compl. ¶913-914). Because this theory does not map to specific claim elements, it is not presented in a chart format.

  • Identified Points of Contention:
    • Factual Question ('871 Patent): What evidence exists to support the allegation that the specific ratchet linkage claimed in the '871 Patent was, in fact, publicly used or sold in the U.S. in 2002? The case may turn on documentary evidence such as purchase orders, invoices, or marketing materials from that period (Compl. ¶118).
    • Legal Question (Both Patents): Was the 20-month abandonment of the patent applications and subsequent revival based on a knowing and material misrepresentation to the USPTO? The analysis will question whether the delay was truly "unintentional" under the standards of the Manual of Patent Examining Procedure (MPEP) and whether Defendant acted with an intent to deceive the patent office (Compl. ¶905, ¶913).

V. Key Claim Terms for Construction

  • The Term: "a single elongated structure" ('871 Patent, Claim 1)
  • Context and Importance: This term is the central feature distinguishing the invention from the multi-part prior art. Its construction could become relevant to the complaint's secondary invalidity allegation of improper inventorship, which suggests that personnel from the manufacturer (PMI) who adapted the design for casting may have been co-inventors of the claimed "structure" (Compl. ¶127, ¶911).
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes the cam member as a "unitary elongated structure" and contrasts it broadly with prior art assemblies made of multiple members held together by pins, suggesting the key distinction is its one-piece nature (’871 Patent, col. 2:51-53).
    • Evidence for a Narrower Interpretation: The detailed description and figures show a specific shape with a "gradually tapering width" and a forked end, which the complaint alleges are "consequences of changing to the cast-steel manufacturing process" (’871 Patent, Fig. 4; Compl. ¶122). This could support a narrower construction limited to a shape optimized for casting, rather than any conceivable one-piece structure.

VI. Other Allegations

  • Inequitable Conduct: The complaint makes extensive and detailed allegations of inequitable conduct against the defendant for actions taken to procure both patents.
    • For the '871 Patent, the complaint alleges intentional deception of the USPTO based on: (1) withholding information about the alleged 2002 public use and sale, which would have created an on-sale bar (Compl. ¶130); (2) misidentifying Ronald R. Sciortino as the sole inventor when personnel from a third-party manufacturer may have contributed to the design (Compl. ¶131, ¶911); and (3) falsely stating to the USPTO that the 20-month delay in paying the issue fee was "unintentional" in order to revive the abandoned application (Compl. ¶136, ¶906-907).
    • For the '459 Patent, the complaint makes similar allegations regarding the revival of the application, contending that the statement that the 20-month delay was "unintentional" was a material misrepresentation made with the specific intent to deceive the USPTO (Compl. ¶915).

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

The patent-related aspects of this broader commercial dispute will likely focus on two central questions for the court:

  • A core issue will be one of statutory compliance: Can Plaintiffs produce sufficient evidence to prove that the cam assembly claimed in the ’871 Patent was publicly sold or used before the critical date in February 2003? An affirmative finding would invalidate the patent under the on-sale bar of 35 U.S.C. § 102(b), regardless of any other issue.
  • A key question for both patents will be one of prosecution integrity: Did the defendants engage in inequitable conduct by making what the complaint alleges were knowingly false and material statements to the USPTO—specifically, that the 20-month delay in reviving the abandoned applications was "unintentional"—with an intent to deceive the agency into issuing patents that would not otherwise have been granted?