Solo Brands LLC v. City Bonfires LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Solo Brands, LLC d/b/a Solo Stove (Texas)
  • Defendant: City Bonfires, LLC (Maryland) and Backhome Products, LLC (Arizona)
  • Plaintiff’s Counsel: Fish & Richardson P.C.
• Case Identification: 1:24-cv-03413, D. Md., 11/26/2024
• Venue Allegations: Venue is alleged to be proper in the District of Maryland because Defendant City Bonfires is domiciled and conducts business in the district, and both defendants are alleged to commit acts of infringement in the district through activities such as marketing and online sales.
• Core Dispute: Plaintiff alleges that Defendants’ smokeless fire pits infringe three patents related to fire pit construction and design, and further alleges that the design of the accused products infringes Plaintiff’s trade dress.
• Technical Context: The case concerns the market for portable, "smokeless" wood-burning fire pits, a consumer product category focused on outdoor recreation and backyard leisure.
• Key Procedural History: The complaint alleges that Defendant City Bonfires became aware of Plaintiff’s patent portfolio through collaboration discussions beginning in January 2022. It further alleges that Defendant Backhome Products became aware of the patents during its acquisition of City Bonfires in July 2024 and proceeded with launching the accused products with knowledge of Plaintiff’s intellectual property rights. Plaintiff also alleges constructive notice via its patent marking website.

Case Timeline

Date	Event
2016-01-01	Solo Stove launches its first smokeless fire pit
2017-02-02	D923,163 Patent Priority Date
2018-12-26	U.S. Patent No. 11,703,227 Priority Date
2021-02-05	U.S. Patent No. 11,391,465 Priority Date
2021-06-22	U.S. Patent No. D923,163 Issues
2022-01-01	Plaintiff and Defendant City Bonfires allegedly begin business discussions
2022-07-19	U.S. Patent No. 11,391,465 Issues
2023-07-18	U.S. Patent No. 11,703,227 Issues
2024-07-01	Defendant Backhome Products allegedly acquires Defendant City Bonfires
2024-11-26	Complaint Filing Date

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

U.S. Patent No. 11,391,465 - “Combustible Fuel Burning Fire Pit With Removable Fire Grate”

The Invention Explained

• Problem Addressed: The patent’s background section identifies the difficulty of cleaning conventional portable fire pits, noting that removing ash can be "strenuous and/or inconvenient" and that cleaning the grate and the structure beneath it can be "challenging" (’465 Patent, col. 1:29-35).
• The Patented Solution: The invention is a fire pit featuring a removable grate and a separate, removable ash pan. Both components are designed to be lifted vertically out of the main fire pit body, allowing a user to easily dispose of ash and clean the components without inverting the entire structure (ʼ465 Patent, col. 4:25-33). The patent also describes a double-walled construction that facilitates airflow for more complete combustion (ʼ465 Patent, col. 5:41-50).
• Technical Importance: The design aims to solve a key usability problem for consumers by simplifying the cleaning and maintenance of portable wood-burning fire pits (ʼ465 Patent, col. 1:36-39).

Key Claims at a Glance

• The complaint asserts independent claim 1 (Compl. ¶59).
• Essential elements of claim 1 include:
  • A double-walled structure with an inner and outer wall forming an air passage, with the inner wall defining a cylindrical burn chamber.
  • A "sheet metal, removable fuel grate" that is "dome-shaped" and can be vertically removed from the burn chamber.
  • The grate includes an "array of holes" for airflow and ash passage, and a "handle shaped to be grasped by a user" for removal.
  • A "removeable ash pan" positioned below the grate to capture ash.
  • A "horizontal bracing structure" that supports the ash pan and defines a "radially outwardly directed passageway" for air to flow to the air chamber below the grate.
• The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 11,703,227 - “Fire Pit System”

The Invention Explained

• Problem Addressed: The patent seeks to address shortcomings of existing fire pits, including weak construction, inefficient fuel burning, and the tendency to burn or scorch the ground surface on which they are placed (’227 Patent, col. 1:20-30).
• The Patented Solution: The invention is a two-part "fire pit system" consisting of a main fire pit body and a separate, cylindrical fire pit stand. The stand elevates the fire pit body off the ground to prevent heat damage and includes openings to improve airflow for combustion. For transport, the stand is designed to be stored inside the fire pit body, creating a compact and portable unit (ʼ227 Patent, Abstract).
• Technical Importance: This system allows a high-temperature fire pit to be used safely on heat-sensitive surfaces like wooden decks or lawns, expanding its utility while maintaining portability (ʼ227 Patent, col. 2:46-50, 2:56-61).

Key Claims at a Glance

• The complaint asserts independent claim 11 (Compl. ¶70).
• Essential elements of claim 11 include:
  • A "fire pit stand" with a cylindrical wall that has "stand openings."
  • A "fire pit body" adapted to sit on top of the stand.
  • The body has cylindrical exterior and interior walls, with the exterior wall's diameter being greater than the stand's diameter.
  • An upper ring on the body defines an opening with a diameter that is less than both the interior body wall's diameter and the stand's diameter.
  • The body includes "inwardly-facing openings" below the upper ring to fuel secondary combustion.
  • A structural arrangement wherein the interior and exterior body walls are "coaxial with" and extend in "parallel relation to" the stand wall when assembled.
• The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. D923,163 - “Fire Pit”

• Technology Synopsis: The D163 patent is a design patent that protects the ornamental, non-functional visual characteristics of a fire pit. The claimed design consists of a cylindrical body with a distinctive row of uniform, circular holes around its base, a smooth upper portion, and a perforated interior surface visible through the top opening (D163 Patent, Figs. 1, 7).
• Asserted Claims: Claim 1 (Compl. ¶81).
• Accused Features: The complaint alleges that the overall aesthetic appearance of Defendants' entire line of tabletop and non-tabletop fire pits is "virtually identical" to the patented design (Compl. ¶47, ¶82). A side-by-side visual comparison contrasts the 'Infringing Trade Dress' of the accused Coleman product with the 'Solo Stove Trade Dress' of the plaintiff's product (Compl. p. 14).

III. The Accused Instrumentality

Product Identification

The accused products are Defendants' tabletop and non-tabletop smokeless fire pits, collectively referred to as the "Product Offerings" (Compl. ¶39). Specific models identified include the "Coleman® Cityscapes™ 5," "10," "15," "20," and "25 Smokeless Fire Pit" (Compl. ¶40-41).

Functionality and Market Context

The complaint alleges the accused products are "smokeless fire pits" that directly compete with Plaintiff's products in the same trade channels and retail stores (Compl. ¶2, ¶49). The infringement allegations focus on the products' structural and design features. For example, the complaint describes the accused products as having a "smooth cylindrical drum," a "removable flame ring," and "small holes placed equidistantly" around the bottom circumference (Compl. ¶45). The complaint includes screenshots of the accused products offered for sale on Defendants' websites (Compl. p. 12).

IV. Analysis of Infringement Allegations

The complaint states that claim charts demonstrating infringement are attached as Exhibits D and E, which were not provided with the complaint (Compl. ¶62, ¶73). The infringement theories are therefore summarized below in prose based on the complaint's narrative allegations.

’465 Patent Infringement Allegations

The complaint alleges that all of Defendants' "Product Offerings" directly infringe each limitation of at least claim 1 of the ’465 Patent (Compl. ¶61). The narrative theory is that the accused fire pits are constructed with the combination of features recited in the claim: a double-walled body creating an air passage, a removable dome-shaped grate with a handle, a separate removable ash pan below the grate, and an underlying bracing structure that both supports the pan and directs airflow. The infringement claim thus rests on the assertion that the accused products contain this specific assembly of internal, removable components for managing fuel and ash.

’227 Patent Infringement Allegations

The complaint alleges that Defendants' "tabletop fire pits" directly infringe each limitation of at least claim 11 of the ’227 Patent (Compl. ¶72). The infringement theory centers on the two-part system of a fire pit body and a separate stand. The allegation is that the accused tabletop products possess this structure and meet the specific geometric and dimensional relationships required by claim 11, including the stand having a smaller diameter than the fire pit body, the walls of the two components being coaxial and parallel when assembled, and the presence of specific openings for airflow and secondary combustion.

Identified Points of Contention

• Structural Questions (’465 Patent): The dispute may center on whether the internal components of the accused products meet the specific functional and structural definitions in claim 1. Key questions could include: (1) Does the accused product contain a distinct "horizontal bracing structure" that performs the dual functions of supporting the ash pan and defining an "outwardly directed passageway" for air? (2) Does the accused grate have a feature that qualifies as a "handle shaped to be grasped by a user," or is it merely an opening?
• Geometric Questions (’227 Patent): The infringement analysis will likely turn on a strict, technical comparison of the accused product's geometry against the claim language. This raises the question of whether the accused fire pit body and stand are truly "coaxial" and in "parallel relation" as claimed, or if minor deviations in manufacturing or design provide a basis for a non-infringement argument.

V. Key Claim Terms for Construction

For the ’465 Patent

• The Term: "handle shaped to be grasped by a user"
• Context and Importance: This term is critical because infringement requires the removable grate to have this specific feature for user interaction. The dispute will be over what constitutes a "handle." Practitioners may focus on this term because if the accused grate merely has openings that are not specifically "shaped to be grasped," Defendants may argue non-infringement.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent specification describes the handles as "openings larger than the ventilation holes" that are "sized and shaped to receive human fingers," suggesting that a sufficiently large and properly placed opening could qualify as a handle without being a separate, appended part (ʼ465 Patent, col. 7:60-64).
  • Evidence for a Narrower Interpretation: The claim uses the word "handle," which could imply a structure distinct from the main body of the grate, rather than just a void or hole within it. Figure 3 shows features (380) that are clearly depicted as openings, but a defendant could argue the term "handle" requires more than a simple aperture.

For the ’227 Patent

• The Term: "coaxial with" and "extends in a parallel relation to"
• Context and Importance: These precise geometric terms define the required alignment between the fire pit body and the stand. Infringement of claim 11 hinges on the accused product meeting these spatial relationship requirements. The case may turn on the degree of precision implied by these terms.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party might argue these terms should accommodate normal manufacturing tolerances and that substantial, rather than perfect, alignment is sufficient to meet the claim's purpose of ensuring stability and proper airflow.
  • Evidence for a Narrower Interpretation: The terms have well-defined geometric meanings. The patent figures, such as Figure 1A and 3B, depict the components in seemingly perfect alignment. A party could argue that the patentee chose these precise terms to claim a specific, exact alignment, and any measurable deviation falls outside the claim scope.

VI. Other Allegations

• Indirect Infringement: The complaint alleges induced infringement for all three patents, asserting that Defendants intentionally encourage infringement through "educational and promotional materials," "support activities," and website instructions that direct customers to use the products in an infringing manner (Compl. ¶63, ¶74, ¶84).
• Willful Infringement: Willfulness is alleged for all patents based on both pre-suit and post-suit knowledge. The complaint alleges Defendants had actual knowledge of the patents and pending applications as early as January 2022 from business discussions, and that this knowledge was reinforced during an acquisition in July 2024 (Compl. ¶54-55). It is also alleged that Defendants had constructive notice through Plaintiff's virtual patent marking (Compl. ¶57).

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

1. A core issue will be one of structural correspondence: Do the internal components of the accused fire pits map onto the specific, multi-part architecture of ’465 patent claim 1, particularly concerning the existence and dual function of the "horizontal bracing structure" and the interpretation of a "handle"?
2. A key evidentiary question will be one of geometric precision: Does the physical arrangement of the accused tabletop fire pit and its stand satisfy the strict "coaxial" and "parallel relation" limitations of ’227 patent claim 11, or can a defense be mounted on minor, measurable deviations from perfect geometric alignment?
3. The case will also involve a significant question of intent: Can the Plaintiff prove that Defendants had pre-suit knowledge of the specific patents-in-suit and acted with objective recklessness, as alleged through prior business dealings, sufficient to support a finding of willful infringement?