DCT
2:24-cv-10959
Braveman v. S & E Distributor Inc
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Jonathan S. Braveman (Arizona)
- Defendant: S & E Distributor, Inc. d/b/a The Odyssey Group (Michigan)
- Plaintiff’s Counsel: The Ticktin Law Group
- Case Identification: 2:24-cv-10959, E.D. Mich., 04/11/2024
- Venue Allegations: Venue is asserted based on the Defendant being a resident of the Eastern District of Michigan, where the alleged acts of infringement also occurred.
- Core Dispute: Plaintiff alleges that the ornamental design of Defendant’s "TSUNAMI DUGOUT" smoking articles infringes a design patent for a "Smoking Article."
- Technical Context: The dispute is in the field of smoking accessories, concerning the specific aesthetic and ornamental appearance of a "one-hitter" style pipe.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with actual notice of the patent-in-suit via a cease-and-desist letter on December 20, 2022. It also alleges that Plaintiff's own products are marked with the patent number, which may be used to support a claim of constructive notice.
Case Timeline
| Date | Event |
|---|---|
| 2010-08-25 | 'D091 Patent Priority Date (Application Filing Date) |
| 2011-10-25 | Alleged start date of Defendant's sales of accused products |
| 2012-04-03 | U.S. Patent No. D657,091 issues |
| 2022-12-20 | Plaintiff sends cease-and-desist letter to Defendant |
| 2023-07-11 | Plaintiff's investigator purchases accused products |
| 2024-04-11 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. D657,091 S - "Smoking Article"
- Patent Identification: U.S. Patent No. D657,091 S, "Smoking Article", issued April 3, 2012.
The Invention Explained
- Problem Addressed: Design patents protect non-functional ornamentation. The 'D091 patent does not address a functional problem but instead provides a new, original, and ornamental design for a smoking article (Compl. ¶¶ 8, 29).
- The Patented Solution: The patent claims the specific visual appearance of a smoking article. The design is characterized by a generally cylindrical body with a slight taper and, most notably, a serrated tip that creates a distinctive eight-pointed star shape when viewed from the front ('D091 Patent, FIGS. 1, 2). The design as a whole presents a unique aesthetic for this type of product.
- Technical Importance: The complaint alleges that the inventor has marketed and sold products embodying this design since 2010, indicating its use in commerce (Compl. ¶9).
Key Claims at a Glance
- The patent asserts a single claim: "The ornamental design for a smoking article, as shown and described." ('D091 Patent, Claim).
- The scope of this claim is defined by the visual characteristics depicted in the patent's drawings, the essential elements of which are:
- The overall perspective appearance of a tapered tube with a serrated tip ('D091 Patent, FIG. 1).
- A front view showing the tip’s eight-pointed star configuration ('D091 Patent, FIG. 2).
- A rear view showing a simple circular opening, with the interior surfaces disclaimed via broken lines ('D091 Patent, FIG. 3).
- A uniform cylindrical side profile ('D091 Patent, FIG. 4).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are smoking articles sold by Defendant under the name "TSUNAMI DUGOUT" (Compl. ¶14).
Functionality and Market Context
- The complaint identifies the accused products as "smoking articles for use with various phytomaterials such as tobacco and CBD" (Compl. ¶21). The core of the allegations relates not to the products' function but to their ornamental design, which Plaintiff asserts misappropriates the patented design (Compl. ¶22). The complaint provides a URL for Defendant's wholesale website where the products are allegedly offered for sale (Compl. ¶19). The complaint includes photographs of the accused product, such as the front-view image showing a blue article with a serrated, star-shaped tip (Compl. ¶24, Fig. 2).
IV. Analysis of Infringement Allegations
The infringement analysis for a design patent turns on the "ordinary observer" test: whether an ordinary observer, familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented design. The complaint alleges this standard is met (Compl. ¶31).
Claim Chart Summary
D657,091 S Infringement Allegations
| Claim Element (from the design "as shown and described") | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A perspective view of a smoking article with a tapered body and serrated tip. | The accused product is alleged to be a smoking article with a tapered body and a visually similar serrated tip. | ¶24 (Fig. 1) | col. 1:59-60 |
| A front view showing the serrated tip forms an eight-pointed star shape. | The accused product's tip, when viewed from the front, is alleged to form a visually indistinguishable eight-pointed star shape. | ¶24 (Fig. 2) | col. 1:61-62 |
| A rear view showing a circular opening. | The accused product is alleged to have a simple circular opening at its rear. | ¶24 (Fig. 3) | col. 1:63-64 |
| A side elevational view showing a generally uniform cylindrical profile. | The accused product is alleged to have a substantially identical cylindrical side profile. | ¶24 (Fig. 4) | col. 1:65-66 |
Identified Points of Contention
- Scope Questions: The primary question will be whether the overall visual impression of the accused "TSUNAMI DUGOUT" is "substantially the same" as the claimed design in the eyes of an ordinary observer.
- Technical Questions: A potential defense may focus on perceived differences between the designs, however minor. The side-by-side comparison provided in the complaint (Compl. ¶24) suggests potential, albeit subtle, differences in the angle of the taper or the precise curvature of the serrations. The court will need to determine if these differences are sufficient to distinguish the designs in the mind of an ordinary observer or if they are trivial.
V. Key Claim Terms for Construction
Claim construction for design patents is atypical, as the figures rather than words define the claim scope. The analysis focuses on the overall visual impression.
- The Term: "ornamental design for a Smoking Article"
- Context and Importance: The entire infringement analysis rests on comparing the visual scope of the claimed design to the accused product. Practitioners may focus on this "term" to argue the proper scope of the visual comparison, including which features are most significant to the overall impression.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim covers the design "as shown and described" ('D091 Patent, Claim). A party could argue this encompasses the overall visual gestalt created by the combination of the taper, the cylindrical body, and the star-shaped tip, rather than being limited to the exact proportions depicted.
- Evidence for a Narrower Interpretation: The use of solid lines for all external features suggests that all such features are required elements of the claim. The patent explicitly disclaims matter shown in broken lines, stating it "form[s] no part of the claimed design" ('D091 Patent, col. 1:66-68). By negative implication, a party could argue that every feature shown in solid lines, with its specific shape and proportion, constitutes a limitation of the claim.
VI. Other Allegations
- Indirect Infringement: The complaint does not plead facts sufficient to support a claim for indirect infringement; Count One is explicitly for direct infringement under 35 U.S.C. § 271(a) (Compl. ¶¶ 28, 32).
- Willful Infringement: Willfulness is alleged based on Defendant’s continued manufacturing and selling of the accused products after receiving a cease-and-desist letter on December 20, 2022, which provided actual notice of the 'D091 patent (Compl. ¶¶ 18, 19, 37). The complaint further alleges that Defendant copied the design of Plaintiff's commercial product (Compl. ¶36).
VII. Analyst’s Conclusion: Key Questions for the Case
A core issue will be one of visual identity: In applying the ordinary observer test, are the minor potential differences in proportion or tooling between the accused "TSUNAMI DUGOUT" and the patented design sufficient to create a distinct visual impression, or are the designs "substantially the same" such that a consumer would be deceived?
A key question for damages will be one of notice and intent: Can Plaintiff establish that Defendant had constructive notice of the patent prior to the 2022 cease-and-desist letter, potentially via the patent marking on Plaintiff's products? Furthermore, will Defendant's alleged conduct after receiving actual notice be deemed sufficiently egregious to support a finding of willfulness and justify enhanced damages?