DCT
5:24-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 alleged to be proper as the Defendant is a resident of the district and the cause of action occurred there.
- Core Dispute: Plaintiff alleges that Defendant’s "TSUNAMI DUGOUT" smoking articles infringe a design patent covering the ornamental appearance of a "Smoking Article."
- Technical Context: The technology relates to smoking accessories, specifically the category of small pipes known as "one-hitters," which are designed for single uses.
- Key Procedural History: The complaint alleges that Plaintiff sent Defendant a cease-and-desist letter in December 2022, putting Defendant on notice of the patent. It also alleges that Plaintiff's own commercial product is marked with the patent number.
Case Timeline
| Date | Event |
|---|---|
| 2010-08-25 | ’D091 Patent Priority Date |
| 2011-10-25 | Alleged first date of Defendant's infringing sales |
| 2012-04-03 | ’D091 Patent Issue Date |
| 2022-12-20 | Plaintiff sent cease-and-desist letter to Defendant |
| 2023-07-11 | Plaintiff's investigator purchased accused products |
| 2024-04-11 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D657,091 - "Smoking Article"
- Patent Identification: U.S. Design Patent No. D657,091, "Smoking Article", issued April 3, 2012.
The Invention Explained
- Problem Addressed: Design patents protect ornamental appearance, not function, and thus do not formally state a technical problem. However, the design is for a type of smoking accessory where loading the device with material can be cumbersome.
- The Patented Solution: The patent claims the specific ornamental design for a "smoking article" (D'091 Patent, Claim 1). The design, as depicted in the patent's figures, consists of a small, generally cylindrical pipe, the most prominent feature of which is a serrated, multi-pointed cutting edge at its tip (D'091 Patent, FIGS. 1, 2). This gives the article a distinct visual appearance, particularly the eight-pointed star shape visible in the front view (D'091 Patent, FIG. 2).
- Technical Importance: The design integrates a visually distinct cutting or grinding feature into the tip of a one-hitter pipe, a combination that addresses a practical aspect of using such devices. Plaintiff has allegedly marketed products embodying this design since 2010 (Compl. ¶9).
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a smoking article, as shown and described" (D'091 Patent, Claim 1).
- The key ornamental features defining the design as shown in the drawings are:
- The overall configuration of a small, cylindrical smoking article.
- A serrated, toothed edge at one end of the article.
- The specific front-view appearance of the serrated edge as an eight-pointed, star-like shape.
III. The Accused Instrumentality
Product Identification
- The accused products are "smoking articles such as TSUNAMI DUGOUT" (Compl. ¶14).
Functionality and Market Context
- The complaint alleges these are smoking articles designed for use with "various phytomaterials such as tobacco and CBD" (Compl. ¶21). The core of the allegation rests on the ornamental design of the accused products. The complaint presents visual evidence in a side-by-side chart suggesting the accused products are small, cylindrical pipes with a serrated tip, similar in appearance to the patented design (Compl. ¶24). The complaint includes a photograph of the accused product, a blue-colored pipe, showing its serrated tip (Compl. ¶24, FIG. 1).
IV. Analysis of Infringement Allegations
D'091 Patent Infringement Allegations
| Key Ornamental Feature (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design for a smoking article | The complaint alleges the accused "TSUNAMI DUGOUT" products are smoking articles that have appropriated the overall ornamental design shown and described in the 'D091 patent. | ¶30 | Claim 1 |
| A generally cylindrical body with a serrated, multi-pointed tip | The accused product is depicted as a cylindrical pipe with a serrated, multi-pointed tip, which the complaint alleges is substantially the same as the patented design. | ¶24, ¶31 | FIG. 1 |
| The specific front-view appearance of the serrated edge | The front view of the accused product is alleged to have the same visual appearance as the patented design, creating a resemblance that would deceive an ordinary observer. | ¶24, ¶31 | FIG. 2 |
Identified Points of Contention
- Scope Questions: The central question in a design patent case is whether an "ordinary observer," giving such attention as a purchaser usually gives, would be deceived into purchasing the accused product believing it to be the patented design (Compl. ¶31). The dispute will focus on whether the overall visual impression of the TSUNAMI DUGOUT is "substantially the same" as the 'D091 patent's design.
- Technical Questions: A potential issue is the distinction between functional and ornamental features. A court may need to consider whether the serrated tip is primarily functional. If deemed functional, its contribution to the overall "ornamental" design may be discounted, which could affect the infringement analysis. The complaint provides a side-by-side chart comparing the patent's line drawings with photographs of the accused product from multiple angles (Compl. ¶24). The resolution and detail of these photographs may become a point of contention when comparing the specific number and shape of the serrations.
V. Key Claim Terms for Construction
In a design patent case, the "claim" is the visual design itself as depicted in the drawings, rather than a set of text-based limitations. The construction analysis therefore focuses on the scope of the claimed visual design.
- The Term: "The ornamental design for a smoking article, as shown and described."
- Context and Importance: The entire infringement analysis depends on the court's interpretation of the scope of the claimed design and its overall visual effect. Practitioners may focus on which specific visual elements are core to the design's ornamentality and which are merely functional or generic. The comparison will center on the visual distinctiveness of the serrated, star-shaped tip.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The overall visual impression is that of a "one-hitter with a grinder tip." An argument for a broader scope might focus on this general configuration as the core ornamental concept protected by the patent.
- Evidence for a Narrower Interpretation: The patent drawings provide a very specific depiction of the design. An argument for a narrower scope would emphasize that the design is limited to the exact proportions and features shown, including a specific number of points on the tip (eight), their shape, and their angle (D'091 Patent, FIG. 2). Any visual differences between the accused product and this precise depiction could support a non-infringement finding.
VI. Other Allegations
- Indirect Infringement: The complaint contains one count for direct infringement (Compl. ¶28-39). It does not allege specific facts to support separate counts for induced or contributory infringement.
- Willful Infringement: The complaint alleges willful infringement based on both pre-suit and post-suit knowledge. It asserts Defendant had actual notice of the 'D091 patent no later than December 20, 2022, via a cease-and-desist letter (Compl. ¶18, ¶37). The complaint also alleges constructive notice based on the patent marking on Plaintiff's own commercial products (Compl. ¶26, ¶33). The complaint includes an image of the Plaintiff's product packaging, which displays the patent number (Compl. ¶26).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of visual comparison: Applying the "ordinary observer" test, is the overall ornamental appearance of the accused "TSUNAMI DUGOUT" product substantially the same as the design claimed in the 'D091 patent? This will require a detailed visual comparison, focusing particularly on the configuration of the serrated tips.
- The case may raise a question of functionality: To what degree are the serrated "cutting" features of the patented design considered functional rather than ornamental? The court's determination on this point could significantly influence the scope of the design patent's protection and the weight given to those features in the infringement analysis.
- Should infringement be found, a key factual question will be willfulness: Did the Defendant's alleged continuation of sales after receiving the December 2022 cease-and-desist letter constitute objective recklessness, potentially justifying enhanced damages and attorneys' fees?