DCT
0:23-cv-01624
Miller Mfg Co Inc v. Wolltex LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Miller Manufacturing Company, Inc. (Minnesota)
- Defendant: Wolltex, L.L.C., d/b/a Wolltex (a forfeited Texas limited liability company)
- Plaintiff’s Counsel: Taft Stettinius & Hollister LLP
- Case Identification: 0:23-cv-01624, D. Minn., 05/31/2023
- Venue Allegations: Venue is alleged based on Defendant’s advertisements and offers for sale directed to Minnesota, solicitation of orders from Minnesota residents via amazon.com, shipment of accused products into the state, and purposeful direction of competitive conduct at the Minnesota-based Plaintiff.
- Core Dispute: Plaintiff alleges that Defendant’s chicken nesting boxes infringe a design patent and Plaintiff's associated trade dress.
- Technical Context: The case concerns the ornamental design of agricultural equipment, specifically poultry nesting boxes used in farm and ranch settings.
- Key Procedural History: The complaint alleges that the Defendant entity, Wolltex, L.L.C., is a "forfeited" Texas LLC and a "sham corporate shield" for an individual, which may introduce questions regarding corporate liability and veil piercing. No prior litigation or post-grant proceedings involving the patent-in-suit are mentioned.
Case Timeline
| Date | Event |
|---|---|
| 2011-06-04 | D650,534 Patent Priority Date (Filing Date) |
| 2011-12-13 | D650,534 Patent Issue Date |
| 2021-04-19 | Wolltex, LLC registered in Texas |
| 2023-04-XX | Plaintiff alleges it first noticed Defendant's advertisements |
| 2023-05-XX | Plaintiff allegedly received shipment of Accused Product in Minnesota |
| 2023-05-31 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. D650,534, "Poultry Nesting Box," issued December 13, 2011.
The Invention Explained
- Problem Addressed: Design patents protect the ornamental appearance of an article of manufacture. The goal is to create a unique and non-obvious visual design for a product, in this case, a poultry nesting box, to distinguish it aesthetically in the marketplace (Compl. ¶11-12).
- The Patented Solution: The patent claims the specific ornamental design for a poultry nesting box as depicted in its six figures (’534 Patent, Claim). Key visual features include a box-like body with a sloped top, a flat back for mounting, a prominent arched opening on the front face, a perch extending from below the opening, and two parallel, horizontal, rib-like indentations on the side walls (’534 Patent, FIGS. 1-4). The design creates a distinct overall visual impression (’534 Patent, DESCRIPTION).
- Technical Importance: The complaint alleges that this design, sold under Plaintiff's LITTLE GIANT® trademark, has become associated with the Plaintiff through "more than a decade of significant sales" and now constitutes protectable trade dress (Compl. ¶12).
Key Claims at a Glance
- The single claim of the patent is for: "The ornamental design for a poultry nesting box, as shown and described" (’534 Patent, p. 1).
- The scope of a design patent claim is defined by its drawings. The essential ornamental elements of the ’534 Patent’s claim include:
- The overall configuration featuring a sloped top, flat back, and rounded front corners.
- A large, arcuately shaped front opening.
- A perch element projecting from the front face below the opening.
- Two parallel, recessed horizontal ribs on each side panel.
- The specific proportions and relationships between these visual features as depicted in Figures 1-6.
III. The Accused Instrumentality
Product Identification
- The "6 Pack of Large Chicken Nesting Boxes" sold under the "wolltex" brand name on Amazon.com (Compl. ¶18, Ex. 4).
Functionality and Market Context
- The accused product is a plastic nesting box for chickens, intended for "Outdoor, Indoor" use (Compl. ¶18, Ex. 4). The complaint alleges the product is sold to consumers in the United States via the Amazon.com marketplace (Compl. ¶14, 18). A screenshot from the Amazon product listing shows the accused nesting boxes, which are the subject of the infringement allegations (Compl. ¶18, Ex. 4). The complaint alleges that all design features of the accused product are "substantially identical to the design of the Asserted Patent" (Compl. ¶20).
IV. Analysis of Infringement Allegations
The central test for design patent infringement is whether an "ordinary observer," familiar with the prior art, would be deceived into purchasing the accused product believing it to be the product embodying the patented design. The complaint provides a detailed visual comparison to support its allegations (Compl. p. 7-8, Ex. 6). This side-by-side chart provides photographic comparisons of the Asserted Patent drawings, Plaintiff's commercial product, and the accused Wolltex product from six different angles (Compl. p. 7-8, Ex. 6).
’534 Patent Infringement Allegations
| Claim Element (Ornamental Feature from Patent Figures) | Alleged Infringing Feature | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design for a poultry nesting box, comprising a housing with a sloped top surface and a large, arched front opening. | The Wolltex Accused Product is alleged to have a housing with a sloped top and a large, arched front opening that is visually indistinguishable from the patented design. | ¶20; p. 7 | FIG. 1, 2 |
| Two parallel, horizontal, recessed ribs on the side panels of the housing. | The Wolltex Accused Product is alleged to feature two parallel, horizontal, recessed ribs on its side panels in the same location and style as the patented design. | ¶20; p. 7 | FIG. 3, 4 |
| A perch extending horizontally from the front of the housing, below the opening. | The Wolltex Accused Product is alleged to include a perch of a similar shape and in the same position as that shown in the patented design. | ¶20; p. 7 | FIG. 1, 3 |
| The top-down profile, showing a tapering shape from back to front. | The top-down view of the Wolltex Accused Product is alleged to show a tapering shape that mirrors that of the patented design. | ¶20; p. 8 | FIG. 5 |
| The bottom-up profile, showing a distinct handle or grip feature integrated into the tapered body. | The bottom-up view of the Wolltex Accused Product is alleged to show an integrated handle feature that is substantially the same as that of the patented design. | ¶20; p. 8 | FIG. 6 |
Identified Points of Contention
- Scope Questions: The primary question will be whether the overall visual appearance of the accused Wolltex product is "substantially the same" as the design claimed in the ’534 Patent. The court will consider if any minor differences between the two designs are sufficient to lead an ordinary observer to distinguish them, or if such differences are trivial.
- Technical Questions: A key issue may be the distinction between ornamental and functional features. A defendant could argue that elements such as the sloped roof (to shed debris and prevent roosting) or the perch (for bird access) are dictated by function and should be given less weight, or be excluded entirely, from the infringement analysis. The complaint asserts that the "unique combination of shapes, alignment, and accent elements... are not functional" (Compl. ¶12).
V. Key Claim Terms for Construction
In design patent litigation, claim construction is not focused on interpreting textual terms but on determining the scope of the claimed design as a whole, particularly by distinguishing protected ornamental aspects from unprotected functional ones.
- The Issue: Scope of "Ornamental Design" vs. Functionality
- Context and Importance: The validity and scope of the ’534 Patent hinge on its features being primarily ornamental. Practitioners may focus on this issue because if the accused product's allegedly similar features are deemed functional, they cannot serve as the basis for an infringement finding. The defendant may argue that the overall design is dictated by its function as a nesting box, seeking to invalidate the patent or severely limit its scope.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader (Ornamental) Interpretation: The Plaintiff will likely argue that while a nesting box has a function, the patent protects the specific aesthetic choices made to realize that function—the particular curvature of the opening, the style and placement of the side ribs, and the overall visual impression created by the combination of these elements, which are not required by function (Compl. ¶12, 32).
- Evidence for a Narrower (Functional) Interpretation: A defendant may argue that the basic shape, sloped top, and presence of a perch are utilitarian features common to poultry nesting boxes. The analysis would then turn on whether the specific execution of these features in the ’534 Patent is ornamental and whether the accused product copied that specific ornamental execution. As a design patent, the specification offers no descriptive text to delineate functional from ornamental aspects, leaving the question to be resolved based on the drawings and extrinsic evidence.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendant induces infringement by causing various Chinese manufacturers to make and ship the Accused Products into the United States for subsequent sale by Defendant (Compl. ¶22-24). The complaint identifies six such alleged manufacturers by name and address (Compl. ¶22).
- Willful Infringement: Willfulness is alleged based on the assertion that Defendant's infringement is "knowing, intentional, willful, wanton, and deliberate" (Compl. ¶27). While the complaint does not allege pre-suit notice, the high degree of visual similarity between the products, as depicted in the complaint's exhibits, may be used to argue that the copying was intentional (Compl. p. 7-8).
VII. Analyst’s Conclusion: Key Questions for the Case
- The Ordinary Observer Test: The case will fundamentally depend on a visual comparison. Is the accused Wolltex nesting box design "substantially the same" as the ornamental design claimed in the ’534 Patent, such that it would deceive an ordinary observer? The side-by-side evidence presented in the complaint suggests a high degree of similarity.
- The Role of Functionality: A critical legal battle will likely be fought over the functionality doctrine. The extent to which the court deems the shared design features to be ornamental (protectable) versus functional (unprotectable) will define the patent's scope and likely determine the outcome of the infringement claim.
- Piercing the Corporate Veil: A significant procedural and collections issue is raised by the allegations that the Defendant is a "forfeited" LLC and a "sham corporate shield" for an individual (Compl. ¶4, 13). The Plaintiff's ability to prove these allegations could determine whether liability can extend beyond the corporate entity to an individual member.