DCT
4:23-cv-00076
Handi Craft Co v. SC Products Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Handi-Craft Company (Missouri)
- Defendant: S.C. Products, Inc. (Missouri) & Michael L. McGinley (Kansas)
- Plaintiff’s Counsel: Armstrong Teasdale LLP
- Case Identification: 4:23-cv-00076, E.D. Mo., 01/23/2023
- Venue Allegations: Venue is alleged to be proper because the Defendants are subject to personal jurisdiction in the district, and a substantial part of the events giving rise to the claims occurred there.
- Core Dispute: Plaintiff seeks a declaratory judgment that its bath rinse cup product does not infringe Defendants' patent, and that the patent is invalid, following Defendants' submission of an infringement complaint to Amazon.com.
- Technical Context: The technology at issue relates to consumer products, specifically pitchers or rinse cups for bathing children, which incorporate a flexible panel designed to conform to a child's head to better direct water flow.
- Key Procedural History: The complaint alleges that during the prosecution of a related patent application, the inventor was required to amend the claims to add a "generally smooth inward surface" limitation to distinguish the invention from a prior art reference (U.S. Patent No. 4,756,439, "Perock") that disclosed a flexible panel with "corrugations." The complaint contends this amendment narrowed the scope of all claims in the asserted patent.
Case Timeline
| Date | Event |
|---|---|
| 2003-02-04 | Earliest Patent Priority Date ('178 Patent) |
| 2006-06-30 | USPTO rejects claims in related application over Perock reference |
| 2014-01-28 | U.S. Patent No. 8,636,178 Issues |
| 2022-10-01 | Handi-Craft begins selling Dino-Pour Bath Rinse Cup on Amazon |
| 2022-12-08 | Defendants allegedly submit infringement complaint to Amazon |
| 2022-12-08 | Amazon suspends sales of Handi-Craft's product |
| 2022-12-15 | Handi-Craft sends letter to SCP requesting retraction |
| 2023-01-23 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,636,178 - "FLEXIBLE PANEL PITCHER"
- Patent Identification: U.S. Patent No. 8,636,178, "FLEXIBLE PANEL PITCHER", issued January 28, 2014.
The Invention Explained
- Problem Addressed: When rinsing shampoo from a child's hair, standard pitchers make it difficult to prevent soapy water from running down the child's forehead and into their eyes, causing discomfort and distress (’178 Patent, col. 1:61 - col. 2:21). Pressing a rigid pitcher rim against the forehead is often ineffective, as it allows for "backflow" of water underneath the rim (’178 Patent, col. 1:55-60).
- The Patented Solution: The invention is a pitcher or container with a flexible side wall portion and rim that can be pressed against an object, such as a child's head, to conform to its shape (’178 Patent, Abstract). This creates a seal that directs a broad flow of water over the intended area while preventing fluid from flowing back underneath the rim and onto the child's face (’178 Patent, col. 2:50-63).
- Technical Importance: The design aims to provide better control over fluid flow during a common and often challenging childcare activity, thereby improving the experience for both the child and the caregiver (’178 Patent, col. 2:22-34).
Key Claims at a Glance
- The complaint states that its non-infringement theory applies to "every claim of the ’178 Patent" (Compl. ¶49). The patent contains independent claims 1 and 6.
- Independent Claim 1:
- A container comprising a generally continuous sidewall with a flexible portion and a non-flexible portion.
- A bottom closing the sidewall.
- A "generally flat inwardly flexible panel" forming a portion of the sidewall's flexible section.
- The flexible panel is "sized, shaped and sufficiently pliable to matingly mold to the head of a person during use."
- The flexible panel has a "generally smooth inward surface for unobstructed fluid flow out of said open upper sidewall end."
- A handle on the non-flexible portion.
- The complaint seeks a declaration of non-infringement as to all claims and reserves the right to address any specific claims asserted by the Defendants (Compl. ¶¶58-61, Prayer for Relief ¶B).
III. The Accused Instrumentality
Product Identification
The "Dino-Pour Bath Rinse Cup," sold under the "Dr. Brown's" tradename (Compl. ¶28).
Functionality and Market Context
- The Dino-Pour Bath Rinse Cup is a high-quality rinse cup for babies and small children, sold by major retailers including Amazon (Compl. ¶¶27-28). The complaint alleges that the product competes directly with a rinse cup sold by Defendant SCP (Compl. ¶¶33-34).
- A photograph provided in the complaint shows a dinosaur-themed pitcher with a handle and a spout area (Compl. p. 6). Crucially, the complaint alleges that the flexible panel of this product has a "corrugated inward surface" (Compl. ¶51). An annotated photograph highlights this feature, labeling it "Corrugated internal surface" (Compl. p. 10). Another annotated image purports to show how these corrugations result in "Simulated Obstructed Fluid Flow" (Compl. p. 12).
IV. Analysis of Infringement Allegations
'178 Patent Infringement Allegations
Note: As this is a declaratory judgment action, the table below summarizes the Plaintiff's (Handi-Craft's) allegations of non-infringement.
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| said flexible panel having a generally smooth inward surface for unobstructed fluid flow out of said open upper sidewall end | The Dino-Pour Bath Rinse Cup's inwardly flexible panel has an inward surface with "numerous corrugations." These features are alleged to render the surface not "generally smooth" and to "obstruct fluid flow out of the open upper sidewall end." | ¶¶51, 59-60 | col. 8:39-42 |
| the flexible panel facing outwardly and being sized, shaped and sufficiently pliable to matingly mold to the head of a person during use | The complaint alleges that the Dino-Pour cup does not infringe, but implicitly acknowledges its flexible panel is designed for use against a child's head. The core dispute is not over the flexibility, but the surface texture of the panel. | ¶¶51, 59 | col. 8:36-39 |
Identified Points of Contention
- Scope Questions: The central issue is whether the claim term "generally smooth inward surface for unobstructed fluid flow" can be interpreted to read on the Dino-Pour cup's "corrugated inward surface."
- Prosecution History Estoppel: The complaint raises a significant question of whether the patentee narrowed the scope of the claims during prosecution to exclude surfaces with corrugations. It alleges that the "generally smooth" limitation was added specifically to distinguish the invention from the Perock prior art reference, which disclosed a flexible panel with corrugations (Compl. ¶¶46-49). This history may prevent the patentee from now arguing that a corrugated surface falls within the scope of the claims. The complaint includes a figure from the Perock reference to illustrate its corrugated structure (Compl. p. 9).
- Technical Questions: A factual question for the court will be whether the "corrugations" on the plaintiff's product actually "obstruct fluid flow" in a manner inconsistent with the claim language, or if they are merely aesthetic features that have no material effect on the flow.
V. Key Claim Terms for Construction
The Term: "generally smooth inward surface for unobstructed fluid flow"
Context and Importance: The definition of this term is dispositive for the non-infringement analysis. The plaintiff's entire case for non-infringement hinges on its product's "corrugated" surface falling outside the scope of this limitation. Practitioners may focus on this term because the plaintiff has built a detailed case for a narrow construction based on prosecution history.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation (potential Defendant position): The patent specification does not provide an explicit definition for "generally smooth." A defendant could argue that the term does not require a perfectly flat or textureless surface and is intended to be construed relative to the overall function of enabling a broad, directed stream of water, which minor corrugations might not prevent.
- Evidence for a Narrower Interpretation (Plaintiff's position): The complaint provides significant evidence from the prosecution history of a related application to which the ’178 Patent claims priority (Compl. ¶46, Ex. 2). It alleges the applicant, in response to a rejection over the Perock patent, amended the claims to add the "generally smooth" limitation and argued that Perock's "corrugations... would obstruct the flow of fluid" and thus did not meet the new limitation (Compl. ¶48). This specific disavowal of corrugated surfaces to secure the patent may create a strong argument for prosecution history estoppel, limiting the term to exclude any surface with corrugations.
VI. Other Allegations
Indirect Infringement
The complaint does not allege indirect infringement against the plaintiff; rather, it seeks a declaration that it is not an indirect infringer (Compl. ¶58).
Willful Infringement
This is a declaratory judgment action, so willfulness is not alleged against the plaintiff. However, the plaintiff alleges that the Defendants acted in "bad faith" by submitting the Amazon Complaint "knowing that Handi-Craft's Dino-Pour Bath Rinse Cup does not infringe the '178 Patent" (Compl. ¶32). This allegation is supported by the claim that Defendants were aware of the prosecution history and the "corrugated" nature of the plaintiff's product, which was "readily apparent from photographs" (Compl. ¶¶50-53). These bad faith allegations form the basis for state law claims of tortious interference and unfair competition (Compl. ¶¶66-78).
VII. Analyst’s Conclusion: Key Questions for the Case
This case appears to center on a focused, technical dispute over a single claim limitation, amplified by allegations of bad faith commercial conduct. The key questions for the court will likely be:
- A core issue will be one of claim construction and estoppel: Does the prosecution history of the ’178 patent and its parent applications limit the scope of the term "generally smooth inward surface" to strictly exclude the "corrugated inward surface" of the plaintiff’s product?
- A secondary question will be evidentiary and factual: Assuming the term "generally smooth" is not strictly limited by estoppel, do the specific corrugations on the Dino-Pour Bath Rinse Cup, as a matter of fact, "obstruct fluid flow" in a way that places the product outside the literal scope of the claim?
- Finally, the case presents a question of commercial conduct: Did the Defendants submit their infringement notice to Amazon in bad faith, knowing that the plaintiff's product did not infringe because of the claim-narrowing amendments made during prosecution, thereby supporting claims for tortious interference and unfair competition?