DCT

2:19-cv-01148

SL Intl Management Co Inc v. Derby Spirits LLC

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:19-cv-01148, D. Nev., 07/01/2019
  • Venue Allegations: Venue is alleged to be proper in the District of Nevada because all defendants are subject to personal jurisdiction there, conduct business in the district, and have allegedly committed acts of infringement within the district.
  • Core Dispute: Plaintiff alleges that the bottle design used for Defendant’s "Ambros Banana Whiskey" product infringes its U.S. design patent for an ornamental bottle design.
  • Technical Context: The dispute is in the field of consumer product packaging, where the ornamental design of a container, such as a liquor bottle, can serve as a significant brand differentiator and source identifier.
  • Key Procedural History: The complaint notes that Plaintiff sent a cease-and-desist letter to Defendants on May 6, 2019, putting them on notice of the patent. This correspondence is cited to support the allegation of willful infringement.

Case Timeline

Date Event
2005-01-11 ’361 Patent Priority Date
2007-06-12 ’361 Patent Issue Date
2019-05-06 Plaintiff sends cease-and-desist letter to Defendants
2019-05-13 Defendant’s counsel responds to cease-and-desist letter
2019-07-01 Complaint Filing Date

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

U.S. Design Patent No. D544,361 - "Bottle" (issued June 12, 2007)

The Invention Explained

  • Problem Addressed: Design patents do not solve a technical or functional problem; rather, they protect a new, original, and ornamental design for an article of manufacture. The goal is to establish a unique visual appearance.
  • The Patented Solution: The ’361 patent discloses an ornamental design for a bottle characterized by a distinctive, multi-faceted body. The design features a square base that transitions into a body composed of a series of flat triangular and trapezoidal facets, creating a crystalline or gem-like appearance that tapers towards a faceted shoulder and a short, simple, cylindrical neck (’361 Patent, Figs. 1-2). The single claim protects the overall visual impression created by the combination of these features as shown in the patent's drawings (’361 Patent, Claim; Description).
  • Technical Importance: The patent protects a specific ornamental bottle design, which can serve as a key visual differentiator for a product in the competitive spirits marketplace.

Key Claims at a Glance

  • The patent contains a single claim for "The ornamental design for a bottle, as shown and described" (’361 Patent, Claim).
  • The scope of this claim is defined by the visual representations in the patent's drawings. The key ornamental features that constitute the claimed design include:
    • A faceted body with a square cross-section at its base.
    • An arrangement of flat, geometric surfaces (triangles and trapezoids) forming the main body and shoulders.
    • A short, unadorned neck rising from the faceted shoulders.
    • The overall aesthetic impression created by these elements in combination, as depicted in Figures 1-5.

III. The Accused Instrumentality

Product Identification

  • The bottle used to package and sell "Ambros Banana Whiskey" (the "Infringing Product") (Compl. ¶2, 18).

Functionality and Market Context

  • The accused instrumentality is a glass bottle used to contain and market whiskey (Compl. ¶18).
  • The complaint alleges that Defendants import, manufacture, advertise, display, offer for sale, and sell the Infringing Product in the United States, including within the District of Nevada (Compl. ¶2, 18, 29). The complaint includes a side-by-side visual comparison of the accused bottle and a figure from the patent, alleging the designs are "substantially similar and/or practically identical" (Compl. ¶18, p. 4; ¶20). This image shows the accused Ambros bottle, which features a faceted body, next to Figure 3 from the ’361 Patent (Compl. ¶18, p. 4).

IV. Analysis of Infringement Allegations

The standard for design patent infringement is whether, in the eye of an ordinary observer, the accused design is substantially the same as the claimed design, such that the observer would be deceived into purchasing one believing it to be the other. The complaint alleges that the Ambros Banana Whiskey bottle meets this standard.

The core of the infringement allegation is a visual comparison between the products. The side-by-side image provided in the complaint shows the accused bottle alongside a drawing from the ’361 patent (Compl. ¶18, p. 4). A visual analysis based on this image suggests that the infringement claim centers on the high degree of similarity in the overall shape and faceting of the bottle bodies. Both designs appear to share the same fundamental structure: a square base, a body composed of large triangular and trapezoidal facets, similarly angled shoulders, and a short neck.

  • Identified Points of Contention:
    • Scope Questions: The primary legal question is whether an "ordinary observer" would find the overall ornamental appearance of the Ambros bottle to be substantially the same as the design claimed in the ’361 Patent. While the labels and cap on the accused product differ from the unadorned patented design, the infringement analysis typically focuses on the claimed features, which in this case is the bottle shape itself.
    • Technical Questions: A factual question for the court will be to compare the specific proportions, angles, and arrangement of the facets on the accused bottle against those depicted in the patent's drawings. The key issue is whether any minor differences are sufficient to distinguish the overall visual impression of the two designs in the mind of an ordinary consumer.

V. Key Claim Terms for Construction

Claim construction, the process of defining the meaning of disputed terms, is generally not performed for design patents, as the claim is understood to be defined by the drawings rather than textual limitations. Therefore, this analysis is not applicable.

VI. Other Allegations

  • Indirect Infringement: The complaint does not plead separate counts for indirect infringement (inducement or contributory infringement). The allegations are focused on direct infringement by the corporate and individual defendants (Compl. ¶29).
  • Willful Infringement: The complaint alleges that Defendants' infringement has been willful (Compl. ¶4, 19). This allegation is supported by two primary assertions: first, an allegation "upon information and belief" that the defendants derived the accused design with pre-existing knowledge of the ’361 patent (Compl. ¶19); and second, that Defendants had actual knowledge of the patent at least as of May 6, 2019, the date they received a cease-and-desist letter from Plaintiff's counsel (Compl. ¶20, 22).

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

  • A core issue will be one of visual identity: From the perspective of an ordinary observer in the marketplace, is the overall ornamental design of the accused Ambros Banana Whiskey bottle substantially the same as the design claimed in the ’361 patent, or are there sufficient visual differences to distinguish them?
  • A key evidentiary question will concern willfulness and damages: Assuming infringement is found, can Plaintiff prove that Defendants' infringement was willful, particularly for conduct preceding the May 6, 2019 notice letter? The answer will significantly impact the potential for enhanced damages.