A To Z Van Wingerden LLC v. Dummen Orange Na Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Case: A to Z van Wingerden LLC v. DÜMMEN ORANGE, NA, INC.
  • Plaintiff’s Counsel: Wilson, Elser, Moskowitz, Edelman & Dicker LLP
• Case Identification: 2:17-cv-01919, E.D.N.Y., 04/04/2017
• Venue Allegations: Venue is alleged to be proper based on Defendant operating, conducting, and engaging in business in the Eastern District of New York.
• Core Dispute: Plaintiff alleges that Defendant’s horticultural products and methods, marketed as CONFETTI GARDEN, infringe a patent related to a method of growing and transplanting multiple plants together as a single unit.
• Technical Context: The technology concerns horticultural methods for efficiently creating aesthetically pleasing multi-plant arrangements for wholesale and consumer markets, aiming to simplify the process of transplanting complex displays.
• Key Procedural History: The complaint details pre-suit interactions, including a 2008 trade show meeting where the inventor allegedly disclosed the technology to an employee of the Defendant, followed by correspondence between the parties in 2016 and a meeting in January 2017. The complaint also alleges that Defendant cited the patent-in-suit in an Information Disclosure Statement during the prosecution of its own related patent, suggesting pre-suit knowledge.

Case Timeline

Date	Event
2007-03-19	'078 Patent Priority Date
2008-07-12	Inventor allegedly discloses technology to Defendant's employee
2011-05-24	'078 Patent Issue Date
2011-09-15	Alleged date by which Defendant was aware of '078 Patent
2016-09-28	Plaintiff sends letter to Defendant regarding '078 Patent
2016-10-19	Defendant responds to Plaintiff's letter
2016-11-16	Plaintiff sends follow-up letter to Defendant
2016-12-20	Defendant's counsel proposes in-person meeting
2017-01-12	Representatives for Plaintiff and Defendant meet
2017-02-09	Plaintiff sends follow-up email after meeting
2017-04-04	Complaint Filing Date

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

U.S. Patent No. 7,946,078 - Starter Tray and Planting and Method of Using a Tray, issued May 24, 2011

The Invention Explained

• Problem Addressed: The patent describes the high cost and skill required to create attractive multi-plant arrangements, particularly for large-scale community beautification projects or for ordinary homeowners. Traditional methods involve transplanting numerous individual plants one by one, which is time-consuming and requires horticultural expertise to achieve a pleasing layout. (’078 Patent, col. 1:10-24).
• The Patented Solution: The invention is a method that uses a shallow starter tray to grow multiple plants together. The plants are placed close enough that their roots entangle and consolidate the soil into a single, stable "plug." This entire plug can then be easily removed from the tray and transplanted as a single unit, preserving the pre-arranged design without specialized labor. (’078 Patent, col. 2:10-20, col. 7:25-34). Figure 8 illustrates this process, showing the consolidated soil and root plug (54) being lifted from the starter tray (10) and placed into a larger container (70).
• Technical Importance: The method allows for the pre-fabrication of complex plant arrangements by skilled growers at a nursery, which can then be transported and installed by unskilled labor, significantly reducing on-site costs and complexity. (’078 Patent, col. 7:1-6).

Key Claims at a Glance

• The complaint asserts independent claim 1.
• The essential elements of independent claim 1 include:
  • Employing a starter tray with a floor and one or more side walls.
  • Placing starter soil in the tray.
  • Planting a plurality of plants in the soil.
  • Nurturing the plants long enough for them to develop "entangled roots with an interplant root entanglement" that "at least partially consolidates the starter soil."
  • Dislodging the consolidated starter soil and entangled roots as a unit from the tray.
  • This dislodging occurs "before said plurality of plants have fully matured but after said entangled roots have reached the floor of the starter tray."
  • Transplanting the unit into a transplant site.
• The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

• The accused instrumentalities are Defendant's plant combinations marketed under the name CONFETTI GARDEN and the methods of making, using, and selling them. (Compl. ¶30).

Functionality and Market Context

• The complaint alleges that CONFETTI GARDEN products consist of mixes of two or three different plants grown together from cuttings into a "single 'Confetti liner'." (Compl. ¶30). The complaint includes a visual, cited as Exhibit I, which depicts a process starting with multiple unrooted cuttings (step one), which are then grown together into a single liner with entangled roots (step two) before being transplanted into a larger container. (Compl. ¶30). Another visual, cited as Exhibit H, is a marketing image described as showing that the plants are "Nurtured with care from special cuttings" to "grow into a spectacular single planting." (Compl. ¶30). The complaint alleges these products are sold commercially in the United States, causing economic damage to the Plaintiff. (Compl. ¶31).

IV. Analysis of Infringement Allegations

• '078 Patent Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
A method employing a starter tray with a floor and one or more side walls...placing starter soil in said starter tray...planting a plurality of plants of at least one species in the starter soil;	Defendant's method involves growing multiple species of unrooted cuttings together in a single "Confetti liner."	¶30	col. 7:55-61
nurturing said plants in said starter tray long enough for said plants to develop entangled roots with an interplant root entanglement that at least partially consolidates the starter soil;	The CONFETTI GARDEN method grows plants together until they form a "single 'Confetti liner' with the plants containing entangled roots."	¶30	col. 7:61-64
dislodging as a unit...said starter soil with said entangled roots...said dislodging being performed before said plurality of plants have fully matured but after said entangled roots have reached the floor of the starter tray and have consolidated the starter soil to allow dislodging by a single person without crumbling...;	The complaint does not provide specific factual allegations detailing the dislodging step but alleges infringement of the entire claim, which contains this limitation.	¶30	col. 8:1-6
and transplanting said starter soil with said entangled roots by lowering as a unit down into a transplant site without the starter tray.	The accused method includes transplanting the "Confetti liner" into a larger container to be grown as a multi-species plant combination.	¶30	col. 8:6-9

• Identified Points of Contention:
  • Technical Question: The complaint asserts infringement of the entire claim but focuses its factual allegations on the planting and nurturing steps. A question may arise regarding the evidence for the "dislodging" and "transplanting" steps, particularly whether Defendant itself performs or directs others to perform these actions as required to complete the claimed method.
  • Scope Question: The claim requires dislodging "before said plurality of plants have fully matured." The definition of "fully matured" for various plant species may become a central point of contention in determining whether the accused method, as practiced, meets this temporal limitation.
  • Scope Question: A key issue will be whether the accused "Confetti liner" is equivalent to the claimed "starter tray" and whether the process of its use meets all the specific functional and temporal limitations recited in claim 1.

V. Key Claim Terms for Construction

• The Term: "consolidates the starter soil"

• Context and Importance: This term is central to the invention's core concept of creating a stable, transplantable unit. The degree of "consolidation" required is not quantitatively defined in the claim. Practitioners may focus on this term because its interpretation will determine how much root entanglement is necessary to infringe, a potentially subjective standard.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The claim itself qualifies the term with "at least partially consolidates," suggesting that complete consolidation is not required. (col. 8:64). The specification states the goal is to allow dislodging "without crumbling," which could be argued as a functional definition that does not require a high density of roots. (col. 8:5-6).
  • Evidence for a Narrower Interpretation: The specification describes the consolidation as sufficient for "the plant and plug of entangled roots and soil" to be "removed from the plant starter tray." (’078 Patent, col. 2:30-32). It also notes that the consolidation must be enough to "allow easy transplanting without the plug...crumbling or breaking apart." (’078 Patent, col. 6:20-22). This could support a narrower construction requiring a specific level of structural integrity.

• The Term: "before said plurality of plants have fully matured"

• Context and Importance: This temporal limitation defines the window in which the claimed method must be performed. The definition of "fully matured" is critical, as actions performed after this point would not infringe. Practitioners may focus on this term because the maturity of a plant can be defined in multiple ways (e.g., ability to flower, full size, seed production).

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The patent suggests the transplanting occurs when the plants are "relatively young and are just beginning to blossom." (’078 Patent, col. 6:50-52). This implies "fully matured" is a later stage, providing a wide window for infringement to occur.
  • Evidence for a Narrower Interpretation: The patent repeatedly contrasts the state of the plants at transplanting with being "fully blossomed" or "fully matured." (’078 Patent, col. 9:6-7, col. 9:31-32). A defendant might argue that for many ornamental species, "fully matured" is reached as soon as the plant is capable of flowering, potentially narrowing the window for infringement.

VI. Other Allegations

• Indirect Infringement:
  • Inducement: The complaint alleges that Defendant knowingly and intentionally induced infringement by its growers, distributors, and customers by providing "growing tips and guides for CONFETTI GARDEN products" from its website. (Compl. ¶35).
  • Contributory Infringement: The complaint alleges Defendant contributorily infringes by selling or importing "plants or plant parts suitable for use in CONFETTI GARDEN products knowing the same to be specifically made for use in infringing at least claim 1." (Compl. ¶39).
• Willful Infringement: Willfulness is implicitly alleged through claims of pre-suit knowledge. The complaint alleges Defendant had actual knowledge of the '078 Patent based on a 2008 disclosure by the inventor to a Dümmen employee and because Defendant’s counsel submitted the '078 Patent in an Information Disclosure Statement during the prosecution of a separate patent "no later than September 15, 2011." (Compl. ¶10, ¶25, ¶29).

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

1. A central issue will be one of claim construction: how much root growth is required to meet the standard of "at least partially consolidates the starter soil," and what is the precise technical meaning of "fully matured" in the context of ornamental horticulture? The resolution of these terms will likely define the scope of infringement.
2. A key evidentiary question will be whether the plaintiff can prove that the defendant’s accused method, or the method practiced by its customers as instructed, includes every step of claim 1, particularly the specific timing and functional limitations related to the dislodging and transplanting of the root plug.
3. The allegations of pre-suit knowledge, based on both an alleged trade show disclosure and a citation in a patent prosecution file, raise the question of willfulness. The court will need to determine if Defendant had the requisite knowledge of the patent and infringement to support enhanced damages should infringement be found.