DCT
2:24-cv-02591
G&E Innovations Inc v. Ez Roll NY LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: G&E Innovations, Inc. (California/Nevada)
- Defendant: Ez Roll NY LLC (New York)
- Plaintiff’s Counsel: Sriplaw PLLC
- Case Identification: 2:24-cv-02591, E.D.N.Y., 04/05/2024
- Venue Allegations: Venue is alleged to be proper as Defendant is a New York LLC with a regular and established place of business in the district, where it has also allegedly committed acts of infringement.
- Core Dispute: Plaintiff alleges that Defendant’s electric grinders infringe one utility patent and one design patent covering a grinder that uses a motor-driven beaded chain.
- Technical Context: The technology relates to handheld electric grinders for consumer use, such as for milling herbs and spices, which employ a novel chain-based grinding mechanism instead of traditional blades or teeth.
- Key Procedural History: Plaintiff states it sent a demand letter to Defendant on February 6, 2024, putting Defendant on notice of the alleged infringement prior to the filing of the complaint.
Case Timeline
| Date | Event |
|---|---|
| 2018-01-26 | Earliest Priority Date for U.S. Patent No. 11,744,404 |
| 2018-11-09 | Filing/Priority Date for U.S. Patent No. D918,971 |
| 2021-05-11 | Issue Date for U.S. Patent No. D918,971 |
| 2023-09-05 | Issue Date for U.S. Patent No. 11,744,404 |
| 2024-02-06 | Plaintiff allegedly sent demand letter to Defendant |
| 2024-04-05 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,744,404, “Grinder,” Issued September 5, 2023
The Invention Explained
- Problem Addressed: The patent's background describes limitations of prior art methods for grinding materials like herbs and spices, noting that manual methods can be inconsistent and that electric blenders often pulverize ingredients, destroying their texture (’404 Patent, col. 1:22-43).
- The Patented Solution: The invention is a grinder assembly that replaces traditional blades with a chain, which includes a plurality of balls, positioned within an inner chamber (’404 Patent, Abstract). A motor is coupled to the chain via an axle, causing rotational or reciprocal motion that grinds material when the open end of the chamber is lowered over it (’404 Patent, col. 1:48-61; Fig. 2). Activation is achieved by depressing a cap on the top of the device's body (’404 Patent, col. 2:54-55).
- Technical Importance: This design purports to create a more evenly distributed product that burns more consistently, particularly for materials like raw cannabis, by using a flexible chain mechanism instead of fixed teeth or pulverizing blades (’404 Patent, col. 1:30-43).
Key Claims at a Glance
- The complaint asserts direct infringement of at least independent Claim 1 (Compl. ¶¶38-39).
- Essential elements of Claim 1 include:
- A body with a first end, a second end defining an opening, and an inner chamber.
- A chain positioned in the chamber, comprising a plurality of balls and links, with a total length between 25 mm and 125 mm.
- A motor coupled to the chain via an axle, configured for rotational or reciprocal motion.
- An actuator to activate the motor.
- A moveable cap coupled to the body's first end, positioned so that depressing the cap actuates the actuator.
U.S. Patent No. D918,971, “Grinder,” Issued May 11, 2021
The Invention Explained
- Problem Addressed: Design patents address the ornamental, non-functional appearance of an article of manufacture. The goal is to protect a new, original, and ornamental design.
- The Patented Solution: The ’971 Patent claims the specific ornamental design for a grinder as depicted in its figures (’971 Patent, Claim; Figs. 1-9). The claimed design consists of the visual characteristics of the grinder, including its cylindrical shape, the proportions of the cap relative to the body, and the clean, unadorned surfaces. Features shown in broken lines, such as the internal mechanism, are for illustrative purposes and do not form part of the claimed design (’971 Patent, Description).
- Technical Importance: Not applicable; the value is in the design's aesthetic appearance and its ability to distinguish the product in the marketplace.
Key Claims at a Glance
- Design patents have a single claim for the ornamental design as shown and described (Compl. ¶43; ’971 Patent, Claim). Infringement is determined by the "ordinary observer" test, which asks if an ordinary observer would be deceived into believing the accused product has the same design as the patented one.
III. The Accused Instrumentality
- Product Identification: The "EZ ROLL Electric Grinder" (Compl. ¶33).
- Functionality and Market Context: The complaint alleges the accused EZ ROLL grinder "operate[s] identically to Plaintiff’s product" by using a "motor coupled to a chain, configured to cause rotational or reciprocal motion of the chain within the inner chamber, to grind materials" (Compl. ¶22). An image of the accused product's interior shows a beaded chain mechanism (Compl. ¶21, image). The product packaging, depicted in the complaint, describes "Beaded Chain Technology" and a "durable drone motor" that is activated by a "Quick Tap to the Cap!" (Compl. p. 8, image).
IV. Analysis of Infringement Allegations
’404 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a body comprising: a first end; a second end defining an opening; and an interior surface defining an inner chamber... | The accused EZ ROLL grinder has a cylindrical body with a cap and an open bottom defining a grinding chamber, as shown in product images. | ¶21 | col. 7:12-25 |
| a chain positioned within the inner chamber, the chain comprising a plurality of balls and a plurality of links connecting the plurality of balls... | The accused product's interior contains a beaded chain, and its packaging expressly advertises "Beaded Chain Technology." | ¶21; p. 8, image | col. 7:45-48 |
| a motor coupled to the chain via an axle, the motor configured to cause rotational or reciprocal motion of the chain within the inner chamber | The complaint alleges the accused product uses a motor to cause rotational or reciprocal motion of its chain. The packaging references a "drone motor." | ¶22; p. 8, image | col. 10:1-6 |
| an actuator configured to activate the motor, and a cap moveably coupled to the first end of the body... wherein the actuator is positioned such that depressing the cap towards the first end of the body actuates the actuator. | The accused product's packaging instructs users to "Quick Tap to the Cap!" to activate the motor housed inside the unit. | p. 8, image | col. 10:15-33 |
’971 Patent Infringement Allegations
The complaint alleges infringement of the design patent by asserting that the accused EZ ROLL grinder features the Plaintiff's patented design (Compl. ¶23). To support this, the complaint provides a side-by-side visual comparison, juxtaposing a figure from the ’971 Patent with a photograph of the accused product (Compl. ¶23, image). The infringement theory rests on the assertion that an ordinary observer would find the two designs substantially the same, focusing on the overall cylindrical shape, proportions, and visual appearance.
Identified Points of Contention
’404 Patent:
- Scope Questions: A potential issue for the court is whether the accused product's chain meets the specific dimensional limitations of Claim 1, such as the length requirement of "between 25 mm to 125 mm." The complaint does not provide these specific measurements for the accused device.
- Technical Questions: A key question is whether the accused product's "Quick Tap to the Cap!" functionality (Compl. p. 8, image) constitutes "depressing the cap" as required by Claim 1. The defense may argue that a "tap" is functionally distinct from a "depression," which might imply a more sustained or deeper movement.
’971 Patent:
- The central question for the court will be the "ordinary observer" test. The analysis may focus on whether the prominent "EZ-ROLL" branding on the accused product is sufficient to differentiate it from the patented design in the eyes of an ordinary observer, or if the overall ornamental appearance is otherwise confusingly similar.
V. Key Claim Terms for Construction
U.S. Patent No. 11,744,404
- The Term: "depressing the cap"
- Context and Importance: This term is critical to the infringement analysis because the accused product's packaging instructs users to "Tap to the Cap" (Compl. p. 8, image). Practitioners may focus on this term because Defendant could argue that a "tap" is a distinct physical action from a "depression," potentially forming the basis of a non-infringement defense.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification broadly states that "depression of the cap towards the body can activate a switch" ("’404 Patent, col. 4:58-60"). Plaintiff may argue this language covers any downward movement of the cap that results in actuation, including a tap.
- Evidence for a Narrower Interpretation: The specification also refers to releasing the cap "from its depressed position" ("’404 Patent, col. 4:43-44") and shows springs that cause the cap to return to a "resting position" ("’404 Patent, Fig. 9; col. 12:1-3"). Defendant may argue this implies a more significant displacement and release action, rather than a quick, percussive tap.
VI. Other Allegations
- Willful Infringement: The complaint alleges that Defendant had knowledge of the patents at all relevant times (Compl. ¶25). It specifically pleads pre-suit knowledge based on a demand letter allegedly sent to Defendant on February 6, 2024 (Compl. ¶24). The prayer for relief explicitly requests a finding of willful patent infringement (Compl. p. 15, ¶C).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction and functional equivalence: can the term "depressing the cap" in Claim 1 of the ’404 patent be construed to cover the accused product's "tap" activation mechanism, or is there a fundamental mismatch in technical operation that could support a non-infringement finding?
- A second central question will be one of ornamental similarity and visual perception: for the ’971 design patent, would an ordinary observer, taking into account the prominent branding on the accused product, nevertheless be deceived into believing the EZ ROLL grinder’s design is substantially the same as the patented design?
- Finally, a key evidentiary question regarding damages will be the impact of the pre-suit notice letter: if infringement is found, the court will have to determine whether Defendant's conduct after receiving the February 6, 2024 letter was sufficiently egregious to warrant a finding of willful infringement and potential enhancement of damages.