DCT

1:23-cv-04692

Sunshine Enclosures LLC v. Final Bell Corp

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-04692, S.D.N.Y., 06/02/2023
  • Venue Allegations: Plaintiff alleges venue is proper in the Southern District of New York because Plaintiff resides in the district and Defendant transacts business there, including acts of alleged infringement.
  • Core Dispute: Plaintiff alleges that Defendant’s cannabis product packaging infringes a design patent covering an "inviolate box."
  • Technical Context: The dispute centers on the ornamental design of consumer packaging, specifically a slide-and-sleeve box used in the commercial cannabis industry.
  • Key Procedural History: Plaintiff alleges sending two cease-and-desist letters to Defendant prior to filing the complaint. The first was allegedly sent on May 3, 2023, and the second on May 18, 2023. Plaintiff's willfulness allegations are predicated on Defendant's alleged failure to respond to these pre-suit communications. The complaint also includes counts for trade dress infringement and unfair competition based on the same product design.

Case Timeline

Date Event
2020-11-12 ’604 Patent Priority Date
2022-11-15 ’604 Patent Issue Date
2023-05-03 Plaintiff sends first cease-and-desist letter
2023-05-18 Plaintiff sends second cease-and-desist letter
2023-06-02 Complaint Filing Date

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

U.S. Patent No. D969,604 - "Inviolate box"

Issued November 15, 2022

The Invention Explained

  • Problem Addressed: The complaint suggests that conventional packaging for products like vape cartridges is aesthetically unpleasing and generic, often consisting of simple folded cardboard boxes (Compl. ¶35).
  • The Patented Solution: The D'604 Patent claims the ornamental design for a box, not its function. The design consists of a two-piece, slide-and-sleeve construction. The outer sleeve is a rectangular prism with a distinctive elliptical cutout on one face and a square cutout on the opposite face. The inner tray slides into this sleeve (Compl. ¶34; ’604 Patent, FIG. 9). The complaint alleges the square cutouts are configured to receive flaps from the inner tray, creating a unique visual appearance (Compl. ¶34).
  • Technical Importance: The complaint asserts that this design represents a "radical departure from conventional packaging designs" and provides a "more aesthetically pleasing look" (Compl. ¶34-35).

Key Claims at a Glance

  • As a design patent, the ’604 Patent contains a single claim: "The ornamental design for an inviolate box, as shown and described" (’604 Patent, Claim).
  • The scope of this claim is defined by the patent's drawings, which depict the overall shape and specific surface features of the box from various perspectives (’604 Patent, FIGS. 1-16).

III. The Accused Instrumentality

Product Identification

The accused products are collectively referred to as the "Final Bell Package" and are sold in at least three variations: the "Alien Labs Package," the "Connected Package," and the "Nightshade Package" (Compl. ¶16).

Functionality and Market Context

The accused products are packaging for cannabis vape products (Compl. ¶19, Exhibit B). The complaint includes photographs of the accused packages, showing they consist of an outer sleeve and an inner component holding the product (Compl. ¶17). The complaint alleges these products are sold and marketed on websites such as weedmaps.com and weedbates.com (Compl. ¶19). The complaint also includes a screenshot from Defendant's website showcasing the "Alien Labs Package" and "Connected Package" as part of its client portfolio (Compl. ¶18). This screenshot from finalbell.com shows various packaging designs, including the accused products, offered by Defendant (Compl. ¶18).

IV. Analysis of Infringement Allegations

Design patent infringement is determined by the "ordinary observer" test, which asks whether an ordinary observer, familiar with the prior art, would be deceived into believing the accused design is the same as the patented design. The complaint's allegations are based on a visual comparison rather than a limitation-by-limitation analysis typical for utility patents.

The complaint presents a side-by-side comparison of the accused "Connected Package" and "Nightshade Package" with a figure from the ’604 Patent (Compl. ¶44). This visual evidence shows the accused packages and the patented design, both featuring a rectangular sleeve-and-tray structure with cutouts on the faces (Compl. ¶44). The core of the infringement allegation is that the overall visual impression of the accused packages is "substantially similar" to the patented design, such that an ordinary observer would be deceived (Compl. ¶45).

Identified Points of Contention

  • Scope Questions: A central question will be whether the visual differences between the accused packages and the patent drawings are significant enough to preclude a finding of substantial similarity in the eyes of an ordinary observer. This analysis will include comparing the proportions, placement, and shapes of the cutouts and overall form.
  • Technical Questions: The complaint argues that the patented design is non-functional, alleging that features like using heavier cardboard and specific cutouts increase manufacturing costs without adding functional benefits over conventional packaging (Compl. ¶36-39). The court may need to determine which, if any, aspects of the patented design are purely functional, as functional elements are not protected by a design patent and must be disregarded in the infringement analysis.

V. Key Claim Terms for Construction

In design patent cases, the "claim" is the visual design depicted in the figures, and formal claim construction of words is rare. The central analysis is the application of the ordinary observer test to the design as a whole. However, the distinction between ornamental and functional features is a critical legal determination that affects the scope of the patent's protection.

The Term

"The ornamental design for an inviolate box"

Context and Importance

Practitioners may focus on the non-functional aspects of the design, as only ornamental features are protected. The complaint anticipates this by dedicating a section to the "Non-Functionality of SE’s Trade Dress," which directly corresponds to the patented design (Compl. ¶¶36-39). The outcome of this functionality analysis could significantly narrow or preserve the scope of the design patent claim.

Intrinsic Evidence for Interpretation

  • Evidence for a Broader (Ornamental) Interpretation: The complaint argues that the design choices, such as using heavier cardboard and a tray-and-sleeve system with interlocking cutouts, are more expensive and difficult to manufacture than conventional packaging, suggesting their purpose is primarily aesthetic rather than functional (Compl. ¶38).
  • Evidence for a Narrower (Functional) Interpretation: A defendant could argue that the core features—a sleeve, a tray, and cutouts that engage with flaps—are functional elements dictated by the need to secure the product within the package. The patent's title, "Inviolate box," might be used to suggest a functional purpose of security or integrity, although the patent itself does not describe any functional advantages.

VI. Other Allegations

Willful Infringement

The complaint alleges willful infringement based on Defendant's alleged knowledge of the ’604 Patent. This knowledge is purportedly established by two cease-and-desist letters sent on May 3, 2023, and May 18, 2023, to which Defendant allegedly did not respond (Compl. ¶¶22-26). The complaint alleges that any infringement after May 3, 2023, was committed with "indisputable actual knowledge" of the patent (Compl. ¶26).

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

  1. The Ordinary Observer Test: The central issue is one of visual similarity. Will an ordinary observer, giving the attention a typical purchaser would, be deceived into thinking Defendant's "Final Bell Package" designs are the same as the design protected by the ’604 Patent, especially when considering any relevant prior art?
  2. The Functionality Doctrine: A critical threshold question will be the extent to which the claimed design is ornamental versus functional. The court's determination of whether features like the interlocking cutouts and sleeve-and-tray structure are dictated by function will define the scope of the patent's protection and shape the entire infringement analysis.
  3. Intersection of Patent and Trade Dress: The complaint asserts both design patent infringement (Count I) and trade dress infringement (Count II) based on the same product appearance. A key legal question will be how the analyses for these distinct intellectual property rights interact, particularly concerning the requirements to prove non-functionality and secondary meaning for the trade dress claim.