DCT
1:24-cv-02373
Ontel Products Corp v. Equity Brands LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Ontel Products Corporation (New Jersey)
- Defendant: Equity Brands LLC d/b/a My Home Products (Delaware)
- Plaintiff’s Counsel: Dickinson Wright PLLC
- Case Identification: 1:24-cv-02373, S.D.N.Y., 03/28/2024
- Venue Allegations: Venue is alleged to be proper in the Southern District of New York because the Defendant maintains a principal place of business in New York, NY.
- Core Dispute: Plaintiff alleges that Defendant’s Black + Decker Desktop Air Cooler infringes a patent related to evaporative personal air coolers, and further alleges that the product was developed in bad faith after Defendant gained access to Plaintiff's confidential information under a non-disclosure agreement.
- Technical Context: The technology concerns personal evaporative air coolers, a consumer product category that uses water evaporation to provide localized cooling.
- Key Procedural History: The complaint alleges that Defendant engaged in discussions to potentially acquire Plaintiff's "Arctic Air Business." During this process, under a non-disclosure agreement, Defendant allegedly received confidential technical, financial, and intellectual property information, including details about the patent-in-suit. The complaint claims that after Defendant terminated acquisition discussions, it launched the accused product, which forms the basis for allegations of willful infringement and other business torts.
Case Timeline
| Date | Event |
|---|---|
| 2018-02-01 | Plaintiff first sells Arctic Air® product in the U.S. (approximate date) |
| 2019-01-03 | ’029 Patent Priority Date (Filing Date) |
| 2020-07-14 | ’029 Patent Issue Date |
| 2022-10-31 | Parties enter into a Non-Disclosure Agreement (approximate date) |
| 2022-11-01 | Confidential meeting where Plaintiff presented IP portfolio to Defendant |
| 2022-11-21 | Defendant terminates interest in acquiring Plaintiff's business (approximate date) |
| 2023-01-01 | Defendant introduces the Accused Air Cooler (year only) |
| 2024-02-07 | Plaintiff purchases an Accused Air Cooler from an Amazon listing |
| 2024-03-28 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,712,029, "Evaporative Personal Air Cooler" (Issued July 14, 2020)
The Invention Explained
- Problem Addressed: The patent's background describes issues with conventional personal evaporative coolers, noting that they often take time to begin cooling because the filter material must first soak up water from a reservoir. This can lead to a delay in effectiveness, and the paper-like filters often require frequent replacement. (’029 Patent, col. 1:46-52).
- The Patented Solution: The invention claims to solve this problem by employing a two-stage cooling process. It combines an initial, "instant" cooling effect from a "misting structure" that sprays a fine mist into the airflow, with a prolonged cooling effect from a "filter structure" made of a sponge-like material that absorbs this mist. A fan draws ambient air through the mist and the wetted filter, cooling the air before it exits the device. (’029 Patent, Abstract; col. 9:1-8).
- Technical Importance: This design's combination of a mister for immediate cooling and a reusable, absorbent filter for sustained cooling addresses the startup lag and filter disposability issues associated with prior-art devices. (’029 Patent, col. 9:1-8).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 16 of the ’029 Patent (Compl. ¶76).
- Independent Claim 1 recites the core combination of components for the cooler:
- a housing with top, bottom, and side panels
- a tank to receive, store, and release liquid
- a misting structure with a mister and coupling to create a mist
- a filter structure with a plurality of filters to absorb the mist
- a fan to draw air in, through the filter structure, and out of the cooler
- Independent Claim 16 recites a similar combination of a housing, tank, misting structure, filter structure, and fan, but adds the specific element of:
- a v-shaped shroud positioned underneath the tank and configured to direct the mist toward the filter structure
- The complaint does not explicitly reserve the right to assert other claims, but standard practice allows for amending infringement contentions.
III. The Accused Instrumentality
- Product Identification: The accused product is the "Black + Decker Desktop Air Cooler" (the "Accused Air Cooler") (Compl. ¶2).
- Functionality and Market Context: The complaint alleges the Accused Air Cooler is a personal evaporative cooler that performs the function of cooling and humidifying air (Compl. p.12 visual). The complaint provides photographic evidence from a physical inspection of the product, depicting its external housing and internal components, including a water tank, a fan, and a removable filter assembly (Compl. ¶64, pp. 14-17). This image from the complaint's exhibit shows the accused product's packaging, which describes it as a "Desktop Air Cooler" that "Cools & Humidifies" (Compl. ¶50, p.12). The product is allegedly sold through major retail channels like Target and Walmart, placing it in direct competition with the Plaintiff's products (Compl. ¶58).
IV. Analysis of Infringement Allegations
’029 Patent Infringement Allegations (Claim 1)
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a housing with a top panel, a bottom panel, and side panels defining an interior... | The Accused Air Cooler features a housing with top, bottom, and side panels. | ¶78 | col. 3:11-20 |
| a tank positioned adjacent to the top panel and at least one of the side panels... | The Accused Air Cooler has a tank located adjacent to its top panel. | ¶78 | col. 8:56-62 |
| a misting structure comprising a mister and a misting structure coupling... configured to create a mist... | The Accused Air Cooler includes a "misting structure" that creates a mist. A complaint visual labels this component. | ¶78, p.20 | col. 7:4-8 |
| a filter structure with a plurality of filters... configured to absorb the mist | The Accused Air Cooler contains a filter structure with multiple filters. A complaint visual shows the filter removed from its housing. | ¶78, p.21 | col. 5:4-21 |
| a fan configured to draw the ambient air into the evaporative air cooler... and wherein the fan directs the ambient air thorough the filter structure... | The Accused Air Cooler uses a fan to draw air into the device and through the filter structure. | ¶78, p.20 | col. 7:51-54 |
’029 Patent Infringement Allegations (Claim 16)
| Claim Element (from Independent Claim 16) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a housing... a tank... a misting structure... a filter... a fan... | The complaint alleges the Accused Air Cooler contains these components, as described in the analysis for Claim 1. | ¶80 | col. 13:15-32 |
| and a v-shaped shroud positioned underneath the tank and configured to direct the mist toward the filter structure. | The Accused Air Cooler allegedly features a v-shaped shroud under the tank to direct mist. The complaint provides a side-by-side visual comparison for this element. | ¶80, p.23 | col. 8:24-34 |
- Identified Points of Contention:
- Technical Question: The complaint's infringement theory for Claim 16 hinges on the presence of a "v-shaped shroud" (Compl. ¶80). A side-by-side comparison image shows a patent figure next to a photo of the accused device's interior, labeling a component as the infringing "V-SHAPED SHROUD" (Compl. ¶80, p.23). A central factual dispute may arise over whether this accused component is in fact "v-shaped" and whether it performs the claimed function of "direct[ing] the mist toward the filter structure."
- Scope Question: For Claim 1, a potential dispute may focus on the "misting structure comprising a mister and a misting structure coupling." The complaint makes a conclusory allegation that the accused product has this feature (Compl. ¶78). The court may need to construe the scope of these terms, and a key question will be whether the specific components within the Accused Air Cooler meet those construed definitions.
V. Key Claim Terms for Construction
The Term: "misting structure"
- Context and Importance: This term is central to the patent's novelty, as it provides the "instant cooling" feature. Its construction will be critical to determining infringement of both asserted independent claims. Practitioners may focus on this term because the complaint's allegations are based on visual identification without detailed functional analysis.
- Intrinsic Evidence for a Broader Interpretation: Claim 1 requires the structure to comprise "a mister and a misting structure coupling" without further limitation, which could support a broad reading covering any component that creates a mist and couples to the device. (’029 Patent, col. 12:10-13).
- Intrinsic Evidence for a Narrower Interpretation: The specification describes the mister as a "microporous mister" and shows a specific embodiment (mister 106). (’029 Patent, col. 9:4). A defendant may argue this disclosure limits the scope of the term to the specific type of mister shown.
The Term: "v-shaped shroud" (from Claim 16)
- Context and Importance: This is the key structural limitation that distinguishes independent claim 16 from claim 1. The infringement analysis for this claim will depend entirely on whether the accused product has a component that meets the definition of this term.
- Intrinsic Evidence for a Broader Interpretation: The specification describes the shroud's function as being "configured to distribute the mist 118 evenly toward the filters 58" and to "maximize airflow." (’029 Patent, col. 8:30-34). Plaintiff may argue that any structure, regardless of its precise geometry, that performs this directive function and is generally V-shaped falls within the claim's scope.
- Intrinsic Evidence for a Narrower Interpretation: The patent includes a specific figure (Fig. 7) that depicts the "v-shaped shroud 44." A defendant could argue that the term should be limited to a structure that is substantially similar in form and orientation to what is explicitly shown in the patent's drawings.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement, asserting that Defendant had knowledge of the ’029 Patent and intended for third-party customers to infringe by using the Accused Air Cooler as instructed. (Compl. ¶¶ 72, 75).
- Willful Infringement: The complaint makes a detailed claim for willfulness. It alleges that Defendant gained actual, pre-suit knowledge of the ’029 Patent during a confidential presentation on November 1, 2022, as part of business acquisition discussions. (Compl. ¶70). The subsequent development and sale of the allegedly infringing product, after obtaining this confidential information, is presented as evidence of blatant and intentional infringement. (Compl. ¶¶ 6, 81).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of willfulness and bad faith: The case presents an unusual and compelling narrative that goes beyond typical patent infringement. A primary question for the fact-finder will be whether the Defendant used confidential information obtained under an NDA during acquisition talks to develop and launch a competing product, as alleged. The resolution of this question will likely be dispositive for the claim of willful infringement and potential enhanced damages.
- A key infringement question will be one of structural correspondence: Does the accused cooler's internal mist-delivery component qualify as a "v-shaped shroud" as required by Claim 16? The complaint's photographic evidence suggests a visual similarity, but the determination will depend on the court's claim construction and a detailed comparison of the component's shape and function to the patent's requirements.
- A final question will be one of definitional scope: Can the general components identified in the Accused Air Cooler satisfy the specific limitations of the claims, particularly the "misting structure comprising a mister and a misting structure coupling"? The outcome will depend on whether the evidence shows these accused parts perform in the manner described and claimed in the patent.