DCT
5:23-cv-00153
Milkmen Design LLC v. DGL Group Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Milkmen Design, LLC (Ohio)
- Defendant: DGL Group LTD (New York), Five Below, INC. (Pennsylvania), and 1616 Holdings, INC. (Pennsylvania)
- Plaintiff’s Counsel: Sand, Sebolt & Wernow Co., LPA
- Case Identification: 5:23-cv-00153, N.D. Ohio, 05/15/2023
- Venue Allegations: Plaintiff alleges venue is proper as to Defendant DGL Group based on its importing, selling, and offering the accused product for sale in the district. Venue is alleged as proper for Defendant Five Below based on its operation of at least 14 retail stores constituting a regular and established place of business within the district.
- Core Dispute: Plaintiff alleges that Defendants’ “Condiment Dipping Clip” product infringes two utility patents and two design patents related to vehicle-mountable holders for fast-food condiment containers.
- Technical Context: The technology addresses the consumer convenience problem of securely holding various shapes of fast-food condiment containers inside a vehicle to allow for dipping sauces while driving.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendants with pre-suit notice of the patents-in-suit and that Defendants refused to cease sales of the accused product. The U.S. Patent No. 11,518,287 is a continuation of the application that issued as U.S. Patent No. 10,967,776.
Case Timeline
| Date | Event |
|---|---|
| 2018-03-13 | Earliest Priority Date ('776, '287 Patents) |
| 2020-10-20 | U.S. Design Patent No. D899,196 Issues |
| 2021-04-06 | U.S. Patent No. 10,967,776 Issues |
| 2022-08-16 | U.S. Design Patent No. D960,654 Issues |
| 2022-12-06 | U.S. Patent No. 11,518,287 Issues |
| 2023-05-15 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,967,776 - “CONDIMENT HOLDER”
- Patent Identification: U.S. Patent No. 10,967,776, “CONDIMENT HOLDER,” issued April 6, 2021 (Compl. ¶13).
The Invention Explained
- Problem Addressed: The patent’s background describes the difficulty and mess associated with holding and dipping food into small, rigid condiment containers while in a vehicle, noting that prior art solutions were often limited to a single container shape or size ('776 Patent, col. 1:40-50; col. 2:3-16).
- The Patented Solution: The invention is a single condiment holder designed to attach to a vehicle’s air vent fin. Its central innovation is an aperture defined by a specially shaped interior peripheral wall that includes "a plurality of sets of opposed wall sections." This geometry allows the single device to selectively engage and retain at least three differently shaped condiment containers, providing a universal fit for various fast-food packaging ('776 Patent, Abstract; Fig. 7A).
- Technical Importance: The invention provides a single, compact device capable of adapting to the non-standardized and varied shapes of condiment containers prevalent in the fast-food industry ('776 Patent, col. 2:23-26).
Key Claims at a Glance
- The complaint asserts at least one independent claim; the patent contains one independent claim, Claim 1 (Compl. ¶31; ’776 Patent, col. 29:56).
- Claim 1 requires, in relevant part:
- A body with a top and bottom surface and a member extending outwardly to orient the body horizontally.
- An interior peripheral wall with a first and second side arranged as mirror images, and a third and fourth side that are "dissimilar to" one another.
- A "common aperture" bounded by these four sides, adapted to receive any of three or more differently configured containers.
- A specific arrangement of "first," "second," and "third" wall sections comprising the interior peripheral wall.
U.S. Patent No. 11,518,287 - “ROTATABLE CONDIMENT HOLDER”
- Patent Identification: U.S. Patent No. 11,518,287, “ROTATABLE CONDIMENT HOLDER,” issued December 6, 2022 (Compl. ¶15).
The Invention Explained
- Problem Addressed: The problem is consistent with the parent '776 Patent: the difficulty of using various condiment containers in a vehicle ('287 Patent, col. 1:47-52).
- The Patented Solution: This invention adds a key improvement to the multi-container holder: a rotatable connection between the holder body and the air vent clip. The specification describes a ball-and-socket joint that allows the body to pivot and be oriented horizontally, keeping the condiment container level, regardless of whether the vehicle’s air vent fins are vertical, horizontal, or angled ('287 Patent, Abstract; col. 4:9-16, Fig. 21).
- Technical Importance: The rotatable feature enhances the device's compatibility with a wider range of vehicle interiors and helps prevent spills by allowing the user to level the condiment container ('287 Patent, col. 4:12-16).
Key Claims at a Glance
- The complaint asserts at least one independent claim; the patent contains independent claims 1 and 8 (Compl. ¶113; ’287 Patent, col. 29:57, col. 30:57). Claim 1 is the lead apparatus claim.
- Claim 1 requires, in relevant part:
- A body with an aperture adapted to receive one of a plurality of differently-configured condiment containers.
- A clip extending outwardly from the body.
- The body and clip are "selectively rotatable relative to one another."
- The clip is adapted to engage at least one fin of a vehicle air vent.
U.S. Design Patent No. D899,196 S - “CONDIMENT HOLDER”
- Patent Identification: U.S. Design Patent No. D899,196 S, “CONDIMENT HOLDER,” issued October 20, 2020 (Compl. ¶12).
- Technology Synopsis: The patent claims the ornamental, non-functional design for a condiment holder (Compl. ¶17). The claimed design consists of a receptacle body with a multi-contoured interior opening, a connecting neck, and a bifurcated clip, as depicted in the patent's figures (D’196 Patent, Figs. 1-8).
- Asserted Claims: The single claim for the ornamental design as shown and described (Compl. ¶65).
- Accused Features: Plaintiff alleges the overall ornamental appearance of the Accused Product is substantially the same as the claimed design, such that it would deceive an ordinary observer (Compl. ¶¶66, 68).
U.S. Design Patent No. D960,654 S - “CONDIMENT HOLDER”
- Patent Identification: U.S. Design Patent No. D960,654 S, “CONDIMENT HOLDER,” issued August 16, 2022 (Compl. ¶14).
- Technology Synopsis: The patent claims the ornamental, non-functional design for a condiment holder (Compl. ¶17). The design is visually similar to that of the D’196 Patent but shows variations in proportion and features, particularly in the shape of the clip and its connection to the body (D’654 Patent, Figs. 1-9).
- Asserted Claims: The single claim for the ornamental design as shown and described (Compl. ¶89).
- Accused Features: Plaintiff alleges the overall ornamental appearance of the Accused Product is substantially the same as the claimed design, such that it would deceive an ordinary observer (Compl. ¶¶90, 92).
III. The Accused Instrumentality
Product Identification
The "Condiment Dipping Clip," sold in a two-pack under the "Vibe e-ssential" brand (Compl. ¶27). The complaint refers to this as the "Accused Product" (Compl. ¶24).
Functionality and Market Context
The Accused Product is a plastic device designed to clip onto a vehicle’s air vent to hold a fast-food condiment container (Compl. ¶27). The complaint includes an image of the product's retail packaging, which advertises that it "FITS MOST VENTS" and is for "EASY TO EAT IN YOUR CAR" (Compl. ¶27). Plaintiff alleges the Accused Product is designed and manufactured by DGL, distributed by 1616 Holdings, and sold at retail by Five Below (Compl. ¶¶22-24). A side-by-side photograph compares the Accused Product with what is presumably the Plaintiff's commercial embodiment (Compl. ¶29).
IV. Analysis of Infringement Allegations
The complaint does not provide detailed, element-by-element claim charts. The analysis below is constructed from the complaint's general allegations that the Accused Product incorporates the "design, structure and function of the Patents-in-Suit" (Compl. ¶28).
U.S. Patent No. 10,967,776 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a body having a top surface and a bottom surface; | The Accused Product is a physical device with a main body having top and bottom surfaces. | ¶27, ¶28 | col. 7:15-18 |
| a member extending outwardly from the body and arranged to orient the body such that the top surface thereof is generally horizontal; | The Accused Product has a clip portion extending from the main body, which attaches to a vehicle air vent to hold the body in a generally horizontal orientation for use. | ¶27 | col. 11:1-4 |
| an interior peripheral wall... including: a first side and an opposed second side... a third side and an opposed fourth side... wherein the third side is dissimilar to the fourth side; | The Accused Product's receptacle features a multi-contoured interior wall, as shown in the side-by-side comparison, which appears to have non-symmetrical opposing sides. | ¶29 | col. 9:24-44 |
| a common aperture... adapted to individually receive any of the three or more differently configured condiment containers... | The shape of the Accused Product's aperture, with its varied curves and straight sections, is alleged to be configured to hold different shapes of condiment containers. | ¶28, ¶29 | col. 7:26-44 |
U.S. Patent No. 11,518,287 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a body having a top surface and a bottom surface; | The Accused Product is a physical device with a main body having top and bottom surfaces. | ¶27, ¶28 | col. 7:9-12 |
| an aperture defined by an interior peripheral wall of the body... adapted to receive one of a plurality of differently-configured condiment containers therein; | The Accused Product's receptacle features a multi-contoured interior wall alleged to hold various condiment containers. | ¶28, ¶29 | col. 7:24-41 |
| a clip extending outwardly from the body; wherein said body and clip are selectively rotatable relative to one another... | The complaint alleges the Accused Product incorporates the function of the '287 Patent, which discloses a rotatable holder, though no specific facts or visual evidence in the complaint confirm this rotatability. | ¶19, ¶28 | col. 4:9-16 |
Identified Points of Contention
- Scope Questions (’776 Patent): A central question will be whether the specific geometry of the Accused Product’s aperture meets the detailed structural limitations of Claim 1, which requires a precise arrangement of mirrored "first wall sections," "second wall sections," and "dissimilar" third and fourth sides. The complaint's visual evidence suggests a complex shape but does not provide the analysis needed to map that shape to the claim language.
- Technical Questions (’287 Patent): The infringement analysis for the ’287 Patent may turn on whether the Accused Product's clip is in fact "selectively rotatable relative to" the body. The complaint does not allege specific facts to support this key limitation, and the provided photographs are insufficient to determine if such a mechanism exists.
V. Key Claim Terms for Construction
The Term: "dissimilar" ('776 Patent, Claim 1)
- Context and Importance: The requirement that the third and fourth sides of the aperture be "dissimilar" is a key structural limitation defining the asymmetry that allegedly allows the holder to accommodate multiple container shapes. The outcome of the infringement analysis for the '776 Patent could depend on how this term is construed.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The plain and ordinary meaning of "dissimilar" suggests any lack of identity. The specification contrasts an arcuate "fourth wall section 30" with a "generally U-shaped fifth wall section 32" that includes a straight portion, providing an example of dissimilarity without limiting the term to only this specific pair of shapes (’776 Patent, col. 9:24-44).
- Evidence for a Narrower Interpretation: A defendant may argue that the term "dissimilar" must be understood in the context of the specific embodiments disclosed, potentially limiting its scope to the particular types of geometric differences (arcuate vs. U-shaped with a straight segment) described and shown in the patent (’776 Patent, Fig. 7A).
The Term: "selectively rotatable" ('287 Patent, Claim 1)
- Context and Importance: This term captures the primary inventive concept of the '287 Patent over its predecessor. The entire infringement case for this patent will likely depend on the meaning of this term and whether the Accused Product's functionality falls within its scope.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself is broad and does not recite a specific mechanism. It could be argued to encompass any design that allows the user to change and set the rotational position of the body relative to the clip, even if the movement is not perfectly smooth or multi-axis.
- Evidence for a Narrower Interpretation: The specification consistently describes and depicts the rotation being enabled by a "ball-and-socket style joint" ('287 Patent, col. 4:9-12). A defendant may argue that the term should be limited to the multi-axis, pivotal motion characteristic of such a joint, as this is the only mechanism disclosed for achieving the claimed function.
VI. Other Allegations
Indirect Infringement
The complaint alleges inducement of infringement against Defendants DGL and 1616 Holdings for both the '776 and '287 patents, based on their "offering, making and selling condiment holders for use in a manner that infringes" (Compl. ¶¶42, 61, 122, 140). The complaint does not specify facts supporting the requisite intent, such as alleging that user manuals or advertising instruct infringing uses.
Willful Infringement
The complaint alleges that Plaintiff provided Defendants with knowledge of the patents-in-suit via "direct correspondence" and that Defendants subsequently "refused to change the design of the Accused Product, and have refused to discontinue sales" (Compl. ¶¶25-26, 35). These allegations may form the basis for a claim of willful infringement and a request for enhanced damages, which is included in the prayer for relief (Compl. p. 23, ¶j).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of geometric correspondence: does the physical geometry of the Accused Product's interior receptacle wall map onto the detailed and specific series of "first," "second," and "dissimilar" wall sections required by Claim 1 of the '776 patent, or is there a fundamental mismatch?
- A key evidentiary question will be one of undisclosed functionality: does the Accused Product incorporate a mechanism that makes its body "selectively rotatable" relative to its clip, as claimed by the '287 patent? The complaint's infringement theory for this patent appears to depend entirely on this feature, which is not supported by specific facts or clear visual evidence in the pleading.
- For the asserted design patents, the central question will be the impression on the ordinary observer: viewing the side-by-side comparison provided in the complaint, is the overall visual appearance of the Accused Product substantially the same as the patented designs, such that a purchaser would be deceived?