Milkmen Design LLC v. Walgreen Co

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Milkmen Design, LLC (Ohio)
  • Defendant: Walgreen Co. (Illinois)
  • Plaintiff’s Counsel: Sand, Sebolt & Wernow Co., LPA
• Case Identification: 5:24-cv-01007, N.D. Ohio, 06/13/2024
• Venue Allegations: Plaintiff alleges venue is proper because Defendant imports, sells, and offers the accused product in the district and maintains regular and established places of business there, including the specific store where the product was purchased.
• Core Dispute: Plaintiff alleges that Defendant’s "Car Vent Sauce Holder" infringes two patents related to devices for holding fast-food condiment containers in a vehicle.
• Technical Context: The technology addresses the consumer convenience market for in-vehicle accessories, specifically providing a universal holder for various disposable condiment containers commonly distributed by fast-food restaurants.
• Key Procedural History: The complaint alleges that Plaintiff advised Defendant of the patents-in-suit and the alleged infringement on December 21, 2023, approximately six months prior to filing the lawsuit.

Case Timeline

Date	Event
2018-03-13	Priority Date for '776 and '287 Patents
2021-04-06	U.S. Patent No. 10,967,776 Issued
2022-12-06	U.S. Patent No. 11,518,287 Issued
2023-12-21	Plaintiff allegedly advised Defendant of infringement
2024-06-13	Complaint Filed

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

U.S. Patent No. 10,967,776, "CONDIMENT HOLDER" (Issued Apr. 6, 2021)

The Invention Explained

• Problem Addressed: The patent’s background section describes the difficulty and potential mess of dipping food into small, unstabilized condiment containers or pouring from flexible pouches while inside a vehicle ('776 Patent, col. 1:26-51).
• The Patented Solution: The invention is a holder designed to clip onto a vehicle's air vent fin, providing a stable platform for a condiment container ('776 Patent, col. 2:26-40). Its central innovation is a single aperture defined by a peripheral wall with a complex geometry, comprising multiple distinct sets of opposed wall sections, which allows it to securely grip and retain a variety of differently shaped condiment containers from major fast-food chains ('776 Patent, Abstract; col. 2:45-52; Fig. 7A).
• Technical Importance: The design purports to offer a universal solution that accommodates numerous proprietary container shapes within one device, improving upon prior art that may have been limited to a single container shape or required separate holders ('776 Patent, col. 2:4-17).

Key Claims at a Glance

• The complaint asserts at least one unspecified independent claim (Compl. ¶¶ 22, 24). Independent claim 1 is representative.
• Essential elements of independent claim 1 include:
  • A body with a top and bottom surface.
  • An interior peripheral wall defining a common aperture.
  • The wall includes a first side and an opposed second side that are mirror images.
  • The wall includes a third side and an opposed fourth side that are dissimilar to each other.
  • The aperture is adapted to individually receive at least three differently configured condiment containers.
  • Each of the first and second sides comprises specific wall sections (a first wall section, a second wall section, another first wall section).
• The complaint does not specify any dependent claims but reserves the right to assert them.

U.S. Patent No. 11,518,287, "ROTATABLE CONDIMENT HOLDER" (Issued Dec. 6, 2022)

The Invention Explained

• Problem Addressed: Similar to its parent patent, the '287 Patent addresses the need for an improved, easy-to-use in-vehicle condiment holder to avoid the inconvenience and mess of eating on the go ('287 Patent, col. 1:29-54).
• The Patented Solution: This continuation patent focuses on the connection between the holder body and the vent clip. It discloses a selectively rotatable coupling, such as a ball-and-socket joint, that allows the body holding the container to be pivoted and oriented independently of the clip ('287 Patent, col. 17:6-12, incorporated from the parent application). This ensures the condiment container can be kept level, preventing spills, regardless of whether the vehicle’s air vent fins are oriented horizontally, vertically, or at an angle ('287 Patent, col. 17:30-38).
• Technical Importance: The rotatability enhances the holder's versatility and stability, making it functional with a wider array of vehicle interior designs and reducing the risk of spillage compared to a fixed-orientation holder.

Key Claims at a Glance

• The complaint asserts at least one unspecified independent claim (Compl. ¶¶ 29, 31). Independent claim 1 is representative.
• Essential elements of independent claim 1 include:
  • A body with an aperture adapted to receive a condiment container.
  • A clip extending from the body, adapted to engage a vehicle air vent fin.
  • The body and clip are "selectively rotatable relative to one another."
  • The aperture is defined by a complex interior wall with multiple dissimilar sides for engaging different container shapes, similar to the '776 patent.
• The complaint does not specify any dependent claims but reserves the right to assert them.

III. The Accused Instrumentality

Product Identification

• The "Car Vent Sauce Holder" (the "Accused Product") sold by Defendant Walgreen Co. (Compl. ¶¶ 16-17).

Functionality and Market Context

• The Accused Product is a condiment holder that is alleged to incorporate the design and function of the patents-in-suit (Compl. ¶16).
• The complaint includes a photograph of the product's packaging, which shows a device designed to clip into a vehicle's air vent and an aperture for holding a sauce container (Compl. ¶17).
• The complaint alleges the Accused Product was purchased from a Walgreens store located in the judicial district, and that Defendant continues to offer it for sale after being notified of the patents (Compl. ¶¶ 17, 19-20).

IV. Analysis of Infringement Allegations

The complaint does not contain a claim chart or provide a detailed narrative mapping specific features of the Accused Product to the elements of the asserted patent claims. The infringement allegations are conclusory, stating that the Accused Product "enables the performance of at least one independent claim" of each patent (Compl. ¶¶ 22, 29).

Based on the nature of the patents and the product, the infringement theory for the ’776 Patent appears to be that the geometry of the aperture in the Accused Product contains the "plurality of sets of opposed wall sections" recited in the claims for holding different container shapes. The infringement theory for the ’287 Patent appears to be that the Accused Product additionally includes a clip mechanism that is "selectively rotatable" relative to the body of the holder. The complaint's visual evidence depicts the Accused Product's general form and packaging (Compl. ¶17).

• Identified Points of Contention:
  • Technical Question (for both patents): A primary point of contention will be factual: does the specific geometry of the Accused Product's aperture meet the detailed limitations of the various "wall sections" recited in the independent claims? The litigation will likely involve expert analysis and comparison of the precise dimensions and shapes of the patented design versus the Accused Product.
  • Scope & Technical Question (for ’287 Patent): A further question is whether the connection between the Accused Product's body and its vent clip functions in a "selectively rotatable" manner as claimed. The complaint provides no detail on the product's clip mechanism, raising the question of what evidence supports this allegation and how the term "selectively rotatable" will be construed.

V. Key Claim Terms for Construction

• The Term: "a plurality of sets of opposed wall sections" (’776 Patent, Claim 1)

• Context and Importance: This term is the central structural limitation defining the "universal" aspect of the holder. The outcome of the infringement analysis for the ’776 Patent will likely depend entirely on whether the internal surfaces of the Accused Product's aperture are found to meet this definition.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification's general statements that the holder is "thereby able to selectively engage at least three differently shaped condiment containers" could support an argument that any combination of surfaces achieving this result meets the definition ('776 Patent, Abstract).
  • Evidence for a Narrower Interpretation: The detailed description and figures provide highly specific geometries, dimensions, and curvatures for multiple distinct sets of walls (e.g., first wall sections 24a-d, second wall sections 26a-b). A defendant may argue that the term requires these specific, enumerated structures as disclosed in the preferred embodiments ('776 Patent, col. 8:6-col. 9:44; Fig. 7A).

• The Term: "selectively rotatable" (’287 Patent, Claim 1)

• Context and Importance: This term distinguishes the '287 patent's claimed invention, focusing on adjustability. Infringement of the '287 patent hinges on whether the Accused Product's clip provides this specific type of movement. Practitioners may focus on this term because its interpretation will determine whether a simple swivel joint infringes or if a more complex mechanism is required.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The claim language itself is broad and does not specify a mechanism. A plaintiff may argue that any joint allowing the body to be turned and held in a different position relative to the clip meets this limitation.
  • Evidence for a Narrower Interpretation: The specification, incorporated from the parent application, describes a ball-and-socket joint as the preferred embodiment, which allows for complex multi-axis rotation ('287 Patent, incorporating disclosure from parent application, see '776 Patent, col. 17:6-12). A defendant could argue that "selectively rotatable" implies the kind of multi-axis, positionable movement enabled by such a joint, rather than simple uni-axial rotation.

VI. Other Allegations

• Willful Infringement: Plaintiff prays for enhanced damages (Compl., Prayer for Relief ¶g). The complaint alleges a factual basis for willfulness by stating that it advised Defendant of the patents and the alleged infringement on December 21, 2023, and that Defendant has refused to discontinue sales of the Accused Product (Compl. ¶¶ 18-20). This alleges knowledge of the patents and a deliberate disregard of Plaintiff's rights.

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

1. A central issue will be one of geometric correspondence: Does the internal geometry of the Accused Product's aperture meet the specific, multi-part "plurality of sets of opposed wall sections" limitation of the '776 patent's claims? This will likely be a battle of expert testimony over technical measurements and design.
2. A second key issue will be one of functional scope: Does the mechanism connecting the Accused Product’s body and clip permit the "selective rotation" required by the '287 patent? The resolution will depend on the court’s construction of that term and a factual analysis of a product feature not detailed in the complaint.
3. An underlying validity question for the defense will be obviousness: Are the claims directed to an inventive concept, or would the combination of a multi-form aperture with a rotatable vent clip have been obvious to a person of ordinary skill in the art at the time of the invention, given the state of the consumer accessory market?