DCT
5:24-cv-01900
Milkmen Design LLC v. Bytech NY Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Milkmen Design LLC (Ohio)
- Defendant: Bytech NY Inc (New York) and Hobby Lobby Stores Inc (Oklahoma)
- Plaintiff’s Counsel: Sand & Sebolt
- Case Identification: 5:24-cv-01900, N.D. Ohio, 10/30/2024
- Venue Allegations: Venue for Bytech is based on allegations of importing, offering for sale, and selling the accused product within the district. Venue for Hobby Lobby is based on its operation of a regular and established place of business in the district, with at least 10 retail stores.
- Core Dispute: Plaintiff alleges that Defendants’ "Condiment Dipping Clip" product infringes two patents related to holders designed to secure fast-food condiment containers to a vehicle’s air vent.
- Technical Context: The technology addresses the consumer convenience market for in-vehicle accessories, specifically providing a stable, universal holder for various disposable condiment containers to facilitate eating while driving.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendants with notice of the patents-in-suit prior to filing the lawsuit. In response, Hobby Lobby allegedly acknowledged the patents, agreed to cease future purchases of the accused product, removed it from its website, and tendered its defense to Bytech pursuant to a contractual indemnification obligation. Plaintiff alleges Bytech continues to manufacture and sell the product.
Case Timeline
| Date | Event |
|---|---|
| 2018-03-13 | Priority Date for ’776 and ’287 Patents |
| 2021-04-06 | U.S. Patent No. 10,967,776 Issues |
| 2022-12-06 | U.S. Patent No. 11,518,287 Issues |
| 2024-10-30 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,967,776 - “CONDIMENT HOLDER”
Issued April 6, 2021
The Invention Explained
- Problem Addressed: The patent’s background describes the difficulty and mess associated with holding small, rigid condiment containers or flexible sauce pouches for dipping food, such as fries or chicken nuggets, while inside a vehicle (’776 Patent, col. 1:40-54). Prior art solutions were noted as being specific to single container shapes or sizes (’776 Patent, col. 2:5-11).
- The Patented Solution: The invention is a single, compact holder that attaches to a vehicle's air vent fin. Its central innovation is a specially shaped aperture, defined by an "interior peripheral wall," that is configured with multiple distinct sets of "opposed wall sections." This geometry allows the single device to selectively engage and securely hold at least three differently shaped condiment containers, such as those provided by various fast-food chains (’776 Patent, Abstract; col. 2:31-37).
- Technical Importance: The invention aims to provide a universal holder that addresses the shortcomings of prior art by accommodating a plurality of common container geometries in one device (’776 Patent, col. 2:23-26).
Key Claims at a Glance
- The complaint asserts at least one independent claim (Compl. ¶31). Independent Claim 1 includes the following essential elements:
- A condiment holder for supporting at least three differently configured condiment containers.
- A body with a top and bottom surface.
- A member (e.g., a clip) extending from the body arranged to orient the body so the top surface is "generally horizontal."
- An interior peripheral wall with four dissimilar sides defining a "common aperture."
- The aperture is adapted to receive any of the three or more container types.
- The wall comprises specific combinations of "first wall sections," "second wall sections," and "third wall sections" arranged to engage the different containers.
U.S. Patent No. 11,518,287 - “ROTATABLE CONDIMENT HOLDER”
Issued December 6, 2022
The Invention Explained
- Problem Addressed: The patent addresses the same problem as its parent ’776 Patent: the inconvenience of using fast-food condiment containers in a vehicle (’287 Patent, col. 1:30-55).
- The Patented Solution: The ’287 Patent discloses a condiment holder with the same multi-container aperture as the ’776 Patent but adds a rotatable coupling between the holder body and the air vent clip. The specification describes a "ball-and-socket style joint" that allows the body to pivot relative to the clip (’287 Patent, col. 17:8-11). This adjustability allows the user to keep the condiment container level, preventing spills, even if the vehicle’s air vent fins are angled or vertically oriented (’287 Patent, col. 17:12-23).
- Technical Importance: The addition of a rotatable joint increases the device's stability and compatibility with a wider variety of vehicle interiors, making it more versatile than a fixed holder (’287 Patent, col. 17:35-40).
Key Claims at a Glance
- The complaint asserts at least one independent claim (Compl. ¶41). Independent Claim 1 includes the following essential elements:
- A condiment holder comprising a body and a clip.
- An aperture in the body defined by an interior peripheral wall adapted to receive differently configured condiment containers.
- The body and clip are "selectively rotatable relative to one another."
- The clip is adapted to engage a vehicle air vent fin.
- The interior peripheral wall has a specific geometry of dissimilar sides and wall sections, similar to that claimed in the ’776 Patent.
III. The Accused Instrumentality
Product Identification
- The "Condiment Dipping Clip" (Accused Product) (Compl. ¶¶24-25).
Functionality and Market Context
- The Accused Product is a plastic holder designed to attach to a car's air vent fin to hold sauce containers (Compl. ¶32). A photograph of the product packaging provided in the complaint shows a device with an aperture for holding a container and a clip for vent attachment (Compl. p. 5, ¶25). The packaging claims the product "FITS MOST CAR AIR VENTS" and is "COMPATIBLE WITH MOST SAUCES FROM ALL MAJOR CHAINS" (Compl. p. 5, ¶25). The complaint alleges the Accused Product is "rotatable" and has an aperture "capable of selectively receiving and retaining any one of a plurality of differently shaped condiment containers" (Compl. ¶¶32, 42, 52).
IV. Analysis of Infringement Allegations
’776 Patent 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 body designed to hold condiments. | ¶32 | col. 7:15-21 |
| 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 includes a clip that is "engageable with an air vent fin of a vehicle." | ¶32 | col. 11:1-4 |
| an interior peripheral wall provided on the body... a common aperture bounded and defined by the... interior peripheral wall, said common aperture adapted to individually receive any of the three or more differently configured condiment containers therein; | The Accused Product includes a "retaining aperture configured to be capable of selectively receiving and retaining any one of a plurality of differently shaped condiment containers." | ¶32 | col. 7:27-43 |
’287 Patent 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 body designed to hold condiments. | ¶42 | col. 7:11-17 |
| 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 can be used as a "rotatable condiment holder." | ¶42, 52, 62 | col. 17:8-11 |
| 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 includes a "retaining aperture configured to be capable of selectively receiving and retaining any one of a plurality of differently shaped condiment containers." | ¶42 | col. 7:25-39 |
- Identified Points of Contention:
- Structural Questions: The complaint’s infringement theory relies on conclusory allegations that track the patent claims' language. A central question will be whether the Accused Product’s container aperture possesses the specific, complex geometry recited in the claims, including the distinct "first," "second," and "third" wall sections. The complaint does not provide dimensional analysis or specific structural comparisons to support these allegations.
- Functional Questions: For the ’287 Patent, the case may turn on the mechanism and degree of rotation. What evidence does the complaint provide that the Accused Product’s body and clip are "selectively rotatable" as claimed? The complaint asserts this functionality but provides no visual or descriptive evidence of a joint or pivot mechanism that would enable it.
V. Key Claim Terms for Construction
The Term: "arranged to orient the body such that the top surface thereof is generally horizontal" (’776 Patent, Claim 1)
Context and Importance: This term defines a functional attribute of the clip member. Its construction is critical because the infringement analysis will question whether the clip itself inherently achieves this horizontal orientation or if the orientation is merely a consequence of the vehicle's air vent design.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the clip's primary purpose is to "secure body 14 to any selected fin 12b of air vent 12" (’776 Patent, col. 11:1-4), which may suggest that any attachment achieving a usable orientation meets the limitation.
- Evidence for a Narrower Interpretation: The specification for the second embodiment (a rotatable version) explicitly discloses a ball-and-socket joint designed to hold a container in an "optimum horizontal position for dipping" and to "counteract any tendency... to 'droop'" (’776 Patent, col. 17:12-40). This detailed description of a mechanism to ensure a horizontal orientation could be used to argue that the term requires more than simple attachment.
The Term: "selectively rotatable" (’287 Patent, Claim 1)
Context and Importance: This term is the central feature distinguishing the ’287 Patent from the earlier ’776 Patent. The infringement dispute for this patent will likely focus on whether the Accused Product's connection between the clip and body meets this definition.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The plain language of the term may be construed broadly to cover any design that allows the body and clip to be turned or pivoted relative to each other by a user.
- Evidence for a Narrower Interpretation: The specification’s preferred embodiment discloses a specific "ball-and-socket style joint" to achieve this function (’287 Patent, col. 17:8-11). A defendant may argue that "selectively rotatable" should be construed to require a mechanism with similar structural and functional characteristics, potentially distinguishing it from a simple pivot or friction fit.
VI. Other Allegations
- Willful Infringement: The complaint does not contain an explicit count for willful infringement. However, it alleges facts that may support a claim for enhanced damages under 35 U.S.C. § 284. The complaint states that Plaintiff advised both Defendants of the Patents-in-Suit before filing the lawsuit (Compl. ¶27). It further alleges that while Hobby Lobby took steps to cease its accused activities, Bytech continues to manufacture, distribute, and/or sell the Accused Product despite having knowledge of the patents (Compl. ¶¶28-29).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of structural correspondence: what evidence will be developed to demonstrate that the geometry of the Accused Product's aperture maps onto the highly specific and detailed "wall section" limitations recited in the independent claims of both patents? The complaint’s conclusory allegations will require substantial factual support during discovery and expert analysis.
- A key technical question for the ’287 Patent will be one of mechanical operation: does the Accused Product feature a mechanism allowing the body and clip to be "selectively rotatable," and does its function align with the scope of that term as defined by the patent? The litigation will likely require a detailed examination of the product's physical construction to resolve this point.
- A central issue for damages will be one of scienter: given the allegation of pre-suit notice to both Defendants and Bytech’s alleged continuation of infringing activities, the court will likely examine the timing and substance of the parties' communications to determine whether any infringement was willful, which could expose Defendants to enhanced damages.