DCT
1:11-cv-00347
Procter & Gamble Co v. VI Jon Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: The Procter & Gamble Company (Ohio)
- Defendant: Vi-Jon, Inc. (Tennessee)
- Plaintiff’s Counsel: Dinsmore & Shohl LLP; Marshall, Gerstein & Borun LLP
- Case Identification: 1:11-cv-00347, S.D. Ohio, 05/27/2011
- Venue Allegations: Venue is alleged to be proper in the Southern District of Ohio because Defendant Vi-Jon contracts to supply and supplies mouthwash in packaging that allegedly infringes Plaintiff's intellectual property within the state.
- Core Dispute: Plaintiff alleges that Defendant’s private label mouthwash packaging infringes five of Plaintiff's design patents and misappropriates the trade dress associated with its SCOPE® OUTLAST® product line.
- Technical Context: This dispute concerns the ornamental design of consumer product packaging in the oral care market, where unique bottle shapes and label graphics are key tools for brand differentiation on retail shelves.
- Key Procedural History: The complaint alleges a history of intellectual property disputes between the parties. Plaintiff previously filed a trade dress lawsuit against Vi-Jon Laboratories, Inc. in 2006, which was resolved by settlement. A separate 2006 lawsuit against a Vi-Jon-related company, Cumberland Swan Holdings, Inc., resulted in a consent judgment and permanent injunction against Cumberland and its related companies, including Vi-Jon. The complaint also notes that Plaintiff sent a letter regarding the current infringement allegations on May 11, 2011, nine days before Vi-Jon responded by denying infringement.
Case Timeline
| Date | Event |
|---|---|
| 2008-03-06 | U.S. Design Patent D591,607 Priority Date |
| 2008-10-30 | U.S. Design Patent D621,275 Priority Date |
| 2009-03-02 | U.S. Design Patents D623,521, D627,651, & D629,308 Priority Date |
| 2009-05-05 | U.S. Design Patent D591,607 Issued |
| 2009-08-24 | Plaintiff launches SCOPE® OUTLAST® product |
| 2010-08-10 | U.S. Design Patent D621,275 Issued |
| 2010-09-14 | U.S. Design Patent D623,521 Issued |
| 2010-11-23 | U.S. Design Patent D627,651 Issued |
| 2010-12-21 | U.S. Design Patent D629,308 Issued |
| 2011-05-XX | Defendant allegedly introduces accused Vi-Jon Product line |
| 2011-05-27 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D591,607 - "Bottle," issued May 5, 2009
The Invention Explained
- Problem Addressed: The complaint asserts a need for distinctive packaging that serves to distinguish a product from those of competitors and to convey its quality to consumers (Compl. ¶¶11, 16).
- The Patented Solution: The patent protects the ornamental design for a bottle. The design is characterized by an ergonomic, flowing shape with a narrow neck that transitions into a wider, asymmetrical body and a flattened base, as depicted from multiple perspectives in the patent's figures (’607 Patent, Claim; Figs. 1-7). The design covers the overall shape and contours of the bottle itself.
- Technical Importance: The complaint alleges that this "unique, distinctive and non-functional bottle design" was created specifically to make the SCOPE® OUTLAST® product line distinguishable to consumers on store shelves (Compl. ¶16).
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is for "the ornamental design for a bottle, as shown and described" (’607 Patent, Claim).
- The essential elements are the visual characteristics of the bottle as a whole, including its:
- Overall profile and proportions.
- Asymmetrical, curved body.
- Transition from the neck to the wider body.
- Flattened base shape.
U.S. Design Patent No. D621,275 - "Container label with surface ornamentation," issued August 10, 2010
The Invention Explained
- Problem Addressed: The design contributes to an overall distinctive trade dress intended to create a unique and recognizable product appearance at the point of sale (Compl. ¶¶16, 23).
- The Patented Solution: The patent protects the ornamental design for surface ornamentation on a label, specifically a stylized graphic of a liquid splash (’275 Patent, Claim; Figs. 1-3). The patent's description and figures clarify that the claim is limited to the splash graphic itself, as the container and label shape are shown in broken lines and are not part of the claimed design (’275 Patent, Description).
- Technical Importance: This ornamentation is alleged to be a key element of the SCOPE® OUTLAST® trade dress that helps consumers identify the product (Compl. ¶16).
Key Claims at a Glance
- The asserted claim is for "the ornamental design for a container label with surface ornamentation, as shown and described" (’275 Patent, Claim).
- The essential element is the specific visual appearance of the liquid splash graphic as depicted in the patent's figures.
Multi-Patent Capsule: U.S. Design Patent No. D623,521 - "Portions of a container and label," issued September 14, 2010
- Technology Synopsis: This patent protects the ornamental design created by the combination of specific portions of the container's shape and the outline of the label applied to it. The drawings use broken lines to disclaim the upper portion of the bottle, focusing the design protection on the visual interplay between the lower body of the container and a curved, shield-like label shape (’521 Patent, Figs. 1-2).
- Asserted Claims: The single claim for the ornamental design as shown.
- Accused Features: The complaint alleges that the combination of the bottle shape and label shape of the Vi-Jon Product packaging infringes the patented design (Compl. ¶62).
Multi-Patent Capsule: U.S. Design Patent No. D627,651 - "Portions of a container and label," issued November 23, 2010
- Technology Synopsis: This patent, similar to the ’521 Patent, protects an ornamental design for portions of a container and label. The claimed design consists of the shape of the front label combined with specific vertical accent lines on the sides of the container body, while the remainder of the container is disclaimed (’651 Patent, Figs. 1-4).
- Asserted Claims: The single claim for the ornamental design as shown.
- Accused Features: The Vi-Jon Product packaging is accused of infringing by applying the patented design or a colorable imitation thereof, targeting the specific combination of label shape and container body features (Compl. ¶68).
Multi-Patent Capsule: U.S. Design Patent No. D629,308 - "Combined container and label," issued December 21, 2010
- Technology Synopsis: This patent protects the ornamental design for a combined container and label. Unlike patents claiming only portions, this patent appears to claim the overall visual appearance of the bottle shape when combined with a specific label shape applied to its front surface (’308 Patent, Figs. 1-2).
- Asserted Claims: The single claim for the ornamental design as shown.
- Accused Features: The complaint alleges infringement based on the overall appearance of the Vi-Jon Product's combined bottle and label design (Compl. ¶74).
III. The Accused Instrumentality
Product Identification
- A line of private label mouthwash products manufactured, distributed, and sold by Vi-Jon ("Vi-Jon Product") (Compl. ¶¶34, 42).
Functionality and Market Context
- The complaint identifies the accused instrumentalities as private label mouthwash products sold in retail stores, such as Target (Compl. ¶¶42-43). The allegations focus on the ornamental features of the packaging, which are alleged to be "virtually indistinguishable" from P&G's design and trade dress (Compl. ¶44). The complaint provides a side-by-side photograph comparing the accused Vi-Jon product with P&G's SCOPE® OUTLAST® product as sold nationwide (Compl. ¶43). Plaintiff further alleges that a substantial component of Defendant's business is based on "imitations of P&G's products and packaging" (Compl. ¶36).
IV. Analysis of Infringement Allegations
D591,607 Infringement Allegations
| Patented Design Feature (from Claim 1) | Alleged Infringing Feature (from Vi-Jon Product) | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a bottle, as shown and described. | The Vi-Jon Product is sold in packaging with "a bottle design that is virtually indistinguishable from P&G's SCOPE OUTLAST Bottle Design." | ¶44(a), ¶50 | Claim; Figs. 1-7 |
- Identified Points of Contention:
- The complaint provides a direct visual comparison, placing a drawing from the ’607 Patent next to a photograph of the accused Vi-Jon bottle (Compl. ¶50). This image is central to the infringement allegation.
- Scope Questions: The primary question for the court will be whether an "ordinary observer," giving such attention as a purchaser usually gives, would be deceived by the resemblance between the two designs. The analysis will focus on the overall visual impression of the bottle's shape and contours, not on a simple checklist of features.
D621,275 Infringement Allegations
| Patented Design Feature (from Claim 1) | Alleged Infringing Feature (from Vi-Jon Product) | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a container label with surface ornamentation, as shown and described. | The Vi-Jon Product packaging features "an image of splashing liquid on the front label much like the splashing liquid image that is included in P&G's SCOPE OUTLAST Trade Dress." | ¶44(c), ¶56 | Claim; Figs. 1-3 |
- Identified Points of Contention:
- The complaint presents a visual aid comparing a figure from the ’275 Patent with a cropped photograph of the ornamentation on the accused product's label (Compl. ¶56).
- Technical Questions: A key factual question is whether the liquid splash graphic on the Vi-Jon label is substantially the same as the specific design claimed in the ’275 Patent. Arguments may arise over the significance of any minor differences in the shape, flow, or droplet patterns between the patented design and the accused ornamentation.
V. Key Claim Terms for Construction
In design patent litigation, the "claim" is defined by the drawings rather than by textual limitations, making traditional claim term construction less common. The analysis focuses instead on the scope of the claimed ornamental design as a whole.
- The Scope: "The ornamental design for a bottle" (’607 Patent) and "the ornamental design for...surface ornamentation" (’275 Patent).
- Context and Importance: The infringement analysis depends entirely on a visual comparison between the claimed designs and the accused product. The court's interpretation of the overall visual impression conveyed by the patent figures will be dispositive. Practitioners may focus on the scope of the design in light of the prior art to determine the degree of similarity required for infringement.
- Intrinsic Evidence for Interpretation (’607 Patent):
- Evidence for a Broader Interpretation: The patent includes figures showing the design from all angles (front, back, side, top, bottom) and in various embodiments, including transparent, stippled, and opaque surfaces (’607 Patent, Description; Figs. 1-21). This may support an argument that the design's scope covers the fundamental shape and contours, regardless of the specific material used.
- Evidence for a Narrower Interpretation: The design is defined by a unique combination of specific asymmetrical curves and a flattened base (’607 Patent, Fig. 1). A court could determine that the design is narrowly defined by these precise features, meaning a deviation in the accused bottle's proportions or curves could be sufficient to avoid infringement.
- Intrinsic Evidence for Interpretation (’275 Patent):
- Evidence for a Broader Interpretation: The patent explicitly states that the design can be rendered in different colors (e.g., green, blue) and applied to different container types, such as a box or bottle (’275 Patent, Description; Figs. 4, 18). This could suggest the protected design is the general concept of the splash graphic, not one limited to a specific color or application.
- Evidence for a Narrower Interpretation: The patent's use of broken lines to disclaim the container and the boundary of the label explicitly limits the claimed design to the splash ornamentation itself (’275 Patent, Description). A defendant may argue that the design is therefore confined to the exact shape, flow, and droplet configuration shown in the drawings.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement to infringe for all five asserted patents. The factual basis for inducement is the allegation that Vi-Jon manufactures, sells, and offers for sale the accused products to its retailer customers, thereby inducing them to infringe by selling the products to consumers (e.g., Compl. ¶50, ¶56).
- Willful Infringement: The complaint alleges that Vi-Jon’s infringement has been "deliberate and willful" (e.g., Compl. ¶52). This allegation is supported by claims that: (1) Vi-Jon has a history of prior litigation with P&G over similar packaging imitation issues (Compl. ¶¶38-40); and (2) Vi-Jon had pre-suit knowledge of the patents-in-suit via a letter from P&G dated May 11, 2011, but continued its allegedly infringing conduct (Compl. ¶¶45-46).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of visual similarity: Applying the "ordinary observer" test, is the overall ornamental appearance of Vi-Jon’s mouthwash packaging substantially the same as the various designs claimed in P&G’s five patents? The outcome will depend on whether a fact-finder perceives the accused product as a "colorable imitation" or as having sufficient visual differences to be non-infringing.
- A related evidentiary question will be the scope of the patented designs in the context of the prior art for mouthwash packaging. The novelty of P&G's designs will determine the breadth of their protection and how closely a competitor can approach the design without infringing.
- A key question for damages will be one of intent. Given the allegations of a prior litigation history and pre-suit notice, evidence regarding Vi-Jon’s knowledge of P&G’s designs and patents will be critical to the claim for willful infringement and any potential award of enhanced damages.