DCT
3:18-cv-01653
Kraft Foods Group Brands LLC v. D6 Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Kraft Foods Group Brands LLC (Delaware)
- Defendant: D6 Inc. (Oregon)
- Plaintiff’s Counsel: Tonkon Torp LLP; Banner & Witcoff, Ltd.
- Case Identification: 3:18-cv-01653, D. Or., 09/12/2018
- Venue Allegations: Venue is alleged to be proper in the District of Oregon because Defendant D6 Inc. is an Oregon corporation that resides in the district.
- Core Dispute: Plaintiff alleges that Defendant’s multi-compartment food packages infringe two of Plaintiff's design patents covering the ornamental designs for such packages.
- Technical Context: The dispute is in the field of consumer food packaging, where distinctive ornamental designs serve to differentiate products on retail shelves and build brand recognition.
- Key Procedural History: The complaint notes that Plaintiff sent Defendant a cease and desist letter on July 10, 2018, providing notice of the asserted patents and the alleged infringement. This notice may be relevant to the allegation of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2012-12-26 | Earliest Priority Date for '599 & '738 Patents |
| 2014-01-01 | Approx. launch of Kraft P3 product line |
| 2017-03-07 | U.S. Patent No. D780,599 Issued |
| 2017-10-03 | U.S. Patent No. D798,738 Issued |
| 2018-07-10 | Plaintiff sends cease and desist letter to Defendant |
| 2018-09-12 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D798,738 - "Package"
- Patent Identification: U.S. Patent No. D798,738, "Package," issued October 3, 2017.
- The Invention Explained:
- Problem Addressed: The complaint describes a need for consumer product companies to "distinguish its packaged food products from others" and "develop goodwill with consumers" through the use of "distinctive product packages" (Compl. ¶10).
- The Patented Solution: The patent claims "the ornamental design for a package, as shown and described" (’738 Patent, col. 1:57-59). The claimed design, illustrated in the patent's figures, consists of a three-compartment tray for food products. The key visual features include a smaller, generally square central compartment flanked on two sides by larger, rectangular compartments, creating a distinct, symmetrical, three-part layout (’738 Patent, Fig. 3). The design also includes specific contours for the side walls of the compartments (’738 Patent, Fig. 4).
- Technical Importance: The complaint alleges this packaging style was developed for Kraft's "P3" (Portable Protein Packs) line, suggesting its importance is tied to establishing a recognizable visual identity for that product line in the marketplace (Compl. ¶11).
- Key Claims at a Glance:
- The patent contains a single claim for the ornamental design as depicted in its figures (’738 Patent, col. 1:57-59). The asserted elements are the visual characteristics of the design itself.
U.S. Design Patent No. D780,599 - "Package"
- Patent Identification: U.S. Patent No. D780,599, "Package," issued March 7, 2017.
- The Invention Explained:
- Problem Addressed: As with the '738 patent, the underlying goal is to create a distinctive package design to differentiate a food product in a competitive market (Compl. ¶10).
- The Patented Solution: The '599 Patent claims "the ornamental design for a package, as shown and described" (’599 Patent, col. 1:57-59). This design features a two-compartment tray with a pronounced indentation on its longer sides, creating an overall "hourglass" or "figure-eight" shape when viewed from the top or front (’599 Patent, Figs. 2, 6). The patent explicitly notes that features shown in broken lines are for illustrative purposes only and do not form part of the claimed design, focusing the claim on the shape shown in solid lines (’599 Patent, col. 1:47-50).
- Technical Importance: This design is also associated with Kraft's "P3" product line and its effort to create a unique and recognizable package configuration (Compl. ¶11).
- Key Claims at a Glance:
- The patent contains a single claim for the ornamental design as depicted in the solid lines of its figures (’599 Patent, col. 1:57-59).
III. The Accused Instrumentality
- Product Identification: The accused instrumentalities are food packages made, used, and sold by Defendant D6, including at least model "3001" (Compl. ¶15). The complaint alleges these packages are supplied empty and unsealed to third parties, such as HEB Grocery Company, LP (Compl. ¶16).
- Functionality and Market Context: The accused products are plastic trays intended to be filled with food items and then sealed by D6's customers to create a final retail product (Compl. ¶16, ¶21). The complaint provides visual comparisons suggesting a high degree of similarity to Kraft's patented designs. For example, a photograph of a sealed accused product containing tomatoes, carrots, and ranch dip is provided (Compl. p. 7). The complaint alleges that D6 was aware of Kraft’s P3 packaging and intended to copy the designs (Compl. ¶¶19-20).
IV. Analysis of Infringement Allegations
The infringement standard for design patents is whether an "ordinary observer," familiar with the prior art, would be deceived into believing the accused design is the same as the patented design. The complaint alleges this standard is met (Compl. ¶18).
D798,738 Infringement Allegations
| Claim Element (from Figures) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental appearance of a three-compartment package as shown in a perspective view. | The complaint includes a perspective photograph of the accused D6 package, allegedly showing a substantially similar three-dimensional shape. | ¶18; p. 6 | col. 1:62-63 |
| A symmetrical, front-view appearance comprising a central, smaller compartment flanked by two larger, outer compartments. | A top-down photograph of the accused D6 package shows a three-compartment layout that the complaint alleges is substantially the same as the patented design's front view. | ¶18; p. 6 | col. 1:65 |
| A side-view profile with specific angled walls and compartment depths. | A side-view photograph of the accused D6 package shows a profile with angled walls that the complaint alleges is substantially the same as the patented design. | ¶18; p. 6 | col. 2:1-2 |
D780,599 Infringement Allegations
| Claim Element (from Figures) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental appearance of a package with a pronounced "hourglass" or "figure-eight" shape from the front view. | A photograph of the accused D6 package, filled and sealed, shows an overall hourglass shape that is alleged to be substantially the same as the patented design. | ¶18; p. 7 | col. 1:36-37 |
| A top-view appearance showing two primary compartments separated by a central divide, contributing to the overall hourglass shape. | A photograph of the empty accused D6 package shows a two-compartment layout and shape that the complaint alleges is substantially the same as the patented design. | ¶18; p. 7 | col. 1:42-43 |
| A specific side-view profile with flared edges and sloped container walls. | The complaint provides side-view drawings of the patented design, which it alleges are substantially the same as the profile of the accused packages. | ¶18; p. 8 | col. 1:40-41 |
- Identified Points of Contention:
- Scope Questions: The primary question will be whether the overall visual impression of the D6 packages is "substantially the same" as the patented designs in the eyes of an ordinary observer. The analysis will focus on the combination of claimed visual features rather than on any single element in isolation.
- Technical Questions: A factual question may arise regarding the proper article for comparison. Does the analysis compare D6's empty, unsealed tray to the patent figures, or does it consider the final, sealed package as sold by D6's customers, which the complaint alleges D6 intends and enables? The appearance can differ between the two states.
V. Key Claim Terms for Construction
In design patent cases, there are typically no literal "terms" to construe. The claim is understood through the drawings. However, a key issue for construction will be the scope of the design as defined by the patent's use of solid and broken lines.
- The Term: Scope of the Claimed Design (as defined by solid vs. broken lines in the '599 Patent).
- Context and Importance: The '599 Patent uses broken lines, and its description explicitly states that these broken lines "form no part of the claimed design" (’599 Patent, col. 1:47-50). The interpretation of this disclaimer is critical. Practitioners may focus on this issue because it directly impacts the breadth of the patent's protection and what features of an accused product are relevant to the infringement analysis.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The express statement disclaiming the broken lines provides strong evidence that the claim is not limited to packages with the exact features shown in those broken lines. This could support a finding of infringement even if an accused product has different internal structures or environmental features, so long as it incorporates the solid-line "hourglass" shape (’599 Patent, col. 1:47-50).
- Evidence for a Narrower Interpretation: A party could argue that while broken-line features are not formally part of the claim, the overall visual appearance of an article is what matters. Therefore, significant differences in features corresponding to the broken-line areas could potentially alter the overall appearance of the accused product enough to be distinguishable to an ordinary observer, even if the solid-line portions are similar.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement of the '599 Patent. The allegations for inducement are based on D6 supplying unsealed packages to third parties with the knowledge and intent that those parties would seal them, creating a final, infringing product (Compl. ¶¶33-34). The contributory infringement claim is based on the allegation that the unsealed packages are especially made for an infringing use and are not staple articles of commerce with substantial non-infringing uses (Compl. ¶¶39-40).
- Willful Infringement: Willfulness is alleged based on infringement continuing after D6 received a cease and desist letter on July 10, 2018, which provided actual notice of the patents (Compl. ¶¶14-15). The complaint also alleges D6 intended to copy Kraft's known P3 packaging designs, which may support a finding of willfulness if pre-suit knowledge of the patents is established (Compl. ¶¶19-20). Plaintiff requests treble damages and attorneys' fees, which are remedies for willful or exceptional cases (Compl. p. 12, ¶¶ E, G).
VII. Analyst’s Conclusion: Key Questions for the Case
Visual Similarity and the Ordinary Observer: The central issue will be one of visual comparison: will a fact-finder, looking at the overall ornamental appearance, find the accused D6 packages to be substantially the same as the designs claimed in the '738 and '599 patents? The case will likely depend on a side-by-side analysis of the designs' overall aesthetic impressions, not minor differences.
Scope of Design Claim: For the '599 patent, a key legal and factual question will be the impact of the disclaimed features shown in broken lines. Can the claimed design be found infringed based solely on the similarity of the solid-line "hourglass" shape, or can differences in non-claimed portions of the accused product be sufficient to alter the overall appearance and avoid infringement?
Liability for Downstream Acts: A critical evidentiary question will be one of intent and market reality: can Kraft prove that D6, by supplying an unsealed component part, induced or contributed to infringement by its customers? This will require evidence of D6's knowledge of its customers' actions and a showing that its unsealed trays have no substantial non-infringing use.