DCT
3:23-cv-00914
Verterra Ltd v. Dtocs LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: VerTerra, Ltd. (Delaware) and Michael Dwork (Connecticut)
- Defendant: Dtocs LLC (Oregon)
- Plaintiff’s Counsel: Stoll Stoll Berne Lokting & Schlachter P.C.; Merchant & Gould P.C.
- Case Identification: 3:23-cv-00914, D. Or., 06/22/2023
- Venue Allegations: Venue is asserted as proper in the District of Oregon because Defendant is an Oregon corporation with its principal place of business in the district, has committed alleged acts of infringement in the district, and maintains a regular and established place of business there.
- Core Dispute: Plaintiffs allege that Defendant’s disposable palm leaf dinnerware products infringe the ornamental designs claimed in two U.S. design patents.
- Technical Context: The lawsuit concerns the market for eco-friendly, disposable dinnerware, specifically products manufactured from naturally shed palm leaves as an alternative to paper or plastic.
- Key Procedural History: The complaint notes that Plaintiff VerTerra has previously filed takedown requests with Amazon.com to remove certain of Defendant’s product listings that allegedly used marks confusingly similar to Plaintiffs’ trademarks.
Case Timeline
| Date | Event |
|---|---|
| 2017-10-17 | Priority Date for U.S. Patent No. D836,988 |
| 2019-01-01 | Issue Date for U.S. Patent No. D836,988 |
| 2021-03-26 | Priority Date for U.S. Patent No. D987,365 |
| 2022-05-19 | Alleged First Sale of "Palm Leaf Rectangle 2 Portion Compartment Plate" |
| 2022-11-28 | Alleged First Sale of "Dtocs Palm Leaf Take Out Food Containers With Lid" |
| 2023-05-30 | Issue Date for U.S. Patent No. D987,365 |
| 2023-06-22 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. D836,988, BOWL, Issued January 1, 2019
The Invention Explained
- Problem Addressed: The complaint suggests a market need for disposable dinnerware that is both sustainable and aesthetically pleasing, offering a "stylishly sustainable alternative to disposable paper and plastic plates" (Compl. ¶11).
- The Patented Solution: The ’988 Patent claims a specific ornamental design for a two-compartment bowl. The design features a generally rectangular form with rounded corners, a central divider, and contoured side walls, as depicted in the patent's figures ('988 Patent, FIG. 1, 6). The claim protects the overall visual appearance of the article, not its utilitarian function or material composition ('988 Patent, Claim).
- Technical Importance: The patent protects a specific aesthetic expression in the field of eco-friendly products, where unique and recognizable designs can serve as a key market differentiator (Compl. ¶11-12).
Key Claims at a Glance
- The patent asserts a single claim for "The ornamental design for a bowl, as shown and described" ('988 Patent, Claim).
- The key ornamental features defining the design include:
- The overall rectangular shape with softened, rounded corners.
- A central, indented divider that creates two distinct compartments.
- The specific profile and curvature of the exterior and interior walls.
- The surface shading shown in the drawings, which indicates contour and form.
U.S. Patent No. D987,365, PALM LEAF LID AND A PALM LEAF FOOD CONTAINER, Issued May 30, 2023
The Invention Explained
- Problem Addressed: Similar to the '988 Patent, this patent addresses the need for distinctive designs in the sustainable dinnerware market, here applied to a lidded food container (Compl. ¶11, 14).
- The Patented Solution: The ’365 Patent claims the ornamental design for a matching lid and container. The design is characterized by its rectangular shape, a stepped rim on the container, and a corresponding form in the lid designed to fit over it ('365 Patent, FIG. 1, 2). The claim covers the visual appearance of the combined article ('365 Patent, Claim).
- Technical Importance: The design provides a specific aesthetic for a complete take-out container solution, aiming to create a unique visual identity for this type of sustainable product (Compl. ¶12).
Key Claims at a Glance
- The patent asserts a single claim for "The ornamental design for a palm leaf lid and a palm leaf food container, as shown and described" ('365 Patent, Claim).
- The key ornamental features defining the design include:
- The overall rectangular shape with rounded corners for both the container and lid.
- The profile view showing the specific depth and curvature of the container and the corresponding shallow profile of the lid.
- A stepped or terraced rim design around the perimeter of the container.
- The surface line work depicted in the drawings, indicating the texture and form of the article.
III. The Accused Instrumentality
Product Identification
The complaint identifies two accused products: the "Palm Leaf Rectangle 2 Portion Compartment Plate" and the "Dtocs Palm Leaf Take Out Food Containers With Lid" (Compl. ¶32, 35).
Functionality and Market Context
The accused products are disposable plates and containers made from palm leaf, offered as "eco-friendly" and "bio-degradable" alternatives to paper or plastic dinnerware (Compl. ¶41, 59). The complaint presents a photograph of the "Palm Leaf Rectangle 2 Portion Compartment Plate," showing a two-compartment dish made of a material with a distinct wood-grain appearance (Compl. ¶32). A photograph of the "Dtocs Palm Leaf Take Out Food Containers With Lid" shows a rectangular container and a corresponding lid, also appearing to be made from formed palm leaf (Compl. ¶35). The complaint alleges that Defendant Dtocs competes directly with Plaintiff VerTerra in the disposable dinnerware market (Compl. ¶41).
IV. Analysis of Infringement Allegations
The central test for design patent infringement is whether an "ordinary observer," familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented design.
D836,988 Infringement Allegations
The complaint alleges that the design of the "Palm Leaf Rectangle 2 Portion Compartment Plate" is "substantially the same as the design claimed in the '988 Patent when viewed by an ordinary observer" (Compl. ¶34). A photograph of the accused plate is provided as evidence (Compl. ¶32).
| Claim Element (from the '988 Patent Design) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a two-compartment bowl as a whole. | The overall visual appearance of the "Palm Leaf Rectangle 2 Portion Compartment Plate." | ¶34, 81 | '988 Patent, col. 2:47-48 |
| A generally rectangular overall shape with rounded corners and a central divider creating two compartments. | Defendant's product is depicted as a rectangular plate with rounded corners and a central divider forming two compartments. | ¶32-33 | '988 Patent, FIG. 6 |
| The profile and contour of the side walls and central divider. | The accused product's photograph shows contoured side walls and a divider that are alleged to be visually similar to the patented design. | ¶32 | '988 Patent, FIG. 2 |
D987,365 Infringement Allegations
The complaint alleges that the design of the "Dtocs Palm Leaf Take Out Food Containers With Lid" is "substantially the same as the design claimed in the '365 Patent when viewed by an ordinary observer" (Compl. ¶37). A photograph of the accused container and lid is provided to support this allegation (Compl. ¶35).
| Claim Element (from the '365 Patent Design) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a palm leaf lid and food container as a whole. | The overall visual appearance of the "Dtocs Palm Leaf Take Out Food Containers With Lid." | ¶37, 91 | '365 Patent, col. 2:51-53 |
| A rectangular container and lid with rounded corners and a specific side profile. | The accused product is depicted as a rectangular container and lid with rounded corners, allegedly matching the patented design's profile. A drawing from the patent is shown for comparison (Compl. ¶36). | ¶35-36 | '365 Patent, FIG. 2, 4 |
| A stepped rim on the container and a corresponding form on the lid. | The photograph of the accused product appears to show a rim and lid configuration that the complaint alleges is substantially similar to the patented design. | ¶35 | '365 Patent, FIG. 1 |
Identified Points of Contention
- Overall Impression vs. Minor Differences: The core dispute will likely focus on whether the visual similarities in the overall shape and configuration between the accused products and the patented designs are strong enough to confuse an ordinary observer, or if any differences in proportion, curvature, or surface texture are significant enough to distinguish them.
- Role of Prior Art: The scope of a design patent is viewed in light of the prior art. A key question for the court will be how the designs of other palm leaf dinnerware products on the market inform the scope of the asserted patents and the "ordinary observer" analysis. The complaint does not provide information on prior art designs.
V. Key Claim Terms for Construction
In design patent litigation, "claim construction" is not focused on textual interpretation but on describing the claimed ornamental design as shown in the patent's figures. The titles of the patents provide the names for the articles of manufacture.
- The Term: "Bowl" ('988 Patent) and "Palm leaf lid and a palm leaf food container" ('365 Patent).
- Context and Importance: Practitioners may focus on these terms to define the article of manufacture to which the design applies. The construction is articulated through a detailed description of the visual features shown in the drawings, which sets the scope of the claimed design for comparison against the accused products and the prior art.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The parties may argue that the claim covers the overall visual impression and general configuration shown in the drawings, such as a "two-compartment rectangular bowl" or a "rectangular container with a fitted lid," downplaying the importance of minor details.
- Evidence for a Narrower Interpretation: The parties may argue that the claim is limited to the precise proportions, curvatures, and surface details as explicitly illustrated in all figures of the patent (e.g., '988 Patent, FIG. 1-7; '365 Patent, FIG. 1-7), contending that any deviation from these specific details falls outside the claim's scope.
VI. Other Allegations
- Indirect Infringement: The complaint does not contain allegations of indirect patent infringement.
- Willful Infringement: The complaint alleges that Defendant's infringement has been and continues to be willful and deliberate (Compl. ¶82, 92). The basis for willfulness includes an allegation, upon "information and belief," that Defendant knew of the patents-in-suit before the lawsuit was filed (Compl. ¶39). It further alleges knowledge "at least since the date of this complaint" (Compl. ¶82, 92), establishing a basis for post-filing willfulness.
VII. Analyst’s Conclusion: Key Questions for the Case
- The Visual Test of Infringement: The case will centrally depend on the "ordinary observer" test. A key question is one of visual similarity: are the overall ornamental appearances of the accused Dtocs products "substantially the same" as the designs claimed in the '988 and '365 patents, or are the differences sufficient to prevent an ordinary observer from being deceived?
- The Impact of Prior Art: The novelty and scope of a design patent are determined against the backdrop of prior art. A critical question for the court will be one of design scope: how does the landscape of existing eco-friendly dinnerware designs affect the breadth of protection afforded to the asserted patents, and does this context make the accused and patented designs appear more similar or more distinct?
- Proving Willfulness: Plaintiffs allege willfulness based on both pre-suit and post-suit knowledge. An important evidentiary question will be one of scienter: can Plaintiffs produce evidence demonstrating that Defendant had actual knowledge of the specific '988 and '365 patents prior to the filing of the complaint, which would be critical to proving pre-suit willful infringement?