DCT
3:24-cv-01181
Pizza Pack LLC v. Carty
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Pizza Pack LLC (Oregon)
- Defendant: William J Carty, dba RedFive Creative and Marketing (Pennsylvania)
- Plaintiff’s Counsel: Hitt Hiller Monfils Williams LLP; Mark S Hubert PC
- Case Identification: 3:24-cv-01181, D. Or., 07/19/2024
- Venue Allegations: Venue is asserted based on the location of Plaintiff's headquarters in Aurora, Oregon, where key documents and witnesses are allegedly located.
- Core Dispute: Plaintiff alleges that Defendant’s promotional pizza storage containers infringe utility and design patents related to an expandable, triangular pizza container, and further alleges copyright and trade dress infringement.
- Technical Context: The technology is in the field of consumer food storage, addressing the specific challenge of efficiently storing, separating, and reheating leftover triangular pizza slices.
- Key Procedural History: The complaint does not mention any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patents-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2020-12-31 (approx.) | Plaintiff's first use of Pizza Pack Trade Dress ("late 2020") |
| 2022-04-22 | Earliest Priority Date for ’260 and ’935 Patents |
| 2023-05-30 | U.S. Patent No. 11,661,260 Issues |
| 2023-08-29 | U.S. Patent No. 11,738,935 Issues |
| 2024-03-31 (approx.) | Defendant's alleged distribution of accused products ("spring of 2024") |
| 2024-07-19 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,661,260 - "Expandable Pizza Container", issued May 30, 2023 (’260 Patent)
The Invention Explained
- Problem Addressed: The patent’s background section identifies a "dilemma" for consumers: conventional round or square storage containers are poorly suited for triangular pizza slices, leading to wasted refrigerator space. Furthermore, storing and reheating multiple slices requires separate plates and risks the slices sticking together. (’260 Patent, col. 1:30-43).
- The Patented Solution: The invention is a dedicated, triangular storage container with accordion-style "pleat folded" sides, allowing it to collapse or expand to accommodate a variable number of pizza slices. The system includes removable, microwaveable triangular trays that separate the slices during storage and function as individual serving and crisping plates for reheating. A vented, locking lid is designed to maintain freshness. (’260 Patent, Abstract; col. 3:41-43, col. 3:51-57).
- Technical Importance: The invention claims to fulfill a "long felt need in [the] food storage industry" by providing an integrated, space-efficient solution for the entire lifecycle of leftover pizza: storage, separation, reheating, and serving. (’260 Patent, col. 1:44-46).
Key Claims at a Glance
- The complaint asserts infringement of at least one claim but does not specify which. Independent claim 1 is representative.
- Independent Claim 1 of the ’260 Patent recites:
- A flexible, generally triangular container body with three sides and pleat-folded sides forming an upper and lower pleat that are concentrically nested.
- A rigid seal ring bonded to the top edge of the sides.
- A rigid, generally triangular, planar lid with a gasket groove.
- A compressible, removable gasket retained within the gasket groove.
- A triangular tray with a top and bottom face, a peripheral lip, and a finger tab.
- The complaint reserves the right to assert other claims, which may include dependent claims.
U.S. Patent No. 11,738,935 - "Expandable Pizza Container", issued August 29, 2023 (’935 Patent)
The Invention Explained
- Problem Addressed: The ’935 Patent addresses the same technical problem as the ’260 Patent: the inefficiency of conventional containers for storing and reheating triangular pizza slices. (’935 Patent, col. 1:21-33).
- The Patented Solution: The technology described is substantively identical to that of the ’260 Patent, detailing a triangular container with an expandable, accordion-style body, a locking lid, and microwave-safe trays for separating and serving slices. (’935 Patent, Abstract; col. 3:20-28). The specification and figures are nearly identical to those of the ’260 Patent.
- Technical Importance: The invention provides a specialized container to address a common consumer inconvenience, combining the functions of storage and reheating into a single, purpose-built device. (’935 Patent, col. 1:35-40).
Key Claims at a Glance
- The complaint asserts infringement of at least one claim without specification. Independent claim 1 is representative.
- Independent Claim 1 of the ’935 Patent recites:
- A flexible, generally triangular container body with pleat-folded sides forming an upper and lower pleat.
- A rigid seal ring bonded to the top edge.
- A rigid, generally triangular, planar lid with a gasket groove.
- A compressible, removable gasket.
- A microwave-safe triangular tray with a peripheral lip and a finger tab.
- The complaint reserves the right to assert other claims.
Multi-Patent Capsule
- Patent Identification: U.S. Patent No. 974,123, "Expandable Pizza Container" (Compl. ¶1.a). The complaint also refers to infringement of a "design patent" (Compl. ¶21). The number "974,123" corresponds to an unrelated issued patent, suggesting a typographical error in the complaint. It is possible the intended patent is U.S. Design Patent No. D974,123, which is titled "Expandable pizza container" and lists one of the same inventors.
- Technology Synopsis: The complaint alleges infringement of a patent covering the ornamental design of the Plaintiff's "Pizza Pack" container, which Defendant's product allegedly "closely copies and imitates" (Compl. ¶21).
- Asserted Claims: The complaint does not specify which claims are asserted. If it is a design patent, there is typically a single claim to the ornamental design as shown in the figures.
- Accused Features: The overall visual appearance of the accused container is alleged to infringe (Compl. ¶19, ¶21).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are "pizza storage containers" that Defendant, William Carthy, sells in bulk to companies for use as promotional "swag" (Compl. ¶16).
Functionality and Market Context
- The complaint alleges these containers are functionally and visually imitations of Plaintiff's "Pizza Pack" product (Compl. ¶22). A photograph provided in the complaint shows a disassembled accused container, revealing a red, collapsible, triangular body and a clear lid with locking tabs, which appears to match the general features of the patented invention (Compl. p. 10). The containers are allegedly distributed to third-party companies, who then give them away at promotional events, such as a national trade show in the spring of 2024 (Compl. ¶16).
IV. Analysis of Infringement Allegations
The complaint does not contain a formal claim chart. The following tables summarize the infringement allegations for the lead independent claims based on the complaint's narrative and photographic evidence.
’260 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a flexible, generally triangular container body... wherein said sides are pleat folded so as to form an upper pleat and a lower pleat that are concentrically nested | The accused product is a collapsible, triangular container with a red body that appears to have accordion-style folds, allegedly imitating Plaintiff's product. A photograph shows the disassembled body. | ¶16, ¶19, p. 10 | col. 3:45-50 |
| a rigid seal ring bonded to a top edge of said sides | The accused product's body has a "light gray rigid seal ring." | ¶19 | col. 3:58-61 |
| a rigid, generally triangular, planar lid with a gasket groove... | The accused product includes a "clear lid" that is generally triangular. | ¶19, p. 10 | col. 3:5-15 |
| a compressible, removeable gasket frictionally retained within said gasket groove | The complaint does not provide sufficient detail for analysis of this element. | col. 3:16-19 | |
| a triangular tray with a top face and a bottom face; a peripheral lip...; a finger tab... | The complaint's advertising text for the accused product states it "comes with 4 pizza tray." | ¶18 | col. 3:51-57; col. 4:56-66 |
’935 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a flexible, generally triangular container body... wherein said sides are pleat folded... | The accused product is a triangular container with a collapsible body, as depicted in a photograph. It allegedly embodies all of Plaintiff's trade dress. | ¶16, ¶19, p. 10 | col. 3:25-31 |
| a rigid seal ring bonded to a top edge of said sides | The accused product is alleged to have a "light gray rigid seal ring." | ¶19 | col. 3:41-45 |
| a rigid, generally triangular, planar lid with a gasket groove... | A photograph of the accused product shows a "clear lid" with locking wings. | ¶19, p. 10 | col. 3:51-54 |
| a microwave safe triangular tray with a peripheral lip... and a finger tab... | Defendant's advertising text states the product includes a "pizza tray" and is "safe for use in microwave." This is supported by a photograph of an assembled accused container holding pizza. | ¶18, p. 8 | col. 4:26-34 |
- Identified Points of Contention:
- Scope Questions: The complaint's infringement theory relies heavily on "mere visual inspection" and side-by-side product comparisons (Compl. ¶16, ¶19). A potential point of contention is whether the specific structural details of the accused product, such as the means of locking the lid to the container body, literally meet the claimed limitations of a "rigid seal ring" with an "outer raised lip" that engages "T shaped lock tabs" (’260 Patent, Claim 2).
- Technical Questions: The complaint provides no independent testing or technical evidence. This raises the question of what evidence Plaintiff will produce to show that the accused product’s components meet specific claimed properties, such as the tray being "microwave safe" as required by claim 1 of the ’935 Patent, or the gasket being "compressible" and "removeable" as required by claim 1 of the ’260 Patent.
V. Key Claim Terms for Construction
The Term: "generally triangular"
Context and Importance: This term appears in the independent claims of both the ’260 and ’935 patents to define the shape of the container body, lid, and trays. As the core shape of the invention, its construction is fundamental to the infringement analysis. Practitioners may focus on this term because the products of both parties appear to be triangular but with significantly rounded corners.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification provides an explicit definition: "As used herein, the term 'generally triangular shape' refers to a geometric configuration of a triangle with rounded corners" (’260 Patent, col. 3:35-37). This express definition could support a construction that is not limited to a specific angle or radius of the corners.
- Evidence for a Narrower Interpretation: A party seeking a narrower scope might argue that the term should be limited by the specific embodiments shown in the patent figures (e.g., ’260 Patent, Fig. 1), though this argument may be weakened by the patent's explicit definition.
The Term: "pleat folded"
Context and Importance: This term describes the essential mechanism that makes the container body expandable and collapsible. Infringement will depend on whether the accused product's method of collapsing falls within the scope of this term. A photograph in the complaint shows the accused product's collapsible body (Compl. p. 10).
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the sides as "pleat folded in the style of an accordion so as to form an upper pleat 10 and a lower pleat 12" (’260 Patent, col. 3:47-50). This language, combined with the figures (e.g., Fig. 2), may support a construction covering various accordion-style folding structures that allow for expansion and concentric nesting.
- Evidence for a Narrower Interpretation: A defendant could argue that the claim language "an upper pleat and a lower pleat" requires a specific two-pleat structure as depicted in the preferred embodiment. An accused product with a single fold or a different number or configuration of pleats could be argued to fall outside this narrower construction.
VI. Other Allegations
- Indirect Infringement: The complaint pleads inducement and contributory infringement (Prayer for Relief ¶A). The factual basis is the allegation that Defendant sells the accused containers in bulk to third-party companies with the knowledge and intent that they will be distributed to end-users for promotional purposes, thereby inducing those end-users to infringe by using the product (Compl. ¶16, ¶29).
- Willful Infringement: Willfulness is alleged based on Defendant's purported "prior knowledge" of Plaintiff's intellectual property and a "deliberate and calculated intent to trade on the enormous goodwill" of the Plaintiff (Compl. ¶21, ¶22). The complaint supports this by alleging that Defendant not only copied the product's patented features and trade dress but also copied Plaintiff’s copyrighted advertising photographs and text for use on its own website (Compl. ¶17-18).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of evidentiary sufficiency: Beyond the alleged visual similarities and copied marketing materials, what specific, element-by-element technical evidence will Plaintiff offer to prove that the accused product meets every limitation of the asserted patent claims? The case may depend on whether discovery yields evidence of infringement that is more robust than the "mere visual inspection" currently alleged.
- A key legal question will be one of claim construction: How will the court construe structural terms like "pleat folded" and the precise locking mechanism described in the claims? The outcome of the infringement analysis will likely turn on whether the accused product's design is found to be structurally equivalent to these specific, claimed features.
- A central theme of the case will be the interplay of intellectual property rights: This dispute involves patent, trade dress, and copyright claims simultaneously. A critical question is how the evidence of alleged blatant copying of non-patented material (advertising text and photos) will influence the court’s and/or jury’s view of the patent claims, particularly regarding the issue of willful infringement and intent.