DCT

2:18-cv-00063

ABF Pizza v. Gene Carelli

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:18-cv-00063, E.D. Pa., 01/09/2018
  • Venue Allegations: Venue is alleged to be proper because the defendants reside and operate a business within the judicial district, and the actions giving rise to the claims occurred there.
  • Core Dispute: Plaintiffs allege that Defendants’ restaurant services infringe patents related to a motion picture tilting device, a high-pressure fluid discharge unit, and a leak-resistant liquid dispensing package.
  • Technical Context: The patents-in-suit relate to disparate mechanical arts: cinematic equipment adjustment, fluid dynamics in pumps, and consumer packaging for liquids.
  • Key Procedural History: The complaint alleges that one Plaintiff (ABF) entered into a license agreement with the other Plaintiff (SSPP) for use of the "SANTUCCI'S" name. It also alleges that Plaintiffs engaged in discussions with Defendants regarding their expansion and "intentional attempts to cause confusion" prior to filing the lawsuit.

Case Timeline

Date Event
1929-06-10 ’656 Patent Priority Date
1930-05-29 ’754 Patent Priority Date
1933-05-09 ’754 Patent Issue Date
1933-08-15 ’656 Patent Issue Date
1960-06-01 Plaintiff ABF alleges first use of "SANTUCCI'S ORIGINAL SQUARE PIZZA" mark (Compl. ¶11)
1984-09-01 Plaintiff ABF alleges first use of a stylized "S" design mark (Compl. ¶12)
1986-02-12 ’009 Patent Priority Date
1992-04-28 ’009 Patent Issue Date
1993-01-01 Defendants allegedly began operating "Santucci's Square Pizza and Restaurant" (Compl. ¶22)
2003-04-01 Plaintiff SSPP alleges first use of a design mark (Compl. ¶19)
2016-01-01 Plaintiffs allegedly began discussions with Defendants regarding infringement (Compl. ¶29)
2018-01-09 Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 1,907,754 - "Tilting and Adjusting Device for Motion Picture Apparatus," issued May 9, 1933 (’754 Patent)

The Invention Explained

  • Problem Addressed: The patent describes the need to precisely adjust the tilt of motion picture projectors to ensure the projected beam of light properly falls on the screen ('754 Patent, col. 1:1-13).
  • The Patented Solution: The invention provides a frame that attaches to the front of a projector, equipped with multiple adjustable legs. These legs can be adjusted independently to level the projector on an uneven surface, or they can be adjusted simultaneously by a single knob connected to a common operating shaft, allowing the operator to tilt the entire apparatus up or down ('754 Patent, col. 1:28-50; Fig. 3).
  • Technical Importance: This device provided a compact and efficient mechanism for the precise optical alignment required for motion picture projection, particularly for "speaking movie projectors" where beam centering was critical for audience satisfaction ('754 Patent, col. 1:74-79).

Key Claims at a Glance

  • The complaint does not specify which claims of the ’754 patent are asserted. Independent claim 1 includes the following essential elements:
    • A frame attachable to the front wall of a projector.
    • Means on the frame to be aligned with means on the projector for definite positioning.
    • Means to hold the frame firmly against the front wall.
    • Spaced-apart supporting legs on the frame.
    • Means for separately adjusting and moving the legs.
    • A single means for operating the legs together when desired.

U.S. Patent No. 1,922,656 - "High Pressure Discharge Unit," issued Aug. 15, 1933 (’656 Patent)

The Invention Explained

  • Problem Addressed: The patent addresses inefficiencies in systems that pump liquids containing entrained air or vapors, such as engine fuel lines. These bubbles can disrupt the steady flow of the liquid ('656 Patent, col. 1:1-9).
  • The Patented Solution: The invention is a device, typically installed at the pump outlet, that uses a downwardly expanding, conical "bell" element. As liquid flows through, the shape of the bell causes bubbles to separate and rise into an annular chamber, forming a trapped "air dome." This trapped gas acts as an elastic cushion, absorbing pressure pulses from the pump and ensuring a more even, continuous flow of liquid downstream ('656 Patent, col. 1:65-84; Fig. 1).
  • Technical Importance: The device offered a simple, passive method to improve the efficiency and reliability of reciprocatory pumps by mitigating the effects of vapor lock or air entrainment in fuel systems ('656 Patent, col. 1:13-17).

Key Claims at a Glance

  • The complaint does not specify which claims of the ’656 patent are asserted. Independent claim 1 includes the following essential elements:
    • A downwardly expanding bell element with an inlet at its top.
    • An annular chamber element surrounding the bell.
    • The chamber extends above and below the lower edge of the bell.
    • The chamber has an outlet opening below the bell's edge, arranged in line with the bell.
    • The outlet opening's area is greater than the bell's lower end area.

U.S. Patent No. 5,108,009 - "Leak and Drip Resistant Storage Dispensing and Measuring Package," issued Apr. 28, 1992 (’009 Patent)

Technology Synopsis

  • The patent addresses leakage and dripping in consumer product packaging, such as for liquid detergents. It discloses a container with a specially designed pouring and drainback fitment in the bottle's neck and a cooperating dual-walled cap that also serves as a measuring cup. The design creates multiple seals and provides a path for residual liquid in the cap or on the spout to drain back into the bottle, preventing external drips ('009 Patent, Abstract; col. 1:11-19).

Asserted Claims

  • The complaint does not specify which claims of the ’009 patent are asserted.

Accused Features

  • The complaint does not specify which features of the accused restaurant services are alleged to infringe the ’009 patent.

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are the restaurant services and ancillary products offered by Defendants under the name "Santucci's Square Pizza and Restaurant" (Compl. ¶22).

Functionality and Market Context

  • The complaint alleges that Defendants operate family-owned restaurants that serve pizza and other food and beverage items (Compl. ¶21). The complaint identifies a registered design mark, a "Stylized 'S'", as one of the asserted "ABF Marks" (Compl. ¶12). A photograph provided in the complaint shows a bottle of wine, allegedly an ancillary product, bearing the accused stylized "S" design (Compl. ¶23).
  • Defendants are alleged to actively promote their restaurant through a website, "www.santuccis.com" (Compl. ¶24), and on social media, where they have allegedly attempted to associate their business with positive press received by the Plaintiffs (Compl. ¶25).

IV. Analysis of Infringement Allegations

The complaint does not allege infringement of any specific patent claims and provides no claim chart or narrative theory of patent infringement. The infringement counts in the complaint are for federal trademark infringement, not patent infringement (Compl. ¶¶ 24-45).

  • Identified Points of Contention:
    • Applicability Question: A threshold issue is whether the accused restaurant services (Compl. ¶¶ 21-24), which involve the preparation and sale of food, could be argued to practice any of the claimed elements of the patents-in-suit, which are directed to specific mechanical devices.
    • Evidentiary Question: What evidence, if any, could be presented to demonstrate that the operation of a pizza restaurant involves a "tilting and adjusting device for motion picture apparatus" ('754 Patent), a "high pressure discharge unit" for pumped fluids ('656 Patent), or a "leak and drip resistant... package" ('009 Patent).

V. Key Claim Terms for Construction

As the complaint provides no theory of patent infringement, the relevance of any particular claim term is speculative. However, should a patent infringement claim be pursued, the construction of the following terms could be central.

Term from the ’754 Patent: "supporting legs" (from Claim 1)

  • Context and Importance: The definition of this term is critical to determining what constitutes the adjustable support structure of the invention. Practitioners may focus on this term because the infringement analysis would depend on whether any structure at the accused restaurant could be characterized as a "leg" performing the claimed function.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification refers to the elements more generally as "adjusting or levelling elements such as rods" (col. 1:39-41), which may suggest the term is not limited to a specific form.
    • Evidence for a Narrower Interpretation: The figures and detailed description consistently show the "legs" as threaded rods (16, 17) that move vertically within journals, suggesting the term may be limited to this specific embodiment (col. 2:31-34; Fig. 3).

Term from the ’656 Patent: "downwardly expanding bell element" (from Claim 1)

  • Context and Importance: This term describes the core functional component of the invention responsible for separating bubbles from the fluid. Its construction would determine the precise geometry required to infringe.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification refers to the element's function of creating "a progressive retardation at the periphery of a stream," which could arguably encompass shapes other than a perfect cone ('656 Patent, col. 2:26-29).
    • Evidence for a Narrower Interpretation: The patent repeatedly refers to the element as "conical" (col. 1:70) and shows a distinct, downwardly flaring conical shape in the figures, suggesting the term implies this specific geometric form (Fig. 1, element 14).

VI. Other Allegations

  • Indirect Infringement: The complaint does not contain allegations of indirect patent infringement.
  • Willful Infringement: The complaint alleges that Defendants' conduct is "willful" (Compl. ¶31). The factual basis provided is Defendants' alleged "constructive and actual notice of ABF's prior rights and registrations" and their alleged refusal to cease infringing activities after discussions with Plaintiffs (Compl. ¶¶ 29-31). While these allegations are made in the context of trademark law, they raise the question of whether similar facts could be used to establish pre-suit knowledge of the patents-in-suit to support a claim for willful patent infringement.

VII. Analyst’s Conclusion: Key Questions for the Case

The provided documents raise fundamental questions that would need to be resolved at the outset of any patent litigation.

  1. A primary issue will be one of applicability: can the asserted patents, which claim specific mechanical devices for motion picture equipment, fluid pumps, and liquid packaging, be shown to have any technical relevance to the accused instrumentality, which is the operation of a pizza restaurant?
  2. A key pleading question will be one of viability: does the complaint, which exclusively pleads causes of action for trademark infringement and unfair competition (Compl. ¶1), provide any factual basis or legal notice for a claim of patent infringement, as required by federal pleading standards?
  3. An evidentiary question will be one of infringement: assuming a claim is properly pleaded, what evidence could demonstrate that the defendants' restaurant services "make, use, offer to sell, or sell" any invention claimed in the ’754, ’656, or ’009 patents within the United States?