DCT
5:17-cv-00403
Dan Schantz Farm & Greenhouses LLC v. Catanzaro
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Dan Schantz Farm & Greenhouses, LLC (Pennsylvania)
- Defendant: David J. Catanzaro (Pennsylvania)
- Plaintiff’s Counsel: Fitzpatrick Lentz & Bubba, P.C.
- Case Identification: 5:17-cv-00403, E.D. Pa., 01/27/2017
- Venue Allegations: Plaintiff alleges venue is proper because a substantial part of the events giving rise to the claim, including the Plaintiff's business and the Defendant's alleged infringement contacts, occurred in the district.
- Core Dispute: Plaintiff seeks a declaratory judgment that its decorative plant products do not infringe the Defendant's patent, and that the patent is invalid and/or unenforceable.
- Technical Context: The technology concerns a stand, shaped like a pair of feet, designed to hold an article such as a toothbrush in an upright position.
- Key Procedural History: The complaint alleges that the patent-in-suit, U.S. Patent No. 7,653,959, is subject to a terminal disclaimer filed during prosecution, which required it to remain commonly owned with U.S. Patent No. 6,026,532. The complaint alleges that the '532 patent was assigned to a third party in 2011 without a corresponding assignment of the '959 patent, which may render the '959 patent unenforceable.
Case Timeline
| Date | Event |
|---|---|
| 1995-12-28 | Earliest Priority Date ('959 Patent) |
| 2001-08-27 | Terminal Disclaimer Filed for '959 Patent Application |
| 2010-02-02 | Issue Date, U.S. Patent 7,653,959 |
| 2011-02-28 | '532 Patent allegedly assigned, breaking common ownership |
| 2017-01-11 | Defendant's representative allegedly contacted Plaintiff re: infringement |
| 2017-01-27 | Complaint for Declaratory Judgment Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,653,959 - "Article Assembly"
- Patent Identification: U.S. Patent No. 7,653,959, "Article Assembly", issued February 2, 2010.
The Invention Explained
- Problem Addressed: The patent identifies a need for holders or stands that can retain articles like toothbrushes in a stable, vertical position when placed on a horizontal surface (’959 Patent, col. 1:18-22). The background suggests that while prior art devices exist, they are not suitable for the purposes addressed by the invention (’959 Patent, col. 1:39-41).
- The Patented Solution: The invention is an assembly that includes an article (e.g., a toothbrush) and a stand. The stand is distinctively shaped as a pair of feet that are joined together to form a "continuous bottom supporting surface" and a "single heel portion" (’959 Patent, col. 1:53-58). This single heel portion contains a recess designed to receive and hold the end of the article, keeping it upright (’959 Patent, col. 1:58-63; Fig. 1).
- Technical Importance: The design purports to provide a simple, stable, and easy-to-use method for storing an article upright, with the potential for aesthetic or novelty appeal (’959 Patent, col. 2:1-5).
Key Claims at a Glance
- The complaint seeks a declaration of non-infringement of the '959 Patent generally, without specifying claims (Compl. ¶¶1, 20). Independent claim 1 is representative.
- Independent Claim 1:
- An article assembly comprising:
- an article having a receivable end, and
- a stand in the shape of first and second feet, each of said first and second feet being elongated to define a toe end and together a common heel end,
- said first and second feet being joined together and positioned together to form a continuous bottom supporting surface,
- said heel end of each of said first and second feet being positioned together to form a single heel portion,
- said single heel portion including a recess extending through a topside thereof and towards a sole thereof for selectively receiving said receivable end of said article therein,
- said first and second feet each including a side surface, said side surfaces intersecting one another in a common plane.
- The complaint does not explicitly reserve the right to address dependent claims but seeks a declaration regarding "any claim" of the patent (Compl. ¶20).
III. The Accused Instrumentality
Product Identification
- The "2 Qt. Poinsettia Santa" and "2 Qt. Poinsettia Elf" products (Compl. ¶11).
Functionality and Market Context
- Based on the complaint, these are decorative items consisting of a potted Poinsettia plant where the pot is designed to look like the lower body and feet of a Santa Claus or an Elf figure (Compl. ¶11). The complaint includes a photograph of the accused products. The image shows two potted Poinsettias, one with a base resembling Santa's red pants and black boots, and the other with a base resembling an elf's green pants and curled shoes (Compl. p. 4). The complaint does not contain allegations regarding the products' specific market context beyond their identification as products sold by the Plaintiff.
IV. Analysis of Infringement Allegations
As this is a declaratory judgment action, the Plaintiff denies infringement. The following table outlines the potential mapping of claim elements to the accused products that a patentee would need to establish.
'959 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An article assembly comprising: an article having a receivable end | The "article" is the Poinsettia plant, and its "receivable end" is the root ball or stem placed within the pot. | ¶11 | col. 3:3-4 |
| a stand in the shape of first and second feet | The decorative pot, shaped like the lower body and feet of a Santa or Elf figure, functions as the "stand". | ¶11, p. 4 | col. 3:5-6 |
| said first and second feet being joined together and positioned together to form a continuous bottom supporting surface | The bottom of the decorative pot, formed by the soles of the figure's "feet," creates a continuous surface that rests on a table. | ¶11, p. 4 | col. 3:9-11 |
| said heel end of each of said first and second feet being positioned together to form a single heel portion | The rear portion of the figure's feet/boots on the pot are joined together. | ¶11, p. 4 | col. 3:11-13 |
| said single heel portion including a recess extending through a topside thereof...for selectively receiving said receivable end | The hollow interior of the pot serves as the "recess" that receives and holds the Poinsettia plant. | ¶11, p. 4 | col. 3:13-17 |
- Identified Points of Contention:
- Scope Questions: A central dispute may be whether the term "stand in the shape of first and second feet," as described in a patent for holding toothbrushes, can be construed to read on a decorative planter pot shaped like a character's lower body. The complaint does not provide sufficient detail for analysis of how the patentee defines these terms.
- Technical Questions: A question exists as to whether the hollow interior of a flowerpot is equivalent to the "recess extending through a topside thereof and towards a sole thereof" as claimed. The claim language suggests a discrete opening in a larger structure, whereas the accused product's "recess" is the entire functional volume of the pot.
V. Key Claim Terms for Construction
- The Term: "a stand in the shape of first and second feet"
- Context and Importance: The entire infringement theory depends on whether the accused decorative planters fall within the scope of this term. Practitioners may focus on this term because the accused products are planters, not the simple article holders depicted in the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent claims "an article assembly" generally, not just a toothbrush assembly, which could support application to other articles like plants (e.g., ’959 Patent, col. 3:3). The specification also mentions the invention may find "useful application in other types of methods differing from the type described herein" (’959 Patent, col. 1:12-14).
- Evidence for a Narrower Interpretation: The patent figures exclusively show an anthropomorphic stand with distinct, humanoid-style feet for holding a toothbrush-like object (’959 Patent, Figs. 1-5). The detailed description repeatedly refers to "first and second feet 6a and 6b" that are "elongated to define a toe end and together a common heel end," a specific anatomical structure that may not map directly onto the decorative pot base (’959 Patent, col. 2:30-32).
VI. Other Allegations
- Indirect Infringement: The Plaintiff seeks a declaration that it has not infringed "either directly or indirectly" but provides no specific facts related to indirect infringement allegations (Compl. ¶20).
- Willful Infringement: Willfulness is not alleged by the patentee in the documents provided.
- Unenforceability: The complaint includes a distinct count for a "Declaratory Judgment of Unenforceability" (Compl. p. 6). The Plaintiff alleges that the '959 Patent issued subject to a terminal disclaimer that required it and U.S. Patent No. 6,026,532 to be "commonly owned" to remain enforceable (Compl. ¶25). The complaint alleges that on February 28, 2011, the Defendant assigned the '532 Patent to Church & Dwight Co., Inc., but did not assign the '959 Patent, thereby breaking the common ownership requirement and rendering the '959 patent unenforceable from that date forward (Compl. ¶¶26-28).
VII. Analyst’s Conclusion: Key Questions for the Case
- A primary issue appears to be one of enforceability: did the 2011 assignment of the '532 patent, without a corresponding assignment of the '959 patent, violate the terms of the terminal disclaimer and render the '959 patent permanently unenforceable? This is a potentially case-dispositive legal question that can be resolved by reviewing the assignment records and the terminal disclaimer language.
- A second core issue will be one of definitional scope: can the claim term "stand in the shape of first and second feet", as disclosed in the context of a toothbrush holder, be construed broadly enough to cover the base of a decorative planter shaped like the lower body of a Santa or Elf character?
- Finally, a key evidentiary question will concern invalidity: can the Plaintiff provide evidence to support its allegations of invalidity based on the varied and, in some cases, ancient prior art cited in the complaint, such as a bowl from 3900-3650 B.C. and the "Grimace" character from 1985 (Compl. ¶23)?