DCT
5:22-cv-02256
Samiam Group LLC v. COOPERSBURG Associates Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Samiam Group, LLC (Connecticut)
- Defendant: COOPERSBURG ASSOCIATES, INC. dba COOPERSBURG SPORTS (Pennsylvania)
- Plaintiff’s Counsel: The Law Firm of Jonathan R. Miller; Epstein Drangel LLP
- Case Identification: 5:22-cv-02256, E.D. Pa., 06/08/2022
- Venue Allegations: Venue is alleged to be proper as Defendant resides in the district, maintains a regular and established place of business there, and has committed alleged acts of infringement within the district.
- Core Dispute: Plaintiff alleges that Defendant’s novelty drinking vessel infringes a design patent for the ornamental appearance of a drinking vessel in the shape of a baseball bat.
- Technical Context: The dispute concerns novelty consumer products, specifically sports-themed merchandise sold as souvenirs at sporting events and elsewhere.
- Key Procedural History: The complaint alleges that Plaintiff's counsel sent a written notice letter to Defendant on May 28, 2021, identifying the patent-in-suit and the accused product. This event is cited as a basis for the willfulness allegation.
Case Timeline
| Date | Event |
|---|---|
| 2018-09-07 | D'498 Patent Application Filing Date |
| 2020-06-30 | D'498 Patent Issue Date |
| 2021-05-28 | Plaintiff's counsel sends notice letter to Defendant |
| 2022-06-08 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D888,498 - "Drinking Vessel"
The Invention Explained
- Problem Addressed: The patent does not explicitly state a problem in a background section, as is common with design patents. The implicit goal is the creation of a new, original, and ornamental design for an article of manufacture, in this case, a drinking vessel (D’498 Patent, Title).
- The Patented Solution: The patent discloses an ornamental design for a drinking vessel that embodies the distinctive shape of a baseball bat (D’498 Patent, Figs. 1-5). The design includes the characteristic knob at the base, a slender handle section, and a wider barrel section that forms the main liquid-holding portion, with an open top for drinking (D’498 Patent, Fig. 6). Broken lines in the patent figures indicate that the internal cross-section and certain details of the top rim are not part of the claimed design, which protects only the external visual appearance shown in solid lines (D’498 Patent, DESCRIPTION).
- Technical Importance: The design provides a novel visual appearance for a common consumer item, creating a product with specific appeal to sports fans and for use as a souvenir at sporting venues (Compl. ¶13).
Key Claims at a Glance
- The single claim of the patent is for "The ornamental design for a drinking vessel, as shown and described" (D’498 Patent, CLAIM).
- The scope of a design patent claim is defined by the solid lines in its drawings. The essential visual features of the asserted claim include:
- The overall profile of a baseball bat.
- A flared, knob-like base.
- A narrow handle portion transitioning to a wider, elongated barrel portion.
- A hollowed-out barrel with an open top, creating the vessel.
III. The Accused Instrumentality
Product Identification
- Defendant's "BEVERAGE BAT" (Compl. ¶15).
Functionality and Market Context
- The accused product is a drinking vessel shaped like a baseball bat, made of high-density polyethylene, and described as being 24 inches long and holding 16-24 ounces of liquid (Compl. ¶15; Ex. B).
- Exhibit C to the complaint provides a side-by-side comparison of a figure from the D'498 Patent and images of the accused "BEVERAGE BAT," showing the overall product and a close-up of its open top (Compl., Ex. C). This visual presents the accused product as having a similar bat-like shape, including a knob, handle, and barrel.
- The complaint alleges that Defendant sells the BEVERAGE BAT in direct competition with Plaintiff's "THE BEER BAT" product, including at Major and Minor League Baseball games (Compl. ¶15). Exhibit B includes a page from Defendant's "2022 CONCESSION" catalog advertising the BEVERAGE BAT (Compl., Ex. B).
IV. Analysis of Infringement Allegations
The central test for design patent infringement is whether, in the eye of an "ordinary observer," the accused design is substantially the same as the claimed design, such that the observer would be induced to purchase one supposing it to be the other (Compl. ¶22). The complaint alleges that the accused BEVERAGE BAT meets this standard.
| Claimed Ornamental Feature (from D’498 Patent figures) | Alleged Infringing Feature (from "BEVERAGE BAT") | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a drinking vessel as shown and described. | The accused BEVERAGE BAT products possess a design "virtually identical in appearance" to the design protected by the D’498 Patent. | ¶¶15, 22 | Figs. 1-8 |
| The overall visual impression of a baseball bat, including the knob, handle, and barrel portions. | The BEVERAGE BAT has "the same shape of a baseball bat with an open top." The side-by-side visual comparison in Exhibit C shows a product with a knob, handle, and barrel profile. | ¶22; Ex. C | Figs. 1-5 |
| Any differences between the designs are "insignificant when compared to the totality of the design." | The resemblance between the patented design and the accused product is "so substantially similar that the ordinary observer is deceived." | ¶¶22-23 | Figs. 1-7 |
- Identified Points of Contention:
- Observer Perception: The core of the dispute will be the application of the "ordinary observer" test. The central question for the court will be whether an ordinary consumer of such novelty items would find the overall visual appearance of the Defendant's BEVERAGE BAT to be substantially the same as the design claimed in the D’498 patent.
- Scope Questions: A question arises regarding the impact of the elements shown in broken lines in the patent's figures. The patent explicitly disclaims the internal features and aspects of the top rim (D’498 Patent, DESCRIPTION, Figs. 6, 8). The analysis will focus only on the claimed solid-line features, and the court will need to determine whether any differences in the unclaimed features affect the overall visual similarity of the claimed portions.
V. Key Claim Terms for Construction
In a design patent case, claim construction focuses on the scope of the claimed design as a whole, rather than on specific text-based terms. The primary issue for interpretation is what the patent figures, as viewed by a person of ordinary skill in the art, convey as the patented design.
- The "Claim": The ornamental design for a drinking vessel as shown in Figures 1-8.
- Context and Importance: The scope of the claimed design is critical. The infringement analysis depends entirely on comparing the overall visual appearance of the accused product to the specific design protected by the patent's drawings. Practitioners may focus on the effect of the disclaimed elements shown in broken lines.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim protects the overall visual impression of a baseball bat-shaped drinking vessel. The patent disclaims the specific internal structure (D’498 Patent, Fig. 8, DESCRIPTION), which could suggest that the claim is intended to cover any bat-shaped vessel with a similar external profile, regardless of its internal construction or wall thickness.
- Evidence for a Narrower Interpretation: The specific proportions, curvature, and transitions between the knob, handle, and barrel shown in the solid-line drawings define the metes and bounds of the claim (D’498 Patent, Figs. 1-5). A court could find that the claim is limited to a design that very closely tracks these specific visual details, and that any noticeable deviation in these proportions could place an accused product outside the claim's scope.
VI. Other Allegations
- Willful Infringement: The complaint alleges willful infringement based on two grounds. First, it alleges that Defendant had knowledge of the D’498 Patent as of its issue date on June 30, 2020 (Compl. ¶17). Second, it alleges that Defendant received actual notice via a letter from Plaintiff’s counsel on May 28, 2021, which identified the patent and the infringing product, and that Defendant continued its accused activities thereafter (Compl. ¶¶16, 18).
VII. Analyst’s Conclusion: Key Questions for the Case
This case appears to center on fundamental principles of design patent law. The key questions for the court will likely be:
- A core issue will be one of visual comparison: Applying the "ordinary observer" test, is the overall ornamental appearance of the Defendant’s "BEVERAGE BAT" substantially the same as the specific design claimed in the D’498 patent, considering the claimed design in its entirety?
- A key legal question will be the impact of disclaimers: How will the features shown in broken lines in the patent drawings—which are explicitly not part of the claimed design—affect the comparison? The analysis must filter out these unclaimed aspects and focus solely on whether the protected, solid-line features are substantially similar in the two designs.
- An evidentiary question will relate to willfulness: Did Defendant's alleged continuation of sales after receiving a notice letter from Plaintiff's counsel constitute willful infringement, potentially leading to enhanced damages?