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., 11/03/2022
- Venue Allegations: Venue is alleged to be proper because the 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 baseball-bat-shaped drinking vessel infringes its design patent for a similar product.
- Technical Context: The dispute concerns the ornamental design of novelty drinking vessels, a product category often marketed as souvenirs to sports fans.
- Key Procedural History: Plaintiff alleges it sent a written notice letter to Defendant on May 28, 2021, advising Defendant of the patent-in-suit and its alleged infringement, nearly 18 months before filing the complaint.
Case Timeline
| Date | Event |
|---|---|
| 2018-09-07 | ’498 Patent Priority Date |
| 2020-06-30 | D'498 Patent Issue Date |
| 2021-05-28 | Plaintiff allegedly sent infringement notice to Defendant |
| 2022-11-03 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D888,498 - "DRINKING VESSEL"
- Patent Identification: U.S. Design Patent No. D888,498, "DRINKING VESSEL," issued June 30, 2020.
The Invention Explained
- Problem Addressed: The patent does not address a technical or functional problem. Instead, it provides a new, original, and ornamental design for an article of manufacture, specifically a drinking vessel (D'498 Patent, Title; Claim).
- The Patented Solution: The patent discloses a specific ornamental design for a drinking vessel that mimics the shape of a baseball bat. The design features an elongated, slowly tapering body that rises from a flared, knob-like base to a wide, open top that forms the mouth of the vessel (D'498 Patent, FIGS. 1-5). The overall visual impression is the combination of the iconic form of a baseball bat with the function of a beverage container (D'498 Patent, FIGS. 1, 8).
- Technical Importance: The design's importance lies in its aesthetic appeal, creating a distinctive visual appearance for a common consumer product intended for a niche market, such as sports memorabilia collectors and fans (Compl. ¶13).
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is: "The ornamental design for a drinking vessel, as shown and described." (D'498 Patent, Claim).
- The scope of this claim is defined by the patent's drawings, which depict:
- A perspective view (FIG. 1)
- Front, rear, right, and left side views (FIGS. 2-5)
- Top and bottom views (FIGS. 6-7)
- A cross-sectional view showing the hollow interior (FIG. 8)
III. The Accused Instrumentality
Product Identification
- The accused product is Defendant's "BEVERAGE BAT" (Compl. ¶15).
Functionality and Market Context
- The complaint alleges the BEVERAGE BAT is a drinking vessel shaped like a baseball bat (Compl. ¶15). Plaintiff asserts the accused product is "virtually identical in appearance" to its own patented "THE BEER BAT" (Compl. ¶15, ¶22).
- The complaint provides a side-by-side visual comparison of the patented design and a photograph of the accused BEVERAGE BAT. (Compl. Ex. C). This exhibit shows two baseball-bat-shaped drinking vessels with highly similar proportions and features.
- Plaintiff alleges that Defendant sells the accused products as novelty items at baseball games, including Major League Baseball and Minor League Baseball venues, placing them in direct competition with Plaintiff's own product (Compl. ¶15).
IV. Analysis of Infringement Allegations
The complaint alleges that the accused BEVERAGE BAT is "virtually identical in appearance" to the patented design, such that an ordinary observer would be deceived (Compl. ¶22).
D'498 Patent Infringement Allegations
| Claim Element (from the design "as shown and described") | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental appearance of a drinking vessel in the shape of a baseball bat | The accused BEVERAGE BAT embodies the overall shape of a baseball bat with an open top, making it "virtually identical in appearance" to the patented design. | ¶22 | FIGS. 1-8 |
| A flared, knob-like base | The accused product, as depicted in an exhibit, incorporates a flared base visually consistent with the knob of a baseball bat. | Ex. C | FIGS. 1-5 |
| An elongated, tapering body | The accused product features an elongated body that tapers from the base towards the top, consistent with the shape shown in the patent's figures. | Ex. C | FIGS. 1-5 |
| A wide, open top forming the mouth of the vessel | The accused BEVERAGE BAT is alleged to have the "same shape of a baseball bat with an open top" as the patented design. | ¶22 | FIGS. 1, 6, 8 |
- Identified Points of Contention:
- Scope Questions: The central question in a design patent case is whether "in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other." The complaint squarely frames the dispute around this test (Compl. ¶22). The court will need to compare the overall visual appearance of the accused product with the design claimed in the '498 Patent.
- Technical Questions: While not "technical" in a utility patent sense, a key factual question will be whether any minor differences between the accused product and the patent drawings are significant enough to alter the overall visual impression for the ordinary observer, or if those differences are "insignificant" as the complaint alleges (Compl. ¶23).
V. Key Claim Terms for Construction
In design patent litigation, the claim is not defined by textual terms but by the drawings provided in the patent. As such, formal construction of specific words or phrases is generally not the central issue. The analysis focuses on a comparison of the accused design to the overall visual appearance of the design "as shown and described" in the patent's figures (D'498 Patent, Claim). The complaint does not raise any issues that would suggest a dispute over the meaning of a specific visual feature that would require construction.
VI. Other Allegations
Indirect Infringement
The complaint's allegations are focused on direct infringement by Defendant's making, using, offering to sell, and selling the accused BEVERAGE BAT (Compl. ¶21). It does not contain specific factual allegations to support claims of induced or contributory infringement.
Willful Infringement
The complaint alleges willful infringement based on both pre-suit and post-suit knowledge. It specifically pleads that on May 28, 2021, its counsel sent written notification of the D'498 Patent to Defendant (Compl. ¶16). It further alleges, upon information and belief, that Defendant had knowledge of the patent since its issue date of June 30, 2020, and that Defendant's continued infringement in the face of this knowledge was willful (Compl. ¶17-18, ¶25).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this case will likely depend on the answers to two central questions:
- A core issue will be one of visual similarity: Applying the "ordinary observer" test, is the overall ornamental design of Defendant's "BEVERAGE BAT" substantially the same as the design claimed in the D'498 patent, such that a typical purchaser would be deceived?
- A key evidentiary question will be one of scienter: Can Plaintiff prove that Defendant had knowledge of the D'498 Patent—particularly through the alleged May 2021 notice letter—and that its subsequent infringing conduct was objectively reckless, thereby justifying a finding of willfulness and potential enhanced damages?