DCT

5:23-cv-03085

Breeo Inc v. Sam's West Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 5:23-cv-03085, E.D. Pa., 08/10/2023
  • Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Pennsylvania because a substantial part of the events giving rise to the action occurred in the district.
  • Core Dispute: Plaintiff alleges that Defendants’ "Member's Mark" brand smokeless wood fire pit infringes five of Plaintiff's design patents covering the ornamental appearance of a fire pit.
  • Technical Context: The dispute concerns the market for smokeless fire pits, a consumer product category that often utilizes double-wall construction to facilitate a secondary combustion of smoke.
  • Key Procedural History: The complaint alleges that Plaintiff provided Defendants with notice of the asserted patents and their alleged infringement via correspondence beginning on May 9, 2023.

Case Timeline

Date Event
2019-08-16 Priority Date for all Patents-in-Suit
2021-03-23 U.S. Patent No. D914,172 Issues
2021-05-04 U.S. Patent No. D918,357 Issues
2021-05-18 U.S. Patent No. D919,777 Issues
2021-08-03 U.S. Patent No. D926,950 Issues
2021-08-10 U.S. Patent No. D927,659 Issues
2023-05-09 Plaintiff notifies Defendants of alleged infringement
2023-08-10 Complaint Filed

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

U.S. Design Patent No. D914,172 - "Fire Pit"

Issued March 23, 2021

The Invention Explained

  • Problem Addressed: While the complaint discusses the functional problem of smoke from traditional fire pits (Compl. ¶10), the patent itself is directed to providing a new, original, and ornamental design for a fire pit.
  • The Patented Solution: The patent claims a specific ornamental design for a fire pit. The claimed design, shown in solid lines in the patent figures, consists of the visual characteristics of a fire pit having a generally cylindrical body, a prominent flat top flange, and several vertical, rectangular legs extending down from the body (Compl. ¶31; ’172 Patent, Fig. 1). The design disclaims elements shown in broken lines, such as an attached cooking grate assembly and the interior bottom surface of the pit (’172 Patent, Description).
  • Technical Importance: The complaint alleges that the specific aesthetic configuration of its commercial product, which embodies the patented design, has become inherently distinctive to consumers (Compl. ¶13, 36).

Key Claims at a Glance

  • The patent contains a single claim for "the ornamental design for a fire pit, as shown and described" (’172 Patent, Claim).
  • The essential visual elements of the claimed design include the combination of the cylindrical body, the top flange, and the vertical legs.

U.S. Design Patent No. D918,357 - "Fire Pit"

Issued May 4, 2021

The Invention Explained

  • Problem Addressed: The patent is directed to providing a new, original, and ornamental design for a fire pit.
  • The Patented Solution: The ’357 Patent, which is a divisional of the application leading to the ’172 Patent, claims a different combination of ornamental features. The claimed design includes the cylindrical body and the top flange, but disclaims the legs, which are depicted in broken lines (’357 Patent, Fig. 1, Description). This approach protects the appearance of the fire pit's main body and top, independent of the specific leg design used.
  • Technical Importance: By claiming a subset of the features in the ’172 Patent, this patent may provide a different scope of protection against products that copy the body and flange of the fire pit but utilize a different leg structure.

Key Claims at a Glance

  • The patent contains a single claim for "the ornamental design for a fire pit, as shown and described" (’357 Patent, Claim).
  • The essential visual elements of the claimed design are the cylindrical body and the top flange, with the leg structure explicitly excluded from the claim.

U.S. Design Patent No. D919,777 - "Fire Pit"

Issued May 18, 2021

Technology Synopsis

This patent claims the ornamental design for a fire pit consisting of a smooth cylindrical exterior wall and legs extending downward from that wall (’777 Patent, Claim, Fig. 1). Critically, the top flange of the fire pit is depicted in broken lines and is therefore not part of the claimed design (Compl. ¶33).

Asserted Claims

The single claim for the ornamental design as shown and described.

Accused Features

The complaint alleges that the overall ornamental appearance of the Defendants' "Member's Mark Product" infringes this design (Compl. ¶84, 86).

U.S. Design Patent No. D926,950 - "Fire Pit"

Issued August 3, 2021

Technology Synopsis

Similar to the ’777 Patent, this patent claims the ornamental design for a fire pit featuring a smooth cylindrical wall and downward-extending legs (’950 Patent, Claim, Fig. 1). The top flange is again disclaimed by being shown in broken lines (Compl. ¶34).

Asserted Claims

The single claim for the ornamental design as shown and described.

Accused Features

The complaint alleges that the overall ornamental appearance of the accused product infringes this design (Compl. ¶102, 104).

U.S. Design Patent No. D927,659 - "Fire Pit"

Issued August 10, 2021

Technology Synopsis

This patent claims an ornamental design that includes the smooth cylindrical exterior wall, a circular flange at the top, and legs extending downward (’659 Patent, Claim, Fig. 1). The claimed combination of features appears similar to that of the ’172 Patent (Compl. ¶35).

Asserted Claims

The single claim for the ornamental design as shown and described.

Accused Features

The complaint alleges that the overall ornamental appearance of the accused product infringes this design (Compl. ¶120, 122).

III. The Accused Instrumentality

Product Identification

The accused instrumentality is the "Member's Mark Product," a smokeless wood fire pit sold by Defendant Sam's Club (Compl. ¶19).

Functionality and Market Context

The complaint alleges the accused product incorporates functional features similar to its own products, including a "double wall design and holes around the rim" for secondary combustion (Compl. ¶19). A photograph in the complaint depicts the accused product as a dark-colored, cylindrical fire pit with vertical legs and a metallic top rim (Compl. p. 5). A key allegation is that the accused product was designed to "appear and function substantially similar" to Plaintiff's "X Series" products and to "replicate the outstanding performance" of those products (Compl. ¶20-21). The complaint includes several visual comparisons, such as one showing the accused product's interior compared to a patented design, to support its infringement claims (Compl. p. 12).

IV. Analysis of Infringement Allegations

'172 Patent Infringement Allegations

Claim Element (from the design shown in the patent) Alleged Infringing Functionality (as shown in the accused product) Complaint Citation Patent Citation
The overall ornamental appearance of a fire pit, as depicted in the patent's figures. The complaint alleges the accused product has an ornamental appearance that is substantially the same as the patented design, supported by a side-by-side visual comparison. ¶49-50, p. 12 Fig. 1
A generally cylindrical main body. The accused product is shown in photographs to have a generally cylindrical main body. ¶19, p. 5, p. 12 Fig. 1
A plurality of vertical, rectangular legs supporting the main body. The accused product is depicted with multiple vertical legs that appear rectangular in profile. ¶38, p. 5, p. 12 Fig. 1
A flat top flange extending outwardly from the top rim of the main body. The accused product features a prominent, metallic-colored flange at its top rim. ¶38, p. 5, p. 12 Fig. 1

Identified Points of Contention

  • Scope Questions: A primary issue for the court will be defining the scope of the claimed design in light of the prior art. The litigation may explore whether the combination of a cylindrical body, a top flange, and vertical legs is a novel ornamental design or a combination of known, functional elements. The complaint presents several images of what it deems "non-infringing fire pits" to argue for the distinctiveness of its design (Compl. p. 10).
  • Technical Questions: The infringement analysis will turn on a visual comparison. A question for the fact-finder will be whether the specific proportions, materials, and finish of the accused product's legs, body, and flange are close enough to the patented design to deceive an ordinary observer. The complaint's side-by-side comparison tables will be central to this inquiry (Compl. p. 12, 15, 18, 21, 24).

V. Key Claim Terms for Construction

The Term

The scope of the "ornamental design" as defined by the solid-line and broken-line portions of the patent drawings.

Context and Importance

In design patent cases, there are typically no textual terms to construe. Instead, the court interprets the scope of the claimed design based on the drawings. This interpretation is critical here because the five asserted patents form a family where different visual elements (e.g., legs, flange) are strategically included in (solid lines) or excluded from (broken lines) the claimed design. The determination of what is and is not part of each claimed design will define the scope of protection for each patent.

Intrinsic Evidence for Interpretation

  • Evidence for a Broader Interpretation: A party could argue that the claim to "the ornamental design for a fire pit, as shown and described" should be viewed holistically, focusing on the overall visual impression created by the combination of features rather than on minor details.
  • Evidence for a Narrower Interpretation: A party could argue that the selective use of broken lines to disclaim specific features across the patent family creates a form of prosecution history estoppel. For instance, because the '357 Patent explicitly disclaims the legs, it may suggest that the '172 Patent, which claims the legs, is limited to the specific leg design shown. The patent's own description, stating that broken lines "form no part of the claimed design," supports a narrow focus on only the elements shown in solid lines for each respective patent (’172 Patent, Description).

VI. Other Allegations

Indirect Infringement

The complaint includes allegations of induced and contributory infringement for each asserted patent. It alleges Defendants sell the accused product with the knowledge and intent that third parties will "use, sell, and/or offer for sale" the infringing product (e.g., Compl. ¶44-45).

Willful Infringement

Willfulness is alleged for all five patents. The complaint bases this allegation on Defendants having received actual knowledge of the patents and the infringement allegations via correspondence sent by Plaintiff on May 9, 2023, and their subsequent continued sale of the accused product (e.g., Compl. ¶46-47).

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

  • A core issue will be one of design scope and validity: is the ornamental design claimed in each patent—representing different combinations of a cylindrical body, a top flange, and vertical legs—sufficiently novel and non-obvious over the prior art to be valid? The defense may argue that the claimed designs are simple combinations of well-known features in the fire pit market.
  • The dispositive infringement question will be one of visual deception: would an ordinary observer, familiar with the prior art and giving the attention a typical purchaser would, be deceived into believing the accused Member's Mark fire pit is the same as any of the five distinct ornamental designs claimed by Breeo? This will require a detailed visual comparison of the products, focusing on the overall appearance as well as the specific elements claimed in each patent.
  • A key strategic question will be the interplay between the patents: how will the court and jury treat the five related but distinct design claims? The plaintiff may argue this family of patents creates a wall of protection around its overall design aesthetic, while the defense may argue that the variations between the patents highlight the narrowness of each individual claim.