National Beverage Screen Printers Inc v. DALB Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: National Beverage Screen Printers, Inc. (Florida)
  • Defendant: DALB, Inc. (West Virginia)
  • Plaintiff’s Counsel: Nexsen Pruet, LLC
• Case Identification: 1:16-cv-03850, D.S.C., 12/09/2016
• Venue Allegations: Venue is alleged to be proper because Defendant DALB, Inc. is registered to do business and does business in the State of South Carolina.
• Core Dispute: Plaintiff seeks a declaratory judgment that its products do not infringe Defendant’s patents related to signage retrofit kits for vending machines.
• Technical Context: The technology concerns retrofitting older beverage vending machines with larger, modern-style illuminated graphic displays to enhance marketing and prevent premature obsolescence.
• Key Procedural History: The action arises from a series of communications initiated by DALB. On July 8, 2015, DALB sent a letter to NBS asserting that NBS products may infringe the patents-in-suit. Following an exchange of correspondence, DALB renewed its accusations on December 2, 2016, demanding that NBS cease making and selling the accused products. NBS filed this declaratory judgment action seven days later, asserting that DALB's actions have created a reasonable apprehension of an impending infringement suit.

Case Timeline

Date	Event
2002-10-23	Priority Date for ’065 Patent and ’206 Patent
2008-05-27	Issue Date for U.S. Patent No. 7,377,065
2012-01-31	Issue Date for U.S. Patent No. 8,104,206
2015-07-08	DALB sends initial letter to NBS alleging infringement
2015-11-05	NBS sends response letter denying infringement
2016-12-02	DALB sends renewed demand for NBS to cease and desist
2016-12-09	Complaint for Declaratory Judgment filed by NBS

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

U.S. Patent No. 7,377,065 - Signage Retrofit Kit for Vending Machines (Issued May 27, 2008)

The Invention Explained

• Problem Addressed: The patent describes a "dilemma over the marketing usefulness of existing beverage vending equipment" (’065 Patent, col. 1:36-37). Older machines use small (approx. 1"x3") product identification indicia next to selection buttons, which are "difficult to read" and create "confusion for the consumer" compared to newer machines with large, prominent graphics. This leads to "premature obsolescence of useful beverage vending machines" (’065 Patent, col. 1:40-49).
• The Patented Solution: The invention is a kit to retrofit these older machines. It includes a new, large sign that attaches to the front of the machine, featuring one or more large, clear window portions. Behind this sign, a "holder" is attached to retain "remote product identifiers"—significantly larger graphic cards (e.g., 5"x7") that are now visible through the new windows. This allows an old machine to be updated with modern, effective marketing graphics without costly mechanical alterations (’065 Patent, Abstract; col. 2:51-65).
• Technical Importance: The invention provided a cost-effective method to upgrade the visual appearance and marketing power of the large installed base of older vending machines, extending their useful economic life (’065 Patent, col. 2:10-21).

Key Claims at a Glance

The complaint does not identify specific claims asserted by DALB. The following analysis is based on the patent’s first independent claim, Claim 1.

• Independent Claim 1: A signage retrofit kit comprising:
  • A sign attachable to a vending machine with at least one window portion that is larger than the machine's original selection panel window.
  • A holder positioned on the rear side of the sign to hold a remote product identifier.
  • The remote product identifier is viewable through the window and is larger than the original indicia.
  • The holder specifically comprises a "backing plate," a "spacing member" positionable between the sign and the backing plate, and "adhesive" to attach the components.
• The complaint does not reserve the right to assert dependent claims.

U.S. Patent No. 8,104,206 - Signage Retrofit Kit for Vending Machines (Issued Jan. 31, 2012)

The Invention Explained

• Problem Addressed: As a divisional of the '065 patent, the '206 Patent addresses the same problem of outdated and ineffective visual displays on older vending machines (’206 Patent, col. 1:35-51).
• The Patented Solution: The '206 patent also discloses a retrofit kit with a new sign and a holder for larger graphic indicia. However, it adds a key functional element: the retrofit kit itself includes its own "plurality of switches attached to the sign." These new switches are associated with the new, large graphic displays and are "operatively connectable to existing circuitry of the vending machine" to trigger a purchase. This allows the user interaction to move from the old, small buttons to the new, modern graphic panel (’206 Patent, col. 5:11-28; Claim 1).
• Technical Importance: This solution further modernizes the user experience by integrating the selection mechanism directly into the new, visually appealing signage, rather than merely using the new signage as a graphical reference for the old buttons (’206 Patent, col. 5:11-17).

Key Claims at a Glance

The complaint does not identify specific claims asserted by DALB. The following analysis is based on the patent’s first independent claim, Claim 1.

• Independent Claim 1: A signage retrofit kit comprising:
  • A sign with at least one window portion larger than the original selection panel window.
  • A holder attached "solely to the rear side of the sign" to hold a remote product identifier.
  • A "plurality of switches attached to the sign," each associated with a remote product identifier.
  • The switches are "operatively connectable to existing circuitry of the vending machine" such that manipulating a switch can trigger a vend cycle.
• The complaint does not reserve the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

The complaint does not identify specific products by name, referring only generally to "NBS products" (Compl. ¶8). It also does not provide any technical description of their functionality, features, or market context. No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint is for a declaratory judgment of non-infringement and therefore does not contain affirmative infringement allegations or a corresponding claim chart. The specific bases for DALB’s accusations of infringement are not detailed in the complaint (Compl. ¶8-10). Based on the patent claims, the following points of contention may arise once the technical details of the NBS products are established.

’065 Patent

• Infringement Allegations: The complaint does not provide sufficient detail for analysis.
• Identified Points of Contention:
  • Structural Questions: A central question may be whether the NBS products employ a "holder" that meets the specific limitations of Claim 1. The claim requires a three-part assembly of a "backing plate," a "spacing member," and "adhesive" (’065 Patent, col. 6:55-65). The analysis will question whether the NBS products literally contain this structure, or if they use an alternative design (e.g., a single-piece molded holder) that may not infringe.

’206 Patent

• Infringement Allegations: The complaint does not provide sufficient detail for analysis.
• Identified Points of Contention:
  • Functional Questions: The key dispute for the '206 Patent will likely concern the "plurality of switches attached to the sign" that are "operatively connectable to existing circuitry" (’206 Patent, col. 6:49-55). The core question is whether the NBS products are purely passive graphical overlays that simply direct users to the machine's original buttons, or if they integrate new, functional electronic switches into the retrofit sign itself as required by the claim.

V. Key Claim Terms for Construction

Term from the ’065 Patent: "a holder"

• Context and Importance: The definition of "holder" is critical because Claim 1 explicitly recites what the holder "comprises": a backing plate, a spacing member, and adhesive. Infringement may depend on whether an accused product must have this precise structure.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: DALB (as the patentee) may point to other embodiments in the specification, such as the "lattice-type holder 4" shown in Figure 2, which could be interpreted as a more general structure for retaining indicia (’065 Patent, col. 4:3-11).
  • Evidence for a Narrower Interpretation: NBS (as the accused infringer) will likely argue that the plain language of Claim 1 is limiting. By using the transitional phrase "comprising" and then listing a specific set of components for the holder, the claim scope is narrowed to that enumerated structure (’065 Patent, col. 6:55-65). The depiction of this exact structure in Figures 9 and 10 may further support a narrower construction.

Term from the ’206 Patent: "switches attached to the sign"

• Context and Importance: This term is the central novel feature of the '206 Patent's claims. Whether the NBS products infringe will likely turn on whether they include components that meet this definition. Practitioners may focus on this term because it distinguishes a purely passive graphic from an active electronic interface.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification discloses that the switches can be of various types, including "membrane switches, magnetic effect or Hall-effect switches, optical switches or any other known types of switches" (’206 Patent, col. 5:19-21). This suggests the term is not limited to a traditional mechanical button.
  • Evidence for a Narrower Interpretation: The claims require the switches to be "attached to the sign" and "operatively connectable to existing circuitry" (’206 Patent, col. 6:49-54). An accused infringer might argue this requires distinct electronic components added to the sign assembly, and would not read on a design where the sign is simply a graphic placed over the vending machine's original, untouched selection buttons.

VI. Other Allegations

As a complaint for declaratory judgment of non-infringement, this filing does not contain counts for indirect or willful infringement.

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

This dispute appears to center on the specific design choices made in the Plaintiff's (NBS) products relative to the claim language of the Defendant's (DALB) patents. The resolution of the case will likely depend on the answers to two primary questions:

1. A core issue will be one of structural limitation: For the ’065 patent, do the NBS products utilize the specific three-part "holder" structure—a backing plate, a spacing member, and adhesive—recited in the claims, or do they employ an alternative design for retaining graphics that falls outside this literal scope?

2. A key evidentiary question will be one of functional operation: For the ’206 patent, do the NBS retrofit kits incorporate their own "switches attached to the sign" that are electronically connected to the vending machine's internal circuitry, or are they passive, non-electronic overlays that rely entirely on the machine's original buttons for user input?