DCT
1:17-cv-00261
Kona Ice Inc v. Hale
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Kona Ice, Inc. (Kentucky)
- Defendant: Howard Hale and Fun Time Foods, LLC (Tennessee)
- Plaintiff’s Counsel: Spears, Moore, Rebman & Williams, P.C.
- Case Identification: 1:17-cv-00261, E.D. Tenn., 09/21/2017
- Venue Allegations: Venue is based on Defendants residing, having their principal place of business, and maintaining a regular and established place of business within the Eastern District of Tennessee.
- Core Dispute: Plaintiff alleges that Defendants’ mobile shaved ice service vehicle infringes a patent related to a mobile confectionary apparatus featuring an external, customer-accessible liquid toppings dispensing system.
- Technical Context: The technology addresses operational efficiency in the mobile food vendor industry, specifically by allowing customers to apply their own toppings to frozen confections, thereby reducing service times and customer queues.
- Key Procedural History: The patent-in-suit is a continuation of a prior application that has since issued as a U.S. Patent. The patent-in-suit is also subject to a terminal disclaimer. The complaint alleges Defendants' awareness of Plaintiff's patent portfolio through their relationship as a franchisee of a third party.
Case Timeline
| Date | Event |
|---|---|
| 2013-02-27 | Priority Date for U.S. Patent No. 9,751,447 |
| 2017-09-05 | U.S. Patent No. 9,751,447 Issues |
| 2017-09-21 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,751,447 - "Liquid Toppings Dispensing System"
- Patent Identification: U.S. Patent No. 9,751,447, "Liquid Toppings Dispensing System", issued September 5, 2017.
The Invention Explained
- Problem Addressed: The patent identifies a challenge in the mobile confectionary industry where profitability and customer satisfaction are highly dependent on fast service. The process of an employee applying flavorings to items like shaved ice, or a customer taking time to choose, can create long lines and drive away potential business (’447 Patent, col. 1:41-65).
- The Patented Solution: The invention is a mobile confectionary vehicle (e.g., a food truck) with an operator service window and a distinct, external liquid toppings dispensing station. This design allows a customer to receive a plain confection from an employee and then move to the external station to self-apply flavorings. This parallel processing is intended to improve the flow of customers and increase service speed (’447 Patent, Abstract; col. 4:50-63). The system is described as being located outside the vehicle’s main interior space and can be pivotable for transport or use in confined areas (’447 Patent, col. 4:15-24; Fig. 1).
- Technical Importance: The design aims to decouple the basic transaction (ordering and payment) from the more time-consuming customization (flavor selection and application), a key factor for vendors at crowded, time-sensitive events (’447 Patent, col. 1:45-56).
Key Claims at a Glance
- The complaint asserts infringement of independent Claim 1 and dependent Claims 2, 3, 4, 6, 7, and 10 (Compl. ¶11).
- Independent Claim 1 recites the core elements of the apparatus:
- A vehicle with at least one upstanding side wall.
- An interior space configured to receive at least one person.
- An opening through the side wall for passing items to the outside.
- A liquid toppings dispensing system that includes a housing, is positioned adjacent to and opposing the side wall, has a plurality of liquid dispensers in fluid communication with a reservoir, and is located externally of the side wall, spaced "entirely laterally therefrom by a gap."
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is identified as "Defendants' Service Vehicle," a truck used to sell frozen treats such as flavored shaved ice (Compl. ¶9, ¶14).
Functionality and Market Context
- The complaint alleges the vehicle is a mobile confectionary apparatus that operates as a service truck (Compl. ¶14). Its key feature, for the purposes of this suit, is an external system with "multiple spigots, enclosed by and supported by a frame, that are used to dispense liquid flavoring onto items sold to customers" (Compl. ¶18). The complaint provides images of the accused service vehicle, which show an external rack with multiple spigots mounted on the side of a truck (Compl. ¶9, Ex. 2). The allegations frame this vehicle as directly competing with the Plaintiff's franchised vehicles (Compl. ¶2, ¶6).
IV. Analysis of Infringement Allegations
'447 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a vehicle including at least one upstanding side wall; | The accused instrumentality is a service truck, which is a vehicle and has at least one side wall enclosing a rear portion. | ¶14, ¶15 | col. 4:1-8 |
| an interior space surrounded by the at least one upstanding side wall and configured to receive at least one person; | The rear portion of the truck is designed to allow at least one person to be present therein. | ¶16 | col. 4:50-57 |
| an opening extending through the at least one upstanding side wall and through which an item may be passed from the interior space to outside of the vehicle; and | The truck has a window in the side wall used to pass items to customers. | ¶17 | col. 5:8-14 |
| a liquid toppings dispensing system including a housing being positioned adjacent to, and opposing, the at least one upstanding side wall... | The vehicle includes a system with multiple spigots supported by a frame, positioned in "close proximity to, and opposing, the side wall of the truck." | ¶18 | col. 7:1-8 |
| ...including a plurality of liquid dispensers configured to dispense at least one liquid topping... each... in fluid communication with at least one reservoir... | The system has "more than one spigot" to dispense flavoring, and each spigot is attached by a hose to a container holding the liquid toppings. | ¶18 | col. 7:26-34 |
| ...with the liquid toppings dispensing system being located externally of the at least one upstanding side wall and spaced entirely laterally therefrom by a gap. | The dispensing system is "mounted on the outside of the truck, and there is a space between it and the side wall of the truck." | ¶18 | col. 10:1-3 |
- Identified Points of Contention:
- Scope Questions: The complaint alleges that a "frame" supporting spigots constitutes the claimed "housing" (Compl. ¶18). A point of contention may be whether the term "housing," as used in the patent, requires a more enclosed structure like that depicted in the specification's embodiments (e.g., ’447 Patent, Fig. 3A, element 44) or if a simpler open frame falls within its scope.
- Technical Questions: Claim 1 requires the dispensing system to be "spaced entirely laterally therefrom by a gap." The complaint alleges this is met by "a space between it and the side wall of the truck" (Compl. ¶18). The analysis may turn on the factual evidence regarding the nature and extent of this separation and whether it meets the definition of a "gap" in the context of the patent.
V. Key Claim Terms for Construction
The Term: "a liquid toppings dispensing system including a housing"
Context and Importance: The definition of "housing" is critical to determining whether the accused product's structure literally infringes. The dispute will likely center on whether the open "frame" alleged to support the spigots on the accused vehicle (Compl. ¶18) meets this limitation, or if the patent requires a more substantial, box-like enclosure.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim itself simply recites "a housing" without further structural limitations, which may support an argument for its plain and ordinary meaning covering any form of shelter or enclosure, including a frame.
- Evidence for a Narrower Interpretation: The specification describes the housing (44) in detail as an enclosure that contains a support panel (42), a backsplash (43), a catch basin (45), and utility access openings (48), and can include display lights (67) and an access door (52) (’447 Patent, col. 7:4-8; col. 8:58-65; Fig. 5A-C). Parties may argue these specific embodiments define the scope of the term "housing" more narrowly.
The Term: "spaced entirely laterally therefrom by a gap"
Context and Importance: This limitation defines the specific spatial relationship between the dispensing system and the vehicle wall, which is a distinguishing feature of the claimed apparatus. The infringement analysis will depend on the required characteristics of this "gap."
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language does not specify a size or purpose for the "gap," suggesting any clear physical separation could suffice. The complaint alleges infringement based on the existence of "a space" between the system and the truck wall (Compl. ¶18).
- Evidence for a Narrower Interpretation: The specification and figures repeatedly link the system to a pivotable mount, where a gap is necessary to accommodate movement between a transport position and an operational position (’447 Patent, Fig. 3B, 4B; col. 6:35-41). A party could argue that the term "gap" should be construed in light of this functional context, even if the claim does not explicitly require pivotability.
VI. Other Allegations
- Indirect Infringement: The prayer for relief requests a judgment that Defendants have induced infringement (Compl. at p. 6, Prayer A). However, the factual allegations in the body of the complaint focus on direct infringement through Defendants' own "operation and use" of the accused vehicle (Compl. ¶11).
- Willful Infringement: The complaint alleges willful infringement "on information and belief," asserting that Defendants are a franchisee of Tikiz Shaved Ice, a company that "is aware of and monitors the patents owned by Kona Ice" (Compl. ¶20). The allegation suggests knowledge was obtained or should have been obtained through this franchisor-franchisee relationship.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "housing," as described and depicted in the patent's preferred embodiments as a relatively complex enclosure, be construed to read on the "frame" that allegedly supports the spigots on the Defendants' vehicle?
- A key evidentiary question will be one of structural configuration: does the physical mounting of the accused dispensing system on the service vehicle create a spatial relationship that meets the claim requirement of being "spaced entirely laterally therefrom by a gap," and what evidence will be dispositive in defining the boundaries of that term?
- The viability of the willfulness claim will likely depend on whether Plaintiff can produce evidence to substantiate its "information and belief" allegation that Defendants knew of the patent, or the risk of infringing it, based on interactions with their franchisor.