DCT
6:23-cv-00469
Ontel Products Corp v. Big 5 Sporting Goods Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Ontel Products Corporation (New Jersey)
- Defendant: Big 5 Sporting Goods Corp. (Delaware)
- Plaintiff’s Counsel: Dickinson Wright PLLC
- Case Identification: 6:23-cv-00469, W.D. Tex., 06/26/2023
- Venue Allegations: Venue is alleged to be proper as Defendant resides in the district (El Paso, Texas) and operates retail stores within the district.
- Core Dispute: Plaintiff alleges that Defendant’s Polar Chill Air Cooler infringes one utility patent and six design patents related to Plaintiff's "Arctic Air" line of personal evaporative air coolers.
- Technical Context: The technology involves compact, personal evaporative coolers that use water evaporation, often enhanced by a misting function, to cool a user's immediate airspace.
- Key Procedural History: The complaint alleges a prior business relationship between the parties, during which Plaintiff provided Defendant with confidential information and product samples of its Arctic Air products in early 2021. Plaintiff alleges that Defendant subsequently terminated negotiations and used this information to develop the accused infringing product. The asserted design patent RE48,619 is a reissue of U.S. Design Patent No. D852,340. Several of the other asserted design patents claim continuation status from earlier-filed applications.
Case Timeline
| Date | Event |
|---|---|
| 2018-02-XX | Ontel first sold original Arctic Air products |
| 2018-12-21 | Priority Date for U.S. Patent No. RE48,619 |
| 2019-01-03 | Priority Date for U.S. Patent No. 10,712,029 |
| 2020-04-22 | Priority Date for U.S. Patent No. D963,135 |
| 2020-07-14 | U.S. Patent No. 10,712,029 Issued |
| 2020-10-28 | Priority Date for U.S. Patent No. D966,475 |
| 2021-02-09 | Ontel allegedly sends confidential slide deck to Big 5 |
| 2021-02-23 | Big 5 allegedly receives Ontel product sample |
| 2021-04-05 | Priority Date for U.S. Patent No. D967,363 |
| 2021-07-06 | U.S. Patent No. RE48,619 Issued |
| 2022-05-XX | Big 5 allegedly began offering the accused Polar Chill product for sale |
| 2022-09-06 | U.S. Patent No. D963,135 Issued |
| 2022-09-20 | Priority Date for U.S. Patent No. D978,308 |
| 2022-10-11 | U.S. Patent No. D966,475 Issued |
| 2022-10-18 | U.S. Patent No. D967,363 Issued |
| 2023-02-14 | U.S. Patent No. D978,308 Issued |
| 2023-04-17 | Ontel allegedly purchases accused Polar Chill products |
| 2023-06-26 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,712,029 - "Evaporative Personal Air Cooler"
- Issued: July 14, 2020
The Invention Explained
- Problem Addressed: The patent describes conventional personal evaporative coolers as having several drawbacks: they can be slow to start cooling because the filter must first soak up water, their effectiveness decreases as the filter dries, and they often use paper-like filters that require frequent replacement and cannot be easily cleaned or sanitized (’029 Patent, col. 1:10-52).
- The Patented Solution: The invention proposes a two-stage cooling system. A "misting structure" immediately generates a fine mist to provide instant cooling when the device is turned on. This mist also serves to saturate a "filter structure" made of a more durable, washable sponge material. This combination provides both immediate and prolonged cooling, while using reusable components (’029 Patent, Abstract; col. 9:1-10). The patent also discloses features like a v-shaped shroud to evenly distribute the mist onto the filters (’029 Patent, col. 7:25-34).
- Technical Importance: The claimed invention seeks to improve the user experience of personal coolers by providing instant-on cooling and utilizing more durable, reusable, and sanitary components compared to prior designs (’029 Patent, col. 7:1-5).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 16 (Compl. ¶82).
- Independent Claim 1 requires:
- A housing with top, bottom, and side panels.
- A tank to hold liquid, positioned near the top panel.
- A misting structure with a mister, configured to create a mist.
- A filter structure with multiple filters to absorb the mist.
- A fan to draw air in, where the air is cooled by "at least one of the mist and the filter structure," and direct the cooled air out.
- Independent Claim 16 includes similar elements but adds the specific limitation of "a v-shaped shroud positioned underneath the tank and configured to direct the mist toward the filter structure."
U.S. Reissued Patent No. RE48,619 - "Personal air cooler"
- Issued: July 6, 2021
The Invention Explained
- Problem Addressed: Not applicable; design patents protect ornamental appearance, not functional utility.
- The Patented Solution: The patent protects the specific, non-functional ornamental design of a personal air cooler as depicted in the patent's seven figures. The design features a compact, generally cuboid shape, a front face dominated by horizontal louvers, and a distinct arrangement of elements on the top surface, including a lid and control icons (’619 Patent, Figs. 1-7).
- Technical Importance: The design creates a particular aesthetic and visual impression for the product in the consumer electronics marketplace.
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is for "The ornamental design for a personal air cooler, as shown and described" (’619 Patent, Claim).
- The essential elements are the collective visual features shown in solid lines in the patent drawings, which together create the overall appearance of the design.
Analysis of Advanced Design Patents: D966,475 and D963,135
- Patent Identification: D966,475 (Issued Oct. 11, 2022) and D963,135 (Issued Sep. 6, 2022), both titled "Personal Air Cooler."
- Technology Synopsis: These patents protect the ornamental designs for a personal air cooler, characterized by a specific overall shape, louvered front grill, and top-surface control layout. The designs are substantially similar to each other, with D966,475 being a continuation of the application that led to D963,135 (Compl. ¶38).
- Asserted Claims: The single claim of each design patent.
- Accused Features: The overall ornamental appearance of the Defendant's Polar Chill product is alleged to be substantially the same as the patented designs (Compl. ¶106).
Analysis of Pure Chill Design Patents: D978,308 and D967,363
- Patent Identification: D978,308 (Issued Feb. 14, 2023) and D967,363 (Issued Oct. 18, 2022), both titled "Personal Air Cooler."
- Technology Synopsis: These patents protect ornamental designs for a personal air cooler, again defined by a particular combination of overall shape, grill pattern, and top-surface features. D978,308 is a continuation of the application that led to D967,363 (Compl. ¶41).
- Asserted Claims: The single claim of each design patent.
- Accused Features: The overall ornamental appearance of the Defendant's Polar Chill product is alleged to be substantially the same as the patented designs (Compl. ¶115).
III. The Accused Instrumentality
Product Identification
- The "Polar Chill Air Cooler" ("Polar Chill"), advertised and sold by Defendant Big 5 (Compl. ¶2, ¶64).
Functionality and Market Context
- The complaint alleges the Polar Chill is a personal evaporative air cooler that functions in a manner similar to Ontel's patented products (Compl. ¶71). The complaint provides photographic evidence of the accused product's exterior and interior, showing a housing, a water tank, a fan, and a filter structure (Compl. pgs. 18-21). A photograph of the accused product's packaging includes a diagram illustrating its function: a fan draws warm, dry air through a "cooling filter" to produce cool, clean air (Compl. p. 22). The product is alleged to have been developed after Big 5 reviewed Ontel's confidential product information and samples, and is allegedly marketed to directly compete with and undercut Ontel's products (Compl. ¶6, ¶61).
IV. Analysis of Infringement Allegations
'029 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an evaporative air cooler for cooling ambient air, comprising: a housing with a top panel, a bottom panel, and side panels defining an interior of the evaporative air cooler | The Polar Chill product has a housing with top, bottom, and side panels. A photographic comparison shows the housing components. | ¶84; p. 26 | col. 4:9-20 |
| a tank positioned adjacent to the top panel and at least one of the side panels, wherein the tank is configured to receive, store, and release liquid | The Polar Chill has a water tank located at the top of the device for holding liquid. | ¶84; p. 26 | col. 8:56-62 |
| a misting structure comprising a mister...wherein the misting structure is configured to create a mist within the evaporative air cooler | The Polar Chill contains an internal component identified as a "misting structure." | ¶84; p. 25 | col. 7:25-29 |
| a filter structure with a plurality of filters, wherein the plurality of filters are configured to absorb the mist | The Polar Chill contains a removable filter structure composed of multiple, parallel filter elements. | ¶84; p. 25 | col. 5:6-21 |
| and a fan configured to draw the ambient air into the evaporative air cooler, wherein the ambient air is cooled by at least one of the mist and the filter structure, and wherein the fan directs the ambient air through the filter structure and out of the evaporative air cooler | The Polar Chill contains a fan behind the filter. The complaint alleges this assembly operates to draw air through the mist and filter to cool it before exhausting it. A visual comparison shows the fan, filter, and housing. | ¶84; p. 25 | col. 7:41-51 |
'619 Patent Infringement Allegations
- The complaint alleges infringement of the single claim of the '619 Patent by asserting that the overall ornamental appearance of the Polar Chill product is substantially the same as the patented design (Compl. ¶95). This allegation is primarily supported by visual evidence. The complaint provides a series of side-by-side comparisons showing figures from the '619 Patent next to photographs of the accused Polar Chill product from corresponding angles (Compl. pgs. 29-31). For example, a top-front perspective photograph of the Polar Chill is presented as evidence that it incorporates the ornamental design shown in Figure 1 of the patent (Compl. p. 29).
Identified Points of Contention
- Scope Questions: For the '029 patent, a central question may be whether the accused device's mechanism for delivering water constitutes a "misting structure comprising a mister" as claimed. The defense may argue that the accused product uses a different, non-infringing technology (e.g., a drip or wick system) that does not create a "mist" in the manner taught by the patent. For Claim 16, the presence, shape, and function of the alleged "v-shaped shroud" in the accused product will be a key factual dispute. The complaint provides a labeled photograph of an alleged "V-SHAPED SHROUD," but its precise geometry and function are not detailed (Compl. p. 27).
- Technical Questions: For the design patents, the dispute will center on the "ordinary observer" test. The question will be whether the similarities in the overall cuboid shape and louvered front grill outweigh the apparent differences in the specific configuration and iconography of the top-mounted controls, which a defendant may argue are sufficient to distinguish the designs for an ordinary purchaser (Compl. p. 31).
V. Key Claim Terms for Construction
The Term: "misting structure" (’029 Patent, Claim 1)
- Context and Importance: This term is fundamental to the '029 patent's infringement theory, as it describes the component allegedly responsible for the "instant cooling" feature. The case may turn on whether the accused device's water delivery system falls within the proper construction of this term.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims do not define the term, which may support giving it a broad, plain and ordinary meaning covering various ways to generate and deliver water droplets into the airflow. The patent's summary describes the goal as creating a mist as liquid "flows through the liquid outlet" (’029 Patent, col. 2:61-64).
- Evidence for a Narrower Interpretation: The specification repeatedly describes the structure in the context of a "microporous mister" (’029 Patent, col. 9:4) that "can release water downward into the interior" (’029 Patent, col. 9:31-33). The figures depict a specific mister component (106). A party could argue these embodiments limit the term to an active atomizing or spraying component, excluding simpler passive systems.
The Term: "v-shaped shroud" (’029 Patent, Claim 16)
- Context and Importance: This is the primary limitation that distinguishes independent claim 16 from claim 1. Infringement of claim 16 depends entirely on whether the accused product contains a structure meeting this definition.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term itself is relatively general. Parties could argue that any structure that is generally "V"-shaped and guides mist falls within the scope, without needing to match the exact angles or proportions of the embodiment shown.
- Evidence for a Narrower Interpretation: The specification describes the shroud's function is to "distribute the mist 118 evenly toward the filters" and "maximize airflow" (’029 Patent, col. 7:30-34). Figure 7 shows a specific embodiment (44). A party may argue the term should be limited to structures that perform this specific even-distribution function and have a similar configuration to the depicted embodiment.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement, stating that Defendant sells the Polar Chill with the knowledge and intent that its customers will use the product in an infringing manner (Compl. ¶78, ¶81).
- Willful Infringement: The complaint contains extensive allegations to support willfulness. It claims Defendant had pre-suit knowledge of the patents-in-suit and technology based on a prior business relationship and, specifically, a February 2021 product presentation where Plaintiff allegedly shared confidential information, marketing plans, and product samples of its Arctic Air products. The complaint alleges Defendant then used this information to create a "competing and infringing product" (Compl. ¶5-6, ¶8, ¶61). It also alleges Plaintiff marks its products pursuant to 35 U.S.C. § 287 (Compl. ¶77).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue for the utility patent will be one of technical mechanism: does the accused Polar Chill’s water delivery system function as a "misting structure" that actively creates a mist, as required by the '029 patent, or does it utilize a non-infringing alternative such as a passive wicking or dripping system? The evidence provided in the complaint identifies the component but does not show its method of operation.
- A central question for the design patents will be one of visual perception: would an ordinary observer, giving the degree of attention a typical purchaser of such goods would, be deceived into believing the Polar Chill is the same as Ontel's patented designs, or are the differences in details, such as the top surface controls and textures, sufficient to distinguish them?
- A key factual question influencing potential damages will be one of intent: does the evidence surrounding the parties' prior business relationship and Defendant's alleged access to Plaintiff's confidential information and product samples support the allegation of deliberate copying, which would be central to the claim of willful infringement?