DCT
6:25-cv-00044
BL Patents LLC v. Ad N Art Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: BL Patents, LLC (Oregon)
- Defendant: AD-N-ART INC. (Canada)
- Plaintiff’s Counsel: The Polasek Law Firm, PLLC
- Case Identification: 6:25-cv-00044, W.D. Tex., 02/11/2025
- Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because Defendant advertises, offers for sale, and sells the accused products to customers in the district through its own websites and third-party retailers including Walmart, Sam's Club, Costco, and Amazon.
- Core Dispute: Plaintiff alleges that Defendant’s Asobu portable cold brew coffee makers infringe three patents related to cold brew beverage brewing systems.
- Technical Context: The technology concerns multi-component, invertible brewing systems, often resembling an hourglass, designed to simplify the process of making and storing cold brew coffee concentrate.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with actual notice of U.S. Patent Nos. 9,999,314 and 10,231,566, as well as a related pending application, as early as April 8, 2022, a fact which may be relevant to the claim of willful infringement. The asserted patents are part of a family of applications stemming from a provisional application filed in 2005.
Case Timeline
| Date | Event |
|---|---|
| 2005-04-18 | Earliest Priority Date for ’566, ’314, and ’952 Patents |
| 2018-06-19 | U.S. Patent No. 9,999,314 Issues |
| 2019-03-19 | U.S. Patent No. 10,231,566 Issues |
| 2022-04-08 | Alleged Date of Actual Notice to Defendant ('314, '566) |
| 2023-05-30 | U.S. Patent No. 11,659,952 Issues |
| 2025-02-11 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,231,566 - "Cold Brew Beverage Brewing Systems," issued March 19, 2019
The Invention Explained
- Problem Addressed: The patent seeks to solve problems with prior art coffee brewing methods, noting that traditional hot brewing can produce a "harsh acidic taste" and that existing cold brew devices can be "complex and difficult to clean" (’566 Patent, col. 2:33-40, 56-58).
- The Patented Solution: The invention is a multi-part, invertible brewing apparatus, preferably with an "hourglass shape," that includes a brew chamber, an extract chamber, and a centerpiece connector between them (’566 Patent, col. 2:5-15). A key component is a filter that is positioned within the brew chamber to contain the coffee grounds; after a steeping period, the entire apparatus is inverted, allowing the liquid coffee extract to drain through the filter into the now-lower extract chamber for collection and storage (’566 Patent, Abstract; col. 4:31-65).
- Technical Importance: The design provides a self-contained, reusable, and simplified system for creating and decanting cold brew coffee concentrate, aiming to improve both flavor and user convenience (’566 Patent, col. 2:6-15).
Key Claims at a Glance
- The complaint asserts claims 1-11 (Compl. ¶24).
- Independent claim 1 requires:
- A first container (brew chamber) and a second container (extract chamber).
- A centerpiece connector positioned between the two containers.
- A filter with a water-permeable barrier, sized to fit within the first container.
- The filter must be "positionable within said first container such that it divides said filter interior volume from the remainder of said first container interior volume."
- The centerpiece connector allows liquid to flow between the two containers.
- The complaint reserves the right to assert other claims, which may include dependent claims that add further limitations, such as the apparatus having an "hourglass shape" (’566 Patent, cl. 5).
U.S. Patent No. 9,999,314 - "Cold Brew Beverage Brewing Systems," issued June 19, 2018
The Invention Explained
- Problem Addressed: As a parent to the ’566 Patent, this patent addresses the same problem: the harsh taste of hot-brewed coffee and the complexity of prior cold-brew devices (’314 Patent, col. 2:32-52).
- The Patented Solution: The invention is a method for brewing coffee using an apparatus similar to that described in the ’566 patent. The asserted claim outlines the steps of filling a filter, placing it in a brew chamber, adding water, steeping for an extended period (e.g., 12-24 hours), and then inverting the apparatus to decant the resulting concentrate into an extract chamber (’314 Patent, col. 4:31-60; Fig. 14). This method allows for the creation of a storable coffee concentrate.
- Technical Importance: The claimed method provides a structured process for using an invertible brewing system to achieve a less acidic, concentrated coffee extract that can be stored for later use (’314 Patent, col. 4:1-4).
Key Claims at a Glance
- The complaint asserts at least claim 21 (Compl. ¶39).
- Independent method claim 21 requires the steps of:
- Providing a cold brew coffee apparatus with a brew chamber, extract chamber, centerpiece connector, and a filter.
- Placing coffee grounds into the filter.
- Placing the filter into the brew chamber.
- Adding a brewing liquid to the brew chamber to soak the grounds.
- Allowing the liquid to infuse the grounds.
- Inverting the apparatus to cause the resulting extract to pass through the filter and into the extract chamber.
- The complaint reserves the right to assert other claims.
U.S. Patent No. 11,659,952 - "Cold Brew Beverage Brewing Systems," issued May 30, 2023
Technology Synopsis
This patent, from the same family as the ’566 and ’314 patents, also describes a cold brew coffee apparatus. The claims are directed to an apparatus with a brew chamber, an extract chamber, a centerpiece connector, and a filter, where the overall assembled system has an "hourglass shape." The invention provides a self-contained system for cold water infusion that separates grounds from the final extract. (’952 Patent, Abstract; cl. 1).
Asserted Claims
Claims 1-4, 7-8, 10, 13-14, and 16-18 are asserted, including independent claims 1, 10, 13, and 16 (Compl. ¶54).
Accused Features
The complaint alleges that Defendant's Asobu portable brewers, such as the KB-900 model, contain the structural elements of the claimed apparatus, including the separate chambers and filter system (Compl. ¶10, 54).
III. The Accused Instrumentality
Product Identification
- Defendant’s cold brew portable brewers, specifically identifying the KB-900 model as an exemplary "Accused Product" (Compl. ¶10).
Functionality and Market Context
- The complaint identifies the Accused Products as portable brewers used for making cold brew coffee (Compl. ¶8, 10). While the complaint does not provide a detailed narrative description of the products' operation, it alleges through incorporated exhibits that the products possess the structural and functional features recited in the asserted claims, such as multiple chambers, a filter, and a design enabling brewing via inversion (Compl. ¶24, 39, 54).
- The complaint alleges the Accused Products are sold in the United States through Defendant's websites and major retail channels, including Walmart, Sam's Club, Costco, and Amazon (Compl. ¶5).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint does not contain narrative infringement allegations or claim charts in its body, instead incorporating by reference external Exhibits D, E, and F, which were not filed with the complaint (Compl. ¶24, 39, 54). The following tables summarize the infringement theory by mapping the elements of the lead independent claims to the general allegation that the Accused Products contain corresponding features.
’566 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a first container at a first end of said cold brew coffee apparatus, a second container at a second end...and a centerpiece connector positioned between said first container and said second container | The complaint alleges via incorporated Exhibit D that the Asobu KB-900 brewer is an apparatus with a first container, a second container, and a connector. | ¶24 | col. 18:37-44 |
| said first container having a first container interior volume, a first container enclosed end, and a first container opening remote from said first container enclosed end | The complaint alleges via incorporated Exhibit D that the Asobu brewer's first container has an interior volume, an enclosed end, and an opposing opening. | ¶24 | col. 2:18-22 |
| a filter providing a water-permeable barrier, said filter defining a filter interior volume, said filter sized to fit within said first container interior volume | The complaint alleges via incorporated Exhibit D that the Asobu brewer includes a filter with a water-permeable barrier that fits inside the first container. | ¶24 | col. 2:28-32 |
| wherein said filter is positionable within said first container such that it divides said filter interior volume from the remainder of said first container interior volume | The complaint alleges via incorporated Exhibit D that the filter in the Asobu brewer is positioned to partition the interior volume of the first container. | ¶24 | col. 2:33-38 |
| wherein said centerpiece connector allows liquid to flow between said centerpiece connector first opening end and said centerpiece connector second opening end | The complaint alleges via incorporated Exhibit D that the connector in the Asobu brewer is configured to allow liquid to pass between the two containers. | ¶24 | col. 18:45-50 |
’314 Patent Infringement Allegations
| Claim Element (from Independent Claim 21) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (a) providing a cold brew coffee apparatus...comprising...a brew chamber, an extract chamber, a centerpiece connector...and a filter | The complaint alleges via incorporated Exhibit E that using the Asobu brewer, which has these components, satisfies this step. | ¶39 | col. 18:41-47 |
| (b) placing coffee grounds into said filter | The complaint alleges via incorporated Exhibit E that users are instructed to place coffee grounds into the Asobu brewer's filter. | ¶39 | col. 4:32-34 |
| (c) placing said filter into said brew chamber | The complaint alleges via incorporated Exhibit E that users are instructed to place the filter into the Asobu brewer's brew chamber. | ¶39 | col. 4:34-36 |
| (d) adding a brewing liquid into said brew chamber to thereby soak said coffee grounds | The complaint alleges via incorporated Exhibit E that users are instructed to add water to the brew chamber, soaking the grounds. | ¶39 | col. 4:40-43 |
| (f) inverting said apparatus to cause the resulting coffee extract to pass through said filter and into said extract chamber | The complaint alleges via incorporated Exhibit E that users are instructed to invert the Asobu brewer to decant the coffee extract into the collection chamber. | ¶39 | col. 4:54-60 |
Identified Points of Contention
- Scope Questions: The case may turn on whether the specific components of the Asobu KB-900 brewer fall within the scope of the patent terms. For instance, does the Asobu brewer's connecting element meet the structural and functional requirements of the "centerpiece connector" as described and claimed, particularly the "hourglass shape" or narrowing center portion recited in some dependent claims?
- Technical Questions: A key factual question will be whether the Asobu brewer's filter operates to "divide said filter interior volume from the remainder of said first container interior volume" in the manner required by claim 1 of the ’566 Patent. This raises the question of whether the claim requires a complete volumetric partition by a sealed, self-contained filter unit, or if a more general separation of grounds from liquid is sufficient. For the ’314 method patent, the question will be whether Defendant's instructions direct users to perform all of the claimed steps in the specified sequence.
V. Key Claim Terms for Construction
The Term: "centerpiece connector"
- Context and Importance: This term appears in the independent claims of all three asserted patents and is the central element that joins the brew and extract chambers. Its construction is critical because infringement will depend on whether the component connecting the chambers of the Accused Product meets the definition derived from the patents.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims define the term functionally as being "positioned between said first container and said second container" and forming "water impermeable" seals with each (’566 Patent, cl. 1). This language could support an interpretation covering any component that connects two chambers for invertible brewing.
- Evidence for a Narrower Interpretation: The specification repeatedly describes the apparatus as having an "hourglass shape," and specific embodiments show the centerpiece connector as two "conical members...connected at their vertices" which "narrows at said center portion" (’566 Patent, col. 8:56-61; col. 18:7-9; Fig. 10A). A defendant may argue these specific descriptions limit the term to structures that are visually and structurally similar to the hourglass design shown in the patent's figures.
The Term: "divides said filter interior volume from the remainder of said first container interior volume"
- Context and Importance: This phrase from claim 1 of the ’566 Patent describes the required relationship between the filter and the brew chamber. Its meaning is crucial for determining if the Asobu brewer's filter infringes, as it dictates how the filter must be structured and positioned.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: This could be argued to mean any configuration where the filter functionally separates the volume containing the coffee grounds from the volume where clean liquid resides, a common function of any coffee filter.
- Evidence for a Narrower Interpretation: The specification describes a filter that is a distinct component placed within the brew chamber to create a partition, with a hermetic seal formed between the filter rim and the chamber (’566 Patent, col. 4:34-40). This suggests a specific structural arrangement where the filter itself creates two separate sub-volumes within the larger brew chamber, a more limiting definition than simply filtering liquid.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendant induces infringement of all three patents by providing "encouragement and/or instructions" and "advertisements" that instruct and encourage customers to use the Accused Products in a manner that directly infringes the claims (Compl. ¶27-29, 42-44, 57-59).
- Willful Infringement: The complaint alleges willful infringement for all three patents. For the ’566 and ’314 patents, the allegation is based on pre-suit knowledge, claiming Defendant was on notice of its infringement "at least as early as April 8, 2022" (Compl. ¶16, 29, 44). For the ’952 patent, which issued after that date, the allegation is based on knowledge "at least as early as the filing of the Complaint" (Compl. ¶59).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of claim construction and scope: Can the term "centerpiece connector," described in preferred embodiments as creating an "hourglass shape," be interpreted broadly enough to read on the specific design of the Asobu brewer's connecting component, or will its scope be limited to the more specific structures depicted in the patent figures?
- A key evidentiary question will be one of structural and functional correspondence: Does the filter in the Accused Product create the specific spatial partition required by the claim language—"divid[ing] said filter interior volume from the remainder of said first container interior volume"—or does it perform a more conventional filtering function that falls outside this limitation?
- A significant question for damages will be willfulness: Can Plaintiff prove that Defendant had pre-suit knowledge of the ’566 and ’314 patents as of April 2022 and that its continued sales constituted objective recklessness, potentially justifying an award of enhanced damages?