1:23-cv-00086
Hydrojug Inc v. BSM Enterprises Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Hydrojug, Inc. (Delaware)
- Defendant: BSM Enterprise, Ltd. (China) and Five Below, Inc. (Pennsylvania)
- Plaintiff’s Counsel: PROJECT CIP PLLC
- Case Identification: 1:23-cv-00086, D. Utah, 08/01/2023
- Venue Allegations: Venue is based on Five Below’s established places of business and sales within the District of Utah, and on BSM Enterprise’s status as a foreign defendant.
- Core Dispute: Plaintiff alleges that Defendants’ “GYM GROWLER” branded water bottle sleeves infringe its U.S. design patent covering the ornamental appearance of a container sleeve.
- Technical Context: The dispute centers on the ornamental design of accessories for large-capacity water bottles, a product category within the consumer fitness and hydration market.
- Key Procedural History: The complaint notes prior litigation between Hydrojug and Five Below in the Northern District of Ohio. This earlier case, which resulted in a preliminary injunction against Five Below concerning a different product (a water bottle), is alleged to have put Five Below on notice of Hydrojug’s patent portfolio before the allegedly infringing activities in the current case began.
Case Timeline
| Date | Event |
|---|---|
| 2016-01-01 | Hydrojug began selling its signature half-gallon water bottles. |
| 2019-02-19 | U.S. Patent No. D889,914 Priority Date (Application Filing). |
| 2020-07-14 | U.S. Patent No. D889,914 Issue Date. |
| Mid-2022 | Five Below allegedly became aware of Hydrojug's patents via prior litigation. |
| Post Mid-2022 | Defendants allegedly began offering the Accused Products for sale. |
| 2023-08-01 | Complaint Filing Date. |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D889,914 - "CONTAINER SLEEVE"
The Invention Explained
- Problem Addressed: Design patents do not address technical problems; they protect the novel, non-obvious, ornamental appearance of an article of manufacture. The goal is to protect a product's unique aesthetic look from being copied.
- The Patented Solution: The ’914 Patent claims the specific ornamental design for a container sleeve as depicted in its seven figures (’914 Patent, CLAIM). The claimed design consists of the visual characteristics of the sleeve shown in solid lines, including its overall cylindrical shape, the arrangement of various pockets, and the distinctive shape and placement of several apertures on its surface (’914 Patent, FIGs. 1-5). The patent explicitly disclaims certain features, such as the carrying strap and the stitching, by rendering them in dashed and dash-dot-dot lines, respectively, indicating they do not form part of the protected design (’914 Patent, DESCRIPTION).
- Technical Importance: The complaint suggests that unique product designs, protected by patents, are a key part of Hydrojug's strategy to distinguish its products in the market for hydration accessories (Compl. ¶¶10-11).
Key Claims at a Glance
- The sole claim of the ’914 Patent is for "The ornamental design for a container sleeve, as shown and described" (’914 Patent, CLAIM).
- In design patent litigation, the analysis focuses not on discrete claim elements, but on the overall visual appearance of the claimed design as a whole. The key visual features that create the overall appearance of the ’914 Patent design include:
- A perspective view showing a combination of a side pocket and a large, rounded-rectangular aperture (FIG. 1).
- A side view showing a vertically divided external pocket (FIG. 2).
- An opposing side view showing a single, vertically-oriented oval aperture (FIG. 3).
- A rear view showing two vertically-oriented oval apertures side-by-side (FIG. 5).
III. The Accused Instrumentality
Product Identification
The accused products are “GYM GROWLER-branded water bottle sleeves” sold in Five Below stores (Compl. ¶13).
Functionality and Market Context
The complaint alleges the Accused Products are designed to fit Hydrojug’s water bottles and are “very highly similar and/or identical in design” to the sleeve claimed in the ’914 Patent (Compl. ¶14). The complaint presents several photographs of the Accused Product, which depict a fabric sleeve with multiple pockets and apertures, designed to hold a large water jug (Compl. pp. 4-6). The complaint includes a photograph showing the Accused Product's packaging, which describes it as an "insulated carrier" with "integrated stash pockets" (Compl. p. 6).
IV. Analysis of Infringement Allegations
The standard for design patent infringement is whether, in the eye of an ordinary observer, the accused design is substantially the same as the claimed design, such that the observer would be deceived into purchasing the accused product believing it to be the patented one. The complaint alleges this standard is met (Compl. ¶¶15, 19). The core allegations are presented through side-by-side visual comparisons.
A key comparison provided shows Figure 1 of the patent next to a perspective photograph of the accused sleeve, highlighting their alleged similarity in overall form and feature placement (Compl. p. 4). Another comparison juxtaposes the patent's Figure 2, showing a divided pocket, with a photo of the accused product's pocketed side (Compl. p. 5). A third comparison shows the patent's Figure 5, with its distinctive dual-aperture design, alongside a photograph of the corresponding side of the accused sleeve (Compl. p. 6).
Because a design patent has a single claim to the overall visual appearance, a traditional claim chart is not applicable. The following table summarizes the alleged visual correspondence between the patented design and the accused product based on the complaint's visual evidence.
| Claimed Ornamental Feature (from '914 Patent) | Alleged Infringing Feature (from Accused Product Photos) | Complaint Citation |
|---|---|---|
| The overall visual impression of a cylindrical sleeve with a specific arrangement of pockets and apertures, as shown in perspective view (FIG. 1). | A cylindrical sleeve with a similar overall form factor, including a side pocket and a large, rounded-rectangular aperture in similar positions. | ¶14; p. 4 |
| The appearance of a side of the sleeve featuring a large external pocket with a vertical divider (FIG. 2). | A side of the sleeve featuring a large mesh external pocket that appears to have a vertical division. | ¶14; p. 5 |
| The appearance of a side of the sleeve featuring a single, vertically oriented oval-shaped aperture (FIG. 3). | A side of the sleeve featuring a single, vertically oriented oval-shaped aperture with a dark border. | ¶14; p. 5 |
| The appearance of a side of the sleeve featuring two adjacent, vertically oriented oval-shaped apertures (FIG. 5). | A side of the sleeve featuring two adjacent, vertically oriented oval-shaped apertures with dark borders. | ¶14; p. 6 |
- Identified Points of Contention:
- Scope Questions: The central question will be whether the overall visual appearance of the Accused Product is “substantially the same” as the claimed design. The analysis will focus on the combination of features in solid lines in the patent drawings, while ignoring the disclaimed strap and stitching.
- Technical Questions: A factual question for the finder of fact will be whether minor differences in proportion, material texture (e.g., mesh pocket vs. solid pocket implied in line drawing), or the appearance of borders around the apertures are sufficient to differentiate the designs in the mind of an ordinary observer, or if they are trivial details that do not alter the substantially similar overall impression.
V. Key Claim Terms for Construction
Formal claim construction of written terms is typically not a central issue in design patent litigation, as the single claim refers to the design "as shown and described." The primary scope-defining exercise involves determining what visual features are part of the claimed design versus what is disclaimed.
- The Term: The scope of "the ornamental design... as shown."
- Context and Importance: The scope is defined by the drawings. Practitioners will focus on the distinction between the solid and dashed lines, as this determines what is and is not protected. The interpretation of this scope is critical because the infringement analysis compares the accused product only to the elements shown in solid lines.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent claims the overall design configuration. An argument could be made that the design is not limited to an exact, rigid set of proportions but covers the general aesthetic combination and arrangement of the depicted features.
- Evidence for a Narrower Interpretation: The patent’s description explicitly states: "The dashed lines depict portions of the container sleeve that form no part of the claimed design. The dash dot dot lines depict stitching of the container sleeve that forms no part of the claimed design" (’914 Patent, DESCRIPTION). This language unambiguously limits the scope of protection by carving out the strap and stitching, meaning these specific features cannot serve as a basis for an infringement finding.
VI. Other Allegations
- Willful Infringement: The complaint alleges that Defendants have willfully infringed the ’914 Patent (Compl. ¶23). This allegation is supported by the assertion that Defendants had pre-suit knowledge of Hydrojug’s patents from at least mid-2022, arising from prior litigation between Hydrojug and Five Below (Compl. ¶¶12, 16). The complaint alleges that the infringing sales began after this notice was established (Compl. ¶13).
VII. Analyst’s Conclusion: Key Questions for the Case
A core issue will be one of visual comparison: Applying the "ordinary observer" test, is the overall ornamental design of the accused "GYM GROWLER" sleeve substantially the same as the design claimed in the '914 Patent, considering the totality of the visual features shown in the patent's solid lines? The case may turn on whether any subtle differences in the products are sufficient to avoid deceiving the ordinary observer.
A key question for damages will be willfulness: Can Hydrojug establish that the prior litigation provided Five Below with knowledge of the specific '914 design patent, and not just general knowledge of Hydrojug's brand or other patents? The answer will be central to the claim for enhanced damages under 35 U.S.C. § 284.