DCT
2:18-cv-00282
Snowie v. Kona Ice
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Snowie, LLC., and Carl A. Rupp (Utah)
- Defendant: Kona Ice, Inc., Anthony Lamb, and Anthony M. Guard (Kentucky)
- Plaintiff’s Counsel: Kirton McConkie
- Case Identification: 2:18-cv-00282, D. Utah, 04/04/2018
- Venue Allegations: Venue is alleged to be proper in the District of Utah because a substantial part of the events giving rise to the claims, including the alleged collaboration and development of the disputed technology, occurred there.
- Core Dispute: Plaintiffs allege that Defendants improperly filed for and obtained patents on technology co-invented by Plaintiff Rupp and are now threatening to sue Plaintiffs for infringing those same patents.
- Technical Context: The technology concerns self-serve, vehicle-integrated liquid dispensing systems, primarily used for applying flavorings to shaved-ice confections sold from mobile trucks.
- Key Procedural History: The complaint details an alleged 2007 collaboration between Plaintiff Rupp and Defendant Lamb to develop a "Flavor Station" for Defendants' "Kona Ice Truck." Plaintiffs allege that Defendants subsequently filed for patents on the resulting technology without naming Rupp as a co-inventor and have since threatened Plaintiffs with infringement litigation. The primary relief sought is a correction of inventorship under 35 U.S.C. § 256.
Case Timeline
| Date | Event |
|---|---|
| 1997-07-16 | Priority Date (’136 & ’407 Patents) |
| 2005-01-01 | Snowie begins designing the "Snowie Bus" with integrated Flavor Station |
| 2007-04-01 | Defendant Lamb allegedly approaches Plaintiff Rupp to collaborate on a Flavor Station |
| 2007-07-16 | Provisional patent application 60/959,588 filed by Defendants Lamb and Guard |
| 2008-07-11 | Utility patent application 12/171,930 (leading to '136 Patent) filed |
| 2008-11-14 | '136 Patent assigned to Defendant Kona Ice, Inc. |
| 2012-04-05 | Divisional application 13/439,923 (leading to '407 Patent) filed |
| 2012-04-17 | U.S. Patent No. 8,157,136 issues |
| 2014-12-23 | U.S. Patent No. 8,915,407 issues |
| 2018-04-04 | Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,157,136 - "Mobile Confectionary Apparatus with Protectible Dispensing System," Issued April 17, 2012
- The Invention Explained:
- Problem Addressed: Traditional mobile concession stands, like shaved-ice trucks, create service bottlenecks when employees must manually apply flavorings for each customer (Compl. ¶14). This slows down sales and requires more labor.
- The Patented Solution: The invention is a mobile vehicle (e.g., a truck) equipped with an external, self-service liquid dispensing system that allows customers to apply their own toppings or flavors after purchase ('136 Patent, Abstract). The system includes multiple dispensers, a drip tray, and, crucially, a mechanism allowing an operator inside the vehicle to move the entire system between an open, customer-accessible position and a closed, protected position for travel, cleaning, or to prevent access ('136 Patent, col. 2:30-41; col. 6:3-25).
- Technical Importance: This design aims to increase sales volume and customer satisfaction by shifting the time-consuming flavoring process to the customer, while also providing a practical way to secure the dispensing equipment for transit ('136 Patent, col. 2:51-59).
- Key Claims at a Glance:
- The complaint does not specify which claims will be the subject of the inventorship dispute, but alleges contributions to the "claimed inventions or key inventive elements" (Compl. ¶35). Independent claim 1 is representative.
- Independent Claim 1:
- A mobile confectionary apparatus, comprising a mobile vehicle with an interior space and a first opening for transactions.
- A liquid dispensing system supported by the side wall, comprising a plurality of liquid dispensers operable by a person outside the vehicle.
- Each dispenser is connected by a liquid line to a reservoir carried on the vehicle.
- A tray is positioned beneath the dispensers to catch dropped liquid and direct it to a waste container.
- The system is configurable between a dispensing mode and a closed mode covered by a cover member.
- The configuration between modes is controlled by a person located within the interior space.
U.S. Patent No. 8,915,407 - "Mobile Confectionary Apparatus with Protectible Dispensing System," Issued December 23, 2014
- The Invention Explained:
- Problem Addressed: As with the parent '136 patent, this invention addresses the inefficiency of employee-dispensed flavorings at mobile concession stands ('407 Patent, col. 2:51-59). It also addresses the need for a practical, vehicle-mounted system.
- The Patented Solution: This divisional patent focuses on a specific embodiment of the self-serve station. The core inventive concept is a liquid toppings dispensing system that is "configured to removably hang on an upstanding external side of the mobile vehicle" ('407 Patent, Claim 1). This allows the entire self-serve station to be attached to or detached from the vehicle's exterior, as opposed to being permanently integrated or pivoting from within a recess ('407 Patent, Fig. 11).
- Technical Importance: A hang-on, removable system offers modularity and potentially simpler installation compared to systems that require cutting into the vehicle's side wall or complex pivot mechanisms ('407 Patent, col. 8:15-24).
- Key Claims at a Glance:
- The complaint does not specify claims but alleges Rupp conceived of a "Flavor Station designed to removably hang on the side of a vehicle" (Compl. ¶34). Independent claim 1 is representative.
- Independent Claim 1:
- A mobile confectionary apparatus, comprising a mobile vehicle, an opening, and a liquid reservoir inside.
- A liquid toppings dispensing system comprising a backsplash and a plurality of topping dispensers.
- The system is configured to "removably hang on an upstanding external side of the mobile vehicle."
- The system is "engageably positionable on the external side of the mobile vehicle and entirely disengageable therefrom."
- The backsplash confronts the external side of the vehicle when hung thereon.
III. The Accused Instrumentality
- Product Identification: The "Snowie Bus," a mobile shaved-ice retail automobile developed and sold by Plaintiff Snowie (Compl. ¶21). The complaint also references a prototype "designed to removably hang on the side of the Snowie Bus" (Compl. ¶25).
- Functionality and Market Context:
- The complaint alleges that between 2005 and 2006, Plaintiff Rupp developed the Snowie Bus with an integrated, customer-accessible "Flavor Station" (Compl. ¶21). This system was designed to solve the same service bottleneck problems described in the patents-in-suit (Compl. ¶¶ 14-16).
- The functionality described includes a station integrated into the vehicle that is operable between an open and closed configuration, as well as a version designed to "removably hang on the side of the Snowie Bus" (Compl. ¶¶ 21, 34). These features directly mirror the claimed inventions of the patents-in-suit.
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint does not make direct infringement allegations but asserts that Defendants have threatened to sue Snowie for infringement (Compl. ¶36). The analysis below summarizes the implied infringement theory, mapping the complaint's description of Plaintiff's technology (which Plaintiff alleges to have invented) onto the elements of Defendants' patent claims.
’136 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality (Snowie Bus) | Complaint Citation | Patent Citation |
|---|---|---|---|
| A mobile confectionary apparatus, comprising: a mobile vehicle including at least one upstanding side wall; an interior space... | The "Snowie Bus" is described as a "mobile shaved-ice retail automobile" with an interior for an employee. | ¶21 | col. 4:50-55 |
| a liquid dispensing system supported by the side wall and being configurable in a dispensing mode, wherein the liquid dispensing system comprises: a plurality of liquid dispensers... | The Snowie Bus includes an "integrated Flavor Station" with dispensing spigots accessible from outside the bus. | ¶¶ 21-22 | col. 5:23-28 |
| each of the plurality of liquid dispensers being connected by at least one liquid line to a reservoir carried on the mobile vehicle... | The Flavor Stations were comprised of jugs/containers for flavoring located within the bus, with liquid connections to the spigots. | ¶22 | col. 5:52-59 |
| a tray positioned beneath... and configured for catching liquid dropped... and directing the dropped liquid to a waste container... | The integrated Flavor Station included "a drip area beneath the spigots for catching waste or overflow flavoring, a waste collection container located within the Snowie Bus..." | ¶22 | col. 8:46-51 |
| the liquid dispensing system being further configurable in a closed mode covered by a cover member... by a person located within the interior space. | The complaint alleges conception of a Flavor Station "operable between an open and closed configuration by means of a sliding door operated from within the Snowie Bus by an employee..." | ¶21 | col. 6:11-25 |
- Identified Points of Contention:
- Contribution Question: The central dispute is not one of technical mismatch, but of inventorship. The core question for the court will be what evidence demonstrates that Plaintiff Rupp conceived of or contributed to the conception of the specific combination of elements recited in Claim 1 before the Defendants filed for the patent (Compl. ¶¶ 29-30, 34).
- Collaboration Question: The complaint alleges a collaboration in the "design and development" of a "pivotable" flavor station (Compl. ¶27). The court may need to determine whether this collaboration rises to the level of joint invention for the claimed subject matter.
’407 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality (Snowie Bus Prototype) | Complaint Citation | Patent Citation |
|---|---|---|---|
| A mobile confectionary apparatus, comprising: a mobile vehicle... | The "Snowie Bus" is a "mobile shaved-ice retail automobile." | ¶21 | col. 2:14-16 |
| a liquid toppings dispensing system comprising a backsplash and a plurality of topping dispensers... | Plaintiff Rupp allegedly conceived of a "Flavor Station" prototype. | ¶25 | col. 8:41-47 |
| wherein the liquid toppings dispensing system is configured to removably hang on an upstanding external side of the mobile vehicle... | The complaint explicitly states Rupp conceived of and prototyped "a Flavor Station designed to removably hang on the side of the Snowie Bus." | ¶¶ 21, 34 | col. 8:15-24 |
| so that the liquid toppings dispensing system is engageably positionable on the external side of the mobile vehicle and entirely disengageable therefrom... | The description of a system designed to "removably hang" implies it is both positionable and disengageable. | ¶21 | col. 8:15-24 |
- Identified Points of Contention:
- Conception vs. Demonstration: The complaint alleges Rupp demonstrated a prototype of a "removably hang on" station to Defendant Lamb (Compl. ¶25). A key question will be whether this demonstration, and the underlying conception, predated the patent's priority date and included all elements of the claimed invention.
- Scope Question: A factual question may arise as to whether the specific design conceived by Rupp meets all limitations of the claim, such as the "backsplash confronting the external side of the mobile vehicle when hung thereon."
V. Key Claim Terms for Construction
Term: "configurable between the dispensing mode and the closed mode by a person located within the interior space" ('136 Patent, Claim 1)
- Context and Importance: This limitation is central to the practicality of the invention. The complaint alleges Rupp conceived of a version operable via a "sliding door operated from within the Snowie Bus" and collaborated on a "pivotable design operable from within the vehicle" (Compl. ¶¶ 21, 27, 34). Proving conception of this specific functionality will be critical to Plaintiff's inventorship claim.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language is functional and does not specify a mechanism (e.g., pivot, slide). The specification discloses multiple embodiments, including a pivoting structure (Fig. 4), a sliding cover (Fig. 6), and a drawer (Fig. 8), suggesting the term is not limited to any single one ('136 Patent, col. 6:3-10, col. 7:29-34, col. 7:40-44).
- Evidence for a Narrower Interpretation: A party could argue the most prominently described embodiment is the L-shaped pivoting structure, potentially limiting the term's scope to similar hinged or rotating mechanisms ('136 Patent, col. 6:3-25, Figs. 2-4A).
Term: "configured to removably hang on an upstanding external side of the mobile vehicle" ('407 Patent, Claim 1)
- Context and Importance: This is the core distinguishing feature of the '407 patent. The complaint explicitly alleges that Rupp conceived of "a Flavor Station designed to removably hang on the side of a vehicle" (Compl. ¶34). The interpretation of this term is directly tied to whether Rupp's alleged contribution maps onto the patent claim.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term "hang" is not explicitly defined and could be argued to cover any method of temporary, non-permanent attachment to the vehicle's side. The specification refers to "cooperatively engageable hanger brackets" as one example, not necessarily the only one ('407 Patent, col. 8:19-20).
- Evidence for a Narrower Interpretation: Figure 11 of the patent shows a specific embodiment with hook-like brackets (106, 108). A party might argue the term should be construed in light of this specific disclosure, requiring a gravity-assisted hanging mechanism rather than, for example, a system that bolts on temporarily.
VI. Other Allegations
- Correction of Inventorship (35 U.S.C. § 256): The primary cause of action seeks to have Plaintiff Carl A. Rupp named as a co-inventor on both the '136 and '407 patents. The complaint alleges that Rupp conceived of key inventive elements independently prior to April 2007 and also jointly conceived of innovations with Defendant Lamb between April and June 2007 (Compl. ¶¶ 29, 34). It is alleged that Defendants filed the patent applications, either through "innocent omission or oversight," without naming Rupp, thereby violating 35 U.S.C. §§ 115 and 116 (Compl. ¶¶ 30, 40).
- Business Torts and Contract Claims: The complaint includes several additional counts related to the central inventorship dispute. These include tortious interference, based on Defendants' alleged threats to sue Snowie and its customers for infringement (Compl. ¶¶ 50-52); unjust enrichment, for patenting and benefiting from Rupp's concepts (Compl. ¶57); and breach of an alleged oral contract for Snowie to exclusively manufacture the Flavor Stations for Kona (Compl. ¶¶ 62, 66).
VII. Analyst’s Conclusion: Key Questions for the Case
This case is not a standard patent infringement suit, but a dispute over ownership and inventorship, with infringement threats serving as the catalyst. The central questions for the court will likely be:
A core issue will be one of evidentiary proof of conception: What corroborating evidence can Plaintiffs provide to demonstrate that Carl Rupp conceived of the specific elements of the claimed inventions—such as the internally-operable closed mode or the "removably hang on" design—prior to the patents' July 2007 priority date?
A second key issue will be the nature of the collaboration: Does the evidence surrounding the interactions between Rupp and Lamb in 2007 establish joint invention, where both made a material contribution to the conception of the claimed subject matter, or does it show that Defendants derived the invention from Rupp's disclosures?
Finally, the case may turn on a question of claim scope versus contribution: Even if Rupp is found to have contributed inventive concepts, the court will need to determine if those contributions are reflected in the specific language and scope of the patent claims for which he seeks to be named a co-inventor.