1:23-cv-01560
Thousand Oaks Barrel Co LLC v. Partnerships
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Thousand Oaks Barrel Co., LLC (Virginia)
- Defendant: The Partnerships, Companies, and Unincorporated Associations Identified on Schedule A (Domestic and Foreign Jurisdictions)
- Plaintiff’s Counsel: Whitestone Law PLLC
- Case Identification: 1:23-cv-01560, E.D. Va., 11/16/2023
- Venue Allegations: Plaintiff alleges venue is proper because Defendants target business activities toward consumers in Virginia, have committed acts of infringement in the district, and have shipped accused products to addresses in Virginia via e-commerce platforms.
- Core Dispute: Plaintiff alleges that Defendants’ cocktail smoker kits infringe one utility patent and two design patents related to devices for imparting smoke flavor to beverages and foodstuffs.
- Technical Context: The technology relates to compact devices used in mixology and culinary arts to infuse smoke from combustible materials like wood chips directly into an individual beverage or food item.
- Key Procedural History: Plaintiff Thousand Oaks Barrel Co. is the exclusive licensee of the patents-in-suit with the right to enforce them. The patents are owned by Soak Limited of Great Britain. U.S. Design Patent No. D976,646 is a continuation of the application that matured into U.S. Design Patent No. D944,594.
Case Timeline
| Date | Event |
|---|---|
| 2020-11-20 | Priority Date for '256, 'D594, and 'D646 Patents (Application Filing) |
| ~2020-11 | Plaintiff's first sale of its "Foghat" product |
| 2022-03-01 | U.S. Design Patent No. D944,594 Issued |
| 2023-01-31 | U.S. Design Patent No. D976,646 Issued |
| 2023-09-05 | U.S. Patent No. 11,744,256 Issued |
| 2023-11-16 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,744,256 - Device and method for Imparting Smoked Flavors to Beverages and Foodstuffs
- Patent Identification: U.S. Patent No. 11,744,256, "Device and method for Imparting Smoked Flavors to Beverages and Foodstuffs," issued September 5, 2023.
The Invention Explained
- Problem Addressed: The patent describes prior art methods for smoking cocktails as either cumbersome, such as using a large glass box that requires extensive cleaning, or ineffective, such as smoking an empty glass before pouring in the beverage, which does not allow for direct flavor infusion ('256 Patent, col. 1:14-37).
- The Patented Solution: The invention is a compact, self-contained device designed to sit atop a drinking glass. It comprises a base with an upper "fuel chamber portion" to hold wood chips and a lower "conduit portion" that extends down from the chamber's floor ('256 Patent, col. 3:17-24). The key feature is that when the fuel is ignited, the device's structure "unexpectedly facilitate[s] smoke to flow downward" from the fuel chamber, through a channel in the conduit, and out of apertures into the beverage below ('256 Patent, col. 5:56-62; Fig. 7).
- Technical Importance: This design enables the direct infusion of smoke into a filled beverage glass using a simple, portable device, avoiding the need for separate, large smoking chambers.
Key Claims at a Glance
- The complaint asserts infringement of claims 1-19, with claims 1, 9, and 10 being independent (Compl. ¶25, 73).
- Independent Claim 1 requires:
- A base with a fuel chamber portion at its upper end and a conduit portion at its lower end.
- The fuel chamber portion includes an upper wall and a floor with an opening.
- The fuel chamber portion is oriented to hold fuel.
- The conduit portion is below the floor and has a channel through it.
- When fuel is ignited, the channel facilitates a downward flow of smoke from the fuel chamber through at least one aperture in the wall of the conduit portion.
U.S. Design Patent No. D944,594 - Smoker Device
- Patent Identification: U.S. Design Patent No. D944,594, "Smoker Device," issued March 1, 2022.
The Invention Explained
- Problem Addressed: The patent addresses the need for a new, original, and ornamental design for a smoker device ('D594 Patent, Claim).
- The Patented Solution: The patent protects the specific visual appearance of a smoker device. Key ornamental features include a two-part construction with a removable flat-topped lid and a base. The base has a wider upper section that tapers down to a narrower, cylindrical lower section. The lower section features a series of small, circular apertures arranged horizontally ('D594 Patent, Figs. 1, 3, 5).
- Technical Importance: The design provides a distinct aesthetic for a cocktail smoker.
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a smoker device, as shown and described" (Compl. ¶23; 'D594 Patent, Claim).
U.S. Design Patent No. D976,646 - Smoker Device
- Patent Identification: U.S. Design Patent No. D976,646, "Smoker Device," issued January 31, 2023.
- Technology Synopsis: This patent protects an ornamental design for a smoker device that is visually very similar to the design in the 'D594 patent. The 'D646 Patent is a continuation of the application for the 'D594 Patent and claims the ornamental design for a device with a two-part body comprising a base and a lid ('D646 Patent, Related U.S. Application Data; Compl. ¶24).
- Asserted Claims: Claim 1 (Compl. ¶66).
- Accused Features: The complaint alleges that the overall ornamental appearance of the Accused Products infringes the claimed design (Compl. ¶34, 66).
III. The Accused Instrumentality
Product Identification
The complaint identifies the accused instrumentalities as "various smoker devices for imparting smoked flavors to cocktail beverages and foods," sold by numerous Doe defendants (Compl. ¶26). An exemplary product, "Cocktail Smoker Kit with Torch... (ASIN B0BQBW54M7)" from "Defendant Doe#19," is detailed (Compl. ¶32).
Functionality and Market Context
The accused product is a kit that includes a smoker device (a wooden base with a metal mesh filter), a torch, and wood chips (Compl. p. 11). Product images and instructions show a user placing the device on a glass, adding wood chips to the device's chamber, igniting the chips with the torch, and covering the chamber to direct smoke into the glass (Compl. pp. 13-14). The complaint alleges that these products are sold on e-commerce platforms like Amazon.com and have "flooded the online market" (Compl. ¶4, 15). The complaint provides an annotated image of the accused product's use, showing the steps of placing it on a glass, adding and burning chips, and letting smoke sink into the drink (Compl. p. 13, "Product Use Procedure").
IV. Analysis of Infringement Allegations
'256 Patent Infringement Allegations
The complaint provides a visual breakdown that maps elements of claim 1 to an exemplary accused product (Compl. ¶32, pp. 12-14).
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A device for imparting smoked flavors to beverages and foodstuffs, comprising: a base having a fuel chamber portion at its upper end and a conduit portion at its lower end... | The accused product is a cocktail smoker kit, alleged to be a device for this purpose. An annotated image identifies a "base" with a "fuel chamber portion" and a "conduit portion." | ¶32, pp. 11-12 | col. 3:17-21 |
| ...the fuel chamber portion comprising an upper wall portion defining a perimeter edge of the fuel chamber portion and a floor defining a bottom end, the floor extending from the upper wall portion to an opening in the floor, | An annotated image of the accused product points out the "upper wall portion defining a perimeter edge" and "a floor defining a bottom end" that extends to an opening. | ¶32, p. 12 | col. 3:21-24 |
| wherein the fuel chamber portion is oriented to hold fuel, | Marketing images show the accused product's fuel chamber holding wood chips, which are provided in the kit for use as fuel. | ¶32, p. 13 | col. 3:24-26 |
| and wherein the conduit portion is disposed below the floor and comprises a channel through the conduit portion... | The complaint alleges the accused product has a "conduit portion" below the floor that comprises a channel. An image in the "Product Use Procedure" shows the conduit portion extending into a glass. | ¶32, p. 14 | col. 4:1-3 |
| ...so that, when the fuel in the fuel chamber portion is ignited, the channel facilitates flow of smoke down-ward from the fuel chamber portion through at least one aperture that extends from the channel space through a wall of the conduit portion. | The complaint alleges that when the fuel is ignited, the product's design facilitates downward smoke flow through an aperture. An instructional image shows smoke sinking into a glass from the device. | ¶32, p. 14 | col. 5:56-62 |
'D594 Patent Infringement Allegations
The complaint does not use a claim chart for the design patent. The infringement allegation rests on the "ordinary observer" test, which asks whether an ordinary observer, familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented design. To support this, the complaint provides a direct visual comparison between Figure 5 of the 'D594 Patent and the "Doe #19 Accused Product" (Compl. ¶33, p. 15). This side-by-side image shows the accused product and the patented design both having a similar overall configuration, including a lipped, cylindrical base with a flared upper portion and a narrower lower portion (Compl. p. 15).
- Identified Points of Contention:
- Scope Questions: A central question for the '256 Patent will be the construction of its structural and functional terms. For example, does the structure of the accused device, which appears to be made of wood with a separate metal filter insert, meet the claim limitation of a "base" with a "floor"?
- Technical Questions: A key evidentiary question for the '256 Patent will be whether the accused product's design functionally "facilitates [a] flow of smoke down-ward" as claimed. The complaint relies on marketing imagery to support this, but the actual fluid dynamics may become a point of dispute. For the design patents, the dispute will turn on whether the visual differences between the accused products and the patent drawings are significant enough to avoid confusing an ordinary observer.
V. Key Claim Terms for Construction
For the '256 Patent, the construction of the following terms from claim 1 may be central to the dispute:
The Term: "flow of smoke down-ward"
- Context and Importance: This functional limitation appears to be the primary distinction from the prior art described in the patent, which involved smoke filling a chamber. Infringement requires proving that the accused device operates in this specific manner. Practitioners may focus on this term because the allegation relies heavily on marketing photos, and the defendant may argue the actual operation is different (e.g., smoke primarily fills the upper chamber and diffuses downward, rather than being actively channeled).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself does not specify a rate, velocity, or mechanism of the downward flow, which may support a broader reading that covers any general downward movement of smoke.
- Evidence for a Narrower Interpretation: The specification describes this downward flow as an "unexpectedly" facilitated result of the device's design ('256 Patent, col. 5:56-58). It also suggests specific features that can "enhance the flow of smoke," such as a "rising angle for aperture 114 channels" ('256 Patent, col. 5:15-17), which could be used to argue for a narrower construction tied to these specific structural contributors.
The Term: "a base"
- Context and Importance: The accused product appears to consist of a wooden body and a separate, removable metal mesh filter that holds the fuel. A dispute may arise over whether this composite structure constitutes "a base" with a "floor" as a single integrated component, or whether the metal filter is a separate component not encompassed by the claim.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent states the device can be made of "wood, resin, plastic, metal, stone, clay, or any material" ('256 Patent, col. 3:12-14) and does not explicitly forbid multi-part or multi-material construction.
- Evidence for a Narrower Interpretation: The patent figures, such as the cross-section in Fig. 5B, depict the base, floor, and conduit portion as a single, contiguous piece ('256 Patent, Fig. 5B). This could support an argument that the claims are limited to a unitary construction.
VI. Other Allegations
- Indirect Infringement: The complaint alleges active inducement of infringement of the '256 Patent. The factual basis is the allegation that Defendants provide the accused products with instructions for use that direct customers to perform the infringing method of imparting smoked flavors (Compl. ¶74). These instructions are depicted in the "Product Use Procedure" images (Compl. pp. 13-14).
- Willful Infringement: Willfulness is alleged for all three patents. The complaint asserts this is based on Defendants' continued infringement after "they became aware of the Patents-in-Suit" (Compl. ¶46). It also alleges that Plaintiff's own products are marked with the patent numbers, which may be used to argue Defendants had pre-suit knowledge (Compl. ¶42).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this case will likely depend on the court’s determination of several key questions:
A core issue will be one of claim scope for the utility patent: Can the structural elements of the '256 Patent, such as "a base" and "a floor," be construed to read on the accused products' multi-part construction of a wooden body and a separate metal filter? Furthermore, what level of evidence is required to prove the functional limitation of a "flow of smoke down-ward"?
A second central question will be the application of the ordinary observer test for the design patents: Are the accused products, often sold as part of a kit with other items, so visually similar in their overall ornamental appearance to the 'D594 and 'D646 patents that they would deceive an ordinary observer, or are the differences in detail, material, and finish sufficient to create a distinct visual impression?
A key evidentiary question will be one of inducement: Do the instructional materials and marketing images provided with the accused products, such as those depicted in the complaint, actively encourage and instruct users to operate the devices in a manner that directly infringes the claims of the '256 Patent?