Thousand Oaks Barrel Co., LLC v. The Partnerships, etc.

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 (Various domestic and foreign jurisdictions)
  • Plaintiff’s Counsel: WHITESTONE LAW PLLC
• Case Identification: 1:23-cv-01560, E.D. Va., 11/16/2023
• Venue Allegations: Venue is alleged to be proper based on Defendants targeting and conducting business with consumers in the Eastern District of Virginia, and for foreign-based defendants, on the basis that venue is proper in any judicial district where personal jurisdiction can be established.
• Core Dispute: Plaintiff alleges that Defendants’ cocktail smoker devices infringe two design patents and one utility patent related to devices for imparting smoked flavors to beverages and food.
• Technical Context: The technology relates to compact, top-of-glass devices that burn wood chips to generate smoke, which is then channeled directly into a cocktail or other beverage to infuse it with flavor.
• Key Procedural History: Plaintiff, Thousand Oaks Barrel Co., LLC, identifies itself as the exclusive licensee of the patents-in-suit with the right to enforce them. The complaint is filed against a schedule of currently unidentified "Doe" defendants who sell the accused products through online retail platforms.

Case Timeline

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. (Compl. ¶21).

The Invention Explained

• Problem Addressed: The patent's background describes prior art methods for smoking cocktails as being flawed. For instance, using a large glass box is cumbersome to clean and can deposit undesirable smoky residue on the outside of the drinking glass, while using a simple lit piece of wood cannot infuse smoke into a beverage that is already in a glass. (’256 Patent, col. 1:15-34).
• The Patented Solution: The invention is a compact device designed to rest on top of a drinking glass. It comprises an upper "fuel chamber portion" to hold combustible material (like wood chips) and a lower "conduit portion" that extends down from the chamber. When the fuel is ignited, the device's structure, particularly the channel within the conduit, is designed to facilitate a downward flow of smoke out through apertures in the conduit's wall and directly into the beverage below. (’256 Patent, Abstract; col. 6:58-62).
• Technical Importance: This approach allows for the direct infusion of smoke into a prepared beverage within its serving glass, aiming to overcome the cleaning and application limitations of prior devices. (’256 Patent, col. 1:35-46).

Key Claims at a Glance

• The complaint asserts independent claims 1, 9, and 10. (Compl. ¶25). Claim 1 is central to the infringement allegations.
• Independent Claim 1 recites:
  • a base having a fuel chamber portion at its upper end and a conduit portion at its lower end...the floor extending from the upper wall portion to an opening in the floor,
  • wherein the fuel chamber portion is oriented to hold fuel, and
  • wherein the conduit portion is disposed below the floor and comprises a channel through the conduit portion 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 infringement of claims 1-19, thus reserving the right to assert dependent claims. (Compl. ¶37).

U.S. Design Patent No. D944,594 - "Smoker Device"

• Patent Identification: U.S. Patent No. D944,594 S, "Smoker Device," issued March 1, 2022. (Compl. ¶19).

The Invention Explained

• Problem Addressed: Not applicable to a design patent.
• The Patented Solution: The patent protects the ornamental design for a smoker device as depicted in its figures. The design consists of a generally cylindrical, two-tiered body with a removable, flat-topped lid. The upper tier is wider than the lower tier, and the lower tier (the conduit) features a series of small, circular holes arranged in a horizontal band. The overall visual impression is that of a compact, functional object, often presented as being made of wood. (’D594 Patent, Figs. 1, 3, 5).
• Technical Importance: The patent protects the specific aesthetic and visual appearance of the smoker device, not its functional characteristics.

Key Claims at a Glance

• Design patents contain a single claim for the ornamental design as shown and described. (Compl. ¶23).

U.S. Patent No. D976,646 - "Smoker Device"

• Patent Identification: U.S. Patent No. D976,646 S, "Smoker Device," issued January 31, 2023. (Compl. ¶20).
• Technology Synopsis: This patent protects the ornamental design of a smoker device. Its claimed design is substantially similar to that of the ’D594 Patent but claims the device without the lid, which is depicted in broken lines to indicate it does not form part of the claimed design. (’D646 Patent, Fig. 5).
• Asserted Claims: Claim 1. (Compl. ¶24, 66).
• Accused Features: The overall ornamental appearance of the accused products is alleged to infringe the claimed design. (Compl. ¶34). The complaint provides a side-by-side visual comparison showing the base of an accused product next to Figure 5 of the patent. (Compl. p. 16).

III. The Accused Instrumentality

Product Identification

The "Accused Products" are various "Cocktail Smoker Kit" devices sold by numerous Doe Defendants on e-commerce platforms such as Amazon.com. The complaint identifies an exemplary product from "Defendant Doe#19 (ASIN B0BQBW54M7)." (Compl. ¶5, ¶32).

Functionality and Market Context

The accused products are sold as kits that include a "smoke infuser," a filter, wood chips, and other accessories. (Compl. p. 11, Figure). Functionally, they are designed to be placed on top of a glass, filled with wood chips that are then ignited, and capped to allow smoke to enter the drink. (Compl. p. 13, Figure). The complaint alleges that the accused devices are structurally similar to the patented invention, featuring a fuel chamber and a conduit to channel smoke into a glass. (Compl. ¶32, p. 12). The complaint characterizes the defendants' sales as having "flooded the online market." (Compl. ¶15).

IV. Analysis of Infringement Allegations

’256 Patent Infringement Allegations

The complaint provides annotated images of an accused product to map its features to the elements of Claim 1. (Compl. ¶32). One such annotated image shows an exploded view of the accused device, labeling its constituent parts such as the base, fuel chamber portion, and conduit portion. (Compl. p. 12, Figure).

’D594 Patent Infringement Allegations

Design patent infringement is assessed by comparing the patented ornamental design to the design of the accused article from the perspective of an "ordinary observer." The complaint alleges infringement by presenting a side-by-side comparison of the patented design and an accused product. (Compl. ¶33). A figure in the complaint juxtaposes an exploded view from the ’D594 Patent with a similar exploded view of the accused product. (Compl. p. 15, Figure). This visual alleges that the accused product misappropriates the patented design's overall visual impression, including its two-tiered cylindrical shape, the proportions between the upper and lower sections, and the flat-topped lid.

• Identified Points of Contention:
  • Scope Questions: For the ’256 patent, a central question may be the interpretation of "facilitates flow of smoke down-ward." Does this require a structure that actively and efficiently directs smoke, or is any structure that allows for some downward smoke movement sufficient? The patent's specification notes this downward flow is "unexpectedly" facilitated, which could suggest a specific, non-obvious mechanism is required. (’256 Patent, col. 6:58).
  • Technical Questions: For the design patents, the dispute will turn on the "ordinary observer" test. The question for the court will be whether the accused products are "substantially the same" in ornamental appearance as the patented designs, or if differences in specific proportions, curvatures, or surface details are sufficient to create a different overall visual impression.

V. Key Claim Terms for Construction

• The Term: "facilitates flow of smoke down-ward" (from '256 Patent, Claim 1)
• Context and Importance: This term is central to the functional aspect of the '256 patent's claims. The infringement analysis for the utility patent may depend heavily on whether the accused devices are found to perform this specific function. Practitioners may focus on this term because the patent emphasizes this "unexpectedly" downward flow as a key distinction from the natural tendency of smoke to rise. (’256 Patent, col. 6:58-59).
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party could argue that "facilitates" means to simply "make easier" or "assist." Under this view, any structure with a channel below the fuel source that allows smoke to exit downwards could be seen as facilitating downward flow. The specification's description of creating a "passageway" from the cavity to the channel could support this broader reading. (’256 Patent, col. 2:12-14).
  • Evidence for a Narrower Interpretation: A party could argue that "facilitates," particularly in light of the term "unexpectedly," implies an active, directed, and efficient mechanism, not merely an incidental drift of smoke. They might point to specific embodiments, such as a floor that "extends at a rising angle" (’256 Patent, col. 2:27-28), as being part of the structure required to achieve the claimed facilitation, thereby narrowing the term's scope to devices with similar structural features.

VI. Other Allegations

• Indirect Infringement: The complaint alleges that Defendants induce infringement of the '256 patent by providing instructions that lead customers to use the Accused Products in an infringing manner. (Compl. ¶74). This allegation is supported by visuals in the complaint titled "Product Use Procedure," which depict the steps of adding fuel, igniting it, and covering the device to infuse a drink with smoke. (Compl. p. 13-14, Figure).
• Willful Infringement: Willfulness is alleged based on Defendants' purported awareness of the Patents-in-Suit, supported by the allegation that Plaintiff marks its own products with the patent numbers, and Defendants' alleged refusal to cease their infringing activities. (Compl. ¶42, 46).

VII. Analyst’s Conclusion: Key Questions for the Case

• A core issue for the utility patent will be one of functional operation: does the accused smoker's structure actively "facilitate" a "down-ward" flow of smoke, as required by the '256 patent claims, or does it merely provide a container where smoke incidentally drifts down? The patent’s characterization of this function as "unexpectedly" achieved may heighten the evidentiary burden for the plaintiff.
• For the design patents, the central question will be the application of the ordinary observer test: are the accused products so visually similar to the patented designs that an ordinary observer would be deceived into thinking they are the same, or are there sufficient differences in proportion, curvature, and detail to distinguish them?
• A significant procedural issue stems from the complaint's targeting of anonymous "Doe" defendants. An early and critical phase of the litigation will likely focus on obtaining discovery from e-commerce platforms to identify the sellers, which will determine the practical scope and progression of the case.