DCT

3:23-cv-00714

TC Heartland LLC v. DreamPak LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:23-cv-00714, E.D. Va., 10/27/2023
  • Venue Allegations: Venue is asserted on the basis that Defendant Dreampak, LLC is domiciled and resides in the Eastern District of Virginia.
  • Core Dispute: Plaintiff alleges that Defendant’s liquid water enhancer bottles infringe a design patent covering the ornamental appearance of Plaintiff's own bottle and cap.
  • Technical Context: The case concerns the market for liquid water enhancers (LWE), a consumer product category where bottle shape and overall design are significant factors in brand identity and consumer recognition.
  • Key Procedural History: The complaint notes a prior patent infringement lawsuit between the parties in the same court (Soluble Technologies Group, LLC et al. v. Dreampak, LLC, 3:21-cv-328), which involved a utility patent related to liquid water enhancement products.

Case Timeline

Date Event
2011-11-30 '902 Patent Priority Date
2017-01-01 Plaintiff began supplying its 92 ml bottles to Walmart
2021-10-12 U.S. Patent No. D932,902 Issues
2023-10-27 Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. D932,902 - "BOTTLE WITH CAP", issued October 12, 2021

The Invention Explained

  • Problem Addressed: Design patents do not address a technical problem in the manner of utility patents. Instead, they protect a new, original, and ornamental design for an article of manufacture (Compl. ¶1). The objective is to create a unique visual appearance that distinguishes a product from others in the marketplace.
  • The Patented Solution: The patent claims the specific ornamental design for a "bottle with cap," as depicted in its seven figures ('902 Patent, Claim; DESCRIPTION). The claimed design, shown in solid lines, features a generally rectangular bottle body with rounded corners, a distinct indented grip area on the side profiles, and a cap with a specific shape. The broken lines shown in the drawings illustrate portions of the bottle and cap that do not form part of the claimed design ('902 Patent, DESCRIPTION).
  • Technical Importance: In the consumer goods sector for products like liquid water enhancers, a distinctive bottle design serves as a key source identifier and a component of brand identity, separating one company's product from its competitors on a retail shelf (Compl. ¶¶10, 17).

Key Claims at a Glance

  • The complaint asserts infringement of Claim 1 of the '902 patent (Compl. ¶16).
  • As a design patent, the '902 patent contains a single claim for "The ornamental design for a bottle with cap, as shown and described" ('902 Patent, Claim). The scope of this claim is defined by the visual representations in the patent's drawings. The essential visual elements of the claimed design as a whole include:
    • The overall form factor of the bottle and cap combination.
    • The specific contours of the bottle body, including its rounded rectangular shape.
    • The visual appearance of the cap assembly.
    • The indented features on the sides of the bottle body, as shown in Figures 6 and 7.

III. The Accused Instrumentality

Product Identification

The accused products are liquid water enhancer (LWE) products sold by Dreampak in "large size 92 ml bottles" (Compl. ¶¶15, 23).

Functionality and Market Context

The complaint alleges that Dreampak’s accused products are sold as "direct substitutes" for Heartland's LWE products (Compl. ¶17). The complaint further alleges that prior to Dreampak's sales, Heartland was the exclusive supplier of LWE products in 92 ml bottles to Walmart under the "Great Value" private label (Compl. ¶18). It is alleged that Dreampak began selling its accused 92 ml bottles to compete with Heartland and copied the design to "make it easier to pick up Walmart's business" (Compl. ¶24).

IV. Analysis of Infringement Allegations

The complaint does not contain a claim chart exhibit. The infringement theory is presented narratively. The core of the allegation is that Dreampak, "without authority from Plaintiffs, has made, used, offered for sale, and sold LWE products... in bottles that embody the patented invention" (Compl. ¶15). The complaint asserts that the accused products "contain elements identical or equivalent to each claimed element of the patented invention defined by claim 1 of the '902 Patent" (Compl. ¶16). The plaintiff further alleges that Dreampak "copied Heartland's bottle design" when it entered the market for 92 ml LWE bottles, rather than using its own pre-existing bottle designs from its 48 ml products (Compl. ¶23).

No probative visual evidence provided in complaint.

Identified Points of Contention

  • Visual Similarity: The dispositive issue for design patent infringement is whether an "ordinary observer," familiar with the prior art designs, would be deceived into believing the accused product is the same as the patented design. The central question for the court will be a direct visual comparison between the overall ornamental appearance of Dreampak's 92 ml bottle and the design claimed in the '902 patent's drawings.
  • Scope Questions: The scope of the claimed design is limited to the features shown in solid lines in the patent's figures. The analysis may raise questions regarding the extent to which differences in unclaimed features (depicted in broken lines) or other minor variations between the accused bottle and the patented design are sufficient to avoid a finding of infringement in the eyes of an ordinary observer.

V. Key Claim Terms for Construction

In design patent litigation, there are typically no specific claim "terms" that require construction in the same manner as in utility patent cases. The single claim of the '902 patent recites, "The ornamental design for a bottle with cap, as shown and described" ('902 Patent, Claim).

The "Claim" as a Whole

The "construction" of a design claim is effectively a description of the patented design's overall visual appearance, as depicted in the patent's drawings. The scope is defined by the visuals, not by text. Practitioners will focus on the visual impression created by the combination of features shown in solid lines in Figures 1-7 of the '902 patent. The analysis will not hinge on the definition of a word, but on a comparison of the accused product's design to the patented design as a whole. The broken lines in the figures, which denote unclaimed subject matter, serve to define the boundaries of the claimed design.

VI. Other Allegations

Indirect Infringement

The complaint does not contain allegations of indirect infringement (i.e., induced or contributory infringement).

Willful Infringement

The complaint alleges that Dreampak's infringement was willful and deliberate, asserting that Dreampak had knowledge of the '902 patent "well before the filing of this lawsuit" (Compl. ¶27). The willfulness claim is supported by allegations that Dreampak intentionally "copied Heartland's bottle design" (Compl. ¶26) to compete for a specific customer's business, and that the risk of infringement was either "explicitly known by DreamPak or the risk was so great that the risk of infringement was obvious" (Compl. ¶25).

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

  • A core issue will be one of visual comparison: Under the "ordinary observer" test, is the overall ornamental design of Dreampak's accused 92 ml bottle substantially the same as the design claimed in the '902 patent, such that an observer would be deceived into purchasing the accused product? The outcome will depend on a side-by-side comparison of the products in light of the prior art.
  • A key evidentiary question will concern intent and copying: What evidence will be presented to support the allegation that Dreampak intentionally copied the patented design to gain a commercial advantage with a key retailer, as opposed to independently developing its design? The answer to this will be critical for the claim of willful infringement.
  • The final determination will likely depend on the scope of the design in context: How novel and distinct was the '902 patent's design compared to other LWE bottle designs in the market at the time? The degree of similarity required for a finding of infringement may be influenced by whether the patented design is a pioneering design or a modest variation in a crowded field.