DCT

2:24-cv-00199

Nitrocream LLC v. Chill N Nitrogen Ice Cream Franchising LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: NitroCream LLC v. CHILL-N NITROGEN ICE CREAM FRANCHISING LLC, et al., 2:24-cv-00199, E.D. Wash., 06/11/2024
  • Venue Allegations: Venue is asserted based on forum selection clauses in prior license agreements between Plaintiff and Defendants, which allegedly waive objections to venue in Washington.
  • Core Dispute: Plaintiff alleges that Defendants’ methods of making made-to-order nitrogen ice cream infringe a patent related to the process, particularly its open-container design which creates a visible spectacle for customers.
  • Technical Context: The lawsuit concerns the niche but popular market of "cryogenic" or liquid nitrogen ice cream, where the product is frozen instantly in front of the customer, valued for both its smooth texture and the theatricality of the process.
  • Key Procedural History: The patent-in-suit, U.S. Patent No. 7,455,868, underwent ex parte reexamination, which concluded on October 26, 2020, resulting in amended claims now being asserted. The complaint alleges that both defendants are former licensees. Plaintiff alleges Defendant Chill-N terminated its license agreement based on a mistaken belief that the patent claims had been found invalid during reexamination, and continued to practice the methods after being notified that the patent remained valid and enforceable with amended claims.

Case Timeline

Date Event
2002-12-03 ’868 Patent Priority Date
2008-11-25 ’868 Patent Original Issue Date
2017-06-26 NitroCream and Buzzed Bull enter into agreement
2018-10-17 NitroCream and Chill-N enter into agreement
2018-11-29 Ex parte reexamination of ’868 Patent requested
2020-07-06 Chill-N terminates its license agreement with NitroCream
2020-10-26 ’868 Patent Reexamination Certificate (C1) issued
2020-12-02 NitroCream notifies Chill-N that the ’868 Patent remains valid
2024-06-11 Complaint Filed

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

U.S. Patent No. 7,455,868 C1 - "Apparatus and Method for Making Ice Cream Products"

  • Patent Identification: U.S. Patent No. 7,455,868 C1, "Apparatus and Method for Making Ice Cream Products," issued October 26, 2020 (Reexamination Certificate).

The Invention Explained

  • Problem Addressed: The patent’s background distinguishes its invention from prior art methods for making made-to-order nitrogen ice cream which used a closed container, hiding the process from the customer (’868 Patent, col. 1:22-32). This approach failed to capitalize on the unique visual appeal of the process.
  • The Patented Solution: The invention describes a method and apparatus for making ice cream by mixing ingredients with a cryogenic liquefied gas (like liquid nitrogen) in an open container. This is done in a food service establishment positioned such that customers can see the process and the resulting clouds of cold vapor, creating an "unusual, pleasing spectacle" (’868 Patent, col. 2:33-44). The process is intentionally theatrical, with the visible vapor being a key feature that allows customers to "see and feel the vapor" (’868 Patent, Abstract).
  • Technical Importance: The invention shifted the focus of on-demand nitrogen ice cream from a purely back-of-house production method to a front-of-house customer experience, combining food preparation with entertainment (’868 Patent, col. 2:25-35).

Key Claims at a Glance

  • The complaint asserts infringement of at least independent claim 1 and dependent claims 2, 4, 6, 7, 9, 10, 11, 12, and 13 (Compl. ¶125, ¶141).
  • Independent Claim 1, as amended by reexamination, requires:
    • placing ingredients into a container with an open top;
    • using a control valve to selectively dispense cryogenic liquefied gas from a tank into the container via a line mounted above the ingredients;
    • mechanically mixing the ingredients and liquefied gas in the open top container while flowing the gas to produce the ice cream product;
    • freezing the ingredients with the gas while mixing;
    • transferring, after freezing, the ice cream product from the container to a serving container;
    • wherein a sufficient amount of gas is introduced to produce a visible amount of cryogenic vapor flowing from the open top; and
    • wherein the powered mixer has a support with a bottom surface positioned on a work surface, configured to support the container above the work surface.

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are the methods used by Defendants Chill-N and Buzzed Bull, and their respective franchisees, to prepare and sell cryogenic liquefied gas ice cream products (Compl. ¶¶ 26, 41, 93).

Functionality and Market Context

  • The complaint alleges that Defendants use a process involving standard stand mixers (e.g., KitchenAid) where ice cream ingredients are placed in an open mixing bowl (Compl. ¶¶ 42, 94). A line dispenses liquid nitrogen into the bowl while the mixer runs, which flash-freezes the ingredients and generates a large, visible cloud of vapor (Compl. ¶¶ 45-46, 96-98). The complaint provides visual evidence, such as a photograph from a Yelp review, showing the accused process taking place in public view of customers, with significant vapor emanating from the mixing bowl. (Compl. p. 12, fig. at 2:08). The final product is then served to the customer (Compl. ¶¶ 51-52, 102). The complaint also alleges that Defendant Chill-N advertises its process as operating "under patent & patent pending processes" via in-store signage (Compl. ¶54).

IV. Analysis of Infringement Allegations

’868 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
placing ingredients of the ice cream product into a container having an open top Chill-N and Buzzed Bull place ice cream ingredients into an open-top mixer bowl. ¶42; ¶94 col. 6:11-13
using a control valve to selectively dispense a cryogenic liquefied gas from a cryogenic tank into the container through a line having an opening mounted above the ingredients Defendants use a control valve and nozzle to dispense liquid nitrogen from a tank into the mixing bowl. A photograph in the complaint depicts the dispensing line and valve assembly. ¶45; ¶96 col. 6:13-17
mechanically mixing, with a powered mixer, the ingredients with the cryogenic liquefied gas in the open top container while flowing the cryogenic liquified gas...to produce the ice cream product Defendants use a powered stand mixer to combine the ingredients and liquid nitrogen. ¶49; ¶100 col. 6:18-22
freezing, with the cryogenic liquified gas, the ingredients while mixing the ingredients with the powered mixer to produce the ice cream product The liquid nitrogen flash-freezes the ingredients during the mixing process. ¶51; ¶102 col.8:35-38
transferring, after freezing, the ice cream product from the container to a serving container After mixing and freezing, the finished ice cream is scooped from the mixing bowl into a cup for the customer. A series of images in the complaint shows this transfer. ¶51; ¶102 col.8:39-41
wherein a sufficient amount of the liquefied gas...is introduced...to produce a visible amount of cryogenic vapor flowing from the open top of the container Defendants' process generates a large, visible cloud of vapor, a key part of the customer experience. The complaint includes a photo of this effect. ¶46; ¶97 col. 6:23-26
wherein the powered mixer comprises a support having a bottom surface positioned on a work surface, the bottom surface being configured to support the container above the work surface The complaint provides an annotated photograph identifying the accused stand mixer as the "powered mixer," its base as the "support," the counter as the "work surface," and the bowl as the "container." ¶50; ¶101 col. 8:44-48
  • Identified Points of Contention:
    • Scope Questions: A central question may be whether a general-purpose stand mixer (like the KitchenAid model shown) meets the specific structural limitations of the "powered mixer" element added during reexamination, particularly the language describing the "support having a bottom surface positioned on a work surface...configured to support the container." The defense may argue this language was added to distinguish prior art and should be narrowly construed to cover only the specific, custom-looking apparatus depicted in the patent's figures, not a common off-the-shelf appliance.
    • Technical Questions: The infringement case relies heavily on publicly available videos and photos. A factual dispute could arise regarding whether these visuals accurately and completely depict every step of the accused method as practiced across all of Defendants' locations, especially for elements like the "transferring...to a serving container" step.

V. Key Claim Terms for Construction

  • The Term: "a support having a bottom surface positioned on a work surface, the bottom surface being configured to support the container above the work surface"
  • Context and Importance: This limitation was added to independent claim 1 during reexamination and is highly specific. The complaint alleges that a standard stand mixer's base and bowl satisfy this language (Compl. ¶50). The case's outcome could hinge on whether this interpretation is correct. Practitioners may focus on this term because its construction will determine whether the patent covers the use of common, off-the-shelf equipment or is limited to a more specialized apparatus.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language itself is functional. Plaintiff may argue that any structure that performs the claimed function—a base ("support") that sits on a counter ("work surface") and holds the bowl ("container")—falls within the scope, regardless of whether it is a common appliance or a custom one.
    • Evidence for a Narrower Interpretation: The patent’s figures depict a purpose-built cart and mixer assembly that does not resemble a conventional stand mixer (’868 Patent, FIG. 1). Defendants may argue that the term "support" should be construed in light of these specific embodiments, suggesting a structure more integral to a larger, custom apparatus rather than the base of a standalone appliance.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that Defendants, as franchisors, induce and contribute to infringement by controlling and directing their franchisees to use the patented method. This is allegedly accomplished through franchise agreements, operations manuals, training, and by specifying the equipment to be used (Compl. ¶¶ 126-131, 142-147). The complaint further alleges that the specified equipment has no substantial non-infringing uses (Compl. ¶¶ 130, 146).
  • Willful Infringement: The willfulness allegations are based on Defendants’ alleged knowledge of the patent from their prior license agreements. For Chill-N, the complaint specifically alleges it terminated its license under the mistaken belief the patent was invalid, was later informed by Plaintiff via email on December 2, 2020, that the patent remained valid, and continued its infringing activities thereafter (Compl. ¶¶ 33, 36, 67, 133). For Buzzed Bull, knowledge is alleged based on its ongoing business operations and awareness of NitroCream as a competitor with a patented process (Compl. ¶¶ 107-108, 148).
  • False Marking & Advertising: The complaint includes separate counts against Chill-N for false patent marking and false advertising under the Lanham Act. These are based on allegations that Chill-N displays signage in its stores stating it "operates under patent & patent pending processes" with an intent to deceive the public, despite allegedly knowing it has no ownership of or license to any relevant patent (Compl. ¶¶ 54, 153-154, 179).

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

  • A core issue will be one of claim scope post-reexamination: Can the structural limitation of a "powered mixer" and its "support," which was added to the claims during reexamination, be interpreted to read on a common, off-the-shelf stand mixer, or is it limited to the more specialized apparatus illustrated in the patent? The answer will likely define the breadth of the patent's enforcement power.
  • A second key issue will be willfulness and bad faith: The complaint presents a detailed narrative of alleged license termination based on a misunderstanding of reexamination procedure, followed by notice of the patent's continued validity. A central question for the court will be whether Defendant Chill-N’s actions after being notified of the reexamined patent's issuance rise to the level of willful infringement and support the related claims of false marking.
  • A final evidentiary question will be one of system-wide practice: Given the franchise-based business models, the case may turn on Plaintiff’s ability to prove that the infringing method is systematically taught and practiced consistently across all of Defendants' and their franchisees' locations, as required by the franchise agreements and operational manuals.