2:25-cv-00313
Aidemar Group Inc v. Highwaymen Supply Packaging LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Aidemar Group, Inc. (California)
- Defendant: Highwaymen Supply and Packaging LLC, d/b/a Custom Cones USA (Washington)
- Plaintiff’s Counsel: Practus LLP; Cohen IP Law Group PC
- Case Identification: 2:25-cv-00313, W.D. Wash., 02/18/2025
- Venue Allegations: Venue is alleged based on Defendant being a Washington LLC that resides in the district and has committed acts of infringement while maintaining a regular and established place of business within the district.
- Core Dispute: Plaintiff alleges that Defendant’s "Crush Cones" filter tips infringe a patent related to smokable cone inserts designed to hold and secure a flavor-releasing mechanism.
- Technical Context: The technology operates in the consumer smoking accessories market, specifically addressing methods for incorporating crushable flavor capsules into filter tips for pre-rolled smoking cones.
- Key Procedural History: Plaintiff alleges it sent a cease-and-desist letter to Defendant on July 19, 2024, providing actual notice of the alleged infringement, which may form the basis for a willfulness claim.
Case Timeline
| Date | Event |
|---|---|
| 2021-03-19 | '509 Patent Priority Date (Provisional App. 63/163,277) |
| 2022-07-26 | U.S. Patent No. 11,395,509 Issued |
| 2022-07-26 | Alleged Infringement Start Date |
| 2024-07-19 | Plaintiff sends cease-and-desist letter to Defendant |
| 2025-02-18 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,395,509 - Smokable Cone Insert Including Flavor Releasing Mechanisms
- Patent Identification: U.S. Patent No. 11,395,509, issued July 26, 2022.
The Invention Explained
- Problem Addressed: The patent’s background section describes the difficulty of adding flavor-releasing mechanisms, such as crushable "click balls," to existing smokable inserts. Without a dedicated structure, users must hollow out a space, which often leads to the mechanism falling out or not working properly ('509 Patent, col. 1:36-41).
- The Patented Solution: The invention is a flat section of smokable material (e.g., paper) designed to be formed into a filter tip. The section features a specific cutout, or "aperture," and a series of fold lines. By folding the section in an accordion-like manner along these lines, a secure internal cavity is created in the area of the aperture, which is designed to hold the flavor mechanism. The remainder of the flat section is then wrapped around this folded portion to form the final tubular mouthpiece ('509 Patent, Abstract; col. 4:35-51). Figure 5 of the patent illustrates the section of material being folded along an accordion pattern to create the internal cavity (122) ('509 Patent, Fig. 5).
- Technical Importance: The design provides a simple and integrated method for manufacturers or users to securely incorporate flavor-releasing mechanisms into smokable cone inserts, enhancing the user's smoking experience ('509 Patent, col. 1:42-46).
Key Claims at a Glance
- The complaint asserts independent product claim 1 and independent method claim 11 (Compl. ¶¶ 15-16, 25, 32, 42).
- Independent Claim 1 (Product Claim):
- An insert for use as a mouthpiece to a smokable item and for securing at least one flavor releasing mechanism, the insert comprising:
- a section of smokable material including a first side, a second side opposite the first side, a top side, a bottom side, a front, and a back; and
- a first aperture in the front of the section and extending to the back of the section, the first aperture located between the top side and the bottom side and extending to a point closer to the first side than it extends to the second side;
- wherein the section is adapted to be folded in an area of the first aperture thereby forming a first cavity in the area of the first aperture, and wherein the first cavity is adapted to receive and secure at least one flavor releasing mechanism.
- The complaint does not explicitly reserve the right to assert dependent claims but incorporates all preceding paragraphs into its causes of action (Compl. ¶30, ¶40).
III. The Accused Instrumentality
Product Identification
Defendant's filter tips, known as "Crush Cones" (Compl. ¶18, ¶25).
Functionality and Market Context
The complaint alleges the Accused Product is a filter tip insert for smokable items that contains a flavor-releasing mechanism (Compl. ¶18). An image in the complaint depicts the product as a paper insert containing a "flavor ball" that can be attached to a paper cone for smoking (Compl. p. 5). The complaint alleges that Defendant competes with Plaintiff in the smoking industry and sells the Accused Product through various channels including its website, wholesalers, and retail stores (Compl. ¶11, ¶16, ¶24).
IV. Analysis of Infringement Allegations
The complaint provides a claim chart with images alleging infringement of claim 1 of the '509 Patent. The chart shows the "Insert attached to cone," visually demonstrating its use as a mouthpiece (Compl. p. 5).
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An insert for use as a mouthpiece to a smokable item and for securing at least one flavor releasing mechanism, the insert comprising: | The Accused Product is an insert that interfaces with a smokable paper cone and contains a flavor-releasing mechanism ("flavor ball"). | p. 5 | col. 7:31-33 |
| a section of smokable material including a first side, a second side opposite the first side, a top side, a bottom side, a front, and a back; and | The complaint provides an annotated photograph of the Accused Product, identifying its first side, second side, top side, and bottom side, alleging it is a section of smokable material (Compl. p. 5). | p. 5 | col. 2:62-65 |
| a first aperture in the front of the section and extending to the back of the section, the first aperture located between the top side and the bottom side and extending to a point closer to the first side than it extends to the second side; | The complaint alleges the Accused Product has a cutout that functions as the claimed aperture. A photograph shows this cutout located between the labeled top and bottom sides, and positioned toward one side of the material section (Compl. p. 5). | p. 5 | col. 4:33-44 |
| wherein the section is adapted to be folded in an area of the first aperture thereby forming a first cavity in the area of the first aperture, and wherein the first cavity is adapted to receive and secure at least one flavor releasing mechanism. | The complaint alleges the section is folded to form a cavity that holds the flavor ball. A final photograph shows the rolled product with the flavor ball secured inside the folded structure, which allegedly constitutes the claimed cavity (Compl. p. 5). | p. 5 | col. 4:46-51 |
Identified Points of Contention
- Scope Questions: A central question may be whether the term "aperture" as used in the patent is met by the cutout in the accused product. The claim requires the aperture to extend "to a point closer to the first side than it extends to the second side," a specific geometric limitation that will require factual evidence to substantiate.
- Technical Questions: The complaint's evidence for the "adapted to be folded" limitation is a photograph of the final, assembled product (Compl. p. 5). This raises the question of what evidence exists that the Accused Product is actually manufactured by folding "in an area of the first aperture" to form the cavity, or if it is constructed in a technically distinct manner.
V. Key Claim Terms for Construction
The Term: "adapted to be folded"
Context and Importance: This functional language is critical to defining how the "cavity" is formed. The infringement analysis depends on whether this term requires specific structural features that facilitate folding (e.g., score lines) or if it merely describes the inherent capability of the material itself. Practitioners may focus on this term because the complaint's visual evidence does not show pre-formed fold lines on the accused product, making the presence of adapting features a key point of dispute.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that "adapted to" simply means "suitable for," and that a "section of smokable material" like paper is inherently suitable for being folded. The claim language itself does not explicitly require pre-formed lines.
- Evidence for a Narrower Interpretation: The specification repeatedly describes embodiments with "one or more fold lines 114-1, 114-2, ... that may be perforated, scribed, indicated by a line, or otherwise formed and/or identified to facilitate the easy folding of the section" ('509 Patent, col. 3:12-18). This language may support an argument that the section must be structurally configured for the specific accordion fold that creates the cavity.
The Term: "aperture"
Context and Importance: The existence and characteristics of the "aperture" are foundational to the claim. Whether the cutout in the Accused Product meets the claim's definition will be a central issue. The term's construction will determine if any cutout suffices, or if it must have the specific placement and relationship to the folded structure described in the patent.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term "aperture" itself is general and could be construed as any opening or hole. Claim 1 does not specify a shape for the aperture.
- Evidence for a Narrower Interpretation: The specification describes the aperture as a "cutout 116" and notes that in some embodiments it "includes a generally rectangular shape" ('509 Patent, col. 4:36-37). It is further defined by its location relative to the fold lines, suggesting its function is tied to the creation of the "accordioned portion 118" that forms the cavity ('509 Patent, col. 4:46-51). An argument could be made that a true "aperture" under the patent must be positioned and shaped to enable this specific accordion-cavity structure.
VI. Other Allegations
Indirect Infringement
The complaint alleges that Defendant induces infringement by its customers and distributors, who are encouraged to use the Accused Products in an infringing manner (violating claim 1) (Compl. ¶¶ 41, 44). It also alleges inducement of suppliers and manufacturers to make the Accused Product in violation of method claim 11 (Compl. ¶42, ¶44). The alleged inducement is based on Defendant’s promotion of the products through its website, distributors, and at marketing events (Compl. ¶41).
Willful Infringement
Willfulness is alleged based on Defendant’s purported actual knowledge of the '509 Patent as of July 19, 2024, the date Plaintiff sent a cease-and-desist letter (Compl. ¶23, ¶27). The complaint further alleges that Defendant's continued infringement after receiving this notice is egregious and willful (Compl. ¶29, ¶36).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction: can the functional term "adapted to be folded" be satisfied by the inherent properties of the filter material, or does it require specific structural modifications like the perforated "fold lines" detailed in the '509 Patent's specification? The resolution of this question will significantly impact the scope of the claims.
- A key evidentiary question will be one of structural correspondence: does the accused "Crush Cones" product, particularly its internal cavity and cutout, meet the specific geometric and positional limitations recited in Claim 1? Discovery into Defendant's manufacturing processes will be essential to determine if the product is constructed by folding "in an area of the first aperture" to create a cavity, as the patent requires.