DCT
1:25-cv-00390
Benshot LLC v. BML REC LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: BenShot, LLC (Wisconsin)
- Defendant: BML REC, LLC (Nebraska)
- Plaintiff’s Counsel: Theorem Law, LLC
- Case Identification: 1:25-cv-00390, E.D. Wis., 03/14/2025
- Venue Allegations: Venue is based on allegations that Defendant derives substantial revenue from sales within the judicial district and that a substantial part of the events giving rise to the claim occurred there.
- Core Dispute: Plaintiff alleges that Defendant’s novelty drinking glasses, which feature an embedded golf ball, infringe its design patent for the ornamental appearance of a sphere embedded in a device.
- Technical Context: The dispute is in the novelty consumer goods market, specifically for drinkware, where unique ornamental designs are a primary driver of commercial value and product differentiation.
- Key Procedural History: The complaint notes that Plaintiff sent a cease and desist letter to Defendant approximately ten months prior to filing the lawsuit, which may be relevant to any claims of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2017-01-01 | BenShot begins selling its glass design (approximate date) |
| 2018-02-19 | D'082 Patent Priority Date (Filing Date) |
| 2019-09-10 | D'082 Patent Issue Date |
| 2024-05-14 | BenShot sends cease and desist letter to BigMouth |
| 2025-03-14 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D859,082 - "Sphere Device"
- Patent Identification: U.S. Design Patent No. D859,082, "Sphere Device", issued September 10, 2019.
The Invention Explained
- Problem Addressed: While design patents do not contain a "background" section detailing a technical problem, the context implies the challenge of creating a unique and commercially appealing ornamental design for an everyday object like a drinking glass (Compl. ¶5-6).
- The Patented Solution: The patent claims the ornamental design for a "sphere device" (Compl. ¶11; ’082 Patent, CLAIM). The figures depict a sphere with a dimpled surface, resembling a golf ball, that is shown partially embedded in the side of a transparent container. The patent specification explicitly states that the container, shown in broken lines, illustrates an unclaimed environment and "forms no part of the claimed design" (’082 Patent, DESCRIPTION). The claimed design is therefore the visual appearance of the sphere itself in its embedded state.
- Technical Importance: The complaint alleges that this unique design became "extremely popular throughout the United States" shortly after its introduction, suggesting its ornamental features provided significant market differentiation (Compl. ¶7).
Key Claims at a Glance
- The patent asserts a single claim: "The ornamental design for a sphere device, as shown and described" (’082 Patent, CLAIM).
- Because this is a design patent, the "elements" are the collective visual features depicted in the drawings rather than a series of text-based limitations. Key visual features include:
- A sphere with a textured, dimpled surface consistent with that of a golf ball.
- The appearance of the sphere being partially embedded within a transparent wall.
- The visual effect of an indentation in the transparent wall surrounding the point of entry of the sphere.
III. The Accused Instrumentality
Product Identification
- The "Mulligan Beer Glass" and the "Hole in One Beer Glass" (Compl. ¶1).
Functionality and Market Context
- The accused products are drinking glasses that incorporate a golf ball embedded in their sides (Compl. ¶14, ¶20). The complaint presents a photograph showing the packaging of the "Mulligan Beer Glass," which describes the product as having a "1.7 in. golf ball" and being made of "2 mm thick clear glass" (Compl. p. 5). The complaint alleges these products are sold directly by the Defendant and through at least one third-party retailer, Kohl's Inc. (Compl. ¶9, ¶19). The complaint includes a side-by-side comparison of the patented design and the accused "Mulligan Beer Glass" to illustrate their visual similarity (Compl. ¶14, p. 4).
IV. Analysis of Infringement Allegations
The standard for design patent infringement is whether an ordinary observer would find the design of the accused product to be substantially the same as the patented design, such that the observer would be induced to purchase one supposing it to be the other. The complaint alleges this standard is met (Compl. ¶15).
D'082 Patent Infringement Allegations
| Claimed Visual Feature (from D'082 Patent) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental appearance of a sphere device as shown and described, which includes a dimpled sphere partially embedded in a transparent wall. | The "Mulligan Beer Glass" and "Hole in One Beer Glass" both feature a golf ball that is partially embedded in the side of a transparent drinking glass, creating a substantially similar overall visual impression. | ¶14, ¶20 | ’082 Patent, Figs. 1-8 |
| A sphere with a textured, dimpled surface. | The sphere used in the accused products is a golf ball, which by its nature has a textured, dimpled surface identical to that shown in the patent's figures. The complaint presents a photograph of the accused "Hole in One Beer Glass" showing this feature (Compl. ¶20, p. 6). | ¶14, ¶20 | ’082 Patent, Figs. 1-2 |
| The appearance of the sphere being lodged within the wall of a container, creating an indentation. | Photographs of the accused products show the golf ball lodged in the glass wall, creating an indentation effect that mirrors the visual configuration of the patented design. | ¶14, ¶19, ¶20 | ’082 Patent, Figs. 1, 3 |
- Identified Points of Contention:
- Scope Questions: A central issue will be the scope of the patented design and the impact of the disclaimer stating the glass is merely an unclaimed environment. Defendant may argue that any similarities in the glass itself are irrelevant, while Plaintiff may counter that the overall visual impression an ordinary observer perceives necessarily includes the interaction between the claimed sphere and its surrounding environment.
- Technical Questions: A factual question will be whether minor differences between the products—such as the exact angle of embedment, the specific dimple pattern on the golf balls, or the shape of the glasses—are sufficient to create a different overall visual impression. The court will also have to consider whether surface ornamentation, such as the word "MULLIGAN" printed on one of the accused glasses, is sufficient to distinguish the designs in the eyes of an ordinary observer (Compl. ¶14, p. 4).
V. Key Claim Terms for Construction
In design patent litigation, the focus is on the overall visual appearance as depicted in the drawings, rather than the construction of specific text terms.
- The Term: "The ornamental design for a sphere device"
- Context and Importance: The entire case hinges on the scope of this claimed design. Practitioners may focus on this issue because the outcome will depend on whether the design is interpreted broadly (covering the general concept of a golf ball in a glass) or narrowly (limited to the precise visual details shown in the patent figures). The interpretation will define the universe of potentially infringing products.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent is titled "Sphere Device", not "Golf Ball in a Pint Glass." The use of a generic term and the depiction of a common object (a golf ball) could support an interpretation where the patent covers the general ornamental concept shown.
- Evidence for a Narrower Interpretation: The patent's description explicitly states that the broken lines showing the glass illustrate "unclaimed environment only, and forms no part of the claimed design" (’082 Patent, DESCRIPTION). A defendant could argue this language strictly limits the protected design to the sphere itself, divorced from the context of the glass, potentially narrowing the scope of what constitutes infringement.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendant has been "actively and knowingly inducing others to make, use, sell, offer for sale, or import" the accused products (Compl. ¶28). The factual basis appears to be Defendant's sale of the products to third-party retailers for resale to consumers (Compl. ¶19).
- Willful Infringement: The complaint alleges that infringement has been "knowing, intentional, and willful" (Compl. ¶29). This allegation is supported by the claim that Defendant had actual knowledge of the ’082 patent since at least May 14, 2024, the date it received a cease and desist letter from Plaintiff (Compl. ¶16, ¶21). The complaint further alleges, upon information and belief, that Defendant was aware of the patent even prior to that date (Compl. ¶18, ¶23).
VII. Analyst’s Conclusion: Key Questions for the Case
This dispute appears to center on fundamental principles of design patent law. The key questions for the court will likely be:
- A core issue will be one of visual similarity: Applying the "ordinary observer" test, is the overall ornamental design of Defendant's "Mulligan Beer Glass" and "Hole in One Beer Glass" substantially the same as the design claimed in the ’082 patent, or are there sufficient visual differences to avoid infringement?
- A key interpretive question will be the effect of the unclaimed environment: How much weight should be given to the visual context of the glass—which the patent explicitly disclaims as part of the design—when assessing the overall visual impression of the claimed "sphere device"?
- Finally, a central evidentiary question will concern willfulness: Did the Defendant have knowledge of the ’082 patent prior to receiving the cease and desist letter, and does its continued sale of the accused products constitute the kind of egregious conduct that would warrant enhanced damages?