1:22-cv-01623
Bee Warehouse LLC v. Blazer
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Bee Warehouse, LLC (Alabama); Davis Product Creation and Consulting, LLC d/b/a BeesNThings (Alabama)
- Defendant: Brian Blazer d/b/a Carpenter Bee Solutions (Alabama)
- Plaintiff's Counsel: Lanier Ford Shaver & Payne P.C.
- Case Identification: 1:22-cv-01623, N.D. Ala., 12/30/2022
- Venue Allegations: Venue is alleged to be proper based on the defendant residing and conducting business within the Northern District of Alabama.
- Core Dispute: Plaintiffs seek a declaratory judgment that their carpenter bee trap does not infringe Defendant's patent, which Defendant has allegedly used to remove Plaintiffs' product from the Amazon marketplace.
- Technical Context: The technology relates to mechanical traps for carpenter bees, which are designed to leverage the insects' natural boring and navigational behaviors to lure them into a capture chamber.
- Key Procedural History: The complaint notes extensive prior litigation involving the patent-in-suit and the parties. Significantly, Plaintiffs allege that a key claim term was construed in a separate, pending action in the same district, and another key term was construed by the Court of Appeals for the Federal Circuit in different litigation. Plaintiffs also allege that the reissue patent is invalid for impermissibly broadening the original patent's scope during the reissue process.
Case Timeline
| Date | Event |
|---|---|
| 2009-04-27 | Priority Date for U.S. Reissue Patent No. 46,421 |
| 2013-02-19 | Issue Date of original U.S. Patent No. 8,375,624 |
| 2017-06-06 | Issue Date of U.S. Reissue Patent No. 46,421 |
| 2020-01-01 | Approximate filing year of "Texas Actions" against DPCC's customers |
| 2022-12-30 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
Patent Identification: U.S. Reissue Patent No. 46,421, titled "Carpenter Bee Traps," issued on June 6, 2017 (the '421 Patent).
The Invention Explained:
- Problem Addressed: The patent describes carpenter bees as damaging wooden structures by boring tunnels for nests RE46,421, col. 1:40-44 It notes that prior art traps may be inconvenient, difficult to monitor, or fail to effectively exploit the bees' natural instincts RE46,421, col. 2:4-17
- The Patented Solution: The invention is a trap designed to mimic a natural bee nest to provide a "primary attractant" RE46,421, col. 8:45-46 It consists of a trap entrance unit, typically made of wood, with at least one hole leading into an interior plenum RE46,421, col. 8:40-49 This plenum then directs the bee towards an attached "clear or translucent receptacle" RE46,421, col. 8:56-57 The ambient light visible through this receptacle serves as a "secondary attractant," luring the bee into a container from which it cannot easily escape RE46,421, col. 8:60-63 The design exploits the bees' instinct to fly towards light to find an exit RE46,421, col. 2:67 - col. 3:4
- Technical Importance: The patented design purports to create a highly effective, passive trap by combining a simulation of the bees' preferred nesting environment with a deception based on their phototactic (light-oriented) navigational behavior RE46,421, col. 3:4-6
Key Claims at a Glance:
The complaint primarily discusses independent claims 1 and 13 Compl. ¶¶17-21- Independent Claim 1 includes:
- A trap entrance unit made of wood or a wood substitute, forming a plenum.
- At least one hole sized to mimic a bee nest tunnel.
- "a means to shelter an entrance to said hole is provided to reduce the admittance of ambient light".
- A "receptacle adapter" at the bottom of the trap unit.
- A "clear or translucent receptacle" received by the adapter, which allows ambient light into the plenum.
- Independent Claim 13 includes:
- A trap entrance unit of wood or wood substitute with at least one entrance hole.
- An exit opening in the trap entrance unit.
- A "receptacle adapter located at the exit opening" that is adapted to receive a receptacle and allow ambient light to enter the trap's interior.
The complaint notes that Plaintiffs seek a declaration of non-infringement of Claim 1 "or any claim that depends therefrom" and Claim 13 "or any claims that depend therefrom" Compl. ¶20 Compl. ¶21
- Independent Claim 1 includes:
III. The Accused Instrumentality
- Product Identification: The "Bee Warehouse Trap," which is manufactured by Plaintiff DPCC and sold by Plaintiff Bee Warehouse Compl. ¶10
- Functionality and Market Context: The Bee Warehouse Trap is a carpenter bee trap comprising a wooden block with entry holes and an attached clear plastic receptacle Compl. p. 5, Photos The complaint alleges this trap was designed based on infringement allegations from Defendant's other lawsuits Compl. ¶10 Plaintiffs state the trap was being offered for sale on Amazon.com until Defendant submitted a notice of infringement, leading to its removal from the marketplace Compl. ¶11 The complaint includes several photographs of the accused trap, including an interior view showing how the receptacle is attached. This interior view shows the clear receptacle secured to the bottom of the wooden block via two screws Compl. p. 8, Photo
IV. Analysis of Infringement Allegations
This is a declaratory judgment action where the Plaintiffs argue for non-infringement. The following table summarizes Plaintiffs' central non-infringement arguments with respect to Claim 1 of the '421 Patent.
'421 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a means to shelter an entrance to said hole is provided to reduce the admittance of ambient light | Plaintiff alleges its trap "does not contain" this element, which it argues requires an "overhanging roof" based on a prior claim construction order in a related case. | ¶18 | col. 2:50-53 |
| a receptacle adapter being substantially located at the bottom of said trap unit and being configured to receive a clear or translucent receptacle | Plaintiff alleges its trap "does not contain a receptacle adapter" as construed by the Federal Circuit. The receptacle is instead "secured to the trap entrance unit via two (2) screws". | ¶19 | col. 2:53-56 |
- Identified Points of Contention:
- Scope Questions: The dispute raises a direct question of claim scope based on prior judicial interpretations. The first question is whether the accused trap's design, which does not appear to have a distinct roof piece extending over the entrance hole Compl. p. 5, Photos, includes a structure that meets the "means to shelter" limitation, which a prior court order allegedly found to require an "overhanging roof" Compl. ¶¶14-15
- Technical Questions: A central technical question is whether the two screws used to secure the receptacle to the wooden block Compl. p. 8, Photo constitute a "receptacle adapter" as that term is used in the patent. The complaint argues this direct attachment method is distinct from the "adapter" structure required by the claim Compl. ¶19
V. Key Claim Terms for Construction
The complaint explicitly identifies two claim terms whose construction, established in prior litigation, is central to its non-infringement theory.
The Term: "a means to shelter an entrance to said hole is provided to reduce the admittance of ambient light" (from Claim 1)
Context and Importance: This term is critical because the complaint alleges it was construed as a means-plus-function limitation in a prior court order, with the corresponding structure being the "overhanging roof taught in the '421 Patent" Compl. ¶15 Practitioners may focus on whether the accused product's structure contains an equivalent to this specific "overhanging roof."
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that any part of the trap's structure that casts a shadow over the entrance hole, such as the top surface of the wood block itself, performs the function of sheltering and reducing ambient light.
- Evidence for a Narrower Interpretation: A party could point to the specification, which describes how the "roof of the trap entrance unit overhangs the sides and provides added shelter" RE46,421, col. 2:50-52 and depicts this structure clearly in figures RE46,421, Fig. 2A, element 261 This supports the argument that a specific, separate "overhanging roof" is the required structure, as the prior court allegedly found Compl. ¶15
The Term: "receptacle adapter" (from Claims 1 and 13)
Context and Importance: The complaint alleges the Federal Circuit has already construed this term as "a structure configured to receive and help retain a receptacle" Compl. ¶16 The key dispute will be whether the two-screw attachment method of the accused trap Compl. ¶19 qualifies as such a "structure."
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that the two screws and corresponding holes are, collectively, a "structure" that performs the function of receiving and retaining the receptacle, thus falling under the court's construction.
- Evidence for a Narrower Interpretation: A party could argue the term "adapter" implies an intermediate component that connects two otherwise incompatible parts. The patent specification describes embodiments such as a "screw type bottle cap with a hole bored through it" RE46,421, col. 5:7-9 or a "female threaded coupling" RE46,421, col. 5:12-13, suggesting a distinct part, not merely direct fasteners like screws.
VI. Other Allegations
Invalidity for Impermissible Broadening: The complaint asserts a count for invalidity, alleging that the '421 reissue patent violates the "original patent rule" of 35 U.S.C. § 251 Compl. ¶43 Specifically, Plaintiffs allege that during the reissue process, the patentee removed two limitations from what became new independent claim 13: first, that the receptacle adapter and receptacle be on the bottom of the trap, and second, that the receptacle be "clear or translucent" Compl. ¶44 This action, Plaintiffs claim, impermissibly broadened the patent's scope compared to the original patent Compl. ¶44
Indirect Infringement: The complaint does not contain allegations of indirect infringement.
Willful Infringement: The complaint does not contain allegations of willful infringement.
VII. Analyst's Conclusion: Key Questions for the Case
This declaratory judgment action appears to hinge on three primary questions that combine claim construction, infringement analysis, and patent validity.
A core issue will be one of claim scope and equivalence: Does the accused trap's design, particularly its lack of an obvious "overhanging roof" and its use of screws to attach the receptacle, fall outside the scope of the asserted claims, especially in light of the claim constructions allegedly adopted in prior court proceedings?
A second key issue will be one of reissue patent validity: Did the patentee, in obtaining the '421 reissue patent, remove limitations from the claims in a way that impermissibly broadened their scope beyond what was disclosed and claimed in the original patent, potentially rendering the reissue patent invalid under 35 U.S.C. § 251?
Finally, the case presents a question of commercial conduct: Do the patentee's actions, including the use of Amazon's infringement reporting process to delist a product that was allegedly designed to be non-infringing, constitute patent misuse or bad-faith competition, justifying the injunctive relief and other damages sought by the Plaintiffs?