DCT
4:22-cv-01395
Twenty Six Designs LLC v. Guntersville Breathables Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Twenty-Six Designs, LLC (New Jersey)
- Defendant: Guntersville Breathables, Inc. (Alabama)
- Plaintiff’s Counsel: Balch & Bingham, LLP; Cowan, Liebowitz & Latman, P.C.
- Case Identification: 4:22-cv-01395, N.D. Ala., 11/01/2022
- Venue Allegations: Venue is alleged to be proper because Defendant is incorporated and located in the district, conducts business there, and a substantial part of the events giving rise to the claim occurred in the district.
- Core Dispute: Plaintiff alleges that Defendant’s EVA tote bags infringe its design patent covering the ornamental appearance of a carrying case.
- Technical Context: The dispute concerns the ornamental design of tote bags, a consumer product category where visual appearance is a primary driver of market appeal.
- Key Procedural History: The parties have a history of litigation, including a prior trademark dispute involving the same products that was transferred from the Northern District of Alabama to the District of New Jersey. The complaint also alleges that Defendant unsuccessfully sought to license Plaintiff's intellectual property prior to launching the accused products and that Defendant's counsel communicated directly with Plaintiff's leadership about a potential acquisition while the parties were represented by counsel in the ongoing trademark matter.
Case Timeline
| Date | Event |
|---|---|
| 2007-10-18 | ’938 Patent Priority Date |
| 2015-05-12 | ’938 Patent Issue Date |
| 2021-06-21 | Defendant's agent allegedly emailed Plaintiff inquiring about a licensing deal |
| 2021-11-09 | Defendant's counsel allegedly contacted Plaintiff directly about a potential acquisition |
| 2021-11-10 | Defendant's counsel allegedly repeated acquisition inquiry via email to Plaintiff's president |
| 2021-11-18 | Defendant filed a declaratory judgment action for trademark non-infringement |
| 2022-11-01 | Complaint for patent infringement filed |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Design Patent No. D728,938, "Carrying Case," issued May 12, 2015.
- The Invention Explained: As this is a design patent, the "invention" is the specific ornamental appearance of the article shown in the drawings, not its functional characteristics.
- Problem Addressed: The patent itself does not articulate a problem. The complaint describes Plaintiff’s commercial embodiment, the BOGG Bag, as a "firm, flexible, and easily-washable bag" made from EVA, designed for use at the beach, lake, or pool (Compl. ¶8). This suggests a market for a durable, stylish, and practical tote bag.
- The Patented Solution: The patent claims the ornamental design for a carrying case. The design is depicted through seven figures showing various views of the bag (D’938 Patent, Figs. 1-7). Key visual features include a generally rectangular body with rounded corners, a distinct pattern of circular holes on the front and back faces, two looped handles, and textured bands at the top and bottom of the bag body (D’938 Patent, Figs. 1, 2, 7).
- Technical Importance: The complaint alleges that the commercial embodiment of the design, the "BOGG Bag," has become popular and "well-regarded," featured in national magazines (Compl. ¶10). This suggests the design achieved commercial recognition.
- Key Claims at a Glance:
- Design patents have a single claim. The asserted claim is: "The ornamental design for a carrying case, as shown and described." (D’938 Patent, Claim 1).
- The scope of this claim is defined by the solid lines in the patent's drawings. Key ornamental elements include:
- The overall shape and proportions of the bag body.
- The specific arrangement, size, and shape of the perforations on the front and back surfaces.
- The shape and attachment points of the handles.
- The visual appearance of the top and bottom border bands.
- The visual appearance of the bottom surface.
III. The Accused Instrumentality
- Product Identification: Defendant’s "infringing EVA totes," sold under the "Frogg Toggs" brand (Compl. ¶14, p. 12).
- Functionality and Market Context:
- The complaint alleges the accused products are EVA totes that are "nearly identical" in design to the one claimed in the '938 Patent (Compl. ¶15). The complaint provides a side-by-side photographic comparison of the claimed design and the accused product, highlighting similarities in overall shape, handle design, and the placement and pattern of holes. (Compl. p. 6).
- The complaint alleges numerous specific design features are common to both Plaintiff's bag and the accused totes, including a textured top and bottom border, a rectangular body with rounded corners, and a specific pattern of holes (Compl. ¶15, ¶24). For example, the complaint includes a detailed photograph comparing the "fine 'diamond grid' texture" on the top and bottom borders of both products (Compl. p. 16).
IV. Analysis of Infringement Allegations
The standard for design patent infringement is whether an "ordinary observer," familiar with the prior art, would be deceived into believing the accused design is the same as the patented design. The analysis turns on the overall visual impression rather than a direct comparison of discrete functional elements. The following table summarizes how the complaint maps features of the accused product to the ornamental design claimed in the patent.
D728,938 Infringement Allegations
| Claim Element (Ornamental Feature from Drawings) | Alleged Infringing Functionality (from Accused Tote) | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall front perspective appearance of the carrying case, including its proportions, handle shape, and hole pattern. | A perspective view of the accused tote is presented as showing "identical hole size, placement, and orientation," "similar bag proportions," and "identical handle design." | ¶16, p. 6 | Fig. 1 |
| The front view of the carrying case, showing a specific pattern of alternating long and short rows of holes. | The accused tote is alleged to have "holes in the exact same positions with alternating long and short rows of holes where the long rows contain one more hole than the short rows." | ¶15(d) | Fig. 2 |
| The top view of the carrying case, showing a rectangular shape with rounded corners and the profile of the handles. | A top view of the accused tote is alleged to show "rounded corners and similar proportions." | ¶16, p. 9 | Fig. 6 |
| The bottom view of the carrying case, showing a textured surface. | A bottom view of the accused tote is alleged to show "rounded corners and similar proportions," with a photograph depicting a textured bottom surface. | ¶16, p. 10 | Fig. 7 |
| A fine texture on the top and bottom border bands of the bag. | The accused tote is alleged to have an "Identical fine 'diamond grid' texture at top and bottom borders on the side of the bag." | ¶24(i), p. 16 | Fig. 2 |
- Identified Points of Contention:
- Scope Questions: A central question will be how the "ordinary observer" test applies to the designs as a whole. The complaint alleges the accused product replaces five of the patented design's holes with a "frog footprint logo" (Compl. ¶15(d)). A court will need to determine if this change is significant enough to alter the overall visual impression, or if an ordinary observer would still find the designs substantially the same. The complaint provides a side-by-side front view comparison that explicitly notes this exception. (Compl. p. 7).
- Technical Questions: While not a technical utility case, an evidentiary question may arise regarding the alleged copying of product dimensions. The complaint alleges Defendant initially used the exact dimensions of Plaintiff's larger bag on its hangtags, despite its own product being smaller, and later corrected them (Compl. ¶22, p. 14). This could be used as evidence of intent to copy the overall design, even if not directly part of the visual infringement test.
V. Key Claim Terms for Construction
In design patent cases, there are no traditional "claim terms" to be construed. The claim is defined by the drawings. However, the scope of the claimed design and the importance of its various features are central to the infringement analysis.
- The Term: The overall ornamental design, including the hole pattern.
- Context and Importance: The pattern of perforations is a dominant visual feature of the patented design. The complaint alleges the accused product copies the hole positions "exactly," with the specific exception of the area where the Defendant's logo is placed (Compl. ¶15(d)). Practitioners may focus on whether the claimed design as a whole is defined more by the general impression of a perforated tote or by the precise number and placement of every hole shown in the patent drawings.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that the overall visual effect—a grid of circular holes on a tote of this shape—is the core of the design, and that minor deviations like the substitution of a logo for a few holes do not change the general appearance that an ordinary observer would perceive.
- Evidence for a Narrower Interpretation: A party could argue that the exact number, placement, and pattern of holes are what distinguish the design. Because the patent figures show a specific configuration (e.g., as seen in FIG. 2), an argument could be made that any deviation from this exact pattern, such as the replacement of five holes with a logo, creates a distinct design.
VI. Other Allegations
- Indirect Infringement: The complaint makes a boilerplate allegation of direct and indirect infringement (Compl. ¶36). However, the specific facts alleged—that Defendant makes and sells the accused totes—primarily support a claim for direct infringement. The complaint does not plead specific facts to support a claim for induced or contributory infringement.
- Willful Infringement: The complaint alleges a strong basis for willfulness. It asserts Defendant had pre-suit knowledge of Plaintiff's intellectual property through unsuccessful licensing inquiries (Compl. ¶¶17-18). It further alleges intentional copying by asserting that Defendant's initial sales materials used edited photographs of Plaintiff's own BOGG Bag, with Defendant's logo digitally added (Compl. ¶21, p. 12). The image provided in the complaint purports to show a "faint rectangle" where the new logo was overlaid (Compl. p. 13).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of holistic design similarity: In applying the "ordinary observer" test, will the visual differences between the patented design and the accused tote—specifically, the substitution of the Defendant's logo for five of the design's holes—be sufficient to create a different overall ornamental impression, or will the similarities in shape, proportions, texture, and the remaining hole pattern cause the designs to be viewed as substantially the same?
- A key evidentiary question will be one of intent: The complaint presents significant evidence of alleged intentional copying, including prior licensing discussions and the alleged use of altered photographs of Plaintiff's product in Defendant's marketing materials. The extent to which this evidence is proven and considered by the court will be critical, particularly for the question of willfulness and potential enhanced damages.