DCT
2:23-cv-03383
Meundies Inc v. Saxx US Acquisition Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: MeUndies, Inc. (Delaware)
- Defendant: SAXX US Acquisition, Inc. (Delaware)
- Plaintiff’s Counsel: Russ, August & Kabat
- Case Identification: 2:23-cv-03383, C.D. Cal., 05/03/2023
- Venue Allegations: Plaintiff MeUndies alleges venue is proper in the Central District of California because a substantial part of the events giving rise to its declaratory relief claim, including the design and business activities related to the accused product, occurred in the district.
- Core Dispute: Plaintiff seeks a declaratory judgment that its male underwear products do not infringe Defendant’s patent related to a genital pouch and panel design.
- Technical Context: The lawsuit concerns the design of performance male undergarments, a market segment focused on providing enhanced comfort, support, and moisture management.
- Key Procedural History: Plaintiff MeUndies initiated this action after receiving multiple demand letters from Defendant SAXX alleging patent infringement. The complaint also notes that a SAXX affiliate has filed a parallel infringement suit in Canada against MeUndies based on a Canadian counterpart patent and the same accused products.
Case Timeline
| Date | Event |
|---|---|
| 2007-01-25 | ’571 Patent Priority Date |
| 2011 | Plaintiff MeUndies launched its brand |
| 2011-06-14 | ’571 Patent Issue Date |
| 2023-05-03 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,958,571 - UNDERWEAR GARMENT FOR A MALE
- Patent Identification: U.S. Patent No. 7,958,571, "UNDERWEAR GARMENT FOR A MALE," issued June 14, 2011.
The Invention Explained
- Problem Addressed: The patent’s background section identifies deficiencies in conventional men’s underwear, including the propensity for the scrotum to contact and stick to the inner thigh, leading to friction, chafing, and moisture problems, particularly during athletic activities (’571 Patent, col. 1:20-28). Existing designs are described as either too compressive or lacking sufficient support and isolation (’571 Patent, col. 1:29-48).
- The Patented Solution: The invention is an undergarment featuring a specific internal structure to improve comfort and support. It consists of a "genital pouch" and a "pair of side panels" made of breathable, wicking material that work together to "isolate the scrotum and phallus from the legs" (’571 Patent, col. 2:9-12). The pouch is described as "pear-shaped" and includes distinct sections to support the user’s anatomy, while the side panels are described as "scrotum fences" that extend upward into the fold between the scrotum and thigh to prevent skin-on-skin contact (’571 Patent, col. 2:35-43).
- Technical Importance: This design purports to solve the long-standing problem of skin irritation and discomfort in men's underwear by creating a containment system that separates the genitalia from the thighs, a notable objective in the field of performance apparel design (’571 Patent, col. 2:7-9).
Key Claims at a Glance
- The complaint seeks a declaratory judgment of non-infringement of any claims asserted by SAXX (Compl. ¶19). It specifically disputes elements found in Independent Claim 1 (Compl. ¶18).
- Independent Claim 1: The essential elements include:
- An underwear garment with a waistband and a front wall.
- A "genital pouch" that is "pear-shaped when viewed from the front."
- The pouch has a "perineum portion for covering past the scrotum and to the perineum."
- The pouch has a "phallus supporting portion" and a "scrotum supporting portion."
- A "pair of laterally spaced apart, separate and substantially parallel side panels" that function as "scrotum fences" to engage and support the sides of the scrotum.
- The complaint does not mention specific dependent claims but seeks a declaration covering any asserted claims of the patent (’571 Patent, col. 6:10-43; Compl. ¶20).
III. The Accused Instrumentality
Product Identification
- MeUndies’ male underwear garments that feature a design referred to as the "Ball Caddy™ Pouch" (Compl. ¶2).
Functionality and Market Context
- The complaint alleges that the accused products were designed in Los Angeles, California (Compl. ¶13). It identifies the product by its marketing name, "Ball Caddy™ Pouch," but does not provide a technical description of the product's construction or specific features beyond asserting that it is a "pouch and panel feature" (Compl. ¶2). The complaint's primary focus is on distinguishing the product's design from the patent's claims rather than describing its operation. No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
This action is for a declaratory judgment of non-infringement. The following table summarizes the key structural limitations of Claim 1 that Plaintiff MeUndies alleges its accused product does not meet.
’571 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a genital pouch ... said pouch pear-shaped when viewed from the front | Plaintiff alleges its Accused Product does not include a genital pouch that is "pear-shaped when viewed from the front." | ¶18 | col. 6:14-15 |
| a perineum portion for covering past the scrotum and to the perineum of the user when worn by the user | Plaintiff alleges its Accused Product does not include "a perineum portion for covering past the scrotum and to the perineum." | ¶18 | col. 6:17-19 |
| a pair of laterally spaced apart, separate and substantially parallel side panels forming upwardly from adjacent the perineum generally vertical extending scrotum fences | Plaintiff alleges its Accused Product does not include "a pair of laterally spaced apart, separate, and substantially parallel side panels." | ¶18 | col. 6:26-31 |
Identified Points of Contention
- Scope Questions: The dispute raises questions about the proper construction of several descriptive terms. A central issue will be defining the required geometry for a pouch to be considered "pear-shaped" as claimed. Similarly, the court may need to determine the required structure and orientation for fabric components to qualify as "separate" and "substantially parallel side panels."
- Technical Questions: A key factual question will be whether the construction of the "Ball Caddy™ Pouch" includes distinct structural components that perform the functions recited in the patent, such as acting as "scrotum fences." The analysis will require a physical comparison of the accused product's structure against the patent's claims, particularly the requirement for separate side panels versus a more integrated pouch design.
V. Key Claim Terms for Construction
"pear-shaped when viewed from the front"
- Context and Importance: This term is highly subjective and defines the overall geometry of the claimed pouch. Practitioners may focus on this term because its interpretation—whether it requires a specific visual form as depicted in patent figures or allows for any generally tapering shape—will be critical to the infringement analysis for a flexible, fabric-based product.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term is used without extensive definition, which could support an argument for its plain and ordinary meaning, covering a range of generally tapered pouch designs.
- Evidence for a Narrower Interpretation: The patent explicitly states the pouch "may be pear-shaped" (’571 Patent, col. 2:22-23) and provides Figure 1, which illustrates a specific embodiment with this shape. A defendant could argue this figure and descriptive language limit the term to a shape closely resembling the illustration.
"a pair of laterally spaced apart, separate and substantially parallel side panels"
- Context and Importance: This term describes the core structural innovation of the claimed "containment system." The infringement question will likely turn on whether the accused product's internal structures are "separate" panels or are part of a single, contiguous piece of fabric forming the pouch.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: One could argue that functionally distinct sections of a single piece of fabric, if they are spaced apart and run parallel, could meet the limitation.
- Evidence for a Narrower Interpretation: The detailed description states that the "side panels 12 are formed of two separate and substantially parallel pieces of mesh fabric" (’571 Patent, col. 3:39-41), and the claims require the panels to be "separate." This language may support a construction requiring two physically distinct components stitched into the garment.
VI. Other Allegations
- Indirect Infringement: The complaint seeks a declaration of non-infringement for both direct and indirect infringement but provides no specific facts regarding any potential allegations of inducement or contributory infringement by SAXX (Compl. ¶20).
- Willful Infringement: Willful infringement is not alleged by the declaratory judgment plaintiff. The complaint does, however, establish its own pre-suit knowledge of the ’571 Patent through its acknowledgment of receiving "multiple letters" from SAXX alleging infringement (Compl. ¶2). This fact would be central to any future counterclaim for willful infringement brought by SAXX.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can subjective, descriptive terms like "pear-shaped," when applied to a deformable garment, be construed with sufficient clarity to support a finding of infringement? The case will likely depend heavily on how the court interprets this and other claim terms.
- A second central issue will be one of structural identity: does the MeUndies "Ball Caddy™ Pouch" achieve its function using the specific "separate and substantially parallel side panels" structure required by Claim 1, or does it employ a different, non-infringing design? This raises a key evidentiary question comparing the physical construction of the accused product to the patent's claims.
- The procedural posture raises a question of forum and strategy: MeUndies’ filing for declaratory judgment in California, following demand letters and a suit filed by a SAXX affiliate in Canada, suggests a strategic effort to secure a favorable forum and seize the procedural initiative in the U.S. dispute.