DCT
2:23-cv-10528
HBI Branded Apparel Enterprises, LLC v. Stateside Merchants, LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: HBI Branded Apparel Enterprises, LLC (Delaware)
- Defendant: Stateside Merchants, LLC (d/b/a Pair of Thieves) (California)
- Plaintiff’s Counsel: Husch Blackwell LLP
- Case Identification: 2:23-cv-10528, C.D. Cal., 12/15/2023
- Venue Allegations: Venue is alleged to be proper as Defendant is a California corporation that conducts substantial business and has committed the alleged acts of infringement within the judicial district.
- Core Dispute: Plaintiff alleges that Defendant’s "Men's Hustle Boxer Briefs" infringe one utility patent and one design patent related to supportive pouch technology for men's undergarments.
- Technical Context: The technology at issue involves specific structural designs for men's underwear intended to provide enhanced anatomical support and comfort, a feature central to brand competition in the apparel market.
- Key Procedural History: The complaint alleges that Defendant had notice of both asserted patents as of January 13, 2023, nearly a year prior to the filing of the lawsuit, which may form the basis for an allegation of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2016-04-14 | '877 Patent Priority Date |
| 2020-05-11 | '530 Patent Application Filing Date |
| 2020-09-01 | '530 Patent Issue Date |
| 2021-04-27 | '877 Patent Issue Date |
| 2023-01-13 | Alleged Date of Notice for '877 and '530 Patents |
| 2023-12-15 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,986,877 - "Lower Torso Garment with Support Element" (issued Apr. 27, 2021)
The Invention Explained
- Problem Addressed: The patent addresses the need for undergarments that provide not just coverage but also specific shaping and support for the male anatomy. It notes that conventional solutions like a simple gusset may provide space but do not offer additional shaping or enhanced support (ʼ877 Patent, col. 9:13-22).
- The Patented Solution: The invention introduces an internal "support sling" connected to the garment's front pouch. This sling is constructed from fabric panels that overlay each other, forming a pocket between the sling and the front pouch's interior surface. This structure is designed to support and position the wearer's anatomy, providing a noticeable increase in support and comfort ('877 Patent, Abstract; col. 6:46-55). The patent discloses several configurations for this sling, including criss-cross and key-hole shapes ('877 Patent, Figs. 2A-2C).
- Technical Importance: This approach offers a method for integrating enhanced anatomical support directly into the construction of an undergarment, distinguishing it from garments that rely on simpler gussets or pouch shapes alone ('877 Patent, col. 9:19-22).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶29).
- Claim 1 requires:
- A lower torso garment with a body portion, a left leg portion, and a right leg portion.
- A front pouch disposed about a front region of the body portion.
- A gusset positioned at the bottom of the body portion and connected to the front pouch via a bottom horizontal seam.
- A support sling connected to the front pouch, which itself comprises a left and a right fabric panel.
- Each fabric panel has a laterally outside edge extending along the pouch's periphery and an inner edge extending from the bottom horizontal seam toward the top of the pouch.
- A first portion of the left fabric panel overlaps a first portion of the right fabric panel, creating an "overlap area."
- This overlap area is positioned adjacent to the bottom horizontal seam and "is entirely above the first leg opening and the second leg opening."
U.S. Patent No. D894,530 - "Support Element for Underwear" (issued Sep. 1, 2020)
The Invention Explained
- Problem Addressed: As a design patent, the '530 Patent does not address a functional or technical problem. It instead protects a novel, non-obvious ornamental design for an article of manufacture, which serves to create a distinct and recognizable product appearance.
- The Patented Solution: The patent claims the specific visual appearance of a "support element for underwear." The design is characterized by two contoured, overlapping fabric panels forming a distinct U-shape inside the front of an undergarment, as illustrated in the patent's figures ('530 Patent, FIG. 1, FIG. 6). The broken lines in the drawings illustrate the environment (the undergarment itself) and are not part of the claimed design.
- Technical Importance: In the consumer apparel industry, a product's unique aesthetic design is a critical component of brand identity and can be a primary driver of purchasing decisions.
Key Claims at a Glance
- The complaint asserts the single claim of the patent (Compl. ¶48).
- The claim is for: "The ornamental design for a support element for underwear, as shown and described."
III. The Accused Instrumentality
Product Identification
The complaint names Defendant's "Men's Hustle Boxer Briefs" as the infringing products (Compl. ¶13, ¶24).
Functionality and Market Context
The complaint alleges that the accused briefs are sold by Defendant under the "Pair of Thieves" brand and incorporate HBI's patented technology (Compl. ¶6). The accused products are alleged to feature an internal support structure comprising overlapping fabric panels within a front pouch, as depicted in images provided in the complaint (Compl. ¶¶38-41). The complaint also asserts that these products compete directly with HBI's own "Total Support Pouch®" undergarments, which have generated substantial sales (Compl. ¶4, ¶12). An image from Defendant's website shows an inside-out view of the accused product's support structure (Compl. ¶26).
IV. Analysis of Infringement Allegations
'877 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A lower torso garment comprising: a body portion; a left leg portion...and a right leg portion... | The accused product is a lower torso garment (boxer brief) with a body and two leg portions. The complaint provides an annotated photograph identifying these elements. | ¶¶32-35 | col. 9:39-43 |
| a front pouch disposed about a front region of the body portion; | The accused product includes a front pouch. The complaint includes a photograph with a callout pointing to the "Front Pouch." | ¶36 | col. 9:44-46 |
| a gusset positioned at a bottom of the body portion...the gusset connected to the front pouch with a bottom horizontal seam...; | The accused product allegedly has a gusset connected to the front pouch by a bottom horizontal seam. A photograph shows callouts for the "Gusset" and "Bottom Horizontal Seam." | ¶37 | col. 9:47-51 |
| a support sling connected to the front pouch, the support sling comprising: a left fabric panel...and a right fabric panel... | The accused product contains a support sling made of left and right fabric panels. The complaint provides an annotated photograph of the product's interior identifying the "Support Sling." | ¶¶38-40 | col. 9:51-54 |
| a left fabric panel comprising a first laterally outside edge extending along a left side periphery of the front pouch and comprising a first inner edge connected to and extending from the bottom horizontal seam toward a top of the front pouch; and a right fabric panel... | The fabric panels of the accused product's sling allegedly have outside edges along the pouch periphery and inner edges extending from the bottom seam. Photographs with callouts illustrate these features. | ¶¶38, 40 | col. 9:55-64 |
| wherein a first portion of the left fabric panel overlaps a first portion of the right fabric panel at an overlap area, the overlap area positioned adjacent to the bottom horizontal seam...and the bottom horizontal seam is entirely above the first leg opening and the second leg opening. | The complaint alleges the accused product's fabric panels overlap at the bottom, adjacent to the seam and above the leg openings. An annotated photograph points to the "Overlap Area." | ¶41 | col. 9:65-10:4 |
'530 Patent Infringement Allegations
A claim chart is not applicable for a design patent. The complaint alleges that the ornamental design of the support element in the accused "POT Hustle Briefs" is "substantially similar to the patented design such that an ordinary observer would view them as such" (Compl. ¶50). The infringement analysis will depend on the "ordinary observer" test. The complaint juxtaposes Figure 6 from the '530 Patent with a photograph of the accused product to support this allegation (Compl. ¶49; ¶15, p.15).
Identified Points of Contention
- '877 Patent (Structural/Positional): The dispute may focus on whether the accused product's construction meets the specific positional limitations of claim 1. A key question will be whether the accused product's "bottom horizontal seam" and "overlap area" are located "entirely above" the leg openings, as the claim requires. The precise definition and function of the "support sling" as claimed, versus the structure present in the accused product, will likely be a central issue.
- '530 Patent (Visual Similarity): The core question is whether an ordinary observer, giving the attention a purchaser usually gives, would be deceived into purchasing the accused product believing it to be the patented design. The analysis will compare the overall visual impression of the accused product's U-shaped internal support with the drawings of the '530 Patent.
V. Key Claim Terms for Construction
For the '877 Patent:
The Term: "support sling"
- Context and Importance: This term defines the central inventive concept of the patent. The existence and construction of the "support sling" in the accused product is fundamental to the infringement case. Practitioners may focus on this term because its scope will determine whether various internal pouch designs fall within the claim.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the sling as taking multiple forms, including "a criss-cross support sling," "a keyhole support sling," and one with "substantially planar" panels, suggesting the term is not limited to a single embodiment ('877 Patent, col. 5:32-35; Figs. 2A-2C).
- Evidence for a Narrower Interpretation: Claim 1 recites a sling with a specific structure: two fabric panels with defined inner and outer edges, extending from a "bottom horizontal seam," and having an "overlap area" in a specific location. This detailed recitation could be argued to narrow the term's scope to slings that meet all of these structural requirements ('877 Patent, col. 9:51-10:4).
The Term: "entirely above the first leg opening and the second leg opening"
- Context and Importance: This phrase sets a specific spatial boundary for the location of the "bottom horizontal seam." The infringement analysis will require a factual determination of where this seam lies on the accused product relative to the leg openings.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not provide an explicit definition of "entirely above," which might suggest its plain and ordinary meaning should apply, potentially allowing for some flexibility in interpretation depending on how the garment lies when measured.
- Evidence for a Narrower Interpretation: The figures, such as Figure 2C, appear to show the overlap area (228) and associated seam positioned physically superior to the start of the leg openings (110a, 110b), which could support a strict, literal interpretation of the term's spatial requirement ('877 Patent, Fig. 2C).
VI. Other Allegations
Indirect Infringement
The complaint alleges that Defendant induces infringement by "encouraging retailers to import, offer for sale, and resell the infringing POT Hustle Briefs" (Compl. ¶43, ¶53). The pleading asserts this was done with "specific intent" (Compl. ¶44, ¶54).
Willful Infringement
The complaint alleges that Defendant was on notice of both the '877 and '530 patents "at least as early as January 13, 2023," which predates the complaint's filing by eleven months (Compl. ¶42, ¶52). This allegation of pre-suit knowledge forms the basis for a potential claim of willful infringement and enhanced damages.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of structural and positional correspondence: Does the accused "Hustle Boxer Brief" meet every specific structural and positional limitation of '877 Patent's Claim 1? In particular, the court will have to determine if the accused product's overlapping fabric panels are connected and positioned relative to the "bottom horizontal seam" and leg openings in the precise manner recited by the claim.
- A second key issue will be one of visual identity: For the '530 design patent, the central question is whether an ordinary observer, examining the overall aesthetic of the accused product's support element, would be deceived into believing it is the same as the patented design. This will involve a direct visual comparison focused on the claimed ornamental features.
- Finally, a critical question for remedies will be one of knowledge and intent: If infringement is found, the court will need to resolve the factual question of when Defendant became aware of the patents-in-suit. The Plaintiff's allegation of a specific notice date will be central to determining whether any infringement was willful, which could lead to enhanced damages.