Yardstash Solutions LLC v. Marketfleet Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: YardStash Solutions, LLC (California)
  • Defendant: MarketFleet, Inc. (Delaware)
  • Plaintiff’s Counsel: Sharif | Faust Lawyers, LTD.
• Case Identification: 3:17-cv-00625, S.D. Cal., 03/28/2017
• Venue Allegations: Venue is asserted based on Defendant’s principal place of business being located within the Southern District of California, where the alleged acts of infringement also occurred.
• Core Dispute: Plaintiff alleges that Defendant’s portable outdoor storage tent infringes its design patent covering the ornamental appearance of a storage unit.
• Technical Context: The dispute concerns the market for portable, tent-like storage structures designed for outdoor use, such as for storing bicycles and garden equipment.
• Key Procedural History: Plaintiff alleges it provided Defendant with notice of infringement on January 11, 2016. Despite an alleged agreement by Defendant to cease sales in April 2016, Plaintiff claims sales continued, leading to a second notice on September 29, 2016. Subsequent to the filing of this complaint, the asserted patent underwent an ex parte reexamination, requested on May 24, 2018. The USPTO issued a Reexamination Certificate on July 30, 2019, confirming the patentability of the single design claim.

Case Timeline

II. Technology and Patent(s)-in-Suit Analysis

U.S. Design Patent No. D689,579 - Storage Unit

• Patent Identification: U.S. Design Patent No. D689,579, "Storage Unit," issued September 10, 2013.

The Invention Explained

• Problem Addressed: Design patents protect the ornamental appearance of an article of manufacture rather than its utility. The patent addresses the need for a new, original, and ornamental design for a portable outdoor storage product (Compl. ¶7).
• The Patented Solution: The patent claims the specific visual appearance of a storage unit, characterized by its overall shape, proportions, and surface ornamentation ('579 Patent, Claim). Key features defining the design include an arched or rounded roof structure, a sloped front panel with a distinct zippered opening, and a square vent on the rear panel, as depicted across the seven patent figures ('579 Patent, FIG. 1-7). The patent explicitly states that the broken lines representing stitching are part of the claimed design, making the appearance and pattern of the seams a feature of the claimed invention ('579 Patent, Description).
• Technical Importance: The design provides a specific aesthetic for the functional category of "space saving outdoor storage products" (Compl. ¶7).

Key Claims at a Glance

• The patent contains a single claim for "The ornamental design for a storage unit, as shown and described" ('579 Patent, Claim).
• This single claim protects the overall visual impression created by the combination of features depicted in the patent's drawings, including:
  • The perspective view (FIG. 1)
  • The front elevational view (FIG. 2)
  • The rear elevational view (FIG. 3)
  • The right and left side elevational views (FIG. 4 & 5)
  • The top and bottom plan views (FIG. 6 & 7)

III. The Accused Instrumentality

Product Identification

• The "Driftsun Storage Tent," also described as the "Driftsun Patio Outdoor Portable Storage Tent, Bike Tent, Garden Equipment, Pool Storage and Organizer Shed" (Compl. ¶10; Compl. Ex. C, p. 24).

Functionality and Market Context

• The accused product is a portable, tent-like structure for outdoor storage, marketed for stashing items like bicycles, pool supplies, and garden tools (Compl. Ex. C, p. 24).
• The complaint alleges the product is "nearly identical" to Plaintiff's patented product and was sold through various online channels, including Amazon, the Driftsun website, and eBay (Compl. ¶¶10, 15).
• Plaintiff alleges that the "key product features" text in the accused product's online listings was "heavily copied" from the listing for Plaintiff's own product (Compl. ¶10).

IV. Analysis of Infringement Allegations

Design patent infringement is assessed from the perspective of an "ordinary observer," focusing on whether the accused design is substantially the same as the patented design. The complaint outlines its infringement theory by listing specific points of similarity.

’579 Patent Infringement Allegations

Identified Points of Contention

• Scope Questions: The central infringement question is whether the accused Driftsun tent and the patented design are "substantially the same" in overall visual appearance. The complaint alleges that the enumerated similarities "overshadow any minor differences" (Compl. ¶11). The dispute may therefore focus on the significance of any unmentioned differences between the products and whether those differences are sufficient to create a distinct visual impression for an ordinary observer. A screenshot of the "Driftsun" accused product listing on Amazon shows a green, tent-like storage unit with an arched roof and a bicycle partially visible inside (Compl. Ex. C, p. 24).
• Technical Questions: While not "technical" in a utility patent sense, a key visual question is whether the combination of shared features alleged in the complaint—such as pole angles, vent placement, and attachment methods—creates an overall appearance that is legally equivalent to the holistic design claimed in the '579 Patent. A screenshot of an eBay listing for the "Pop Up Storage Tent" is presented as evidence that the accused product was still being sold around September 2016, after the initial notice (Compl. Ex. F, p. 31).

V. Key Claim Terms for Construction

In design patent cases, claim construction focuses on the scope of the design as a whole, as depicted in the drawings, rather than on discrete text-based terms.

• The Term: "The ornamental design for a storage unit, as shown and described."
• Context and Importance: The entire infringement analysis depends on the scope of the claimed design. The court's interpretation of the design as a whole, including which features are prominent and which are minor, will dictate the outcome of the infringement comparison. Practitioners may focus on this as the dispositive issue of the case.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party could argue that the overall visual gestalt—the arched roof, sloped front, and general proportions shown in the figures—constitutes the core of the protected design. The seven figures, showing the design holistically from multiple angles, could be used to argue that the overall impression is what is protected, not an exact replica of every minute detail ('579 Patent, FIG. 1-7).
  • Evidence for a Narrower Interpretation: A party could argue that specific details are critical limitations of the claimed design. For instance, the patent explicitly states that the "broken lines shown in the drawings are understood to represent stitching, which form a part of the claimed design" ('579 Patent, Description). This language could support an argument that the specific location and appearance of the stitching are required elements, potentially narrowing the claim's scope. The exact shape of the rear vent or the front zippered opening could also be argued as defining, and therefore limiting, features of the design ('579 Patent, FIG. 2-3).

VI. Other Allegations

• Indirect Infringement: The complaint makes conclusory allegations of contributory and induced infringement, but the factual allegations in the First Cause of Action focus on direct infringement by making, offering for sale, and selling the accused product (Compl. ¶¶1, 20). The prayer for relief seeks to enjoin these activities (Compl. p. 10, ¶(d)).
• Willful Infringement: The complaint alleges that Defendant’s infringement was deliberate and willful (Compl. ¶21). This allegation is based on alleged pre-suit knowledge of the ’579 patent, stemming from a notice letter sent on January 11, 2016, and Defendant's alleged continued sales after that date (Compl. ¶¶13, 15, 21; Compl. Ex. D).

VII. Analyst’s Conclusion: Key Questions for the Case

1. A central issue will be one of visual comparison: when viewed by an ordinary observer familiar with the prior art, is the overall ornamental design of the accused "Driftsun Storage Tent" substantially the same as the design claimed in the ’579 Patent, or are there differences sufficient to alter the overall visual impression?
2. A key factual question for willfulness and damages will be Defendant's conduct after notice: what evidence will support the allegation that Defendant continued to sell the accused product after receiving a formal notice of infringement on January 11, 2016, and allegedly agreeing to cease sales?
3. While validity is always a potential issue in patent litigation, a significant factor will be the impact of the 2019 Reexamination Certificate, which confirmed the patentability of the design claim after the litigation commenced and may serve to reinforce the patent's statutory presumption of validity.