DCT
3:23-cv-00492
AKERSON Enterprises LLC v. Nyssa Care Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Akerson Enterprises, LLC dba Kindred Bravely (California)
- Defendant: Nyssa Care, Inc. (Delaware)
- Plaintiff’s Counsel: Haley Guiliano LLP; Workman Nydegger
- Case Identification: 3:23-cv-00492, S.D. Cal., 03/17/2023
- Venue Allegations: Plaintiff alleges venue is proper in the Southern District of California because Defendant is deemed to reside there for venue purposes as it is subject to personal jurisdiction, and because a substantial part of the events giving rise to the claims occurred in the district.
- Core Dispute: Plaintiff seeks a declaratory judgment that its postpartum undergarment product does not infringe Defendant's design patent and that the patent is invalid, in addition to bringing claims for tortious interference and unfair competition.
- Technical Context: The dispute centers on the ornamental design of therapeutic undergarments for postpartum women, which are designed to hold hot or cold packs for pain relief.
- Key Procedural History: The complaint states that this declaratory judgment action was precipitated by Defendant sending letters and filing complaints with online retailers (Shopify, Amazon) and Plaintiff's investors, alleging that Plaintiff's product infringes U.S. Design Patent No. D935,735. The complaint further notes that Defendant previously filed a utility patent application that allegedly claims the functional aspects of the same design, a fact Plaintiff uses to support its argument that the design patent is invalid for functionality.
Case Timeline
| Date | Event |
|---|---|
| 2013-02-11 | Publication date of Taiwan Patent App. M445524U1 (cited prior art) |
| 2014-07-11 | Publication date of Taiwan Patent App. M481615U (cited prior art) |
| 2015-02-25 | Publication date of Korean Patent App. No. 20150000806U (cited prior art) |
| 2018-01-17 | Publication date of US Pub. No. 2008/0010716 (cited prior art) |
| 2018-08-01 | Publication date of "Snowballs - Cooling underwear" (cited prior art) |
| 2019-09-18 | U.S. Design Patent No. D935,735 Filing Date |
| 2021-11-16 | U.S. Design Patent No. D935,735 Issue Date |
| 2022-07-XX | Plaintiff's "Fourth Trimester Postpartum Panty" (FTPP) launched |
| 2022-11-15 | Defendant allegedly sent infringement notice to Shopify |
| 2022-11-29 | Defendant allegedly filed infringement complaints with Amazon |
| 2022-12-07 | Defendant allegedly sent infringement notices to Plaintiff and its investors |
| 2023-03-17 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D935,735 - "Therapeutic undergarment"
- Patent Identification: U.S. Design Patent No. D935,735, "Therapeutic undergarment," issued November 16, 2021.
The Invention Explained
- Problem Addressed: The complaint alleges that the patented design is intended to address a lack of "functional and therapeutic" options for postpartum women, specifically by providing an undergarment capable of securely holding an ice or heat pack (Compl. ¶¶ 42-44). Design patents themselves do not contain a background section describing a problem; this context is supplied by the complaint through citations to the patent owner's marketing materials and inventor statements.
- The Patented Solution: The patent claims the ornamental design for a therapeutic undergarment. The core visual features, shown in solid lines in the patent's figures, consist of a high-waisted, brief-style undergarment with a distinct horizontal opening on the front panel, which appears as a "gapped" slot ('D935 Patent, Fig. 4). The complaint alleges that the patent owner's co-inventor has described this slot as "the most important and functional part" of the product for inserting ice packs (Compl. ¶ 46).
- Technical Importance: The complaint cites the patent owner's own statements that this design approach was a "revolutionary function" intended to provide a "more functional and therapeutic option than the free mesh hospital" underwear (Compl. ¶¶ 43-44).
Key Claims at a Glance
- Design patents have a single claim. The asserted claim is: "The ornamental design for a therapeutic undergarment, as shown and described." (’D935 Patent, col. 1:31-33).
- The essential ornamental features of the claimed design include:
- The overall configuration and proportions of a high-waisted undergarment.
- A horizontal, gapped opening located centrally on the front abdominal panel.
- The specific visual relationship and curvature between the garment's body, leg openings, and the front opening.
- The features shown in broken lines in the patent figures, such as the human form and internal pocket structures, do not form part of the claimed design ('D935 Patent, col. 2:3-6).
III. The Accused Instrumentality
Product Identification
- Plaintiff’s “Fourth Trimester Postpartum Panty” (“FTPP”) (Compl. ¶ 16).
Functionality and Market Context
- The complaint describes the FTPP as a women's undergarment designed for postpartum use, featuring three "pockets" that can hold hot or cold gel packs to provide soothing relief (Compl. ¶¶ 17-18). The product is sold online via Amazon.com and the Plaintiff's own website (Compl. ¶ 21). The complaint includes a product image showing a high-waisted black panty with two gel packs, one positioned over the lower abdomen and one over the perineal area (Compl. p. 7).
IV. Analysis of Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement. The analysis below summarizes the Plaintiff's arguments for why its product is not "substantially the same" as the patented design in the eye of an ordinary observer.
- ’D935 Patent Non-Infringement Allegations
| Claimed Feature (from 'D735 Patent) | Alleged Non-Infringing Feature of Plaintiff's FTPP | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall proportions and height of the undergarment design. | The proportions and height of the FTPP undergarment are substantially different from the patented design. | ¶67a | ’D735 Patent, Fig. 4 |
| A "gapped" horizontal front opening. | The FTPP's top horizontal front opening is "merely a 'slit' in the fabric" and is substantially different from the "gapped" opening in the patented design. | ¶67b | ’D735 Patent, Fig. 4 |
| The location of the horizontal front opening. | The opening on the FTPP is located "substantially higher on the garment" than the opening shown in the patented design. | ¶67d | ’D735 Patent, Fig. 4 |
| The absence of other features on the front panel. | The FTPP also features a bottom horizontal slit that is not present at all in the patented design. | ¶67c | ’D735 Patent, Fig. 4 |
- Identified Points of Contention:
- Scope Questions: The core infringement question is whether the visual differences alleged by the Plaintiff—in overall proportion, the style of the opening (slit vs. gapped), the location of the opening, and the presence of an additional slit—are significant enough to create a different overall ornamental impression for an ordinary observer. The complaint presents a side-by-side comparison to highlight these alleged differences (Compl. p. 14).
- Technical Questions: A primary contention is whether the patented design is dictated by function. The complaint argues that features like the garment shape, the front slot, and its location are functional (Compl. ¶¶ 48, 73). This raises the question: What aspects of the 'D735 patent's design, if any, are purely ornamental and protectable, versus being dictated by the function of holding a therapeutic pack?
V. Key Claim Terms for Construction
In design patent litigation, analysis often focuses on filtering out functional elements from the claimed design rather than construing specific text-based terms.
- The Term: "ornamental design"
- Context and Importance: The scope of protection hinges on what aspects of the drawings are considered "ornamental" versus "functional." The Plaintiff heavily argues that the key similarities between its product and the patented design relate to functional features, which are not protectable under a design patent. Practitioners may focus on this issue because if the design is primarily functional, the patent could be held invalid or its scope construed so narrowly as to not cover the accused product.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader (More Ornamental) Interpretation: The issuance of the design patent by the USPTO creates a presumption that the agency considered the design to be ornamental and not primarily functional ('D935 Patent, p. 1).
- Evidence for a Narrower (More Functional) Interpretation: The complaint alleges that the patent owner and inventors have repeatedly described the design's features as "functional" in marketing materials, interviews, and podcasts (Compl. ¶¶ 41-48). For example, the complaint provides a screenshot from marketing materials highlighting the "functional" purpose of the design's different sections (Compl. p. 9). The complaint also points to the existence of a corresponding international utility patent application (WO 2020/206122 A1) filed by the Defendant, which allegedly claims the functional aspects of the design (Compl. ¶ 54).
VI. Other Allegations
- Indirect Infringement: Not applicable, as this is a declaratory judgment action focused on direct infringement.
- Willful Infringement: The complaint does not allege willfulness against the Plaintiff. Instead, the Plaintiff alleges that the Defendant's accusations of infringement were made in bad faith and were objectively and subjectively unreasonable (Compl. ¶ 53). This allegation forms the basis for Plaintiff's request for a finding that the case is "exceptional" and an award of attorneys' fees under 35 U.S.C. § 285 (Compl. p. 40, ¶ D).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of validity and scope based on functionality: Is the patented design, particularly its high waist and horizontal front opening, dictated by its function of holding a therapeutic pack, as the complaint alleges based on the patent owner's own marketing, inventor statements, and related utility patent application? The answer will determine whether the 'D735 patent is valid and, if so, how narrowly its protectable ornamental scope must be construed.
- A key evidentiary question will be one of visual comparison in context: When viewed in light of the extensive prior art cited in the complaint, is the overall ornamental appearance of the Plaintiff's product "substantially the same" as the protectable ornamental aspects of the 'D735 patent's design? The court's decision may turn on whether an ordinary observer would find the alleged differences in proportion, opening style, and location to be trivial or significant.