DCT
3:23-cv-01459
Thirty Three Threads Inc v. Pacific Mfg LLC
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Thirty Three Threads, Inc. (California)
- Defendant: Pacific Manufacturing LLC (California)
- Plaintiff’s Counsel: Gordon Rees Scully Mansukhani, LLP
- Case Identification: 3:23-cv-01459, S.D. Cal., 08/09/2023
- Venue Allegations: Venue is asserted based on Defendant Pacific Manufacturing LLC’s principal place of business being located within the Southern District of California, and on allegations that a substantial part of the events giving rise to the claims occurred in the district.
- Core Dispute: Plaintiff alleges that Defendant Pacific Manufacturing's "Pointe Studio" brand socks infringe a design patent covering the ornamental appearance of a sock.
- Technical Context: The dispute is in the performance apparel sector, specifically concerning grip socks designed for fitness activities such as yoga, barre, and Pilates.
- Key Procedural History: The complaint alleges Plaintiff provides notice of its patent rights via a website link on its product packaging. It also references a "warning" provided to Defendant Pacific on October 22, 2022, prior to the filing of the lawsuit, which may be relevant to the allegation of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2014-03-31 | '292 Patent Priority Date |
| 2016-11-19 | Plaintiff enters exclusive vendor contract with Xponential Fitness |
| 2017-11-14 | U.S. Design Patent No. D802,292 Issues |
| 2022-08-23 | Plaintiff's exclusive vendor contract is amended and reinstated |
| 2022-10-22 | Complaint references a "warning" sent regarding Defendant's sales |
| 2023-08-09 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D802,292 - "Sock"
- Patent Identification: U.S. Design Patent No. D802,292, titled "Sock", issued on November 14, 2017. (Compl. ¶13).
The Invention Explained
- Problem Addressed: The patent does not articulate a technical problem in the manner of a utility patent. Rather, it seeks to protect a new, original, and ornamental design for an article of manufacture—a sock intended for fitness activities. (Compl. ¶¶ 8, 12).
- The Patented Solution: The patent claims the specific visual appearance of a sock, not its function. The design, as illustrated in the patent figures, is characterized by a combination of ornamental features: a low-cut profile with a large, generally oval-shaped opening on the top (dorsal) side of the foot, a ribbed ankle cuff, and five individual, separated sheaths for the toes, creating a "half-toe" style. ('292 Patent, Figs. 1, 3; Description, col. 2:1-6). The claim covers the ornamental design "as shown and described." ('292 Patent, Claim, col. 2:5-6).
- Technical Importance: The complaint alleges that this patented sock design has been a "success in the market" and is sold as part of Plaintiff's "Toesox" product line. (Compl. ¶15, ¶27).
Key Claims at a Glance
- The complaint asserts infringement of the patent's single claim. (Compl. ¶39). Design patents contain a single claim, which reads: "The ornamental design for a sock, as shown and described." ('292 Patent, Claim, col. 2:5-6).
- The essential ornamental elements that constitute the claimed design include:
- A large opening on the top portion of the sock.
- A ribbed band at the ankle portion.
- Five separated compartments for the toes.
- The overall shape and visual impression created by the combination and arrangement of these elements as depicted in the patent's figures.
III. The Accused Instrumentality
Product Identification
The accused products are sock products sold by Defendant Pacific Manufacturing LLC under its "Pointe Studio" brand. (Compl. ¶21).
Functionality and Market Context
The complaint characterizes the accused socks as "unauthorized and infringing copies" of Plaintiff's patented design. (Compl. ¶¶ 20-21). A side-by-side visual comparison provided in the complaint shows the accused product, which is a grip sock with an open top and individual toe compartments, similar in style to the patented design. (Compl. ¶22). The complaint alleges that due to the similarity, customers have begun purchasing the accused socks instead of Plaintiff's products. (Compl. ¶21).
IV. Analysis of Infringement Allegations
Claim Chart Summary
The complaint alleges that the accused "Pointe Studio" socks are "remarkably similar" to the patented design, thereby infringing the '292 Patent. (Compl. ¶23). The infringement analysis for a design patent centers on the "ordinary observer" test, which asks whether an ordinary observer would find the two designs substantially the same. The complaint's allegations are summarized below.
'292 Patent Infringement Allegations
| Claim Element (Key Ornamental Feature from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a sock, comprising a large, generally oval-shaped opening on the top portion. | The complaint includes a photograph of the accused sock, which features a large opening on its top portion that is visually similar in shape and placement to the patented design. | ¶22 | col. 2:1-2 |
| A ribbed band around the ankle portion. | The accused sock is depicted with a ribbed band around the ankle. | ¶22 | col. 2:1-2 |
| Five separate sheaths for the individual toes. | The accused sock is shown to have five individual compartments for the toes, creating a "half-toe" appearance. | ¶22 | col.2:3-4 |
| The overall visual impression created by the combination of these features. | The complaint alleges that when compared, the accused sock is "substantially similar" to the patented design shown in the '292 Patent. | ¶24 | col. 2:5-6 |
Identified Points of Contention
- Scope Questions: The primary question will be whether an ordinary observer, examining the overall appearance of the accused sock, would be deceived into purchasing it believing it was the patented design. The analysis will focus on the claimed solid-line features of the '292 Patent.
- Technical Questions: A key evidentiary question will be how a fact-finder weighs the similarities in the core design features (the top opening, ankle band, and separate toes) against any potential minor differences in proportion, texture, or features that are disclaimed in the patent (such as the sole grip pattern, shown in broken lines). ('292 Patent, col. 2:10-13).
V. Key Claim Terms for Construction
In a design patent case, claim construction involves determining the scope of the claimed design as a whole, rather than defining individual words. The focus is on what is claimed (solid lines) versus what is not (broken lines).
- The Term: "The ornamental design for a sock, as shown and described."
- Context and Importance: The resolution of the case will depend entirely on the scope of the claimed design and how it is compared to the accused product. Practitioners may focus on the patent's use of broken lines, which explicitly removes certain features from the scope of the claim and may become a point of argument.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party arguing for infringement may assert that the "overall visual impression" is the critical factor, and that the accused product reproduces all the major ornamental features shown in solid lines in the patent's figures, making the designs "substantially similar." (Compl. ¶24).
- Evidence for a Narrower Interpretation: The patent specification explicitly states: "The evenly dashed broken lines on the sock are for the purpose of illustrating stitching and a pattern on the sole of the sock and form no part of the claim." ('292 Patent, col. 2:10-13). A party defending against infringement may argue that any differences in the claimed features, however minor, or significant differences in the unclaimed features (like the sole grip pattern), are sufficient to differentiate the designs in the mind of an ordinary observer.
VI. Other Allegations
- Indirect Infringement: The complaint does not contain specific factual allegations to support a claim for indirect infringement (inducement or contributory infringement). The first claim for relief alleges only direct infringement. (Compl. ¶39). However, the prayer for relief seeks an injunction against "actively inducing infringement." (Compl. p. 13, ¶ D).
- Willful Infringement: The complaint alleges that Defendant Pacific's infringement has been and continues to be willful, based on an "objectively reckless disregard of the high likelihood of infringement." (Compl. ¶41). This allegation is potentially supported by the claim that Plaintiff provides patent notice on its product packaging via a website link and by reference to a "warning" given to Pacific on October 22, 2022. (Compl. ¶42; p. 8, ¶1).
VII. Analyst’s Conclusion: Key Questions for the Case
The dispute presents several central questions for the court's determination:
- A core issue will be one of visual comparison: Applying the "ordinary observer" test, are the claimed ornamental features of the '292 Patent, when viewed as a whole, "substantially the same" as the design of the accused "Pointe Studio" socks, or are there sufficient visual differences to distinguish them?
- A related question will be the impact of disclaimed elements: How will the court treat features that are explicitly disclaimed in the patent via broken lines, such as the sole pattern? The focus will be on whether the similarity of the claimed solid-line features is strong enough to render the overall designs confusingly similar, regardless of any differences in the unclaimed elements.