Simple Wishes LLC v. Root Global Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Simple Wishes, LLC (Delaware)
  • Defendant: Root Global, Inc. (Colorado)
  • Plaintiff’s Counsel: Turner Boyd LLP
• Case Identification: 1:20-cv-00494, D. Colo., 02/24/2020
• Venue Allegations: Venue is asserted based on Defendant's residence and principal place of business being in the District of Colorado, where acts of infringement are also alleged to have occurred.
• Core Dispute: Plaintiff alleges that Defendant’s "Momcozy" brand hands-free pumping bras infringe a patent related to the design and construction of garments for hands-free breast pumping.
• Technical Context: The technology concerns specialized garments for nursing mothers that securely hold breast pump flanges, freeing the user's hands during milk expression.
• Key Procedural History: The complaint alleges that Plaintiff obtained a General Exclusion Order (GEO) from the U.S. International Trade Commission (ITC) in April 2017, prohibiting the importation of products that infringe the patent-in-suit. Plaintiff further alleges it identified and reported to Amazon at least 115 of Defendant's product listings for violating this GEO between June 2017 and April 2019. This history may be significant for the allegations of willful infringement.

Case Timeline

Date	Event
2008-12-19	'070 Patent Priority Date
2012-12-04	'070 Patent Issue Date
2017-04-01	Plaintiff obtains General Exclusion Order from ITC (approximate)
2017-09-01	Defendant begins selling Group 1 Accused Products (approximate)
2019-11-01	Defendant begins selling Group 2 Accused Products (approximate)
2020-02-24	Complaint Filing Date

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

U.S. Patent No. 8,323,070 - PUMPING/NURSING BRA

Issued Dec. 4, 2012

The Invention Explained

• Problem Addressed: The patent's background section identifies the problem that mothers using a breast pump must manually hold the breast flanges or shields against their breasts, an "awkward position" that prevents them from having free use of their hands for other tasks, such as operating the pump or massaging the breast to improve milk flow ('070 Patent, col. 1:19-31).
• The Patented Solution: The invention is a garment, such as a bustier, designed to solve this problem. It features a multi-panel construction, often including separate left, right, and center panels that can be adjustably connected (e.g., with zippers) to customize the fit and the spacing between the breasts ('070 Patent, col. 5:46-54). The garment includes openings to accommodate breast pump flanges, and these openings are concealed by a layered fabric system, allowing the garment to be worn discreetly throughout the day ('070 Patent, Abstract; col. 5:31-48).
• Technical Importance: This design approach sought to provide a single, adjustable, and comfortable solution for hands-free pumping that could be worn as a standalone garment, an improvement over simpler straps or inserts that were less secure or required other support garments ('070 Patent, col. 6:56-62).

Key Claims at a Glance

• The complaint asserts independent claims 1 and 33 ('070 Patent, col. 7:43-8:11, col. 11:33-12:12).
• Independent Claim 1 recites a garment comprising, in part:
  • A first planar breast covering panel with a first opening.
  • A second planar breast covering panel with a second opening.
  • A center planar panel attached to the first and second panels.
  • First and second removable attachment devices (e.g., zippers) connecting the side edges of the breast panels to the center panel.
  • First and second "covering[s]" that conceal the openings, each comprising pairs of pieces attached to the front and back of the respective breast panels.
• Independent Claim 33 recites a bustier comprising, in part:
  • A planar breast covering panel with first and second openings.
  • A "first covering" that conceals both openings, comprising a first pair of pieces for the first opening and a second pair for the second opening.
  • The panel extends around a user's chest to align the openings with the breasts for hands-free pumping.

III. The Accused Instrumentality

Product Identification

The complaint identifies two categories of accused products: "Group 1 Accused Products" and "Group 2 Accused Products," sold under the "Momcozy" brand and other names (Compl. ¶¶ 17, 24, 30).

Functionality and Market Context

The accused products are described as hands-free pumping bras designed to hold breast pump flanges for nursing mothers (Compl. ¶17). The complaint includes a photograph of a "Group 1" product, described as the "4th Series Hands-Free Pumping Bra, Adjustable Breast-Pumps Holding Bra," which shows a bra-like garment with shoulder straps and a central zipper (Compl. ¶¶ 16, 17). A photograph of a "Group 2" product shows a different style of pumping bra, also with pump flanges inserted (Compl. ¶26). Plaintiff alleges these products are sold on Amazon.com and the website www.momcozy.com (Compl. ¶¶ 18-19, 27-28).

IV. Analysis of Infringement Allegations

The complaint references exemplary claim charts attached as Exhibits B and C, which were not filed with the complaint (Compl. ¶¶ 25, 31). As such, a detailed element-by-element analysis based on the complaint's direct allegations is not possible.

The narrative infringement theory asserts that both Group 1 and Group 2 Accused Products directly infringe at least claims 1 and 33 of the '070 Patent (Compl. ¶¶ 25, 31, 39). The inclusion of a photograph showing the Group 1 Accused Product, a pink zippered bra, suggests Plaintiff's theory is that this product embodies the claimed elements (Compl. ¶16). For infringement of Claim 1, Plaintiff would need to show that the product’s construction maps onto the claimed three-panel structure (first panel, second panel, and center panel) with removable attachments. For Claim 33, the theory would be that the product constitutes a single "planar breast covering panel" with two concealed openings. A key visual, a photo of a Group 2 Accused Product with breast pump flanges inserted, illustrates the allegedly infringing use (Compl. ¶26).

Identified Points of Contention

• Scope Questions: A central dispute for Claim 1 may be whether the accused product's construction, which appears to feature a single piece of fabric on each side of a central zipper, meets the limitation of a "first planar breast covering panel," a "second planar breast covering panel," and a separate "center planar panel." The court may need to determine if a zipper and its adjacent fabric constitute a "center planar panel" as claimed, or if the claim requires three structurally distinct fabric panels.
• Technical Questions: A key factual question for both asserted claims will be the specific construction of the flange openings in the accused products. The claims require a specific "covering" comprising pairs of pieces on the front and back of the panel ('070 Patent, col. 8:1-4). The complaint does not provide evidence detailing this structure in the accused products. The analysis will depend on whether the accused bras use this specific layered construction or a simpler design, such as a single reinforced slit.

V. Key Claim Terms for Construction

Key Term: "center planar panel"

• Context and Importance: This term is essential to Claim 1. The infringement analysis for that claim depends on whether the accused product, which appears to have a central zipper, can be said to possess a "center planar panel" that is removably attached to two other panels. Practitioners may focus on this term because its construction could be dispositive for Claim 1.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification describes the purpose of the center panel as allowing a user "to move the breast shield closer together or farther apart" ('070 Patent, col. 6:47-51). Plaintiff may argue that any central, adjustable element, including a zipper assembly that serves this function, falls within the scope of the term.
  • Evidence for a Narrower Interpretation: The patent figures consistently depict the "center panel" (44) as a distinct, separate fabric component that is removably attached via two separate zippers (60, 62) to the left (12) and right (14) breast panels ('070 Patent, Fig. 1; col. 5:46-54). Defendant may argue this specific three-part structure is required.

Key Term: "a first covering concealing said first opening, wherein said first covering comprises a first pair of pieces attached to said front of said first planar breast covering panel and a second pair of pieces attached to said back of said first planar breast covering panel"

• Context and Importance: This limitation, found in Claim 1, defines the structure that conceals the flange opening. Claim 33 contains similar language. The infringement finding will turn on whether the accused product's openings are constructed in this specific manner.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: Plaintiff could argue that the term should be interpreted functionally to cover any layered fabric structure that conceals the opening and allows a pump flange to pass through.
  • Evidence for a Narrower Interpretation: The specification describes and illustrates a specific arrangement of four circular or semicircular fabric pieces for each opening (e.g., pieces 20 and 22 on the front, and 24 and 26 on the back) ('070 Patent, col. 5:31-56; Figs. 3-4). Defendant will likely argue that this detailed four-part, front-and-back construction is a strict requirement and that a simple slit does not infringe.

VI. Other Allegations

Indirect Infringement

The complaint does not contain specific allegations of fact to support claims for induced or contributory infringement, focusing instead on direct infringement through making, using, selling, and importing (Compl. ¶39).

Willful Infringement

The complaint makes strong allegations of willfulness. It asserts that Defendant "intentionally and blatantly" copied Plaintiff's design and had knowledge of the '070 Patent (Compl. ¶32-33). Critically, the willfulness claim is supported by the allegation that Defendant was on notice of its infringement due to an ITC General Exclusion Order against infringing products obtained by Plaintiff in April 2017, and that Plaintiff subsequently reported 115 of Defendant's Amazon listings for violating that order (Compl. ¶¶ 22-23, 34, 42).

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

1. A core issue will be one of definitional scope: For Claim 1, can the term "center planar panel" be construed to read on the central zipper assembly of the accused product, or does the claim require three structurally separate fabric panels?

2. A key evidentiary question will be one of structural correspondence: Does the evidence show that the accused bras' flange openings are built with the specific, multi-piece layered fabric system described in the claims, or do they utilize a different, simpler construction that falls outside the claims' scope?

3. The allegations surrounding the prior ITC General Exclusion Order raise a significant question of willfulness. A central issue for damages will be whether Plaintiff can prove that Defendant had pre-suit knowledge of the patent and its infringement via the ITC action and subsequent notifications, yet continued its allegedly infringing conduct.