Lululemon Athletica Canada Inc v. Under Armour Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Lululemon Athletica Canada Inc. (British Columbia) and Lululemon USA Inc. (Nevada)
  • Defendant: Under Armour, Inc. (Maryland)
  • Plaintiff’s Counsel: DLA Piper LLP (US)
• Case Identification: 1:17-cv-00915, D. Del., 07/07/2017
• Venue Allegations: Plaintiff alleges venue is proper in the District of Delaware because Defendant has committed acts of infringement by selling the accused products within the district and maintains a regular and established place of business in Rehoboth Beach, Delaware.
• Core Dispute: Plaintiff alleges that the design of certain sports bras sold by Defendant infringes two of Plaintiff's U.S. design patents.
• Technical Context: The lawsuit concerns the ornamental design of athletic apparel, a market segment where distinctive aesthetics can be a significant commercial differentiator.
• Key Procedural History: Plaintiff alleges it provided Defendant with actual notice of the patents-in-suit via a letter dated April 10, 2017, nearly three months prior to filing the complaint. The D'759,942 patent is a continuation of the application that resulted in the D'709,668 patent and includes a terminal disclaimer, linking the enforceable terms of the two patents.

Case Timeline

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

U.S. Design Patent No. D709,668 - "Bra"

• Patent Identification: U.S. Patent No. D709,668 ("the '668 Patent"), "Bra", issued on July 29, 2014 (Compl. ¶13).

The Invention Explained

• Problem Addressed: Design patents do not articulate a technical problem in the manner of utility patents; rather, they protect a novel, non-obvious, and ornamental design for an article of manufacture (Compl. ¶1).
• The Patented Solution: The '668 Patent claims the specific ornamental design for a bra as depicted in solid lines in its figures ('668 Patent, p. 1, CLAIM). The design's principal features are the front appearance and, most notably, a distinctive back design featuring two sets of dual, parallel straps that crisscross to form an 'X' shape between the wearer's shoulder blades ('668 Patent, Figs. 1-2).
• Technical Importance: The design provides a unique aesthetic in the competitive athletic apparel market, with the complaint asserting that the commercial embodiment of the design is "innovative" and "extremely popular" (Compl. ¶¶12, 44).

Key Claims at a Glance

• Design patents contain a single claim. The asserted claim is: "The ornamental design for a bra, as shown and described." ('668 Patent, p. 1, CLAIM).
• The essential visual elements of the design, shown in solid lines, include:
  • A front view with a scoop neckline and two straps extending upward from the main body.
  • A rear view featuring two pairs of straps originating from the shoulder area, crossing each other in an 'X' pattern, and attaching to the opposite sides of the bra's back band.
  • The specific proportions, angles, and overall visual appearance created by these elements.

U.S. Design Patent No. D759,942 - "Bra"

• Patent Identification: U.S. Patent No. D759,942 ("the '942 Patent"), "Bra", issued on June 28, 2016 (Compl. ¶14).

The Invention Explained

• Problem Addressed: As with the '668 patent, this patent protects a specific ornamental design for a bra (Compl. ¶1).
• The Patented Solution: The '942 Patent claims a similar ornamental design to the '668 Patent, but with a critical difference in scope. The patent explicitly states that "[t]he portions of the straps shown in broken lines in FIG. 2 are features of the article of manufacture that form no part of the claimed design" ('942 Patent, p. 1, DESCRIPTION). These broken lines correspond to the sections of the straps where they connect to the back band of the bra ('942 Patent, Fig. 2). By disclaiming these specific attachment points, the claimed design focuses on the core visual element of the crisscrossing straps, independent of their precise connection to the garment's base.
• Technical Importance: This patent may provide a different scope of protection than the '668 Patent, potentially covering variations in manufacturing or design where the strap attachment points differ from the specific embodiment shown in the '668 Patent.

Key Claims at a Glance

• The single asserted claim is: "The ornamental design for a bra, as shown and described." ('942 Patent, p. 1, CLAIM).
• The essential visual elements are largely the same as in the '668 patent, however, the claimed design, as depicted in solid lines, explicitly excludes the portions of the rear straps that attach to the horizontal back band of the bra.

III. The Accused Instrumentality

Product Identification

• The complaint names the "Armour® Eclipse Low Impact, Armour® Shape Low Impact, UA On the Move, and UA Printed Strappy Bra" as the Infringing Products (Compl. ¶2).

Functionality and Market Context

• The complaint alleges that the accused products are sports bras featuring ornamental designs that are "substantially the same as the designs of the Patents-in-Suit" (Compl. ¶29). The core of the infringement allegation rests on the visual appearance of the accused products, particularly the configuration of straps on the back of the bras (Compl. ¶¶19, 21). Table 1 of the complaint provides a side-by-side photographic comparison of the '688 Patent's drawings and the accused Armour® Eclipse Low Impact bra to support this allegation (Compl. ¶21). The complaint further alleges that Defendant markets these products to the same consumers through the same trade channels as Plaintiff (Compl. ¶44).

IV. Analysis of Infringement Allegations

The infringement test for a design patent is whether an "ordinary observer," taking into account the prior art, would believe the accused design to be the same as the patented design. The complaint alleges this standard is met (Compl. ¶19). The following tables summarize the visual comparisons provided in the complaint.

'668 Patent Infringement Allegations

'942 Patent Infringement Allegations

Identified Points of Contention

• Visual Similarity: The central dispute will be a factual one: would an ordinary observer perceive the overall appearance of the Under Armour bras to be substantially the same as the designs claimed in the patents? The complaint provides several direct visual comparisons, such as in Table 3 which compares the '688 patent drawings with photos of the "UA On the Move bra" (Compl. ¶23). Defense may focus on any perceived differences in strap width, angle, texture, or cup shape to argue against a finding of substantial similarity.
• Impact of Prior Art: The "ordinary observer" test is applied from the perspective of an observer familiar with the prior art. The scope of the patented designs, and thus the infringement analysis, will be informed by whatever prior art designs exist for sports bras with similar strap configurations.
• Scope Question: A key issue will be the effect of the disclaimer in the '942 Patent. The court will need to determine whether disclaiming the strap attachment points broadens the claim to more easily read on the accused products, or if it so narrows the protected design that the overall visual impression is no longer substantially similar.

V. Key Claim Terms for Construction

In design patent litigation, claim construction focuses on the visual impression of the drawings as a whole, rather than the definition of textual terms. The primary issues for construction will be the scope of the claimed designs.

The Term: "The ornamental design for a bra, as shown and described."

• Context and Importance: This phrase defines the entire scope of protection. Its interpretation is not about defining the words "bra" or "design," but about determining which visual features are part of the protected design and which are not. The outcome of the "ordinary observer" test depends entirely on the scope of this claimed design.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim is for the overall ornamental appearance, suggesting that minor differences in proportion or detail that do not change the overall visual effect should not avoid infringement.
  • Evidence for a Narrower Interpretation: The solid lines in the patent figures precisely define the claimed design ('668 Patent, Figs. 1-8). Any significant deviation in the accused product from the specific shapes and configurations shown could support a finding of non-infringement.

The Term: The broken lines in Figure 2 of the '942 Patent.

• Context and Importance: Practitioners may focus on this element because the explicit disclaimer of the strap attachment points is the key difference between the '668 and '942 patents. This directly impacts the scope of the '942 Patent and how it is compared to the accused products.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation (of the claim): The patent states the broken lines "form no part of the claimed design" ('942 Patent, p. 1, DESCRIPTION). This could be argued to mean the claim is broader than the '668 Patent's claim, as it is not limited to a specific strap attachment method and covers any bra embodying the core crisscross design regardless of how the straps connect to the base.
  • Evidence for a Narrower Interpretation (of the claim): By removing the attachment points from the design, the claim is limited only to the features shown in solid lines. If the attachment points are a visually significant feature of the accused products, their exclusion from the claimed design could make it more difficult to prove that the overall visual impression is substantially the same.

VI. Other Allegations

• Indirect Infringement: The complaint includes allegations of induced and contributory infringement (Compl. ¶¶34, 39). However, it does not plead specific facts explaining how Under Armour would induce or contribute to infringement by a third party, which is typically a direct user or reseller.
• Willful Infringement: Plaintiff alleges that Defendant’s infringement has been willful, particularly since Defendant received a notice letter on April 10, 2017, putting it on actual notice of the patents-in-suit (Compl. ¶30). The willfulness claim is based on alleged knowledge of Plaintiff's rights (Compl. ¶¶35, 40).

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

1. A central question will be one of visual comparison: Factoring in the relevant prior art, would an ordinary observer conclude that the overall ornamental design of the accused Under Armour bras is substantially the same as the designs claimed in the '668 and '942 patents? The verdict will likely depend on the visual evidence and testimony presented regarding similarities and differences.
2. A second key issue is the legal effect of the claim disclaimer: How does the '942 Patent's disclaimer of the rear strap attachment points affect the scope of its claim? The court must decide if this makes the claim broader by covering more attachment variations, or if it narrows the claimed design in a way that distinguishes it from the accused products.
3. The case may also turn on questions of patent validity: While not detailed in the complaint, the defense will almost certainly challenge the novelty and non-obviousness of the patented designs in view of prior art. The asserted similarity of the designs to Plaintiff's own "Energy Bra," marketed prior to the patents' priority date, could become a focal point of this analysis.