Fugazzi v. Carothers

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Joan C. Fugazzi (Pennsylvania), pro se
  • Defendant: Floyd B. Carothers (Jurisdiction not specified)
  • Plaintiff’s Counsel: Pro Se
• Case Identification: 1:22-cv-00872, D. Del., 08/15/2022
• Venue Allegations: The complaint does not contain a formal venue allegation, but suggests a basis in Delaware by claiming the Defendant is "collecting all my money due to me in a Delaware AO."
• Core Dispute: Plaintiff, the inventor, alleges that her former patent attorney misappropriated her invention for a pet carrier sweatshirt, improperly controlled her patents, and is liable for patent infringement by licensing the invention to third parties without her authorization.
• Technical Context: The technology at issue is apparel, specifically a sweatshirt designed with an integrated front pouch for carrying small pets.
• Key Procedural History: The complaint alleges a long-standing attorney-client relationship beginning in 2001. It recounts the filing of a provisional application, two utility patents, and a design patent. A central allegation is that the Defendant allowed the utility patents to expire by failing to inform the Plaintiff of required maintenance fees. The dispute centers on the Defendant’s alleged unauthorized control and licensing of the Plaintiff’s patent rights.

Case Timeline

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

The complaint does not identify the patents-in-suit by number, referring generally to "two utility patents" and "a Design Patent" (Compl. ¶1, ¶11). The provided U.S. Design Patent No. D539,509 lists Joan C. Fugazzi as the inventor and Floyd B. Carothers as the attorney, and its 2007 issue date aligns with the complaint's allegations, indicating it is a patent-in-suit (Compl. ¶11). The complaint does not provide sufficient detail to identify or analyze the two alleged utility patents.

U.S. Design Patent No. D539,509 - “PET CARRIER SWEATSHIRT”

• Patent Identification: U.S. Design Patent No. D539,509, “PET CARRIER SWEATSHIRT,” issued April 3, 2007.

The Invention Explained

• Problem Addressed: The complaint describes the inventor’s need for a hands-free method to carry her small, sick dog to provide constant comfort and facilitate bonding (Compl. ¶1). Carrying a small pet conventionally requires the use of both hands (Compl. ¶1).
• The Patented Solution: The patent discloses the ornamental design for a sweatshirt that integrates a large pouch into the front of the garment (’509 Patent, FIGs. 1-2). This design creates a wearable pet carrier, allowing the user to carry a small animal hands-free in a manner the inventor describes as "comfortable and safe" (Compl. ¶1; ’509 Patent, FIG. 1).
• Technical Importance: The design merges the distinct product categories of apparel and pet accessories, offering a novel aesthetic for a functional garment (Compl. ¶9).

Key Claims at a Glance

• The patent asserts a single independent claim, as is standard for design patents.
• Claim 1 consists of the following elements:
  • The ornamental design for a pet carrier sweatshirt,
  • as shown and described in the patent's figures.

III. The Accused Instrumentality

Product Identification

The complaint does not accuse the Defendant, Mr. Carothers, of directly making or selling an infringing product. Instead, it accuses third parties of selling "counterfeits" and infringing products (Compl. ¶10). The complaint alleges that the Defendant is licensing the invention to these third parties, including sellers on Amazon, without the Plaintiff’s authorization (Compl. ¶25). The accused instrumentalities are therefore the unlicensed "pet carrier sweatshirts" sold by these unnamed third parties.

Functionality and Market Context

The functionality of the accused products is described as embodying the Plaintiff's "pet carrier sweatshirt idea" (Compl. ¶10). The complaint alleges that "many people are selling my Invention with no Royalties to me," suggesting a market for such products exists (Compl. ¶25).

IV. Analysis of Infringement Allegations

The complaint does not contain a claim chart or a detailed breakdown of infringement against a specific accused product. It presents a narrative theory of infringement focused on the Defendant's alleged role in authorizing third parties to sell products embodying the patented design. No probative visual evidence provided in complaint.

The core infringement allegation is not one of direct infringement by the Defendant, but rather that he induced infringement by others. The complaint states, "Attorney Carothers took over entirely of my... Patents and is licensing and using my Utility Patents all over the world for his benefit, not mine benefit" (Compl. ¶15) and "IT LOOKS LIKE Attorney Carothers is licensing my Invention the Pet Carrier Sweatshirt with no authorization from me... with Justia, Fresh Patents, and Free Patents. and with Amazon, and more" (Compl. ¶25).

• Identified Points of Contention:
  • Legal Question (Basis of Liability): A primary legal question is whether the Defendant's alleged unauthorized licensing of patent rights can establish liability for patent infringement under 35 U.S.C. § 271. The dispute appears rooted in questions of patent ownership, agency authority, and professional duties, which may raise questions as to whether patent infringement is the appropriate legal framework for the claims against the attorney.
  • Factual Question (Infringement by Third Parties): To sustain an indirect infringement claim against the Defendant, the Plaintiff would first need to establish direct infringement by the third-party licensees. This raises the factual question of whether the designs of the third-party sweatshirts are substantially the same as the ornamental design claimed in the ’509 Patent from the perspective of an ordinary observer. The complaint does not provide evidence, such as product images, to allow for this comparison.

V. Key Claim Terms for Construction

In design patent litigation, claim construction focuses on the scope of the claimed design as a whole, depicted in the patent’s drawings, rather than on discrete textual terms.

• The "Term": The overall "ornamental design for a pet carrier sweatshirt."
• Context and Importance: The scope of the claimed design is critical for the infringement analysis, as it defines the visual appearance against which any accused product must be compared under the "ordinary observer" test.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim covers the overall visual impression created by the combination of features shown in solid lines in the drawings, not merely isolated elements. An accused design that evokes the same overall appearance could be found to infringe.
  • Evidence for a Narrower Interpretation: The scope is limited by the specific visual details shown in the solid-line drawings, including the particular shape, proportions, and configuration of the pouch and garment (’509 Patent, FIGs. 2-6). The description explicitly states that "the broken line showing of a person wearing the pet carrier sweatshirt and a pet in the pocket... is for illustrative purposes only and form no part of the claimed design," which narrows the protected scope to the sweatshirt itself (’509 Patent, Description).

VI. Other Allegations

• Indirect Infringement: The complaint's primary theory of liability against the Defendant is inducement of infringement. It alleges the Defendant had knowledge of the patent (as its prosecuting attorney) and intended to cause infringement by "licensing... my Invention" to third parties for his own benefit and without the Plaintiff's authorization (Compl. ¶15, ¶25).
• Willful Infringement: The complaint contains numerous allegations that could support a claim of willfulness. It characterizes the Defendant's actions as "bad faith" (Compl. ¶6), "willful wrong doing" (Compl. ¶17), and a "willful theft from an intellectual rights and property attorney" (Compl. ¶11). The alleged knowledge is based on the Defendant's role as the attorney who prosecuted the patent.

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

1. A threshold question of legal framework: Is a claim for patent infringement under 35 U.S.C. § 271 the appropriate vehicle for a dispute that appears to center on allegations of attorney misconduct, misappropriation of property, and breach of fiduciary duty, or are these issues more properly addressed through state-law claims?
2. A core issue of ownership and authority: The central factual dispute will likely be the scope of the Defendant's authority. The case may turn on evidence defining the attorney-client relationship and whether the Plaintiff granted the Defendant the right to control, license, and profit from her patents.
3. An evidentiary question of infringement: Should the case proceed on a patent infringement theory, establishing liability will require evidence that third-party products, allegedly licensed by the Defendant, incorporate a design substantially similar to that claimed in the ’509 Patent. The complaint does not currently provide this direct evidence for comparison.