DCT
3:24-cv-01258
Shibumi Shade Inc v. NB Shades LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Shibumi Shade Inc (North Carolina)
- Defendant: NB Shades LLC (Florida)
- Plaintiff’s Counsel: Findlay Craft; Womble Bond Dickinson US LLP
- Case Identification: 6:24-cv-00297, W.D. Tex., 05/30/2024
- Venue Allegations: Venue is alleged to be proper in the Western District of Texas because Defendant purportedly maintains a regular and established place of business in Georgetown, Texas, from which it holds inventory and ships accused products.
- Core Dispute: Plaintiff alleges that Defendant’s "Sunsail Shade" product infringes two patents related to lightweight, wind-supported portable canopies.
- Technical Context: The technology occupies the consumer market for portable outdoor shade systems, specifically those designed to be lightweight, easily assembled, and reliant on wind for structural support as an alternative to traditional beach umbrellas.
- Key Procedural History: The complaint alleges that Plaintiff’s counsel first notified Defendant’s counsel of the soon-to-issue patents on March 21, 2024. Following correspondence, Defendant allegedly stated it had redesigned its product and would begin selling the current version on May 3, 2024. Plaintiff alleges this "new" version still infringes and that Defendant refused to cease sales as of May 28, 2024, two days before the complaint was filed.
Case Timeline
| Date | Event |
|---|---|
| 2016-10-18 | Earliest Priority Date for '273 and '876 Patents |
| 2016 | Plaintiff Formally Launches Shibumi Shade |
| 2024-03-21 | Plaintiff Notifies Defendant of Soon-to-Issue Patents |
| 2024-04-02 | U.S. Patent No. 11,946,273 Issues |
| 2024-04-30 | U.S. Patent No. 11,970,876 Issues |
| 2024-05-03 | Alleged Launch of Defendant's "Current" Accused Product |
| 2024-05-30 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,946,273 - SHADING SYSTEM AND METHOD OF USE (Issued April 2, 2024)
The Invention Explained
- Problem Addressed: The patent background describes prior art shading systems as often being "ineffective or impractical," "cumbersome to transport or assemble," or susceptible to being unanchored by wind (’273 Patent, col. 1:40-49).
- The Patented Solution: The invention is a portable shade system comprising a lightweight canopy that is aerially suspended by a single, sectional frame. The frame’s ends are anchored to a surface (e.g., sand), while the canopy is attached to the frame at a "suspension end" and its "trailing end" is left free to be supported by the wind (’273 Patent, Abstract; col. 1:30-38). This design aims for easy transport and assembly while using wind as a stabilizing force rather than a disruptive one. A photograph provided in the complaint shows a single, large, arched canopy held aloft by wind on a beach, illustrating the general form of the patented technology (Compl. p. 3).
- Technical Importance: The invention purports to provide a portable shade structure that is uniquely adapted for windy environments like beaches, where traditional umbrellas may fail (’273 Patent, col. 2:46-50).
Key Claims at a Glance
- The complaint asserts independent claim 6.
- Claim 6 requires, in essence:
- A system for providing shade.
- A frame made of multiple engageable/disengageable sections, with an "aligning component" (e.g., an internal cord) running through them.
- A canopy with a suspension end and an opposing trailing end.
- The suspension end includes only a single fastener to engage the canopy with the frame.
- The trailing end is spaced from the frame and is totally supported by wind.
- The single fastener is a loop that extends at least partially along the suspension end.
- A container for housing and transporting the system components.
U.S. Patent No. 11,970,876 - SHADING SYSTEM AND METHOD OF USE (Issued April 30, 2024)
The Invention Explained
- Problem Addressed: The ’876 Patent, part of the same family as the ’273 Patent, identifies the same problems with prior art shading systems, namely that they are impractical, cumbersome, or not wind-resistant (’876 Patent, col. 1:37-48).
- The Patented Solution: The solution is substantively identical to that described in the ’273 Patent: a shade system comprising a canopy aerially suspended by a frame anchored to the ground, with the canopy’s shape maintained in part by wind (’876 Patent, Abstract). The claims, however, frame the invention with different specific limitations.
- Technical Importance: As with the ’273 Patent, the technical contribution is a design for a portable shade that is both lightweight and structurally stable in windy conditions (’876 Patent, col. 2:45-49).
Key Claims at a Glance
- The complaint asserts independent claim 1.
- Claim 1 requires, in essence:
- A system for providing shade.
- A frame made of multiple sections, including a first and last section "engaged with the surface," with adjacent sections between them held in alignment by an "aligning component."
- A canopy with a suspension end and a trailing end.
- The trailing end is spaced from the frame and is totally supported by wind.
- A loop on the canopy's suspension end accepts the frame.
- This loop is the only fastener securing the canopy to the frame.
III. The Accused Instrumentality
Product Identification
The accused product is the "Sunsail Shade" (Compl. ¶12).
Functionality and Market Context
The complaint alleges the Sunsail Shade is a portable shade system that "unlawfully copied Plaintiff's innovations" (Compl. ¶12). It is sold online through Defendant's website, Amazon, and Walmart (Compl. ¶13). The complaint alleges that Defendant provides a video entitled "How to Setup Your Sunsail Shade," which purportedly shows customers how to use the product in an infringing manner (Compl. ¶45, ¶52). The complaint does not provide detailed technical descriptions of the accused product's operation, instead relying on general allegations and references to external exhibits that were not included with the public filing (Compl. ¶¶17-24, ¶¶28-37).
IV. Analysis of Infringement Allegations
’273 Patent Infringement Allegations
| Claim Element (from Independent Claim 6) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a frame defined by plurality of sections and comprising an aligning component extending through at least a portion of the sections... | The accused product comprises a frame made of multiple sections with an aligning component. | ¶18 | col. 5:26-30 |
| each of the plurality of sections having one or both of a male end and a female end making the plurality of sections thereby engageable... and disengageable... | The accused product's frame sections have male and female ends for assembly and disassembly. | ¶19 | col. 5:39-43 |
| a canopy defining a plurality of coupled sections extending between a first end forming a suspension end... and a second end forming an opposing trailing end... | The accused product has a canopy with coupled sections, a suspension end, and a trailing end. | ¶20 | col. 4:16-24 |
| the suspension end of the canopy including only a single fastener that engages the canopy with the frame... | The accused product's canopy suspension end includes a single fastener for engaging the frame. | ¶21 | col. 9:12-16 |
| wherein the trailing end of the canopy is spaced apart from the frame... and the trailing end is totally supported by wind... | The accused product's canopy trailing end is spaced from the frame and is supported by wind. | ¶22 | col. 9:16-20 |
| wherein the single fastener comprises a loop extending at least partially through a length of suspension end... | The accused product's single fastener is a loop extending along the canopy's suspension end. | ¶23 | col. 9:21-24 |
| a container capable of housing and transporting the components of the system therein. | The accused product includes a container for housing and transport. | ¶24 | col. 10:9-12 |
’876 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a frame including a plurality of sections and being maneuverable between a transport configuration and a sup-porting configuration... | The accused product comprises a frame with multiple sections maneuverable between transport and support configurations. | ¶29 | col. 8:17-20 |
| a first section defining a left end of the frame engaged with the surface; [and] a last section defining a right end of the frame engaged with the surface; | The accused product's frame has first/left and last/right end sections that engage with the surface. | ¶30 | col. 8:21-24 |
| one or more adjacent sections... comprising at least one aligning component... providing supporting tension to the align-ment... | The accused product's adjacent frame sections include an aligning component providing tension. | ¶32 | col. 8:26-33 |
| a canopy extending between a first end and an second end... | The accused product has a canopy extending between two ends. | ¶34 | col. 8:37-38 |
| wherein the second end of the canopy defines a trailing end spaced apart from the frame... such that the... trailing end of the canopy is totally supported by wind... | The accused product's canopy has a trailing end spaced from the frame and totally supported by wind. | ¶36 | col. 8:42-47 |
| a loop on the suspension end of the canopy... the loop being the only fastener securing the canopy into position relative to the frame. | The accused product has a loop on the suspension end that is the only fastener securing the canopy to the frame. | ¶37 | col. 8:48-52 |
- Identified Points of Contention:
- Scope Question: A central dispute may concern the negative limitation "only a single fastener" (’273 Patent) and "the only fastener" (’876 Patent). The litigation will question whether any other component of the accused product (e.g., tie-downs, straps, or clips) could be legally construed as a "fastener," which could be a route to a non-infringement finding.
- Technical Question: The functional limitation that the canopy's trailing end is "totally supported by wind" will require factual evidence of the accused product's aerodynamic performance. This raises the question of what evidence Plaintiff will present to demonstrate that the accused product achieves this specific function, as opposed to being merely influenced by wind.
V. Key Claim Terms for Construction
- The Term: "only a single fastener" ('273 Patent, Claim 6) / "the loop being the only fastener" ('876 Patent, Claim 1)
- Context and Importance: This term is critical because it creates a clear, restrictive boundary for the claim scope. Infringement of both asserted patents hinges on whether the accused product's canopy is secured to its frame exclusively by the claimed loop. Practitioners may focus on this term because its narrowness could offer a clear path for the defendant to design around or argue non-infringement if any other securing component is present.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation (Plaintiff's likely position, construing "fastener" narrowly): The claims themselves explicitly distinguish the loop as the sole fastener. The patent's detailed description discusses the loop as the primary means of engagement for the canopy's suspension end ('273 Patent, col. 4:34-37). A party could argue that other components, like stabilizing straps, serve a different function and should not be considered "fasteners" for the purpose of securing the canopy to the frame.
- Evidence for a Narrower Interpretation (Defendant's likely position, construing "fastener" broadly): The specification discloses other securing mechanisms, such as straps with their own fasteners, in the context of securing the canopy's position ('273 Patent, col. 4:51-68). A party could argue that any component that helps secure the canopy relative to the frame qualifies as a "fastener," and if the accused product includes any such additional component, it falls outside the scope of the "only fastener" limitation.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement under 35 U.S.C. § 271(b) for both patents. The factual basis for inducement is that Defendant allegedly "actively encourages its customers" to infringe by providing "sales and marketing efforts," including a video titled "How to Setup Your Sunsail Shade" that allegedly instructs on the infringing use (Compl. ¶45, ¶52).
- Willful Infringement: Willfulness is alleged for both patents. The complaint claims Defendant had knowledge of the patents and infringement allegations at least as early as March 21, 2024, via a letter from Plaintiff's counsel. It alleges that any infringement after the patents' respective issue dates (April 2 and April 30, 2024) has been willful and deliberate (Compl. ¶47, ¶54).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the highly restrictive claim term "the only fastener" be read to cover the accused product? The case may turn on whether any secondary securing elements on the Sunsail Shade are construed as additional "fasteners," which would allow Defendant to evade the patent claims.
- A key evidentiary question will be one of functional performance: does the accused product's canopy operate in a way that its trailing end is "totally supported by wind," as required by the claims? Proving this functional limitation will likely require technical evidence and expert testimony regarding the product's aerodynamic behavior, which may become a central point of factual dispute.
- Finally, a significant question surrounds willfulness: given the alleged pre-issuance notice and subsequent product redesign, the court will have to examine whether Defendant's decision to continue selling the modified product after the patents issued constituted objective recklessness, especially in light of the specific and narrow limitations in the asserted claims.