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); C.L.O. Company LLC (Texas); Bluebonnet Cut & Sew, LLC (Texas)
- Plaintiff’s Counsel: Findlay Craft P.C.; Womble Bond Dickinson (US) LLP
- Case Identification: 6:24-cv-00297, W.D. Tex., 10/10/2024
- Venue Allegations: Venue is alleged based on Defendants' infringing acts within the district, including the sale of the Accused Product. Two defendants, C.L.O. Company and Bluebonnet Cut & Sew, are Texas entities residing in the state. The complaint further alleges that NB Shades purposefully directs its business activities to Texas and uses the Texas-based defendants as its agents for product modification, assembly, and distribution.
- Core Dispute: Plaintiff alleges that Defendants’ "Sunsail Shade" product infringes patents related to lightweight, wind-supported beach shades.
- Technical Context: The technology concerns portable shading systems designed to be stabilized by ambient wind, offering an alternative to traditional beach umbrellas that can be destabilized by the same conditions.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant NB Shades with notice of the soon-to-issue patents. Following the patents' issuance, Plaintiff alleges that Defendants were again notified of the infringement but continued selling a "new" version of the accused product, which Plaintiff contends still infringes.
Case Timeline
| Date | Event |
|---|---|
| 2016-10-18 | '273 & '876 Patents Priority Date |
| 2024-03-21 | Plaintiff sends notice letter to Defendant NB Shades |
| 2024-04-02 | U.S. Patent 11,946,273 Issues |
| 2024-04-05 | NB Shades responds to Plaintiff's letter |
| 2024-04-30 | U.S. Patent 11,970,876 Issues |
| 2024-05-03 | NB Shades allegedly begins selling redesigned product |
| 2024-10-10 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,946,273 - "SHADING SYSTEM AND METHOD OF USE"
- Patent Identification: U.S. Patent No. 11,946,273, "SHADING SYSTEM AND METHOD OF USE," issued April 2, 2024.
The Invention Explained
- Problem Addressed: The patent identifies that prior art shading systems are often "ineffective or impractical," citing issues such as susceptibility to wind, cumbersome transport, and difficult assembly (’273 Patent, col. 1:39-49; Compl. ¶12).
- The Patented Solution: The invention is a transportable shading system comprising a canopy supported by a single, sectional frame. A key aspect of the design is that the trailing end of the canopy is not physically anchored but is instead "at least partially supported by wind," which provides stability. (’273 Patent, col. 1:49-53). The frame itself is designed to be configurable between a compact transport state and an arched supporting state, as depicted in Figure 1. (’273 Patent, Fig. 1).
- Technical Importance: The design innovates by utilizing wind, a force that typically destabilizes conventional beach umbrellas, as a functional element for aerial suspension and structural integrity (’273 Patent, col. 1:49-53).
Key Claims at a Glance
- The complaint asserts independent Claim 6, and notes infringement of "one or more claims" of the patent (Compl. ¶22).
- Essential elements of independent Claim 6 include:
- A frame made of multiple engageable/disengageable sections with an "aligning component."
- A canopy with a suspension end and an opposing trailing end.
- The suspension end includes "only a single fastener" to engage the frame.
- The single fastener is a "loop" extending at least partially along the suspension end.
- The trailing end is "totally supported by wind" and spaced apart from the frame.
- A container for housing and transporting the system components.
U.S. Patent No. 11,970,876 - "SHADING SYSTEM AND METHOD OF USE"
- Patent Identification: U.S. Patent No. 11,970,876, "SHADING SYSTEM AND METHOD OF USE," issued April 30, 2024.
The Invention Explained
- Problem Addressed: Like its related patent, the ’876 Patent addresses the shortcomings of conventional outdoor shading systems, which are described as often being "cumbersome to transport or assemble" or having a "rigid canopy susceptible to being shifted or unanchored by wind" (’876 Patent, col. 1:39-42).
- The Patented Solution: The patent describes a similar shading system where a flexible canopy is aerially suspended by a sectional frame. The ends of the frame are secured directly to a surface (e.g., sand), creating an arch that supports the canopy's leading edge while the trailing edge flies freely in the wind. (’876 Patent, Abstract; col. 1:56-62).
- Technical Importance: This approach also focuses on creating a wind-resilient and easily portable shade structure by fundamentally rethinking how the canopy interacts with both the frame and the surrounding airflow (’876 Patent, col. 1:46-49).
Key Claims at a Glance
- The complaint asserts independent Claim 1, and notes infringement of "one or more claims" of the patent (Compl. ¶33).
- Essential elements of independent Claim 1 include:
- A frame of multiple sections maneuverable between transport and supporting configurations.
- The frame includes first and last sections for engaging a surface and adjacent sections between them.
- The adjacent sections include an "aligning component" providing "supporting tension."
- A canopy with a suspension end and a trailing end.
- The trailing end is "totally supported by wind."
- A loop on the suspension end for engaging the frame, with the loop "being the only fastener" for securing the canopy.
III. The Accused Instrumentality
Product Identification
- The "Sunsail Shade" product (Compl. ¶7).
Functionality and Market Context
- The complaint alleges the Sunsail Shade is a portable shading system that unlawfully copies the Plaintiff's patented technology (Compl. ¶17). Defendants are accused of importing components, with Defendant Bluebonnet modifying the canopy and Defendant C.L.O. assembling the final product for distribution and sale through various channels, including a dedicated website, Amazon, and Walmart.com (Compl. ¶¶8-10, 18). The complaint includes a photograph of the Plaintiff's "Shibumi Shade" product in use on a beach, illustrating the general configuration of a wind-supported canopy held aloft by an arched frame (Compl. p. 5). The complaint alleges the Accused Product operates in a similar manner, consisting of a frame, a canopy, and a carrying container (Compl. ¶¶24-31).
IV. Analysis of Infringement Allegations
The complaint alleges infringement of one or more claims of each patent but provides narrative allegations with citations to claim chart exhibits that were not attached to the pleading. The following tables summarize the allegations for the lead asserted claims based on the complaint's narrative text.
’273 Patent Infringement Allegations
| Claim Element (from Independent Claim 6) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a frame defined by a plurality of sections and comprising an aligning component... | The complaint alleges the Accused Product comprises a frame with these features. | ¶25 | col. 5:26-33 |
| 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... | The complaint alleges the Accused Product's frame sections are engageable and disengageable as claimed. | ¶26 | 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 complaint alleges the Accused Product comprises a canopy with a suspension end and a trailing end. | ¶27 | col. 4:25-27 |
| the suspension end of the canopy including only a single fastener that engages the canopy with the frame... | The complaint alleges the Accused Product's canopy suspension end includes a single fastener. | ¶28 | col. 10:20-23 |
| the trailing end of the canopy is spaced apart from the frame... such that the... trailing end is totally supported by wind... | The complaint alleges the Accused Product's trailing end is spaced from the frame and supported by wind. | ¶29 | col. 8:45-53 |
| wherein the single fastener comprises a loop extending at least partially through a length of suspension end... | The complaint alleges the Accused Product's single fastener is a loop. | ¶30 | col. 9:11-14 |
| a container capable of housing and transporting the components of the system therein. | The complaint alleges the Accused Product includes a container for transport. | ¶31 | col. 6:55-58 |
’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 supporting configuration... | The complaint alleges the Accused Product comprises a frame with these features. | ¶36 | col. 7:15-19 |
| a first section defining a left end of the frame engaged with the surface; a last section defining a right end of the frame engaged with the surface... | The complaint alleges the Accused Product's frame has ends that engage with the ground surface. | ¶37 | col. 7:20-24 |
| one or more adjacent sections... comprising at least one aligning component affixed to one or more of the adjacent sections... and providing supporting tension... | The complaint alleges the Accused Product's adjacent sections include an aligning component providing tension. | ¶39 | col. 7:25-33 |
| a canopy extending between a first end and an second end, the first end... defining a suspension end capable of being engaged with the frame... | The complaint alleges the Accused Product comprises a canopy with a suspension end for engaging the frame. | ¶41, ¶42 | col. 7:36-40 |
| the second end of the canopy defines a trailing end spaced apart from the frame... and the trailing end of the canopy is totally supported by wind... | The complaint alleges the Accused Product's trailing end is spaced from the frame and supported by wind. | ¶43 | col. 7:41-47 |
| 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 complaint alleges the Accused Product's loop is the only fastener securing the canopy to the frame. | ¶44 | col. 7:48-52 |
- Identified Points of Contention:
- Scope Questions: Both asserted claims include a potentially critical limitation: that a loop is the "only a single fastener" ('273 Patent) or "the only fastener" ('876 Patent) securing the canopy to the frame. A central dispute may arise over whether the Accused Product contains any additional structures that could be construed as "fasteners," potentially taking it outside the literal scope of this limitation.
- Technical Questions: Both claims require the canopy's trailing end to be "totally supported by wind." This raises an evidentiary question about the required degree of support. The court may need to determine what evidence is sufficient to prove the accused canopy is "totally" supported by wind during its intended use, as opposed to being merely influenced by it or partially drooping.
V. Key Claim Terms for Construction
The Term: "only a single fastener" / "the only fastener"
Context and Importance: This term appears in both asserted claims and acts as a negative limitation, defining what is not present. Practitioners may focus on this term because if the Accused Product can be shown to use more than one structure to "fasten" the canopy to the frame, non-infringement could be established. The dispute will center on the definition of "fastener" and the exclusivity implied by "only" and "the only."
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue "fastener" refers only to dedicated, manufactured fastening components (e.g., snaps, ties, hooks) and does not include incidental contact or friction from simply wrapping material. The specification's general description of securing the canopy could be cited to suggest the overall goal is securement, not a specific number of fastening points.
- Evidence for a Narrower Interpretation: The plain language of the claims strongly supports a narrow interpretation. The '273 Patent claims a suspension end "including only a single fastener" (col. 10:20-23, Claim 6), and the '876 Patent claims "the loop being the only fastener" (col. 7:51-52, Claim 1). This explicit language suggests the patentee intended to distinguish the invention from prior art that might have used multiple ties or clips.
The Term: "totally supported by wind"
Context and Importance: This functional limitation describes the state of the canopy's trailing end. Its construction is critical because it sets a high bar for infringement. A defendant will likely argue its product does not meet this "totally" supported requirement.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A plaintiff may point to the specification's summary, which describes a flexible canopy "capable of being at least partially supported by wind" ('273 Patent, col. 1:50-51), to argue that "totally" should not be read so rigidly as to be inoperable. It could be argued that "totally" distinguishes the trailing end from the leading edge (supported by the frame), meaning the trailing end's position is dictated entirely by aerodynamics rather than direct structural connection.
- Evidence for a Narrower Interpretation: The claim language itself is the strongest evidence for a narrow reading. The choice of "totally" over "partially" or "substantially" suggests a complete, rather than partial, state of support from wind is required in the claimed configuration. The patent drawings, such as Figure 1 in both patents, depict the canopy as fully aloft and billowed out by an unseen wind force.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement against NB Shades based on its sales, marketing, and instructional materials (e.g., a "How to Setup Your Sunsail Shade" video) that allegedly encourage customers to use the product in an infringing manner (Compl. ¶54, ¶63). It also alleges inducement and contributory infringement against Bluebonnet for manufacturing and supplying the canopy, described as a material component especially adapted for infringing use and not a staple article of commerce (Compl. ¶55-56, ¶64-65).
- Willful Infringement: Willfulness is alleged based on both pre- and post-suit knowledge. The complaint pleads pre-suit notice via a letter sent on March 21, 2024, before the patents issued, and subsequent correspondence where Defendants allegedly refused to cease infringement after the patents were granted (Compl. ¶46-48, ¶58, ¶67).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope and factual proof: can the Plaintiff demonstrate that the Accused Product's canopy is secured by what can be legally construed as "only" one "fastener," and what level of evidentiary proof will be required to show that the product's trailing end is "totally supported by wind" in its normal configuration?
- A key question for willfulness and damages will turn on the effect of the alleged product redesign. The court will likely examine whether the "new" product, sold after Plaintiff's notice, continues to infringe, and whether the Defendants' decision to proceed with sales in light of Plaintiff's allegations meets the standard for subjective willfulness.
- The case may also involve questions of joint and divided infringement liability, given the complaint's description of a multi-party supply chain where one defendant imports components, another modifies the canopy, and a third assembles the final product at the direction of the primary defendant (Compl. ¶¶8-10).