DCT
8:24-cv-00355
Coanhe Ltd v. Viva 5 Group LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Coanhe, Ltd. (South Carolina)
- Defendant: Viva 5 Group, LLC d/b/a Risque and Growve Go, LLC d/b/a Risque (Florida)
- Plaintiff’s Counsel: Womble Bond Dickinson (US) LLP
- Case Identification: 8:24-cv-00355, M.D. Fla., 02/06/2024
- Venue Allegations: Venue is based on Defendants being Florida corporations with a principal place of business within the district, and the allegation that infringing activities, including offers for sale and distribution, occurred within the district.
- Core Dispute: Plaintiff alleges that Defendants’ “Risqué Cover” product infringes a design patent for a flexible, anatomy-concealing garment insert.
- Technical Context: The technology relates to personal apparel accessories, specifically silicone inserts worn to create a smooth contour and prevent unwanted fabric bunching in form-fitting clothing.
- Key Procedural History: The complaint alleges that Defendants received actual notice of the patent-in-suit in May 2022, when a prior version of their product was removed from Amazon.com following a takedown request submitted by Plaintiff. The complaint also notes that Plaintiff has a pending utility patent application directed to the functional aspects of its garment insert.
Case Timeline
| Date | Event |
|---|---|
| 2016-01-01 | Inventor began developing the concept for the garment insert. |
| 2019-09-25 | Application for U.S. Design Patent D894,529 filed (priority date). |
| 2020-03-01 | Plaintiff launched its Nōshō Below® brand and products. |
| 2020-09-01 | U.S. Design Patent D894,529 issued. |
| 2022-03-22 | ’529 Patent assigned to Plaintiff Coanhe, Ltd. |
| 2022-05-01 | Alleged actual notice to Defendants via Amazon.com takedown request. |
| 2023-01-01 | Defendants allegedly began selling Accused Product on Target.com. |
| 2024-02-06 | Complaint filed. |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. D894,529 - "FLEXIBLE GARMENT INSERT"
- Patent Identification: U.S. Design Patent No. D894,529, issued September 1, 2020.
The Invention Explained
- Problem Addressed: The complaint describes a long-standing problem of "undesirable bunching in certain clothing styles" for women (Compl. ¶8).
- The Patented Solution: The patent does not describe a problem or solution but claims the ornamental design for the article of manufacture. The design, as depicted in the patent's figures, is for a smooth, ovoid-shaped insert with a convex outer surface and a concave inner surface, featuring a gentle taper and rounded edges ('529 Patent, Figs. 1-8). The complaint characterizes this as an "organic ornamental shape" that provides a "visually-pleasing aspect" (Compl. ¶10).
- Technical Importance: The complaint alleges that the product embodying the patented design achieved "significant initial commercial success" and gained "widespread recognition for its superior design and high quality" (Compl. ¶12, 14).
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is: "The ornamental design for a flexible garment insert, as shown and described." ('529 Patent, CLAIM).
- The scope of the claim is defined by the visual appearance of the article as depicted in the patent's eight figures, which show the design from isometric, front, rear, side, top, and bottom views.
III. The Accused Instrumentality
Product Identification
The "Risqué Camel Toe Concealer Cover," also referred to as the "Risqué Cover" (Compl. ¶7).
Functionality and Market Context
- The Accused Product is an anatomy-concealing garment insert sold by Defendants under the "Risqué" brand (Compl. ¶3, 7). The complaint alleges the product is promoted and sold through various online channels, including a dedicated Shopify website and Target.com (Compl. ¶26, 27).
- Plaintiff alleges the Accused Product is a "nearly identical copy" of its own Nōshō Below® product, which embodies the patented design (Compl. ¶24). The complaint includes a side-by-side photographic comparison to support this allegation (Compl. ¶24, p. 8).
- An image in the complaint shows the Accused Product offered for sale with its packaging (Compl. ¶36, p. 14).
IV. Analysis of Infringement Allegations
The standard for design patent infringement is whether, in the eye of an ordinary observer, the resemblance between the patented design and the accused design is such as to deceive the observer into purchasing one supposing it to be the other. The complaint's primary infringement allegation rests on a direct visual comparison. The complaint provides a detailed, multi-page visual chart comparing figures from the '529 Patent with photographs of the Accused Product (Compl. ¶34, pp. 11-13).
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a flexible garment insert, as shown and described. | The complaint alleges that the overall ornamental design of the Accused Product, the "Risqué Cover," is "substantially the same" and "nearly identical" to the design claimed in the '529 Patent. This allegation is supported by visual comparisons of the products' overall shape, proportions, surface curvature, and profile views. | ¶34, 43 | '529 Patent, Figs. 1-8 |
- Identified Points of Contention:
- Scope Questions: The central issue for infringement will be the application of the "ordinary observer" test. A dispute may arise over whether any subtle differences in shape, contour, or proportions between the patent drawings and the physical Accused Product are sufficient to create a different overall visual impression.
- Technical Questions: While not a technical case in the utility patent sense, the analysis will depend on comparing the two-dimensional patent drawings to the three-dimensional accused product. The court will need to determine how an ordinary observer perceives the claimed design, which is defined by static line drawings, in relation to the physical, pliable accused article.
V. Key Claim Terms for Construction
In design patent cases, claim construction is typically not a central issue, as the claim is defined by the drawings. However, disputes can arise over the scope of the design's protection, particularly concerning functionality.
- The Term: The scope and validity of the "ornamental design."
- Context and Importance: A design that is primarily dictated by its function is not protectable under design patent law. Practitioners may focus on this issue as a potential validity defense, particularly because the complaint discusses the functional purpose of the insert and references a pending utility patent application for the same product. The question is whether the claimed design is a matter of aesthetic choice or a necessary result of the article's function.
- Intrinsic Evidence for Interpretation:
- Evidence for an Ornamental Interpretation: The complaint alleges the inventor sought to create a "pleasing and complementary ornamental appearance" and that the resulting product has an "organic ornamental shape" and a "visually-pleasing aspect" (Compl. ¶9, 10). This language suggests the design was based on aesthetic considerations.
- Evidence for a Functional Interpretation: The complaint also states the inventor's goal was to "achieve the desired function" (Compl. ¶9). More significantly, it discloses that Plaintiff has a pending utility patent application (No. 17/662,103) directed to the "functional and non-ornamental aspects" of the insert (Compl. ¶18). A defendant may argue that this filing is evidence that the product's shape is dictated by its function, potentially rendering the design patent invalid.
VI. Other Allegations
- Indirect Infringement: The complaint includes an alternative allegation of induced infringement, asserting that Defendants encourage and promote the infringing use and sale of the Accused Product by others (Compl. ¶42).
- Willful Infringement: The willfulness claim is based on two primary allegations. First, the complaint alleges Defendants had actual knowledge of the '529 Patent and their infringement "at least as early as May 2022" due to an Amazon.com takedown notice initiated by Plaintiff for a prior version of the Accused Product (Compl. ¶32, 45). Second, it alleges constructive knowledge since the patent's issuance date due to Plaintiff's marking of its own products (Compl. ¶20, 46). The allegation is that Defendants' conduct of resuming sales in mid-2023, despite this notice, was willful and deliberate (Compl. ¶33, 45).
VII. Analyst’s Conclusion: Key Questions for the Case
- A primary question will be one of visual comparison: in the eye of an ordinary observer familiar with the prior art, is the overall ornamental design of the accused "Risqué Cover" substantially the same as the design claimed in the '529 Patent, or are there sufficient visual differences to avoid infringement?
- A potential defense may raise a question of validity based on functionality: is the specific shape and contour of the patented design primarily ornamental, or is it dictated by its function of concealing anatomy? The existence of Plaintiff's pending utility patent application for the same product will likely be a central point of evidence in this analysis.
- A key factual dispute for willfulness and damages will be the effect of prior notice: does the alleged May 2022 Amazon takedown request establish pre-suit knowledge of infringement, making Defendants’ subsequent sales of the product an objectively reckless disregard of Plaintiff’s patent rights?