DCT
1:19-cv-20578
Sundaram v. Chico's FAS Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Durgamritha T. Sundaram (New York)
- Defendant: Chico's FAS, Inc. and White House Black Market, Inc. (Florida)
- Plaintiff’s Counsel: Edam Law PLLC
- Case Identification: 1:19-cv-20578, S.D. Fla., 02/12/2019
- Venue Allegations: Venue is alleged to be proper based on Defendants having a principal place of business in Florida and maintaining a regular and established place of business in Miami-Dade County, where acts of infringement have allegedly occurred.
- Core Dispute: Plaintiff alleges that Defendants’ line of reversible dresses infringes a patent related to a specific garment construction method for reversible dresses that prevents the inner fabric layer's color from showing at the hem.
- Technical Context: The technology pertains to the apparel industry, specifically the design and manufacturing of reversible garments that offer two distinct aesthetic appearances in a single item.
- Key Procedural History: The complaint alleges that Plaintiff sent Defendants a cease and desist letter on November 15, 2018, identifying the patent and potentially infringing products, which was allegedly ignored. This allegation forms the basis for the claim of pre-suit knowledge and willfulness.
Case Timeline
| Date | Event |
|---|---|
| 2012-12-04 | U.S. Patent No. 9,526,281 Priority Date |
| 2016-12-27 | U.S. Patent No. 9,526,281 Issue Date |
| 2018-11-15 | Plaintiff allegedly sent Cease and Desist letter |
| 2019-02-12 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,526,281 - "SHORT REVERSIBLE DRESSES" (issued Dec. 27, 2016)
The Invention Explained
- Problem Addressed: The patent identifies a difficulty in producing reversible garments where the hem is clean and does not allow "bits of either color peeking through" from the reverse side, a common issue with typical factory-produced hems that makes true, high-quality reversibility challenging to achieve. (’281 Patent, col. 1:29-38).
- The Patented Solution: The invention proposes a specific three-part construction. It uses a first (shorter) fabric layer and a second (longer) fabric layer. The key element is a separate "hem facing," made of the same fabric as the shorter layer, which is attached to the internal side of the longer layer. This hem facing is sized to cover the portion of the longer layer that extends below the shorter layer, creating a "two-tier" look and physically blocking the reverse-side fabric from being visible at the hem. (’281 Patent, Abstract; col. 5:18-34, Fig. 11).
- Technical Importance: This construction method offers a solution for manufacturing aesthetically clean reversible garments where the two sides are visually independent, addressing a known challenge in apparel production. (’281 Patent, col. 5:40-54).
Key Claims at a Glance
- The complaint asserts independent claim 1.
- The essential elements of independent claim 1 include:
- A first layer of fabric having a first length, a first top end, a first bottom end, a first external side and a first internal side;
- A second layer of fabric having a second length longer than the first length, with its top end attached to the first top end;
- A hem facing having a bottom hem end attached to the second bottom end on the second internal side and having a top hem end attached to the second internal side between the first bottom end and the first top end;
- Wherein the size of the hem facing is selected so that the hem facing covers the second layer of fabric between the first bottom end and the second bottom end.
- The complaint reserves the right to assert dependent claims 2, 3, 5, 6, 7, 8, and 9. (Compl. ¶¶ 15, 24-30).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are a series of "Reversible Dress" models sold by Defendant White House Black Market. The complaint identifies one specific model by class and style number (CLASS 772351601, STYLE 570241302) and provides a non-exhaustive list of over 20 other accused style numbers. (Compl. ¶¶ 15, 19).
Functionality and Market Context
The accused products are described as reversible dresses, with one side being a solid color (e.g., black) and the other side featuring a pattern (e.g., floral). (Compl. ¶ 15, p. 4-5). The complaint alleges these dresses are constructed with two fabric layers of different lengths and a hem structure that infringes the ’281 Patent. The complaint includes a screenshot of the accused product being sold on Defendant's website, suggesting its commercial availability. (Compl. ¶ 17, p. 7).
IV. Analysis of Infringement Allegations
'281 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a first layer of fabric having a first length, a first top end, a first bottom end, a first external side and a first internal side; | The accused Dress has a first, shorter layer of fabric, identified as being "plain black or solid color." | ¶15 | col. 4:56-58 |
| a second layer of fabric having a second length longer than the first length, a second bottom end, a second top end attached to the first top end... and a second internal side in operative contact with the first internal side; | The accused Dress has a second, longer layer of fabric, identified as being "flower-patterned." The top ends are allegedly attached by stitching, and the internal sides are in operative contact. | ¶15 | col. 4:53-64 |
| a hem facing having a bottom hem end attached to the second bottom end on the second internal side and having a top hem end attached to the second internal side between the first bottom end and the first top end... | The accused Dress allegedly has a "hem facing 150" with a bottom hem attached to the second layer's bottom end and a top hem attached to the second layer's internal side "about three inches above the first bottom end 124," allegedly via a blind stitch. | ¶15 | col. 5:18-29 |
| wherein the size of the hem facing is selected so that the hem facing covers the second layer of fabric between the first bottom end and the second bottom end. | The hem facing on the accused Dress is alleged to be "about four inches," a size selected to cover the fabric and create a "layered or two-tier look" while preventing the reverse-side color from showing. The complaint includes a side-by-side visual comparing the patent's Figure 11 to the accused dress, annotating these corresponding parts. (Compl. ¶ 16, p. 7). | ¶15 | col. 5:30-34 |
- Identified Points of Contention:
- Structural Questions: A primary factual dispute will likely concern whether the accused dresses actually contain a separate "hem facing" element as claimed, or if they employ a different construction (e.g., a simple fold-over hem or a two-piece skirt) that achieves a visually similar result. The complaint's specific allegation of a "blind stitch" suggests Plaintiff has physically inspected the garment, but this will be subject to discovery and expert testimony. (Compl. ¶ 15, p. 5).
- Scope Questions: The case may turn on the interpretation of the claim term "hem facing." The infringement analysis hinges on whether the accused product's construction falls within the definition of this term as it is used in the patent.
V. Key Claim Terms for Construction
The Term: "hem facing"
- Context and Importance: This term describes the central structural element of the invention. The entire infringement theory depends on proving that the accused dress possesses a structure that meets the definition of a "hem facing." Practitioners may focus on this term because its construction will likely determine whether the accused product's structure literally infringes.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue the term should be given its plain and ordinary meaning in the context of sewing and apparel, potentially encompassing any piece of material used to finish or face a hem, without being limited to the exact illustrated embodiment.
- Evidence for a Narrower Interpretation: The specification consistently describes the "hem facing 150" as a discrete component with a specific purpose: "The difference is filled in by hem facing 150 that uses the same color or pattern fabric as the first layer of fabric 120." (’281 Patent, col. 5:15-17). The detailed description and Figure 11 show it as a distinct strip of fabric attached at both its top and bottom edges to the second fabric layer, which may support a narrower construction requiring a separate, dedicated element. (’281 Patent, col. 5:18-29).
The Term: "size of the hem facing is selected so that..."
- Context and Importance: This is a functional limitation that defines the dimension of the "hem facing" by its purpose—to cover a specific region of fabric. A dispute could arise over whether this requires proof of the designer's intent ("selected") or is met if the structure merely performs the function.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A plaintiff may argue that if the hem structure of the accused product inherently achieves the covering function described, the "selected so that" requirement is met, regardless of the defendant's stated design rationale. The complaint argues the size is "likely to ensure the fabric is covered if the two layers move around when worn," implying a functional interpretation. (Compl. ¶ 15, p. 5).
- Evidence for a Narrower Interpretation: A defendant may argue that "selected" implies a specific, conscious design choice to solve the problem of color "peeking through," as described in the patent's background. (’281 Patent, col. 1:33-36). If the dimensions of the accused structure were chosen for other reasons (e.g., purely aesthetic or for manufacturing efficiency), a defendant could argue this limitation is not met.
VI. Other Allegations
- Willful Infringement: The complaint alleges willful infringement. The primary basis for this claim is a cease and desist letter Plaintiff allegedly sent to Defendants on November 15, 2018, which purportedly provided pre-suit notice of the ’281 Patent and the alleged infringement. (Compl. ¶ 34, n.1). The complaint further alleges willfulness based on knowledge obtained upon service of the complaint itself. (Compl. ¶ 34).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of structural identity: Does the accused dress’s construction, upon factual examination, incorporate a discrete "hem facing" element that is attached in the specific manner recited in claim 1, or does it utilize a different and non-infringing construction that merely creates a similar layered appearance?
- The outcome will likely hinge on a question of claim scope: How will the court construe the term "hem facing"? Will it be limited to the specific embodiment of a separate fabric piece shown in the patent's figures, or can it be interpreted more broadly to cover other multi-layer hem constructions that perform a similar function of finishing a hem and masking an inner layer?
- A key evidentiary question will be one of intent and function: Can the plaintiff prove that the dimensions of the accused product's hem structure were "selected" to perform the specific covering function required by the claim, as opposed to being an incidental result of a different design choice?