PDT Original Designs LLC v. Hangemrightcom LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: PDT Original Designs, LLC (Utah)
  • Defendant: HangEmRight.com, LLC (Idaho)
  • Plaintiff’s Counsel: Hawley Troxell Ennis & Hawley, LLP; Kirton McConkie
• Case Identification: 4:17-cv-00315, D. Idaho, 08/02/2017
• Venue Allegations: Plaintiff alleges venue is proper in the District of Idaho because Defendant has committed acts of patent infringement, transacted business, and sold the accused product within the district.
• Core Dispute: Plaintiff alleges that Defendant’s ski hanger products infringe a patent related to an apparatus and system for storing skis by engaging the binder toe piece.
• Technical Context: The technology concerns the field of ski storage racks, aiming to provide a space-efficient method for vertically storing skis to prevent damage and reduce lateral wall space usage.
• Key Procedural History: The complaint alleges Defendant had pre-suit knowledge of the patent-in-suit as of January 2017. Subsequent to the complaint's filing, the patent-in-suit underwent an ex parte reexamination, which was requested on December 11, 2017. The reexamination resulted in the issuance of a certificate on July 3, 2019, which confirmed the patentability of amended claims, including the asserted Claim 1. This post-filing amendment of the asserted claim is a significant event that may affect questions of liability and damages.

Case Timeline

Date	Event
2009-09-15	U.S. Patent No. 8,915,382 Priority Date
2014-12-23	U.S. Patent No. 8,915,382 Issue Date
2017-01-31	Alleged earliest date of Defendant's notice of the patent
2017-08-02	Complaint Filing Date
2017-12-11	Request for Ex Parte Reexamination of '382 Patent filed
2019-07-03	Reexamination Certificate for '382 Patent issued

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

U.S. Patent No. 8,915,382 - Apparatus and System for Supporting a Ski

Issued December 23, 2014. Hereafter, the "’382 Patent".

The Invention Explained

• Problem Addressed: The patent's background describes the shortcomings of prior ski storage methods. Storing skis on their tails can cause damage, while existing racks that store skis with their side edges parallel to a wall occupy significant lateral space due to the width of the ski bindings (’382 Patent, col. 1:21-42).
• The Patented Solution: The invention is an apparatus that supports a ski by its binder toe piece, allowing it to hang vertically with its broad deck surface parallel to a support structure like a wall (’382 Patent, col. 2:12-18). The core of the apparatus is a "ski support member" with a "binder engaging portion" designed to fit within the receiving space of a ski's toe binding, and a "ski engaging portion" that contacts the ski's deck to maintain orientation (’382 Patent, col. 2:1-7; Fig. 2). A spacer is used to ensure the ski bindings do not interfere with the wall (’382 Patent, col. 2:8-11).
• Technical Importance: This design provides a space-efficient method for storing skis vertically off the ground, which protects the skis and reduces the horizontal footprint compared to other storage systems (’382 Patent, col. 2:43-49).

Key Claims at a Glance

• The complaint asserts infringement of Claim 1, and reserves the right to assert other claims (’382 Patent, col. 15:1-16:13; Compl. ¶20).
• The essential elements of the originally issued Claim 1 include:
  • An apparatus for supporting a ski comprising a ski support member, a spacer, and a coupling element.
  • The ski support member has a "binder engaging portion" and a "ski engaging portion."
  • The "binder engaging portion" is positionable within the receiving space of the ski's binder toe piece and engages the boot retention flange.
  • The "ski engaging portion" has a substantially flat surface that is engageable with the ski's deck surface to maintain a desirable orientation.
  • A negative limitation requires that the ski's "binder heel piece is substantially free from engagement with the ski support member."

III. The Accused Instrumentality

Product Identification

The complaint identifies the accused products as "its HangEmRight ski hanger products" (the "Infringing Product") (Compl. ¶6).

Functionality and Market Context

The complaint alleges the Infringing Product is a "ski hanger" that is advertised as "the most versatile ski hanger" (Compl. ¶¶ 6, 15). The products are allegedly sold through Defendant's own website as well as third-party retailers like campsaver.com and amazon.com (Compl. ¶16). The complaint does not provide specific details about the technical operation or construction of the accused product.

IV. Analysis of Infringement Allegations

The complaint alleges infringement of Claim 1 of the ’382 Patent but does not provide specific factual allegations that map the features of the Accused Instrumentality to the individual elements of the claim (Compl. ¶20). As such, a detailed claim chart cannot be constructed based on the complaint's text.

No probative visual evidence provided in complaint.

• Identified Points of Contention:
  • Evidentiary Questions: A threshold issue for the court will be whether Plaintiff can produce sufficient evidence to demonstrate that the "HangEmRight ski hanger" practices each element of the asserted claim. The lack of specific factual allegations in the complaint suggests that the details of the accused product's functionality will be a primary focus of discovery.
  • Technical Questions: A key technical dispute may arise over how the accused product interacts with a ski. The court will need to determine if the product includes a "binder engaging portion" that is "positionable within the receiving space" of the toe binding and engages the "boot retention flange," as claimed, or if it supports the ski through an alternative mechanism.
  • Scope Questions: The post-filing reexamination, which amended Claim 1, introduces a critical legal issue. The amended claim, for instance, recasts the apparatus as one for "hanging a ski" and requires the ski engaging portion to "abut" the deck surface "while the ski hangs" (Reexam. Cert., col. 1:21-2:2). These changes may alter the scope of the claim and raise questions of intervening rights, potentially limiting damages for any infringement that occurred prior to the issuance of the reexamination certificate.

V. Key Claim Terms for Construction

• The Term: "binder engaging portion"

  • Context and Importance: This term defines the core structure that interacts with the ski binding. The entire infringement analysis may depend on whether the accused product possesses a component that meets this definition. Practitioners may focus on this term because its construction will determine whether the patent covers only specific disclosed shapes or a broader category of structures that perform the same function.
  • Intrinsic Evidence for a Broader Interpretation: The specification describes the element functionally, as a portion that is "positionable within the receiving space defined by the deck surface of the ski and the boot retention flange" (’382 Patent, col. 2:1-4).
  • Intrinsic Evidence for a Narrower Interpretation: The patent discloses specific embodiments, such as a component with a "contour that matches a contour of the receiving space" or a "substantially rigid loop," which a party could argue limits the term's scope to the depicted structures (’382 Patent, col. 7:17-21, col. 11:36-38).

• The Term: "substantially free from engagement"

  • Context and Importance: This negative limitation in the original Claim 1, referring to the interaction between the binder heel piece and the support member, was a key element defining what the invention is not. While this term was removed during reexamination, its interpretation could be relevant to infringement arguments and potential damages accrued before the claim was amended. The ambiguity of "substantially" makes it a classic candidate for claim construction.
  • Intrinsic Evidence for a Broader Interpretation: A party could argue this permits incidental or insignificant contact, so long as the heel piece provides no meaningful support.
  • Intrinsic Evidence for a Narrower Interpretation: A party could argue the term requires a complete lack of contact, as the invention's purpose is to support the ski solely from the toe piece engagement (’382 Patent, col. 2:59-62).

VI. Other Allegations

• Indirect Infringement: The complaint does not contain a separate count for indirect infringement and does not allege specific facts, beyond general recitations, that would support a claim for inducement or contributory infringement (Compl. ¶20).
• Willful Infringement: The complaint alleges willful infringement based on pre-suit knowledge. It claims Defendant was on notice of the ’382 Patent "since at least January 2017" and continued its allegedly infringing acts with knowledge of the patent (Compl. ¶24).

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

• A central issue will be the impact of reexamination: Given that the asserted Claim 1 was substantively amended after the suit was filed, a critical question for the court will be one of intervening rights. The court must determine whether the amended claim is "substantially identical" to the original, which will dictate whether Plaintiff can recover damages for infringement that occurred before the reexamination certificate issued.
• A foundational question will be one of evidentiary proof: Can Plaintiff, having filed a complaint with only conclusory allegations, produce sufficient factual evidence to show that the accused "HangEmRight" product meets every limitation of the now-amended Claim 1, particularly the specific interactions required for "hanging" a ski by its "binder engaging portion"?
• A key legal battle will be over claim construction: The case may turn on the court's interpretation of critical terms in the amended claim, such as what it means for the apparatus to "hang" a ski and for the ski engaging portion to "abut" the ski's deck surface "while the ski hangs." Whether the accused product's operation falls within the scope of these terms will be decisive.