DCT
5:21-cv-00046
Linda's Leather LLC v. Zambrano
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Linda's Leather, LLC (Kentucky)
- Defendant: Victor Zambrano (Kentucky) and Horse Cents, Inc. (Kentucky)
- Plaintiff’s Counsel: Duncan Galloway Egan Greenwald, PLLC
- Case Identification: 5:21-cv-00046, E.D. Ky., 02/15/2021
- Venue Allegations: Venue is alleged to be proper because Defendants are residents of the judicial district, have committed acts of infringement there, and maintain a regular and established place of business in the district.
- Core Dispute: Plaintiff alleges that Defendants’ cribbing collar products infringe a utility patent and a design patent related to an infinitely adjustable and secure horse collar.
- Technical Context: The technology concerns anti-cribbing collars, a type of equine tack designed to prevent horses from engaging in a compulsive behavior that can damage property and harm the animal's health.
- Key Procedural History: The complaint alleges a history of communications regarding the accused conduct, with Plaintiff asserting that Defendants were aware of its patenting efforts since 2017 and received actual notice of the issued patents via attorney letters on October 1, 2019, and December 13, 2019. These allegations of pre-suit notice form the basis for a claim of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2016-04-08 | '129 Patent Priority Date |
| 2016-10-19 | Plaintiff alleges first communication with Defendants regarding their activities |
| 2017-01-12 | '783 Patent Priority (Filing) Date |
| 2017-01-01 | Plaintiff alleges Defendant aware of patenting efforts "since 2017" |
| 2019-09-03 | '129 Patent Issue Date |
| 2019-10-01 | Plaintiff alleges sending attorney letter providing notice of issued patents |
| 2019-12-10 | '783 Patent Issue Date |
| 2019-12-13 | Plaintiff alleges sending "Further Notice" letter regarding patents |
| 2021-02-15 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,398,129 - "Infinitely Adjustable Collar with Multiple Securements," issued September 3, 2019
The Invention Explained
- Problem Addressed: The patent’s background section states that prior art anti-cribbing collars for horses can be ineffective or harmful. Some are not stiff enough to prevent the horse from bending them, while others can be loosened or removed by the horse rubbing against a fixed object (e.g., a fence) or by another horse pulling on the collar ('129 Patent, col. 1:16-28).
- The Patented Solution: The invention is a collar with a unique two-part fastening system. First, it uses an "alligator mouth arrangement" where one end of the main collar strip is inserted between a hinged flap and the other end of the strip, allowing for a precise, "infinitely adjustable" fit using hook-and-loop fasteners ('129 Patent, col. 2:35-48). Second, a separate, narrower, and more flexible "securement strap" is wrapped over the main closure and passed through a ring, making it difficult for the horse to dislodge the collar by rubbing ('129 Patent, col. 3:24-38).
- Technical Importance: This design purports to create a collar that is sufficiently stiff to prevent cribbing, can be adjusted to a precise length without harming the horse, and includes a secondary securement that resists being loosened or removed by the animal ('129 Patent, col. 2:31-44).
Key Claims at a Glance
- The complaint asserts infringement of one or more claims, providing the text of independent Claim 1 as an example (Compl. ¶19, p. 11).
- Essential elements of Claim 1 include:
- A main collar strip.
- An "alligator flap" overlying one end of the strip, secured at a recessed hinge point to form an "alligator mouth arrangement."
- Hook-and-loop fastener material on the flap and collar strip, arranged so the second end of the strip can be inserted into the "mouth" and secured to establish the collar's length.
- A "securement strap" that projects over the free end of the alligator flap to secure it in a closed position.
- The securement strap is recessed from the top and bottom edges of the alligator flap and is "more flexible" than the flap.
U.S. Design Patent No. D869,783 - "Horse Collar," issued December 10, 2019
The Invention Explained
- Problem Addressed: Not applicable. Design patents protect the ornamental, non-functional appearance of an article of manufacture. The complaint alleges the design is "distinctive" (Compl. ¶13).
- The Patented Solution: The patent claims the specific visual appearance of the horse collar as depicted in its figures. Key ornamental features include the proportions of the main collar body, the appearance of the overlapping closure mechanism, the placement and look of the narrower secondary strap, and the stitched seam lines along the edges (’783 Patent, Figs. 1-6).
- Technical Importance: Not applicable. The value is in the unique, non-functional design aesthetics.
Key Claims at a Glance
- The patent contains a single claim: "The ornamental design for a horse collar, as shown and described" (’783 Patent, Claim). This claim protects the overall visual impression created by the design shown in the patent's drawings.
III. The Accused Instrumentality
Product Identification
- The "Zambrano cribbing collar" (Compl. ¶6).
Functionality and Market Context
- The complaint identifies the accused product as an anti-cribbing horse collar manufactured by Defendant Horse Cents, Inc. and marketed and sold by Defendant Victor Zambrano (Compl. ¶6, ¶7). It is alleged to be sold online and through brick-and-mortar retail channels (Compl. ¶7). The complaint provides several images of the accused product, including a perspective view (Image 4), a detail view of its closure (Image 5), and an unfurled view (Image 6), which together depict its structure and fastening mechanism (Compl. pp. 4-5).
IV. Analysis of Infringement Allegations
’129 Patent Infringement Allegations
The complaint alleges that the Zambrano cribbing collar infringes Claim 1 of the ’129 Patent (Compl. ¶19). It provides visual comparisons between the accused product and patent figures to support this allegation (Compl. pp. 9-11). The image labeled "Comparison #3" shows the unfurled accused product, illustrating its strap and flap construction (Compl. p. 11).
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a main collar strip having a first width, inner and outer surfaces, top and bottom edges and first and second ends; | The accused product is comprised of a main collar strip. | ¶19; p. 11 | col. 2:28-29 |
| an alligator flap overlying said outer surface of said main collar strip adjacent to said first end, said alligator flap having top and bottom edges, a hinge end and a free end, with said hinge end secured to said main collar strip at a point recessed from said first end of said main collar strip to form an alligator mouth arrangement... | The accused product is depicted with an overlapping flap structure at one end, which the complaint alleges forms the claimed "alligator mouth arrangement." | ¶19; p. 10 | col. 2:29-38 |
| wherein said inner surface of said alligator flap and said corresponding outer surface portion of said main collar strip... include hook-and-loop fastener material, and wherein said second end of said main collar strip... can be inserted between and secured... to establish an effective length of said collar; | The complaint’s images suggest the accused product uses hook-and-loop fasteners to allow one end of the collar to be inserted into the flap structure and secured at a variable length. | ¶19; p. 11 | col. 3:1-16 |
| a securement strap projecting over and beyond said free end of said alligator flap to secure said alligator flap in a closed position; | The accused product includes a secondary strap that appears to wrap over the primary closure mechanism. The image labeled "Comparison #2" shows this strap in a fastened position (Compl. p. 10). | ¶19; p. 10 | col. 2:53-56 |
| said securement strap being recessed in from said top and bottom edges of said alligator flap and being more flexible than said alligator flap. | The images show the secondary strap is narrower than the main collar body, and the complaint alleges it is also more flexible. | ¶19; p. 10 | col. 2:57-64 |
’783 Patent Infringement Allegations
The complaint alleges that the ornamental design of the Zambrano cribbing collar infringes the ’783 Patent (Compl. ¶19). Instead of a claim chart, the complaint presents side-by-side visual comparisons of the accused product and figures from the design patent (Compl. pp. 9-10). "Comparison #1" places a photograph of the accused collar next to Figure 1 of the ’783 Patent, inviting a direct visual comparison of their overall perspective appearance (Compl. p. 9). The legal test for design patent infringement is whether an "ordinary observer," familiar with the prior art, would be deceived into believing the accused design is the same as the patented design. The complaint's visual evidence is intended to demonstrate this similarity.
- Identified Points of Contention:
- Scope Questions: A central question for the ’129 Patent will be whether the accused product’s closure mechanism constitutes an "alligator mouth arrangement" as that term is defined and described in the patent. The analysis may focus on whether the accused product's flap is secured at a "point recessed from said first end" in the specific manner claimed.
- Technical Questions: For the ’129 Patent, a factual question may arise regarding the relative flexibility of the accused product's main flap and its secondary "securement strap," as the claim requires the strap to be "more flexible."
- Visual Similarity: For the ’783 Patent, the dispute will center on the overall visual impression. The court will need to determine if the similarities in shape, proportions, and surface ornamentation between the accused collar and the patent drawings are substantial enough to meet the "ordinary observer" test, or if any differences are significant enough to avoid infringement.
V. Key Claim Terms for Construction
- The Term: "alligator mouth arrangement" (from Claim 1 of the ’129 Patent)
- Context and Importance: This is a patentee-coined term that is central to the claimed adjustment and securement mechanism. The infringement analysis for the ’129 Patent will likely depend on how broadly or narrowly this term is construed. Practitioners may focus on this term because its definition is not standard in the art and is explicitly tied to a specific structure in the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent summary states the invention provides a collar that "can be infinitely adjusted" ('129 Patent, col. 2:39-40), which could suggest the term encompasses any hinged flap structure that allows for such adjustability.
- Evidence for a Narrower Interpretation: The detailed description defines the arrangement more precisely: "The alligator flap 16 is secured at its first end to the main collar strip 11 at a point 15, which, in this embodiment, is recessed about six inches from the first end 14 of the main collar strip 11" ('129 Patent, col. 2:30-34). This specific, recessed hinge point could be argued to be a limiting feature of the "arrangement."
VI. Other Allegations
- Indirect Infringement: The complaint includes general allegations of contributory and induced infringement (Compl. ¶19). However, it does not plead specific facts, such as quoting from user manuals or marketing materials, that would detail how Defendants allegedly encouraged others to infringe.
- Willful Infringement: The complaint alleges that Defendants' infringement was and is willful (Count III, ¶¶38-41). This allegation is supported by specific factual claims, including that Defendants had notice of Plaintiff’s patenting efforts since 2017 (Compl. ¶17), received communications about their activities as early as October 2016 (Compl. ¶22), and received actual notice of the issued patents via attorney letters dated October 1, 2019, and December 13, 2019 (Compl. ¶17, ¶21).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the patentee-coined term "alligator mouth arrangement" from the '129 Patent be construed to cover the specific closure mechanism of the accused collar, or does the patent's detailed description limit the term to a structure with a significantly recessed hinge point not present in the accused product?
- A second central question will be one of visual identity: for the '783 Design Patent, would an ordinary observer, considering the collar as a whole, be deceived into thinking the accused Zambrano collar is the same as the patented design, or are the visual differences sufficient to distinguish them?
- Finally, a key question will be one of culpability: do the complaint’s specific allegations of a multi-year history of communications and formal notice letters provide sufficient evidence to support a finding of willful infringement, potentially leading to enhanced damages?